OPPOSITION No B 3 031 260

Cartier International AG, Hinterbergstr. 22, Postfach 61, 6312 Steinhausen, Switzerland (opponent), represented by Cabinet Germain & Maureau, 12, rue Boileau, 69006, Lyon, France (professional representative)

a g a i n s t

ALO jewelry CZ s.r.o., Na Maninách 1040/14, 170 00 Praha, Czech Republic (applicant), represented by Čermák A Spol., Elišky Peškové 15, 150 00 Praha 5, Czech Republic (professional representative).

On 27/09/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 031 260 is partially upheld, namely for the following contested goods and services:

Class 14: All the goods in this Class.

Class 35: Organisation of jewellery shows as sales promotion; Business management in respect of precious stones and jewellery; Retailing of precious metals and their alloys, jewellery, diamonds, precious stones, semi-precious stones, jewellery, semi-finished articles of precious stones used for the creation of jewellery, wristwatches, clocks, clock cases, ornaments made from precious metals or precious stones, clock mechanisms, stopwatches, chronometers, chain mesh purses of precious metals and precious stones; Retailing of precious metals and their alloys, jewellery, diamonds, precious stones, semi-precious stones, jewellery, semi-finished articles of precious stones used for the creation of jewellery, wristwatches, clocks, clock cases, ornaments made from precious metals or precious stones, clock mechanisms, stopwatches, chronometers, chain mesh purses of precious metals and precious stones, provided via communications media, electronic mail, text messaging, computer networks and the internet; commercial brokerage of organisation of jewellery shows as sales promotion, business management in the field of precious stones, jewellery, retailing of precious metals and their alloys, jewellery, diamonds, precious stones, semi-precious stones, jewellery, semi-finished articles of precious stones used for the creation of jewellery, wristwatches, clocks, clock cases, ornaments made from precious metals or precious stones, clock mechanisms, stopwatches, chronometers, chain mesh purses of precious metals and precious stones, provided via communications media, electronic mail, text messaging, computer networks and the internet.

Class 36: All the services in this Class, except for financial analysis.

Class 40: All the services in this Class.

Class 42: All the services in this Class, except for hosting web sites; design of interior decor; provision of search engines for the internet; quality control; material testing; packaging design; recovery of computer data; industrial design.

2. European Union trade mark application No 16 724 701 is rejected for all the above goods and services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 16 724 701 for the figurative mark . The opposition is based on international trade mark registration No 1 029 142 designating the European Union for the figurative mark . The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant has not submitted the request for proof of use by way of a separate document as required by Article 10(1) EUTMDR.

Therefore, the request for proof of use is inadmissible pursuant to Article 10(1) EUTMDR.

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

 The signs must be either identical or similar.

 The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

 Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

a) Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in the European Union.

Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case, the contested trade mark was filed on 15/05/2017. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely:

Class 14: Rings, bracelets.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 29/01/2019 the opponent submitted facts, evidence and arguments relating to the reputation of its earlier mark. However, it should be noted that the arguments of the opponent refer to, and explain, many items of evidence that cannot be linked to the evidence submitted. As part of the evidence referred to in the arguments was not submitted, it cannot be taken into account. Therefore, the Opposition Division will only analyse the evidence submitted which consists of the following:

- extracts from websites, some from the opponent’s website, others from unknown sources, mainly undated, on the history of the opponent ‘Cartier’;

- an extract, undated, according to the opponent from the website https://www.grazia.fr/piece-culte/le-bracelet-love-decartier but not visible in the evidence, reading ‘In the early 70’s, “Peace and Love” echoes to the plush corridors of house CARTIER in New York City. The luxurious brand winked at hippie movement, naming one of its bracelets LOVE. CARTIER celebrates that feeling via a jewel symbolizing passionate and everlasting love’;

- an extract, undated, from Challenges magazine
https://www.challenges.fr/ stating : “Mythical article, the Love bracelet, created in 1969 and recognizable by its visible screws, is declined in ring, pendant, necklace, jumper. Dozens of references that animate the market and allow to sell a volume of articles to the Antipode of the High Jewellery”.

- an extract, dated September 2013, from Vogue https://www.vogue.fr/joaillerie/ showing the opponent’s ‘LOVE’ bracelet;

- an extract, dated 21/07/2017, from Icon Icon magazine http://www.icon-icon.com/fr/joaillerie/lovede-cartier referring to the opponent’s ‘LOVE’ bracelet as an emblematic piece of jewellery stating: “To complete its most romantic collection, the jewellery house extends its range to a series of rings in the same aesthetic. The LOVE by Cartier collection is one of Cartier’s must-have’s, which, with 165 years of expertise, stands out among the great luxury jewelry. So, how far would you go for LOVE?”;

- an extract, dated September 2011, from Trenditude http://www.trenditude.fr/La-collection-Love-deCartier-pour-dire-je-t-aime.html stating: “The iconic collection: Love de la maison
Cartier: The jeweler of kings, Cartier, offers passion and love in the Love
collection… Also used in rings and other bracelets, the collection is chic and
discreet with all the shades of gold”;

- an extract, dated 27/02/2017, unknown source, showing the ‘LOVE’ bracelet and referring to it as an ‘icon’.

- promotional material and advertising campaigns, showing bracelets belonging to the ‘LOVE’ collection and featuring the earlier mark , for example as and . The opponent also submitted pictures from ‘Love Day at Cartier’ (2009), pictures showing famous people wearing the ‘LOVE’ bracelet (Tina Turner, Angelina Jolie, Rihanna, etc.) and an extract showing the ‘LOVE’ bracelet on ‘Instagram’ (2018) having obtained 58.233 likes. The opponent also mentions in its arguments (without providing any supporting evidence) that it spent EUR 2.195 million in 2007, EUR 2.575 million in 2008 and EUR 903.000 in 2009 on the campaign ‘How far would you go for LOVE’ featuring i.a. Lou Reed and Marion Cotillard and submits some examples of the advertising material for this campaign;

- information relating to the opponent’s involvement in charitable associations. It runs the worldwide ‘LOVE Charity Day’, during which profits from the sales of ‘LOVE’ bracelets are donated to charitable associations chosen by the celebrities who support the event;

- Some EUIPO (04/11/2015, R 23/2015-1; 21/07/2017, B 2 771 528), and INPI decisions (21/02/2013, 02/12/2013, 08/04/2016, 19/10/2016) confirming the reputation of the earlier mark.

The abovementioned evidence indicates that the earlier trade mark has been used for a substantial period of time, since 1969, especially in France, in relation to bracelets. The references in the press referring to the earlier mark as ‘mythical’, ‘emblematic’ or ‘iconic’, as well as the marketing efforts of the campaign ‘how far would you go for Love’ suggest that the trade mark has a consolidated position in the market. The evidence consisting of sample material from advertising campaigns for the ‘LOVE’ collection involving various famous personalities suggests that a considerable marketing investment has been made, as has been claimed by the opponent.

Furthermore, from the evidence it is clear that the goods sold under the earlier mark are very popular with celebrities and that those have brought the bracelets of the opponent under the earlier mark to the attention of the public, as some documents mention this, and this can also be seen on the pictures and extracts from Instagram.

Moreover, the information extracted from the evidence is completed and confirmed by previous EUIPO and INPI decisions referred to by the opponent, and in particular by the decision dated 04/11/2015, R 23/2015-1, Love Literally / Love (FIG. MARK) et al., where the earlier mark was found to be reputed.

Under these circumstances, considering that the evidence submitted in this case is not very extensive, the Opposition Division finds nevertheless that, taken as a whole, the evidence is sufficient to indicate that the earlier trade mark enjoys a certain degree of recognition among the relevant public for bracelets, which leads to the conclusion that the earlier trade mark enjoys some degree of reputation. Whether the degree of recognition is sufficient for Article 8(5) EUTMR to be applicable depends on other factors relevant under Article 8(5) EUTMR such as, for example, the degree of similarity between the signs, the inherent characteristics of the earlier trade mark, the type of goods and services in question, the relevant consumers, etc.

b) The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union.

The earlier mark is figurative and will be read, despite its particular stylisation of its second letter, as ‘LOVE’, which will be understood by the English-speaking public. Indeed, consumers tend to recognise a letter in a string even if it is distorted (or replaced with a symbol that resembles it), as trade marks often distort letters or replace them with figurative elements with a shape similar to that of a letter, intentionally looking for effect or impact. For this reason, the second letter will be seen as being the letter ‘O’.

In relation to the contested sign which is composed of a single word, the Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, he will break it down into elements which, for him, suggest a specific meaning or which resemble words known to him (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). Therefore, the relevant English-speaking public will perceive the contested sign as ‘A Love’.

As the verbal elements, and more in particular the common element ‘LOVE’, will be understood by the English-speaking public, the Opposition Division finds it appropriate to focus the comparison of the signs on this part of the public.

The word ‘LOVE’, present in both signs, refers to an intense emotion of affection, warmth, fondness and regard towards a person or thing.

Although some of the goods in Class 14 may be purchased for loved ones, this does not constitute a strong enough link with the word ‘LOVE’ to render it non-distinctive or otherwise weak, and, consequently, this term has an average degree of distinctive character for all the goods in Class 14, as well as for the services in Classes 35, 36, 40 and 42. The evidence submitted by the applicant showing that the word ‘LOVE’ is often used in relation to jewellery is not sufficient to show that the relevant public would have become accustomed to the use of this word in relation to jewellery, as the evidence is not particularly extensive, it does not provide clear indications of where exactly this use took place (the evidence seems to relate mainly to the Czech Republic and some to the United States of America, while the relevant territory is the entire European Union), when and to what extent. The applicant furthermore also argues that the element ‘LOVE’ has a limited distinctiveness as many trade marks include the word ‘LOVE’. In support of its argument the applicant refers to several EUTM registrations. The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘LOVE’. Under these circumstances, the applicant’s claims must be set aside.

However, the figurative element in the contested sign representing a heart is commonly used in commerce and has a weak degree of distinctiveness in relation to all the goods and services. Moreover, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

The letter ‘A’ in the contested sign, is an indefinite article that merely introduces the word ‘LOVE’ that follows, and, therefore, it has a lower degree of distinctiveness.

Visually, the signs coincide in the element ‘LOVE’, which is the full verbal element constituting the earlier mark and the most distinctive verbal element of the contested sign. The signs differ in the additional letter ‘A’ in the contested sign, which is an indefinite article being less distinctive, and in the stylisation of the signs, including the figurative element in the contested sign which is weak.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the distinctive element ‛LOVE’, present identically in both signs. The pronunciation differs in the sound of the additional letter ‘A’ in the contested sign, which has a lower degree of distinctiveness than the word ‘LOVE’, as explained above.

Therefore, the marks are aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with similar meanings on account of the distinctive word ‘LOVE’, while the concepts evoked by the additional verbal and figurative elements in the contested sign have a lower degree of distinctiveness, the signs are conceptually similar to a high degree.

Taking into account the abovementioned visual, aural and conceptual coincidences, the signs under comparison are similar to at least an average degree.

c) The ‘link’ between the signs

As seen above, the earlier mark has some degree of reputation and the signs are similar to at least an average degree. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed by several judgments (23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29, 31; 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 66). It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 42):

 the degree of similarity between the signs;

 the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 the strength of the earlier mark’s reputation;

 the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

As concluded above, the earlier mark has some degree of reputation in the European Union for bracelets in Class 14.

The conflicting marks are visually similar to an average degree, aurally and conceptually they are similar to a high degree.

The contested goods are:

Class 14: Alloys of precious metal; Goods in precious metals or coated therewith, not included in other classes; Medaillons (jewellery); Necklaces [jewellery]; Pendants; Bracelets [jewellery, jewelry (Am)]; Chains, bands and bracelets for watches; Earrings; Pearls for making jewelry; Platinum [metal]; Rings [jewellery, jewelry (Am)]; Chains [jewelry]; Ivory jewelry; Jewellery boxes and containers made of precious metals or precious stones; Works of art of precious metal; Gold, unwrought or beaten; Silver, unwrought or beaten; Amulets [jewellery, jewelry (Am)]; Brooches [jewellery]; Diamonds; Gemstones; Semi-precious stones; Jewels; Precious metals (unworked or semi-worked); Semi-finished articles of precious stones for use in the manufacture of jewellery; Paste jewellery [costume jewelry (Am)]; Cuff links; Tie-pins; Ornamental pins; Tie pins; Watches; Clocks; Clock cases; Jewelry of yellow amber; Hat jewellery; Trinkets made of precious metals or precious stones (articles of jewellery); Trinkets of silver (articles of jewellery); Clockworks; Stopwatches; Chronometers; Chain mesh purses of precious metals and precious stones.

Class 35: Advertising; Business consulting; Business administration; Shop window dressing; Business management and organization consultancy; Business inquiries; Organization of exhibitions for commercial or advertising purposes; Organisation of trade fairs for commercial or advertising purposes; Fashion shows for promotional purposes (Organization of -); Organisation of jewellery shows as sales promotion; Sales promotion for others; Demonstration of goods; Modelling for advertising or sales promotion; Public relations; Presentation of goods and services on communication media for retail purposes; Business management in respect of precious stones and jewellery; Market research; Business inquiries; Advertising; Marketing, direct mail advertising; Publication of publicity texts; Updating of advertising material; Dissemination of advertising matter; Sample distribution; Opinion polling; Rental of advertising space; Commercial intermediation services; Retailing of precious metals and their alloys, jewellery, diamonds, precious stones, semi-precious stones, jewellery, semi-finished articles of precious stones used for the creation of jewellery, wristwatches, clocks, clock cases, ornaments made from precious metals or precious stones, clock mechanisms, stopwatches, chronometers, chain mesh purses of precious metals and precious stones; Retailing of precious metals and their alloys, jewellery, diamonds, precious stones, semi-precious stones, jewellery, semi-finished articles of precious stones used for the creation of jewellery, wristwatches, clocks, clock cases, ornaments made from precious metals or precious stones, clock mechanisms, stopwatches, chronometers, chain mesh purses of precious metals and precious stones, provided via communications media, electronic mail, text messaging, computer networks and the internet; Commercial brokering of advertising, organisation consultancy, business administration, shop window dressing, business organisation and management consultancy, providing business information, organisation of exhibitions for commercial or advertising purposes or, organisation of trade fairs for commercial or advertising purposes, organisation of fashion shows for promotional purposes, organisation of jewellery shows as sales promotion, sales promotion for others, demonstration of goods, modelling for advertising or sales promotion, public relations, presentation of goods and services on communications media for retail purposes, business management in the field of precious stones, jewellery, market research, business research, advertising, marketing, direct mail advertising, publications of publicity texts, updating of advertising material, dissemination of advertising matter, distribution of samples, opinion polling, rental of advertising space, business brokerage, retailing of precious metals and their alloys, jewellery, diamonds, precious stones, semi-precious stones, jewellery, semi-finished articles of precious stones used for the creation of jewellery, wristwatches, clocks, clock cases, ornaments made from precious metals or precious stones, clock mechanisms, stopwatches, chronometers, chain mesh purses of precious metals and precious stones, provided via communications media, electronic mail, text messaging, computer networks and the internet.

Class 36: Jewellery appraisal; Valuation of diamonds; Precious stone appraisal; Appraisal of semi-precious stones; Financial analysis.

Class 40: Processing and treating of materials, in particular processing and abrasing of diamonds, precious stones and semi-precious stones; Manufacture of jewellery by processing precious metals and/or diamonds, precious and semi-precious stones; Engraving; Abrasion; Leather working; Laser scribing; Polishing precious and semi-precious stones; Providing information on the processing and treatment of materials.

Class 42: Verifying and certifying diamonds, precious and semi-precious stones and jewellery with regard to character and quality, production, processing and finishing method, country of origin, processing and distribution chain between precious stone or precious metal being extracted and being introduced into the retail network; Determining the origin of diamonds, precious stones and semi-precious stones; Determining the quality of diamonds, precious stones and semi-precious stones; Non-financial evaluation of the origin of diamonds, precious stones and semi-precious stones; Non-financial evaluation of the quality of diamonds, precious stones and semi-precious stones; Designing the appearance of jewellery and goods of precious metals; Designing jewellery; Hosting web sites; Design of interior decor; Provision of search engines for the Internet; Quality control; Material testing; Packaging design; Recovery of computer data; Authenticating works of art; Industrial design.

The contested goods in Class 14 will easily be connected to the opponent’s bracelets. Some of the contested goods in Class 14 are identical to the opponent’s bracelets; this is the case, for example, for bracelets [jewellery, jewelry (Am)] and jewelry of yellow amber, as the latter includes the opponent’s bracelets. Others among the contested goods are similar to the opponent’s bracelets; this is the case for, for example, medaillons (jewellery); necklaces [jewellery]; watches; pearls for making jewelry. Medaillons, necklaces and watches are, like bracelets, types of jewellery; therefore, they have the same nature, and they can have the same producers, relevant public and distribution channels. Precious and semi-precious stones and pearls, especially in mountings, might form part of the opponent’s goods. The opponent’s goods and these contested goods can be found in the same outlets, since a jeweller’s shop will usually not only offer the finished product, but also provide the customer with a range of unworked or faceted precious stones for individual creations. The colour, shape and size of a precious stone are all elements that may make jewellery individual and valuable. These goods target the same consumers and can serve the same purpose as the opponent’s goods. The contested clocks are at least similar to a low degree to the opponent’s goods, as they are often sold through the same distribution channels. The remaining contested goods, such as precious metals, unwrought or semi-wrought; works of art of precious metal, are perhaps not similar to the opponent’s goods, but they are certainly closely related. Some of those goods, for example alloys of precious metal, are used in the manufacture of the opponent’s goods and belong, therefore, to the same sector, namely that of jewellery. Works of art of precious metal can take the form of jewellery.

Furthermore, some of the services in Classes 35, 36, 40 and 42 are closely connected to the jewellery sector and have, therefore, also a connection to the opponent’s bracelets. This will be the case for the following services:

Class 35: Organisation of jewellery shows as sales promotion; Business management in respect of precious stones and jewellery; Retailing of precious metals and their alloys, jewellery, diamonds, precious stones, semi-precious stones, jewellery, semi-finished articles of precious stones used for the creation of jewellery, wristwatches, clocks, clock cases, ornaments made from precious metals or precious stones, clock mechanisms, stopwatches, chronometers, chain mesh purses of precious metals and precious stones; Retailing of precious metals and their alloys, jewellery, diamonds, precious stones, semi-precious stones, jewellery, semi-finished articles of precious stones used for the creation of jewellery, wristwatches, clocks, clock cases, ornaments made from precious metals or precious stones, clock mechanisms, stopwatches, chronometers, chain mesh purses of precious metals and precious stones, provided via communications media, electronic mail, text messaging, computer networks and the internet; Commercial brokering of organisation of jewellery shows as sales promotion, business management in the field of precious stones, jewellery, retailing of precious metals and their alloys, jewellery, diamonds, precious stones, semi-precious stones, jewellery, semi-finished articles of precious stones used for the creation of jewellery, wristwatches, clocks, clock cases, ornaments made from precious metals or precious stones, clock mechanisms, stopwatches, chronometers, chain mesh purses of precious metals and precious stones, provided via communications media, electronic mail, text messaging, computer networks and the internet.

Class 36: Jewellery appraisal; Valuation of diamonds; Precious stone appraisal; Appraisal of semi-precious stones.

Class 40: Processing and treating of materials, in particular processing and abrasing of diamonds, precious stones and semi-precious stones; Manufacture of jewellery by processing precious metals and/or diamonds, precious and semi-precious stones; Engraving; Abrasion; Leather working; Laser scribing; Polishing precious and semi-precious stones; Providing information on the processing and treatment of materials.

Class 42: Verifying and certifying diamonds, precious and semi-precious stones and jewellery with regard to character and quality, production, processing and finishing method, country of origin, processing and distribution chain between precious stone or precious metal being extracted and being introduced into the retail network; Determining the origin of diamonds, precious stones and semi-precious stones; Determining the quality of diamonds, precious stones and semi-precious stones; Non-financial evaluation of the origin of diamonds, precious stones and semi-precious stones; Non-financial evaluation of the quality of diamonds, precious stones and semi-precious stones; Designing the appearance of jewellery and goods of precious metals; Designing jewellery; Authenticating works of art.

The relevant public for the opponent’s bracelets is the public at large. Many of the contested goods and services also target the public at large, while some, such as precious metals, unwrought or semi-wrought; organisation of jewellery shows as sales promotion; business management in respect of precious stones and jewellery might target a professional public exclusively. Nevertheless, the professional public purchasing these goods and services in the jewellery sector is also part of the general public and will definitely be aware of the reputed marks in its sector. Moreover, the professional public that sells the opponent’s goods will also purchase raw materials and will also contract the services specifically related to jewellery. Therefore, there is a clear overlap in the relevant public.

Therefore, taking into account and weighing up all the relevant factors of the present case, and in particular the similarities between the signs and the fact that the conflicting goods and services mentioned above are all sold/offered and used in, or related to, the jewellery sector, the Opposition Division concludes that when encountering the contested mark the relevant consumers will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs. However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T‑301/09, Citigate, EU:T:2012:473, § 96).

However, taking into account and weighing up all the relevant factors of the present case, the Opposition Division is of the opinion that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them with respect to the remaining contested services, being:

Class 35: Advertising; Business consulting; Business administration; Shop window dressing; Business management and organization consultancy; Business inquiries; Organization of exhibitions for commercial or advertising purposes; Organisation of trade fairs for commercial or advertising purposes; Fashion shows for promotional purposes (Organization of -); Sales promotion for others; Demonstration of goods; Modelling for advertising or sales promotion; Public relations; Presentation of goods and services on communication media for retail purposes; Market research; Business inquiries; Advertising; Marketing, direct mail advertising; Publication of publicity texts; Updating of advertising material; Dissemination of advertising matter; Sample distribution; Opinion polling; Rental of advertising space; Commercial intermediation services; Commercial brokering of advertising, organisation consultancy, business administration, shop window dressing, business organisation and management consultancy, providing business information, organisation of exhibitions for commercial or advertising purposes or, organisation of trade fairs for commercial or advertising purposes, organisation of fashion shows for promotional purposes, sales promotion for others, demonstration of goods, modelling for advertising or sales promotion, public relations, presentation of goods and services on communications media for retail purposes, market research, business research, advertising, marketing, direct mail advertising, publications of publicity texts, updating of advertising material, dissemination of advertising matter, distribution of samples, opinion polling, rental of advertising space, business brokerage.

Class 36: Financial analysis.

Class 42: Hosting web sites; Design of interior decor; Provision of search engines for the Internet; Quality control; Material testing; Packaging design; Recovery of computer data; Industrial design

The abovementioned contested services are mainly business services, financial services, IT services, industrial, interior or packaging design, or general services relating to control and testing of materials. These services are broad and not specifically limited to a certain sector, so they have no immediate connection with the jewellery sector where the goods of the reputed mark are commercialised. These services are not offered by the same type of companies, as they require a completely different know-how, and they also do not belong to neighbouring markets.

Therefore, despite the fact that the signs show clear similarities, no connection will be made between them taking into account the distance between the opponent’s goods and the contested services mentioned above, and the fact that the earlier mark obtained only a certain degree of reputation, which reduces significantly the probabilities of making a connection between the signs for unrelated services.

Therefore, as far as those services are concerned, the opposition is not well founded under Article 8(5) EUTMR and must be rejected.

The Opposition Division will now continue the assessment of the injury for the goods and services for which a link has been established.

d) Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

 it takes unfair advantage of the distinctive character or the repute of the earlier mark;

 it is detrimental to the repute of the earlier mark;

 it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

The opponent claims that use of the contested trade mark would take unfair advantage of the repute of the earlier trade mark.

Before examining the opponent’s claim, it is appropriate to recall that a link was established between the opponent’s goods and the following contested goods and services:

Class 14: Alloys of precious metal; Goods in precious metals or coated therewith, not included in other classes; Medaillons (jewellery); Necklaces [jewellery]; Pendants; Bracelets [jewellery, jewelry (Am)]; Chains, bands and bracelets for watches; Earrings; Pearls for making jewelry; Platinum [metal]; Rings [jewellery, jewelry (Am)]; Chains [jewelry]; Ivory jewelry; Jewellery boxes and containers made of precious metals or precious stones; Works of art of precious metal; Gold, unwrought or beaten; Silver, unwrought or beaten; Amulets [jewellery, jewelry (Am)]; Brooches [jewellery]; Diamonds; Gemstones; Semi-precious stones; Jewels; Precious metals (unworked or semi-worked); Semi-finished articles of precious stones for use in the manufacture of jewellery; Paste jewellery [costume jewelry (Am)]; Cuff links; Tie-pins; Ornamental pins; Tie pins; Watches; Clocks; Clock cases; Jewelry of yellow amber; Hat jewellery; Trinkets made of precious metals or precious stones (articles of jewellery); Trinkets of silver (articles of jewellery); Clockworks; Stopwatches; Chronometers; Chain mesh purses of precious metals and precious stones.

Class 35: Organisation of jewellery shows as sales promotion; Business management in respect of precious stones and jewellery; Retailing of precious metals and their alloys, jewellery, diamonds, precious stones, semi-precious stones, jewellery, semi-finished articles of precious stones used for the creation of jewellery, wristwatches, clocks, clock cases, ornaments made from precious metals or precious stones, clock mechanisms, stopwatches, chronometers, chain mesh purses of precious metals and precious stones; Retailing of precious metals and their alloys, jewellery, diamonds, precious stones, semi-precious stones, jewellery, semi-finished articles of precious stones used for the creation of jewellery, wristwatches, clocks, clock cases, ornaments made from precious metals or precious stones, clock mechanisms, stopwatches, chronometers, chain mesh purses of precious metals and precious stones, provided via communications media, electronic mail, text messaging, computer networks and the internet; commercial brokering of organisation of jewellery shows as sales promotion, business management in the field of precious stones, jewellery, retailing of precious metals and their alloys, jewellery, diamonds, precious stones, semi-precious stones, jewellery, semi-finished articles of precious stones used for the creation of jewellery, wristwatches, clocks, clock cases, ornaments made from precious metals or precious stones, clock mechanisms, stopwatches, chronometers, chain mesh purses of precious metals and precious stones, provided via communications media, electronic mail, text messaging, computer networks and the internet.

Class 36: Jewellery appraisal; Valuation of diamonds; Precious stone appraisal; Appraisal of semi-precious stones.

Class 40: Processing and treating of materials, in particular processing and abrasing of diamonds, precious stones and semi-precious stones; Manufacture of jewellery by processing precious metals and/or diamonds, precious and semi-precious stones; Engraving; Abrasion; Leather working; Laser scribing; Polishing precious and semi-precious stones; Providing information on the processing and treatment of materials.

Class 42: Verifying and certifying diamonds, precious and semi-precious stones and jewellery with regard to character and quality, production, processing and finishing method, country of origin, processing and distribution chain between precious stone or precious metal being extracted and being introduced into the retail network; Determining the origin of diamonds, precious stones and semi-precious stones; Determining the quality of diamonds, precious stones and semi-precious stones; Non-financial evaluation of the origin of diamonds, precious stones and semi-precious stones; Non-financial evaluation of the quality of diamonds, precious stones and semi-precious stones; Designing the appearance of jewellery and goods of precious metals; Designing jewellery; Authenticating works of art.

As seen above, the earlier trade mark was found to have a certain degree of reputation for:

Class 14: Bracelets.

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free‑riding on the coat‑tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 48; 22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 40).

The opponent bases its claim on the following:

The applicant takes unfair advantage of the reputation of LOVE/ , using the prestigious image of the brands to designate its own products and giving consumers a false impression of luxury. On the basis of Article 8(5) EUTMR, there is an obvious attempt due to the reputation of the earlier marks, the identity and similarity of activities and the link which will be made by the consumer.

According to the Court of Justice of the European Union

… as regards injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, insofar as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, the existence of such injury must be assessed by reference to the average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect.

(27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 36.)

The earlier mark has been used for over 40 years and has built up an image of exclusivity and luxury.

As the relevant public would establish a link (or form an association) between the signs, for the reasons explained above, the exclusive and luxurious image of the earlier mark would inevitably be transferred to the applicant’s goods and services if they were marketed under the contested sign.

Consequently, the applicant’s goods and services would in principle be made easier to market. The fact that the contested sign includes the entire verbal element of the reputed earlier mark ‘LOVE’ for goods and services that have a connection with those of the opponent might motivate the consumer to purchase/contract the applicant’s goods and services.

In this way, the applicant would take advantage of the success of the opponent’s company. It would take a ‘free ride’ on the investment of the opponent in promoting and building up goodwill for its mark; it would exploit without paying any financial compensation the marketing effort expended by the opponent in order to create and maintain the image of that mark.

Taking into account the above, the applicant would be free-riding on the coat-tails of the earlier reputed mark and would be attempting to trade on its reputation. This would amount to taking unfair advantage of the distinctive character of and repute of the earlier mark.

On the basis of the above, the Opposition Division concludes that the contested trade mark is likely to take unfair advantage of the repute of the earlier trade mark.

Conclusion

Considering all the above, the opposition is well founded under Article 8(5) EUTMR for some of the goods and services, as listed in section c) above.

The opposition is not successful insofar as the remaining services are concerned. For these services, the Opposition Division will now assess the other ground invoked by the opponent, namely Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

a) The goods and services

The goods on which the opposition is based are the following:

Class 14: Goods in precious metals and coated therewith; cuff-links, tie clips, rings, bracelets, earrings, necklaces, brooches, key rings; watches, chronometers, clocks, watch straps, watch bracelets, boxes of precious metals for watches and jewellery.

The remaining contested services are the following:

Class 35: Advertising; Business consulting; Business administration; Shop window dressing; Business management and organization consultancy; Business inquiries; Organization of exhibitions for commercial or advertising purposes; Organisation of trade fairs for commercial or advertising purposes; Fashion shows for promotional purposes (Organization of -); Sales promotion for others; Demonstration of goods; Modelling for advertising or sales promotion; Public relations; Presentation of goods and services on communication media for retail purposes; Market research; Business inquiries; Advertising; Marketing, direct mail advertising; Publication of publicity texts; Updating of advertising material; Dissemination of advertising matter; Sample distribution; Opinion polling; Rental of advertising space; Commercial intermediation services; Commercial brokering of advertising, organisation consultancy, business administration, shop window dressing, business organisation and management consultancy, providing business information, organisation of exhibitions for commercial or advertising purposes or, organisation of trade fairs for commercial or advertising purposes, organisation of fashion shows for promotional purposes, sales promotion for others, demonstration of goods, modelling for advertising or sales promotion, public relations, presentation of goods and services on communications media for retail purposes, , market research, business research, advertising, marketing, direct mail advertising, publications of publicity texts, updating of advertising material, dissemination of advertising matter, distribution of samples, opinion polling, rental of advertising space, business brokerage.

Class 36: Financial analysis.

Class 42: Hosting web sites; Design of interior decor; Provision of search engines for the Internet; Quality control; Material testing; Packaging design; Recovery of computer data; Industrial design.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

The abovementioned contested services in Classes 35, 36, and 42 are mainly business services, financial services, IT services, industrial, interior or packaging design, or general services relating to control and testing of materials. These services are dissimilar to the opponent’s goods in Class 14. These goods and services have a different nature, a different purpose and a different method of use. They are not complementary, nor in competition with each other. Moreover, they are not provided by the same undertakings, they are offered through different channels and most also target a different relevant public.

b) Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

This finding is still valid even taking into account that the earlier trade mark has some degree of reputation. Given that the dissimilarity of the goods and services cannot be overcome by the highly distinctive character of the earlier trade mark, the evidence submitted by the opponent in this respect does not alter the outcome reached above.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Chantal VAN RIEL

Saida CRABBE

Marzena MACIAK

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.