OPPOSITION No B 2 998 105

Richemont International S.A., Route des Biches 10, 1752 Villars-sur-Glâne (Fribourg), Switzerland (opponent), represented by Cabinet Germain & Maureau, 12, rue Boileau, 69006 Lyon, France (professional representative)

a g a i n s t

S. Malhotra & CO. AG, Haldenstrasse 5, 6340 Baar, Switzerland (applicant), represented by Sonia del Valle Valiente, C/ Miguel Angel Cantero Oliva, 5, 53, 28660 Boadilla del Monte (Madrid), Spain (professional representative).

On 13/09/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 998 105 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 102 419 ‘ALTISSIMO’, namely against all the goods in Class 14. The opposition is based on international trade mark registration No 2 998 105 designating Estonia, Germany, Finland, Belgium, Portugal, Bulgaria, Denmark, Lithuania, Luxembourg, Latvia, Croatia, Italy, France, Hungary, Spain, Sweden, Austria, Slovenia, Czech Republic, Slovakia, United Kingdom, Poland, Romania and Netherlands, ‘ALTIPLANO’. The opponent invoked 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.

1. The goods

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

Class 14: Chronometers, watches and clocks.

The contested goods are the following:

Class 14: Precious metals; Alloys of precious metal; Jewellery; Precious stones; Chronometric instruments; semi precious stones; Horological instruments.

Some of the contested goods are identical or similar to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods assumed to be identical are directed at the public at large as well as at business customers with specific professional knowledge or expertise in jewellery and/or gemmology.

In its decision of 09/12/2010, R 900/2010‑1, Leo Marco (fig.) / LEO, § 22, the Board held that consumers generally put a certain amount of thought into the selection of these goods. In many cases the goods will be luxury items or will be intended as gifts. A relatively high degree of attention on the part of the consumer may be assumed.

3. The signs

ALTIPLANO	ALTISSIMO
Earlier trade mark	Contested sign

The relevant territory is Estonia, Germany, Finland, Belgium, Portugal, Bulgaria, Denmark, Lithuania, Luxembourg, Latvia, Croatia, Italy, France, Hungary, Spain, Sweden, Austria, Slovenia, Czech Republic, Slovakia, United Kingdom, Poland, Romania and Netherlands.

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 earlier mark is the word ‘ALTIPLANO’ and the contested sign is the word ‘ALTISSIMO’.

The element ‘ALTIPLANO’ of the earlier mark designates ‘the high tableland of central South America ‘high plain’ (information extracted from Oxford English Dictionary online on 06/09/2018 at https://en.oxforddictionaries.com/definition/altiplano) and will be understood as such at least by the public speaking Portuguese, Spanish and English.

The element ‘ALTISSIMO’ of the contested sign will be understood as ‘very high’ or ‘God’ by the public which speaks Italian, Portuguese and Spanish, due to the closeness of the word to its equivalent in these languages (altisimo).

Both word signs are unrelated to the relevant goods and are, therefore, distinctive.

Conceptually, as the signs will be associated with a dissimilar meaning by some parts of the public, the signs are conceptually not similar for the Italian-, Portuguese- and Spanish-speaking part of the public.

For the rest of the public, neither of the signs has a meaning. In the absence of any meaningful elements, the conceptual comparison does not influence the assessment of similarity of the marks.

Visually and aurally, the signs coincide in the letters/sounds ‘ALTI****O’. They differ in the letters/sounds ‘PLAN’ of the earlier mark and ‘SSIM’ of the contested sign. Both signs are made up of the same number of letters and coincide in five out of nine letters, their first four and their last one.

However, the General Court has held that the same number of letters in two marks is not, as such, of any particular significance for the relevant public, even for a specialised public. Since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar. In addition, the public is not, in general, aware of the exact number of letters in a word mark and, consequently, will not notice, in the majority of cases, that two conflicting marks have the same number of letters (25/03/2009, T‑402/07, ARCOL / CAPOL, EU:T:2009:85, § 81-82; 04/03/2010, C‑193/09 P, ARCOL / CAPOL, EU:C:2010:121).

Therefore, the signs are visually and aurally, similar to a low degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The Opposition Division considers that the goods are identical. Nevertheless, other issues are of paramount relevance in the present assessment of the likelihood of confusion.

It cannot be denied that both signs are word marks made up of a single word of the same number of letters and that their coincidence is at the beginning, the part that first catches the attention. However, the marks are visually and aurally similar only to a low degree and conceptually, either not similar or this aspect has no influence. Furthermore, they target the public at large and professionals, who will have a relatively high degree of attention. Finally, the earlier mark has only a normal degree of distinctiveness.

The different elements are clearly perceptible and, for a public with a more than average degree of attention, they are sufficient to differentiate the marks. When considered as a whole, the differences are sufficient to counteract the similarities between the marks.

Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Michal KRUK

Loreto URRACA LUQUE

Keeva DOHERTY

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.