DECISION

of the Fifth Board of Appeal

of 18 March 2021

In case R 2679/2019-5

ALO jewelry CZ, s.r.o.
Na Maninách 1040/14 170 00 Praha Czech Republic	Applicant / Appellant

represented by Čermák a Spol., Elišky Peškové 15/735, 150 00 Praha 5, Czech Republic

v

Cartier International AG
Hinterbergstr. 22, Postfach 61. 6312 Steinhausen Switzerland	Opponent / Defendant

represented by Cabinet Germain & Maureau, BP 6153, 69466 Lyon Cedex 06, France

APPEAL relating to Opposition Proceedings No B 3 031 260 (European Union trade mark application No 16 724 701)

The FIFTH Board of Appeal

composed of V. Melgar (Chairperson), R. Ocquet (Rapporteur) and S. Rizzo (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 15 May 2017, ALO jewelry CZ, s.r.o. (‘the applicant’) sought to register the figurative mark

as a European Union trade mark (‘EUTM’) for, inter alia, the following list of 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 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 - 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.

2. The EUTM application was published on 20 November 2017.

3. On 29 January 2018, Cartier International AG (‘the opponent’) filed a notice of opposition against the trade mark application (‘the contested sign’) for all the goods and services applied for, including those listed in paragraph 1.

4. The grounds of opposition were those laid down in Article 8(1)(b) and Article 8(5) EUTMR and the opposition was based on earlier international registration (‘IR’) No 1 029 142 designating the European Union for the figurative mark

registered on 26 October 2009 and duly renewed for the following goods:

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.

Reputation was claimed for the goods ‘rings, bracelets’ in the European Union.

5. On 29 January 2019, the opponent submitted the following evidence of reputation:

• Annex 2: Printouts and screenshots from various websites, most of them undated, with articles or publications on the history of the ‘LOVE’ bracelet dating back to 1969 and showing the following bracelets:

;

• Annex 3: An undated article in French from the website https://www.challenges.fr/ which states the following: ‘Article mythique, le bracelet Love, créé en 1969 et reconnaissable à ses vis apparentes, est décliné en bague, pendentif, collier, sautoir. Des dizaines de références qui animent le marché et permettent d´écouler un volume d’articles à l’antipode de la haute joaillerie’ ;

• Annex 4.1: An article in French dated 21 July 2017 from the website http://www.icon-icon.com/fr/joaillerie/lovede-cartier, which states as follows: ‘Le bracelet LOVE by Cartier, créé à New York en 1969 par Aldo Cipullo, est un symbole universel de l’amour et de l’engagement’ and also ‘est un pièce de joaillerie emblématique’ ;

• Annex 4.2 : An article in French dated September 2011 from the website http://www.trenditude.fr/La-collection-Love-deCartier-pour-dire-je-t-aime.html, which states the following: ‘le bracelet Love de Cartier … autre bijou emblématique de la maison Cartier’ and ‘ce bijou culte est le parfait symbole de l’attachement amoureux’ ;

• Annex 4.3: An article in French dated 27 February 2017 showing the ‘LOVE’ bracelet and referring to it as ‘une icône hors pair’ and ‘un bijou culte’, as well as other promotional materials in French showing bracelets, such as:

;

• Annex 5: Pictures related to the charity event ‘Love Day at Cartier’ (2009) showing celebrities wearing ‘LOVE’ bracelets (Tina Turner, Angelina Jolie, Eva Mendes, Rihanna, Kylie Jenner, Meghan Markel, etc.). Some publications mention that ‘Love Day’ events took place in Cartier’s shops in France in 2007 and 2009, whereby the profits from the sale of ‘LOVE’ bracelets were donated to charity associations selected by celebrities supporting the event;

• Annex 6.1 : An extract from Instagram dated 24 December 2018 showing a ‘LOVE’ bracelet that has obtained 58 233 likes;

• Annex 6.2: Advertising materials from the promotional campaign , with the participation of celebrities, such as the French actress Marion Cotillard, in which the opponent claims to have spent EUR 2 195 million in 2007, EUR 2 575 million in 2008 and EUR 903 000 in 2009 in promoting the ‘LOVE’ collection, including the ‘LOVE’ bracelet;

• Annex 7: Information regarding the opponent’s involvement in charitable associations and regarding ‘Love Charity Day’, during which profits from the sales of ‘LOVE’ bracelets are donated to charitable associations;

• Annexes 8-9: Several EUIPO decisions (04/11/2015, R 23/2015-1; 21/07/2017, B 2 771 528) and INPI decisions (02/12/2013, 21/02/2013, 08/04/2016 and 19/10/2016) confirm the earlier mark’s reputation.

6. By decision of 27 September 2019 (‘the contested decision’), the Opposition Division partially upheld the opposition for the contested goods and services listed under paragraph 1. The EUTM application was allowed to proceed for the remaining services and each party was ordered to bear its own costs. It gave, in particular, the following grounds for its decision:

• The request for proof of use is inadmissible as it was not submitted by way of a separate document as required by Article 10(1) EUTMDR.

• To the extent the opposition was based on Article 8(5) EUTMR, the applicant did not claim to have due cause for using the contested sign and there are no indications to the contrary.

• The evidence indicates that the earlier mark has been used since 1969, especially in France, for bracelets. The references in the press referring to the earlier mark as ‘mythical’, ‘emblematic’ or ‘iconic’, as well as the marketing efforts of the advertising campaign ‘How far would you go for Love’ suggest that the mark has a consolidated position on the market. The advertising campaigns for the ‘LOVE’ collection involving various famous personalities suggest that a considerable marketing investment has been made. 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 earlier bracelets to the public’s attention. 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 ‘Love Literally’ decision (04/11/2015, R 23/2015-1, Love Literally / Love (fig.) et al.) whereby the earlier mark was found to be reputed. The evidence taken as a whole is sufficient to indicate a certain reputation for ‘bracelets’ in Class 14.

• The earlier mark is figurative and will be read, despite the particular stylisation of its second letter, as ‘LOVE’, which will be understood by the English-speaking public. The same public, on which the Opposition Division will focus, will perceive the contested sign as ‘A Love’. 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 aiming to show that the word ‘LOVE’ is often used in relation to jewellery is not sufficient to prove that the relevant public has become accustomed to the use of this word in relation to jewellery. Likewise, the existence of several EUTM registrations is not per se particularly conclusive, as it does not necessarily reflect the situation on the market.

• 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 which is less distinctive, and in the stylisation of the signs, including the figurative element in the contested sign representing a heart which has a weak degree of distinctiveness in relation to all the goods and services. They are similar to an average degree.

• Aurally the pronunciation coincides in ‘LOVE’. They are similar to a high degree.

• Conceptually, both 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, which renders them conceptually similar to a high degree.

• All the contested goods in Class 14 will easily be connected to the earlier ‘bracelets’. Some of the goods in Class 14 are identical, such as ‘bracelets [jewellery, jewelry (Am)]’ and ‘Jewelry of yellow amber’. Others, such as ‘medaillons (jewellery); necklaces [jewellery]; watches; pearls for making jewelry’ are similar as they have the same nature, producers, relevant public and distribution channels. Precious and semi-precious stones and pearls, especially in mountings, might form part of the earlier ‘bracelets’. They 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. These goods target the same consumers and can serve the same purpose as the earlier goods.

• The contested ‘clocks’ are at least similar to a low degree to the earlier 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 earlier goods, but they are certainly closely related. Some of those goods, for example alloys of precious metal, are used in the manufacture of the earlier goods and belong, therefore, to the same sector, namely that of jewellery. Works of art of precious metal can take the form of jewellery. Likewise, 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.

• The relevant public for the earlier ‘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 be aware of the reputed marks in its sector. The professional public who sells the earlier goods will also purchase raw materials and will also contract the services specifically related to jewellery. There is a clear overlap in the relevant public.

• Taking into account all the relevant factors, in particular the similarities between the signs, the fact that the goods and services are sold/offered and used in, or related to, the jewellery sector, when encountering the contested mark the relevant consumers are likely to establish a mental link with the earlier mark.

• The remaining contested services in Classes 35, 36, and 42, which are mainly business services, financial services, IT services, industrial, interior or packaging design, or general services relating to control and testing of materials, have no immediate connection with the jewellery sector. These 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. As far as those services are concerned, the opposition is not well-founded under Article 8(5) EUTMR.

• 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 contested goods and services if they were marketed under the contested sign. The fact that the contested sign includes the entire verbal element of the reputed earlier mark for goods and services connected with those of the opponent might motivate the consumer to purchase/contract the contested 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.

• Considering all the above, the opposition succeeds under Article 8(5) EUTMR for the contested goods and services under paragraph 1.

• To the extent the opposition was based on Article 8(1)(b) EUTMR, the abovementioned contested services in Classes 35, 36 and 42, which are mainly business services, financial services, IT services, industrial, interior or packaging design, or general services relating to control and testing of materials, are dissimilar to the earlier goods in Class 14. Since one of the necessary conditions under Article 8(1)(b) EUTMR is not fulfilled, the opposition must be rejected.

7. On 26 November 2019, the applicant filed an appeal against the contested decision together with the statement of grounds. It requested that the opposition be rejected and the opponent be ordered to bear the costs. The arguments raised may be summarised as follows:

• The evidence of reputation is not very extensive. Many documents are not dated or are dated after the filing date of the application, they do not show the mark as registered and cannot prove reputation or enhanced distinctiveness. The evidence rather refers to the esteem of the earlier mark and not to its recognition by the relevant public, whereas the earlier decisions are not binding. The evidence is clearly not sufficient to prove the reputation of the earlier mark, which was furthermore unclearly defined as ‘a certain degree of reputation’.

• The applicant is the owner of a series of marks based on the word element ‘ALO’, after the name of the trade mark owner, followed by another non-distinctive word element. The contested sign is formed in exactly the same way, the dominant and distinctive word element ‘ALO’ accompanied by the non-distinctive suffix ‘ve’.

• The Opposition Division adopted a wrong approach when it considered the contested sign as consisting of ‘A’ and ‘LOVE’. This is not supported by the visual and aural aspects of the contested sign, which is clearly divided as mentioned above, and by the evidence of its actual use on the applicant’s website.

• The evidence submitted by the applicant proves that the word ‘LOVE’ is weak in connection with jewellery and other goods in Class 14. It does not indicate the commercial origin but rather creates positive emotions towards the product. Multinational companies often use the word element ‘LOVE’ in connection to jewellery products, which are sold all over the European Union. The Opposition Division did not comment on the decision in the ‘apetito’ case (19/03/2004, R 278/2003-2) which confirmed the weak distinctive character of the element ‘LOVE’. The low distinctive character of the word is further supported by the fact that there is no word mark ‘LOVE’ registered for goods in Class 14. All the marks that consist of the word element ‘LOVE’ include also other word and/or graphic elements.

• The weak distinctive character of the figurative element in the form of a heart of the contested sign has not been proven either. It has a highly distinctive character which helps to distinguish between the signs. The contested sign is a creative and playful combination of the elements ‘ALO’ and ‘ve’, which perceived together may indeed be understood as ‘a love’ but in a playful manner evoking commercial origin from the applicant.

• Visually, both signs are stylised. The earlier mark might thus be perceived as ‘LEVE’ and not as ‘LOVE’. The average consumer will focus on the element ‘ALO’, placed at the beginning, and on the heart element of the contested sign. The contested sign is also visually longer and creates a rather different overall visual impression.

• Aurally, the contested sign will be pronounced as ‘a-lo-ve’, very much influenced by the visual aspect, as opposed to the earlier mark which may be pronounced as ‘le-ve’, ‘lo-vo’, ‘laf’ or ‘el vé’.

• Conceptually, the signs clearly differ. The contested sign consists of the first three letters ‘ALO’ of the owner’s first name combined with the suffix ‘ve’, which may be understood as a playful and creative allusion to the word ‘LOVE’, evocative in respect of jewellery and devoid of distinctive character. The highly distinctive character of the sign comes from the creative and playful way in which it is represented. The earlier mark’s distinctive character is not derived from the meaning of the word ‘LOVE’ as such, but from its graphic representation. The opponent cannot monopolise the use of the word ‘LOVE’ for jewellery, which has a low distinctive character and is used by various jewellery producers.

• Given the above, the signs are rather different, the opponent did not prove that the earlier mark enjoys good reputation and that it enjoys a higher level of distinctive character. The public will not create a mental link between the signs. The opponent may not monopolise the concept of ‘love’ in connection with jewellery, on the basis of a trade mark which does not consist of the word ‘love’ in a similar way, and yet conferring a totally different overall impression than the contested sign.

• The conditions set out in Article 8(5) EUTMR are not met and the opposition should be rejected.

8. On 27 January 2020, the opponent filed its observations in reply. It requested that the contested decision be confirmed, the contested application be rejected and the applicant be ordered to bear the costs. Its arguments are as follows.

• The opponent submitted sufficient evidence of independent origin which proves a long-lasting use and significant geographical extent. The EUIPO has recognised the reputation of the earlier mark in several significant decisions provided on file.

• The sequence of letters ‘A-L-O’ is not readable and totally absorbed into the whole semi-figurative sequence ‘ALOVE’. The single obvious term in the contested sign is ‘LOVE’ and its distinctiveness has already been recognised by the EUIPO. The decision in the ‘apetito’ case (19/03/2004, R 278/2003-2) concerns a different mark, which is clearly descriptive. Moreover, the actual use of the contested sign on the applicant’s website is irrelevant.

• Visually, the contested sign fully reproduces the earlier mark ‘LOVE’. They share four letters in common which are placed in the same order. The vowel ‘A’ at the beginning of the contested sign does not sufficiently affect the overall impression and could be overlooked. The stylisation of both signs focuses on the same middle letter ‘O’ which increases their similarity.

• Aurally, the signs coincide in the sound of the letters ‘L-O-V-E’ present identically in both signs and pronounced as ‘lo-ve’. The signs are aurally highly similar.

• Conceptually, both signs have the same concept of the word ‘love’.

• The Opposition Division should have come to the conclusion that there was a likelihood of confusion.

• The earlier mark has been used for about 50 years and has built up an image of exclusivity and luxury. As the relevant public would establish a link (or a form of association) between the signs, the luxurious image of the earlier mark would inevitably be transferred to the contested goods and services if they were marketed under the contested sign. The applicant 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.

• It follows that the earlier mark has a high reputation in the European Union and that the use without due cause of the contested sign would take unfair advantage of, or be detrimental to, the distinctive character of the earlier mark.

• The applicant did not appeal the contested decision as to its merits on the basis of Article 8(1)(b) EUTMR. As a result, the contested decision is uncontested and incontestable on the basis of this ground.

9. The following evidence has been filed as attachment to the opponent’s observations:

• Annex 1 BoA: A decision of the Second Board (03/10/2006, R 148/2006-2, Solvac / Somac).

• Annex 2 BoA: A declaration by the opponent’s director for the European Union stating that the opponent invested above EUR 1.5 million in advertising and promoting the jewellery products from the ‘LOVE’ collection in the period 01/04/2013-31/03/2018.

• Annex 3 BoA: Copies of website and newspaper articles in English, French, Italian, Spanish from the period 2007-2018 showing images of ‘LOVE’ bracelets and celebrities wearing ‘LOVE’ bracelets. Several articles from 2017 inform that the bracelet ‘LOVE’ by Cartier is the most googled jewellery in the world with 350 000 searches per month.

10. On 22 January 2021, both parties were informed that the appeal had been reallocated from the Fourth to the Fifth Board of Appeal.

Reasons

Scope of the appeal

11. In its notice of appeal and statement of grounds, the applicant disputes the contested decision in its entirety. Since an appeal can only be filed to the extent that the party is negatively affected by the contested decision (Article 67 EUTMR), the appeal is limited to the goods and services under paragraph 1, for which the opposition was upheld.

12. In accordance with Article 27(2) EUTMDR, in inter partes proceedings the examination of the appeal shall be restricted to the grounds invoked in the statement of grounds. The notice of appeal and the statement of grounds explicitly mention that the contested decision is appealed to the extent the opposition succeeded on the grounds of Article 8(5) EUTMR.

13. To the extent that the opposition was rejected, i.e. for the remaining services both under Article 8(1)(b) and Article 8(5) EUTMR, the contested decision has become final. The Board will thus examine the opposition for the relevant goods and services listed in paragraph 1 insofar as based on Article 8(5) EUTMR.

Preliminary observations

14. The Board notes that the earlier mark is under a pending revocation request No 39 582 C, which was initiated on 11 November 2019 by the applicant. The revocation is targeted against the earlier mark designating the European Union in its entirety and based on Article 58(1)(a) EUTMR (a mark not put to genuine use for a continuous period of five years). Indeed, a statement of grant of protection of the earlier mark designating the European Union was granted on 3 February 2011. In the opposition proceedings, it was subject to the use requirement but the applicant failed to submit the proof of use request on a separate document as required by Article 10(1) EUTMDR and the proof of use request was rejected.

15. Upon appeal, the applicant did not raise any argument on the proof of use. In addition, neither of the parties requested to suspend the current appeal proceedings in view of the said revocation proceedings, and the Board decides not to suspend the proceedings ex officio for the reasons set out below.

16. Although the Board does not have an obligation to suspend an appeal ex officio, when reading Article 71(1)(a) EUTMDR, the decision to suspend the appeal depends on whether it is appropriate under the circumstances of the case, taking into account the interests of the parties and the stage of the proceedings. The decision on whether or not to suspend must follow the weighing up of the competing interests (25/11/2014, T-556/12, Kaiserhoff, EU:T:2014:985, § 33; 28/05/2020, T‑84/19 & T‑88/19 to T‑98/19, We Intelligence the World (fig.) / Device of two overlapping circles (fig.) et al., EU:T:2020:231, § 50).

17. In addition, the Board recalls that opposition and revocation proceedings are two distinct and autonomous type of proceedings. Each of the two types of proceedings has its own purpose and effects. An opposition is designed to frustrate, under certain conditions, an application for registration of a mark owing to the existence of an earlier mark and the rejection of that opposition does not entail the revocation of the earlier mark. Such revocation can be brought about only where proceedings have been instituted for that purpose (25/11/2014, T‑556/12, Kaiserhoff, EU:T:2014:985, § 39).

18. Accordingly, the opportunity available to all to file an application for revocation is completely independent from any parallel opposition proceedings in which the earlier mark to which the application for revocation relates is involved. Moreover, revocation proceedings initiated after an opposition has been raised can, at most, give rise to the suspension of the opposition proceedings. Indeed, if the earlier mark were to be revoked, the opposition proceedings would be devoid of purpose (25/11/2014, T-556/12, Kaiserhoff, EU:T:2014:985, § 40).

19. However, where there is uncertainty as to the outcome of parallel proceedings calling into question the earlier mark relied on in support of an opposition, bringing opposition proceedings without awaiting the outcome of the parallel proceedings is, in principle, of no advantage to the proprietor of the earlier mark because, even if the opposition proceedings resulted in rejection of the application for registration of the later mark, there would be nothing to prevent the same application from being filed again once the earlier mark had been declared invalid or revoked (25/11/2014, T-556/12, Kaiserhoff, EU:T:2014:985, § 41, 50; 28/05/2020, T‑84/19 & T‑88/19 to T‑98/19, We Intelligence the World (fig.) / Device of two overlapping circles (fig.) et al., EU:T:2020:231, § 52).

20. Furthermore, the evidence on file must allow to conclude that it was not necessary or, as the case may be, that it was necessary to suspend the opposition proceedings (12/11/2015, T‑544/14, Alete, EU:T:2015:842, § 28). The decision to suspend appeal proceedings against a decision of the Opposition Division aims to avoid ruling on an opposition, inter alia, where the validity of an earlier mark on which the merits of the opposition depend is regarded as seriously undermined, in such a way as to make it possible to draw the appropriate consequences from the decision ruling definitively on the validity of that mark in the analysis of the merits of all the arguments put forward against the Opposition Division’s decision (21/10/2015, T‑664/13, Petco, EU:T:2015:791, § 29).

21. Such a probability, that the earlier mark will cease to exist, cannot be concluded from the circumstances of the case. The opponent submitted evidence of use before the Cancellation Division, showing extensive marketing and promotional activities, in particular an ample number of articles and publications, as well as catalogues, declarations on the investment costs and invoices with actual sales of, amongst others, ‘LOVE’ bracelets. Whether the evidence submitted is sufficient to demonstrate genuine use in relation to ‘bracelets’ in Class 14 is for the Cancellation Division to decide. However, in light of the fact that evidence has been submitted and that the opponent claims use of the earlier mark, it does not seem highly probable that the earlier mark concerned will be revoked in respect of these goods.

22. Finally, the Board points out that the above cited case-law relating to the Board’s discretion to suspend the proceedings relates to cases where there was a suspension request by one of the parties, whereas in the present case no such request was filed. It follows from the above case-law that the filing of an application for revocation of a registered mark as such does not justify a suspension unless, in view of the circumstances, there is a certain probability that the application for revocation is likely to be successful.

23. To sum up, in view of the circumstances and taking into account the interests of both parties, the Board concludes that a suspension ex officio does not appear to be appropriate in the case at hand, particularly bearing in mind that neither of the parties requested such suspension.

Article 8(5) EUTMR

24. According to Article 8(5) EUTMR, an opposition to an application for an EUTM may be founded on an earlier mark which has a reputation, even though the earlier mark is registered for goods or services which are not similar to the goods or services covered by the application, provided that the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

25. The application of Article 8(5) EUTMR is subject to the following cumulative conditions: firstly, that the earlier mark is identical or similar to the mark applied for; secondly, that the earlier mark has a reputation in the territory in which it is registered; thirdly, that there is a risk that the use of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark; and fourthly, that the use of the contested sign would be without due cause. These conditions are cumulative and failure to satisfy one of them is sufficient to render that provision inapplicable (09/09/2020, T-669/19, Primus, EU:T:2020:408, § 21; 25/05/2005, T‑67/04, Spa-Finders, EU:T:2005:179, § 30; 06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 20‑21).

26. As a preliminary note, it has to be noted that Article 7(4), penultimate sentence, EUTMDR in conjunction with Article 24 EUTMIR, applies to the documents submitted by the opponent in support of the reputation claimed. According to Article 24 EUTMIR these supporting documents may be filed in any official language of the European Union. The Office may, either of its own motion or upon reasoned request by the other party, require the opponent to submit a translation of the evidence into the language of the proceedings within a specified time limit. Such a request was not filed by the applicant in the course of the opposition proceedings, whereas its arguments in relation to the content of the materials filed upon appeal prove that it managed to understand them.

Reputation of the earlier mark

27. In order to satisfy the requirement of reputation, the earlier mark must be known to a significant part of the public concerned by the goods and services covered by the mark (27/06/2019, T-334/18, Ana de Altún, EU:T:2019:451, § 34; 26/06/2019, T-651/18, Hawkers, EU:T:2019:444, § 15). The Court has held in that regard that a mark does not need to be known by a specific percentage of the relevant public in order to be regarded as having a reputation (06/02/2007, T‑477/04, TDK, EU:T:2007:35, § 49), or for it to have a reputation throughout the relevant territory as long as it has a reputation in a substantial part of it (16/10/2018, T-548/17, Anokhi, EU:T:2018:686, § 94).

28. In the context of the assessment of reputation, account must be taken of all the facts relevant to the case, in particular the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the amount spent by the undertaking in promoting it (02/10/2015, T‑624/13, Darjeeling, EU:T:2015:743, § 75; 25/05/2005, T-67/04, Spa-Finders, EU:T:2005:179, § 34). However, the above list being merely illustrative, it cannot be required that proof of the reputation of a mark pertains to all those elements (26/06/2019, T-651/18, Hawkers, EU:T:2019:444, § 24; 08/11/2017, T‑754/16, CC, EU:T:2017:786, § 101).

29. The opponent was required to prove that its earlier mark enjoyed reputation in the European Union on 15 May 2017, the EUTM filing date, in respect of ‘rings, bracelets’ in Class 14.

Initial and supplemental evidence

30. Before the Opposition Division, within the time limit set, the opponent filed the evidence of reputation of the earlier mark as listed in paragraph 5 (Annexes 2-9).

31. Before the Board, in reply to the statement of grounds from the applicant, the opponent filed further evidence as listed in paragraph 9 (Annexes 1-3 BoA).

32. According to Article 10(7) EUTMDR and 27(4) EUTMDR, the Board may, in application of its discretion as indicated in Article 95(2) EUTMR decide to accept supplemental evidence, thereby taking into account, in particular, the stage of the proceedings and whether the evidence is, prima facie, likely to be relevant for the outcome of the case and whether there are valid reasons for the late submission of this evidence.

33. The evidence filed before the Opposition Division already contained sufficient indications to confirm the reputation of the earlier mark (leaving aside the level of reputation). The further evidence filed before the Board was submitted with the intention to complement the evidence filed at first instance, and in response to criticism from the applicant that the first set of evidence was not sufficient to prove reputation of the earlier mark. However, since this additional evidence does not seem genuinely relevant for the outcome of the present proceedings (see paragraph 38), there is no need to decide on whether or not it is to be taken into account.

Reputation

34. Following the examination of the evidence submitted by the opponent, the Board confirms the Opposition Division’s conclusion that the earlier mark enjoys reputation for ‘bracelets’ in Class 14.

35. The evidence summarised in paragraph 6 proves a particularly impressive duration of use of the earlier mark since 1969 and extensive marketing and promotional efforts in relation to bracelets. These include articles on websites and magazines, such as www.challenges.fr, www.vogue.fr, www.icon.icon.com/fr and www.trenditude.fr, as well as marketing campaigns with celebrities promoting the ‘LOVE’ bracelets and charity events including sales of ‘LOVE’ bracelets. The online publications, partially dated from 2011 to 2017, all of them in French and from independent sources, refer to the ‘LOVE’ bracelet as ‘article mythique’, ‘allure iconique’, ‘symbole universal de l’amour et de l’engagement’, ‘une pièce de joaillerie emblématique’, ‘bijou emblématique de la maison Cartier’, ‘une icône hors pair’, ‘une des pièces les plus iconique du genre – le bracelet Love de Cartier’, ‘identifiable entre mille, le symbole de l’amour façon XXeme’, etc. These references suggest a consolidated and well-established position on the relevant market, whereby the ‘LOVE’ bracelet is considered to be one of the most recognised luxurious pieces of jewellery. Even though the earlier mark as registered does not appear on the bracelets themselves, it can be seen on all promotional and advertising materials, as shown in Annexes 5 and 6, including in the promotional campaign with the participation of, amogsth others, the French actress Marion Cotillard. The promotional materials involving famous people suggest that a considerable marketing investment has been made. These materials, taken together, confirm that the earlier mark has become known to the relevant public.

36. Indeed, the evidence lacks relevant items to ascertain the (exact) level of recognition of the earlier mark, such as opinion polls and surveys. It can be inferred, however, that ‘LOVE’ bracelets have been subject to a long-standing and intensive use during almost 50 years and are generally known and well positioned on the market of luxury jewellery, at least in France. In view of the facts of the particular case, the territory of France is considered to constitute a substantial part of the territory of the European Union (06/10/2009, C-301/07, Pago, EU:C:2009:611, § 29-30).

37. The reputation of the earlier mark has, moreover, already been recognised in two decisions of the Office, one of them by the Boards (see Annex 9), namely the ‘Love Literally’ decision (04/11/2015, R 23/2015-1, Love Literally/ Love (fig.), § 56) and one by the Opposition Division, namely the ‘Lovemark&Diamond’ decision (21/07/2017, B 2 771 528, Lovemark&Diamond (fig.) / Love (fig.,), page 5, based on largely similar evidence).

38. It follows that the Board deems the evidence filed before the Opposition Division adequate for establishing that the earlier mark is reputed for ‘bracelets’ in France and therefore in the European Union. Such reputation can be considered to be at least average. Whether or not the evidence contains sufficient indications and data to show that the degree of reputation can be considered high, as claimed by the opponent, can be left aside since a higher degree of reputation of the earlier mark will not change the outcome. Indeed, even with an average degree of reputation of the earlier mark for ‘bracelets’ the opposition as based on Article 8(5) EUTMR succeeds for all the goods under appeal, as will be seen below.

Similarity between the signs

39. The signs to be compared are the following:

    Contested sign	Earlier mark

40. The earlier mark is a figurative mark which, consisting of the verbal element ‘LOVE’ in slightly stylised uppercase letters, with the exception of the letter ‘e’. Within the letter ‘O’ there is an horizontal line. Despite this limited figurative feature, the sign will be perceived as a slightly stylised verbal element ‘LOVE’ in capital letters.

41. The term ‘LOVE’ is a basic English word which is understood everywhere in the European Union, as confirmed by the General Court. It refers to ‘an intense feeling of deep affection’, ‘a strong feeling of affection and sexual attraction for someone’, ‘affectionate greetings conveyed to someone on one’s behalf’ and ‘a great interest and pleasure in something’ (25/01/2017, T-325/15, Choco Love (fig.) / Chocolate, EU:T:2017:29, § 57; 03/10/2019, T-491/18, Meatlove / Carnilove, EU:T:2019:726, § 59-60).

42. The contested sign is a figurative mark consisting of the verbal element ‘ALOve’, the first three letters in uppercase and the last two letters in lowercase, with a heart device within the letter ‘O’, thereby reinforcing the perception of the letters ‘LOve’ as a meaningful word (25/01/2017, T-325/15, Choco Love (fig.) / Chocolate, EU:T:2017:29, § 66).

43. When a trade mark is composed of verbal and figurative elements, the consumer is likely to focus primarily on the denominative element as a point of reference (02/12/2020, T‑687/19, Marq, EU:T:2020:582, § 63; 20/06/2019, T‑390/18, WKU, EU:T:2019:439, § 65; 23/05/2019, T-837/17, SkyPrivate, EU:T:2019:351, § 39). There is no reason why this principle would not apply in the present case, and moreover, the respective signs’ graphic elements do not detract the signs from being read as ‘ALOve’ and ‘LOVE’, respectively.

44. Also, despite the visual representation of the contested sign, the fact remains that when perceiving a sign, the customer will break it down into elements which, for him/her, suggest a specific meaning or which resemble words know to him/her (03/10/2019, T-500/18, MG Puma, EU:T:2019:721, § 29). Faced with such a basic word element as ‘LOVE’ that is easily understood throughout the European Union, the relevant public will indeed break down the verbal element at issue into two parts, one corresponding to a word that it understands as part of everyday language and the other consisting of the rest of the sign at issue (03/10/2019, T‑491/18, Meatlove / Carnilove, EU:T:2019:726, § 57-59). Therefore, the contested sign’s verbal element is likely to be perceived and understood as ‘A LOVE’.

45. As to the applicant’s argument that it owns a series of marks based on the word element ‘ALO’, as a reference to the owner’s first name, followed by a non-distinctive element, the Board recalls that it is the recognition by the relevant public of the earlier mark and not that of the contested sign that must be taken into account in the context of a claim under Article 8(5) EUTMR (05/05/2015, T‑183/13, Skype / Sky, EU:T:2015:259, § 50; 20/01/2016, C-382/15 P, SKYPE / SKY et al., EU:C:2016:31; 19/04/2013, T‑537/11, Snickers, EU:T:2013:207, § 55). Furthermore, none of its marks provided on file, namely ‘Alo jewelry’, ‘ALO jewelry’, ‘ALO diamonds’ and ‘ALO’, appears with the same structure as that of the contested sign at hand.

46. Although most of the relevant goods in Class 14 could be purchased to express love and the term ‘LOVE’ can thus have a relevant meaning in relation to the goods concerned, the term as such has a minimal degree of distinctiveness.

47. The website extracts provided by the applicant to prove its weak distinctiveness mostly show jewellery with ‘LOVE’ elements sold under different trade marks as an indication of their commercial origin. Besides, the applicant’s argument that there are many ‘LOVE’ marks in the trade mark register, none of them being registered as a word mark, rather proves the contrary: that the opponent successfully prevented the registration of such marks. This is further supported by the fact that the list of trade marks submitted by the applicant does not include a single trade mark consisting of the word ‘LOVE’ only. All of them include one or more additional verbal elements. The applicant did moreover not prove use of any of the trade marks in the list submitted. According to case-law, the fact that there may exist many marks in the trade mark register that contain the term ‘LOVE’ for goods in Class 14 is not particularly decisive since it does not prove that these marks are indeed present on the market (08/03/2013, T-498/10, David Mayer, EU:T:2013:117, § 77; 02/12/2014, T-75/13, Momarid, EU:T:2014:1017, § 85).

48. Even if the term ‘LOVE’ is to be considered to have a lower degree of distinctiveness in relation to the goods at hand, a weak(er) distinctive character of an element of a mark does not necessarily mean that that element cannot constitute a dominant element since, because, in particular, of its position in the sign, or its size, it may make an impression on consumers and be remembered by them (13/12/2007, T‑134/06, Pagesjaunes.com, EU:T:2007:387, § 54; 11/02/2015, T-395/12, Solid Floor, EU:T:2015:92, § 32; 05/02/2020, T‑44/19, TC Touring Club, EU:T:2020:31, § 102).

49. In the present case, the term ‘LOVE’ is well perceived in both signs and it is reinforced by the heart device of the contested sign. Bearing in mind the above considerations, it clearly dominates the overall impression created by the figurative marks in question, given that the graphic aspects, consisting of stylisation of their verbal elements, would be perceived as rather decorative and not as indicating the commercial origin of the goods and services at hand (15/12/2009, T-412/08, Trubion, EU:T:2009:507, § 45; 03/10/2019, T-500/18, MG Puma, EU:T:2019:721, § 33).

50. Visually, the signs share the letter sequence ‘LOVE’, which forms the single verbal element of the earlier mark and the larger part (five of the six letters) of the contested sign’s verbal element. The signs differ in the first letter ‘A’ of the contested sign and in the figurative aspects of both signs, all of them decorative and with less impact. However, even though the devices within the respective letter ‘O’ of the signs are different, namely a horizontal line versus a heart device, the signs do share the feature that they have a device within the letter ‘O’. In addition, the signs also share the characteristic that their last letters are in lowercase, with the difference that in the earlier mark it is only the letter ‘e’ and in the contested sign it concerns the letters ‘ve’.

51. In relation thereto, it must also be borne in mind that the average consumer must rely on his/her imperfect recollection of the marks, and there is no reason why he/she should pay greater attention to the differences between the signs at issue than to their common points (23/02/2010, T-11/09, Jack&Jones, EU:T:2010:47, § 29).

52. It follows that the signs are visually similar to an average degree.

53. Aurally, the pronunciation of the signs coincides in the sound of the common letters ‘LOVE’ and differs in the first letter ‘A’ of the contested sign. The figurative elements are irrelevant to the aural comparison (11/09/2014, T-536/12, Aroa, EU:T:2014:770, § 45).

54. The fact that the earlier mark is phonetically included in full in the contested sign already creates an aural similarity between them (26/01/2006, T-317/03, Variant, EU:T:2006:27, § 47; 06/10/2017, T‑139/16, Berg Outdoor, EU:T:2017:705, § 60; 22/05/2019, T‑837/17, SkyPrivate EU:T:2019:351, § 44). Moreover, in the present case, there is only one additional letter ‘A’, albeit at the beginning. Such letter can obviously not outweigh the shared sound resulting from the sequence ‘LOVE’ .

55. Therefore, the signs are aurally similar to a high degree.

56. Conceptually, the signs share the same concept of the term ‘LOVE’ (as defined in paragraph 41), reinforced by the heart device of the contested sign, whereas the horizontal device in the earlier mark does not have a concept.

57. It follows that the signs are conceptually, at least, similar to a high degree.

Existence of a link between the signs

58. The types of injury referred to in Article 8(5) EUTMR, where they occur, are the consequence of a certain degree of similarity between the marks at issue, by virtue of which the relevant section of the public makes a connection between those marks, that is to say, establishes a link between them. The existence of such a link in the mind of the relevant public between the mark applied for and the earlier mark is therefore an implied essential precondition for the application of Article 8(5) EUTMR (05/06/2018, T-111/16, The Rich Prada, EU:T:2018:328, § 29).

59. The existence of a link between the marks in conflict, as well as the existence of a serious risk that any of the infringements provided for in Article 8(5) EUTMR will be committed in the future, must be assessed globally, taking into account all factors relevant to each case, including, inter alia, the following criteria: (1) the degree of similarity between the marks in conflict; (2) the degree of proximity or differentiation between the goods or services, as well as the relevant public; (3) the strength of the earlier mark’s reputation; and (4) the strength of the distinctive character of the earlier mark, whether intrinsic or acquired through use (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 41, 68; 24/03/2011, C-552/09 P, TiMiKinderjoghurt, EU:C:2011:177, § 56; 05/06/2018, T-111/16, The Rich Prada, EU:T:2018:328, § 30).

a) The degree of similarity between the signs

60. Since the signs have been deemed visually similar to an average degree and aurally and conceptually similar to a high degree, they are overall similar, at the very least, and similar to an average degree.

61. According to case-law, the more similar the trade marks, the more likely it will be that the later sign will bring the earlier mark with a reputation to the mind of the relevant public (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 44). However, the fact that the marks are similar or identical is not sufficient for it to be concluded that there is a link between those marks (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 45).

b) The strength of the earlier mark’s reputation

62. In assessing the existence of a link between the marks in conflict, it may be necessary to take into account the strength of the earlier mark’s reputation (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 53). The greater the reputation of the earlier mark, the easier it can be that of an infringement (14/09/1999, C‑375/97, Chevy, EU:C:1999:408, § 30; 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 69; 18/06/2009, C-487/07, L’Oreal, EU:C:2009:378, § 44).

63. It has been established above that the earlier mark has, at least, an average degree of reputation in the European Union relation to ‘bracelets’.

c) The degree of the earlier mark’s distinctive character, whether inherent or acquired through use

64. The more distinctive the earlier mark, whether inherent or acquired through the use which has been made of it, the more likely it is that, confronted with a later identical or similar mark, the relevant public will call that earlier mark to mind (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 54).

65. The earlier mark has a higher than average degree of distinctive character as a result of its particularly impressive duration of use and extensive marketing and promotional efforts on the part of the opponent as well as due to its position amongst the most recognised pieces of jewellery in the European Union. Such acquired distinctive character clearly overshadows any possible reduced inherent distinctive character of the term ‘LOVE’ in relation to the goods at hand (see paragraphs 46-49).

d) The degree of closeness or similarity between the goods and services and the relevant public

66. The earlier ‘bracelets’ in Class 14 target mainly the public at large. Even though the ‘LOVE’ bracelets in question are an expensive luxurious product, they are not limited to an exclusive circle of customers. By contrast, they have been advertised and promoted on numerous websites targeting the public at large (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 35).

67. As to the contested goods in Class 14, they target both the public at large but also professionals, such as jewellers. Taking into account the nature of these goods, the level of attention of the relevant public will vary from average to high, also for the public at large, because the goods are offered in a very wide price range, some of them are not purchased on a regular basis and are generally bought through a salesperson (12/01/2006, T-147/03, Quantum, EU:T:2006:10, § 63; 09/02/2017, T-106/16, Ziro, EU:T:2017:67, § 20).

68. With regard to the retail services in Class 35 (related to the Class 14 goods), they are mainly directed at the public at large having an average level of attention (30/11/2015, T-718/14, W E / WE, EU:T:2015:916, § 29) and, additionally, at the manufacturers of the products and at any business intermediaries operating upstream of the final retail sale, as services enabling those economic operators to carry out the final marketing of the product (26/06/2014, T-372/11, Basic, EU:T:2014:585, § 29). The remaining contested services in Classes 35, 36, 40 and 42 (again entirely related to Class 14 goods) are professional services aimed at professionals with a high degree of attention.

69. Even where the earlier goods are directed at the public at large, whereas the goods and services bearing the contested sign are partially directed at the professional public, it remains the case that this professional public in the jewellery sector is also part of the public at large in the European Union that knows the reputed marks in this same sector; the persons targeted by the contested sign will also purchase or use the earlier goods as part of that public at large. Since the relevant public at large of the goods and services covered overlaps, this is an important factor in the assessment of the link (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 46-53; 29/03/2012, T-369/10, Beatle, EU:T:2012:177, § 53).

Class 14

70. As regards the degree of proximity or differentiation between the goods or services concerned, the Board finds that the contested goods in Class 14 are either identical or similar to the earlier ‘bracelets’ in the same class.

71. In particular, the contested ‘bracelets [jewellery, jewelry (Am)]’ are identical to the earlier goods, whereas ‘jewelry of yellow amber’ as a broader category include the earlier ‘bracelets’.

72. The contested ‘goods in precious metals or coated therewith, not included in other classes’ overlap with the earlier ‘bracelets’, since these can be coated with or made with precious metals. These goods are identical.

73. The contested ‘medaillons (jewellery); necklaces [jewellery]; pendants; earrings; rings [jewellery, jewelry (Am)]; chains [jewelry]; ivory jewelry; paste jewellery [costume jewelry (Am)]; amulets [jewellery, jewelry (Am)]; brooches [jewellery]; cuff links; tie-pins; ornamental pins; tie pins; hat jewellery; trinkets made of precious metals or precious stones (articles of jewellery); trinkets of silver (articles of jewellery); chain mesh purses of precious metals and precious stones’ are mainly articles of jewellery and to that regard they share a similar nature with the earlier ‘bracelets’. They can originate from the same producers, use the same distribution channels and target the same public. These goods are similar to an average degree.

74. The above applies to a large extent to the contested ‘works of art of precious metal’, which, due to their nature, may also share the same origin, distribution channels and relevant public as the earlier ‘bracelets’. Apart from the fact that both works of art and bracelets can be made of precious metal, some jewels or bracelets could be considered works of art and vice versa. These are thus also similar to an average degree.

75. The contested ‘jewellery boxes and containers made of precious metals or precious stones’ are objects designed to store jewellery properly (25/09/2018, T‑435/17, Hipanema, EU:T:2018:596, § 69). These include specific storing boxes and containers that are offered for sale separately from the ‘jewellery’. Both these boxes/containers and jewellery are made or can be made of the same material, namely precious metals or precious stones. They are usually sold in the same shops (jewellers), bought by the same consumers (those who buy jewellery) and they can be purchased together (28/04/2016, R 1382/2015-4, Bess / Boss, § 14).

76. The relevant public may believe that the specific storing boxes or containers concerned come from the same undertaking as the jewellery. It follows that there is an element of complementarity between jewellery boxes/containers and jewellery items, bracelets included, since the only reason for existence of these jewellery boxes/containers is to be used together with jewellery items and they will be offered together or separately by the same companies through the same distribution channels (08/11/2018, R 766/2017-5, Device of a cross / Device of a cross, § 36; 25/11/2015, R 3030/2014-4, Cortez / Corthay, § 19).

77. The contested ‘watches; clocks; clockworks; stopwatches; chronometers; chains, bands and bracelets for watches’ are also similar to an average degree to the earlier ‘bracelets’. The contested goods are often made of the same materials as the earlier bracelets, are often worn together and distributed through the same distribution channels. As to the contested ‘clock cases’, the arguments outlined in the previous paragraph apply (28/04/2016, R 1382/2015-4, Bess / Boss, § 14). ‘Clock cases’ are usually offered in the same retail outlets where clocks and also jewellery are sold. Insofar as ‘watches’ and ‘bracelets’ are often worn together, the relevant customers may assume the same commercial origin.

78. The remaining contested ‘alloys of precious metal; pearls for making jewelry; platinum [metal]; gold, unwrought or beaten; silver, unwrought or beaten; 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’ are closely related to the earlier ‘bracelets’ because these materials are used for the manufacturing of bracelets and therefore belong to the same jewellery sector. They are also similar to an average degree.

Classes 35, 36, 40 and 42

79. The Court has expressly ruled that retail services in Class 35 which concern the same goods as those claimed in the goods of the other mark are similar to an average degree (20/03/2018, T-390/16, Dontoro, EU:T:2018:156, § 32-33; 07/10/2015, T-365/14, Trecolore, EU:T:2015:763, § 34-35), mainly on account of their complementary character (19/12/2019, T-729/18, Lloyd, EU:T:2019:889, § 35-36; 24/09/2008, T-116/06, O Store, EU:T:2008:399, § 42-58). The relationship between the retail services relating to specific goods and the same goods is close in the sense that the goods are indispensable to the provision of the retailing and wholesale services, which are specifically provided when those goods are sold. Such services, which are provided with the aim of selling certain specific goods, would make no sense without those goods.

80. However, an average similarity can be found between retail services of certain goods and goods that are not only strictly identical to the goods subject of the retail (25/11/2020, T-309/19, Sadia, EU:T:2020:565, § 141) but also that are very similar (15/07/2015, T-352/14, Happy Time, EU:T:2015:491, § 28, 30). The Court has even confirmed that such an average similarity also exists when retailed goods are similar to an average degree and that, if the retailed goods are only weakly similar to the goods of the other mark, these services must be regarded as weakly similar to those goods (28/11/2019, T‑736/18, Bergsteiger, EU:T:2019:826, § 90-91).

81. It follows that the contested retail services in Class 35, all related to jewellery and watches, are similar to an average degree to the earlier ‘bracelets’.

82. The same logic applies by analogy to all remaining contested services in Classes 35, 36, 40 and 42 which are clearly related to jewellery and watches. As correctly reasoned by the Opposition Division, all the contested services in paragraph 1 are closely related to the jewellery sector and have a clear connection to jewellery in a broad sense but also to ‘bracelets’ in particular. The Board notes that the parties did no raise any arguments to the contrary. It follows that these contested services can be considered to be, at least, similar an average degree to the earlier ‘bracelets’ (25/11/2020, T-309/19, Sadia, EU:T:2020:565, § 143).

e) Conclusion on the existence of a link

83. For the reasons set out above, the Board takes the view that, due to the overall similarity between the signs and the entire reproduction of the earlier mark’s single verbal element ‘LOVE’ as part of the dominant verbal element of the contested sign, due to the, at least, average degree of reputation and the fact that the contested goods and services are identical, averagely similar or at least closely related, all of them linked to the jewellery sector, it is highly likely that an association could be made in the mind of the relevant public with the earlier mark which is reputed for ‘bracelets’ in Class 14.

Use which would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark

84. As regards the third part to the requirements listed in Article 8(5) EUTMR, three different types of risk should be analysed: firstly, the fact that the use of the trade mark applied for has no cause for detriment to the distinctive character of the earlier trade mark; second, adversely affecting the reputation of the earlier mark or, third, taking unfair advantage of the distinctive character or the reputation of the earlier trade mark (25/05/2005, T-67/04, Spa-Finders, EU:T:2005:179, § 43-53). Having regard to the wording of Article 8(5) EUTMR, the existence of one of the above three types of risk is sufficient for that provision to apply.

85. The opponent is not required to demonstrate actual and present harm to its mark. It must however adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment (25/05/2005, T-67/04, Spa-Finders, EU:T:2005:179, § 40).

86. The concept of ‘unfair advantage of the distinctive character or the repute of the mark’ ‒ also referred to as ‘parasitism’ and ‘free-riding’ ‒ is not linked to the damage suffered by the mark, but to the advantage gained by the third party from the use of the identical or similar sign. That concept includes, in particular, cases in which, as a result of a transfer of the image of the mark or of the characteristics projected by it towards the goods or services designated by the identical or similar sign, there is obvious exploitation of the mark with a reputation (18/06/2009, C-487/07, L’Oréal, EU:C:2009:378, § 41; 28/05/2020, T-677/18, Twins Cookie Sandwich, EU:T:2020:229, § 119), with the result that the marketing of those goods or services is made easier by that association with the earlier reputed mark (22/03/2007, T-215/03, Vips, EU:T:2007:93, § 40).

87. In the present case, the opponent argued in substance before the Opposition Division that the luxurious image of the earlier mark would inevitably be transferred to the contested goods and services if they were marketed under the contested sign. Therefore, they would reach the market easier and the applicant would take an unfair advantage of the success of the earlier mark. The contested sign would be free-riding on the investment made over many years by the opponent in promoting and building-up goodwill for its earlier mark. The applicant would exploit without paying any financial compensation, the marketing effort made by the opponent in order to create and maintain its trade mark’s reputation.

88. As the evidence shows, the earlier mark has acquired, at least, an average degree of reputation in relation to ‘bracelets’ which are associated with an image of exclusivity and luxury. Therefore, it appears to be inevitable that the image of the earlier mark will be transferred to the applicant’s goods and services, all of them broadly related to the jewellery sector, with the result that the contested sign will be unfairly ‘boosted’ by virtue of being associated with the earlier mark.

89. These characteristics are desired for the contested goods and services since exclusivity and luxury are closely associated with the jewellery sector including those under paragraph 1 above. By using the contested sign, the applicant would benefit from the power of attraction, the reputation and the image of the earlier mark and exploit the opponent’s extensive promotional and marketing efforts it expended in order to create and maintain the earlier mark’s reputation. The image transfer would enable the applicant to introduce its own trade mark on the European Union market without incurring any great risk and associated advertising costs of launching a new trade mark (29/03/2012, T‑369/10, Beatle, EU:T:2012:177, § 72-73). This creates an advantage taken unfairly of the distinctive character or the repute of the earlier mark.

90. To the extent that the unfair advantage claim has been upheld for all the goods and services subject to the appeal, there is no need to assess the risk of the remaining injuries in relation to these goods and services.

Due cause

91. As regards the last condition of the application of Article 8(5) EUTMR, namely that the use of the sign applied for should be without due cause, the burden of proof lies with the applicant (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 39). Indeed, where the proprietor of the earlier mark has shown that there is either actual and present injury to its mark or, failing that, a serious risk that such injury will occur in the future, it is for the proprietor of the later mark to establish that there is due cause for the use of that mark (07/12/2010, T-59/08, Nimei La Perla Modern Classic, EU:T:2010:500, § 34).

92. In that regard, whether there is due cause which makes it possible to use a mark which adversely affects a mark with a reputation is a matter which must be interpreted restrictively (09/09/2020, T-669/19, Primus, EU:T:2020:408, § 21; 16/03/2016, T‑201/14, Spa Wisdom, EU:T:2016:148, § 65).

93. The applicant did not claim any particular due cause. It merely argued that the element ‘ALO’ was used as a reference to the three first letters of the first name of the applicant’s owner, followed by the invented letter combination ‘ve’. It has been establish in case-law that the EUTMR does not provide any unconditional right to register one’s own name as an EUTM (02/12/2015, T-522/13, Kenzo Estate, EU:T:2015:922, § 59). Neither is the use of an acronym a convincing reason to justify due cause (10/05/2007, T‑47/06, Nasdaq, EU:T:2007:131, § 63-64). It furthermore reasoned that it had a series of trade marks consisting of the element ‘ALO’ and an additional descriptive word. As indicated above (see paragraph 45 above), however, this is not the case at hand because the contested sign does not follow the same structure.

94. Consequently, the applicant’s arguments are not sufficient to justify due cause for the use of the contested sign for the purposes of Article 8(5) EUTMR. Apart from that, the Board cannot envisage any justified reason for the applicant to use the contested sign. In the absence of any indications to the contrary, it must be assumed that no due cause for the use of the contested sign exists in relation to the contested goods and services subject to the appeal.

Conclusion

95. Since all the conditions of Article 8(5) EUTMR are fulfilled with regard to the contested goods and services subject to the appeal, the opposition must be upheld for these goods and services. As a result, the appeal is to be dismissed in its entirety.

Costs

96. Pursuant to Article 109(1) EUTMR and Article 18 EUTMIR, the applicant, as the losing party, must bear the opponent’s costs of the appeal proceedings. These consist of the opponent’s costs of professional representation of EUR 550.

97. As to the opposition proceedings, the Opposition Division ordered each party to bear its own costs. This decision is unaffected.

Order

On these grounds,

THE BOARD

hereby:

1. Dismisses the appeal;

2. Orders the applicant to bear the opponent’s costs of the appeal proceedings in the amount of EUR 550.

Signed V. Melgar

Signed R. Ocquet

Signed S. Rizzo

Registrar: Signed H.Dijkema