OPPOSITION No B 2 988 940

Amor GmbH, Jahnstr. 37, 63179 Obertshausen, Germany (opponent), represented by Taylor Wessing, Thurn-und-Taxis-Platz 6, 60313 Frankfurt am Main, Germany (professional representative)

a g a i n s t

Paola Deolmi, Via Raoul Grisendi 2, 42027 Montecchio Emilia, Italy (applicant).

On 21/11/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 988 940 is upheld for all the contested goods and services.

2. European Union trade mark application No 17 241 621 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 241 621, ‘A.more’, namely against all the goods and services in Classes 14, 20 and 42. The opposition is based on, inter alia, German trade mark registration No 30 133 545, ‘AMORE’. 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s German trade mark registration No 30 133 545 because it is considered more similar to the contested mark than the other earlier marks invoked.

1. The goods

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

Class 14: Jewellery, horological instruments.

The contested goods and services are the following:

Class 14: Jewellery; Jewellery boxes; Body jewellery.

Class 20: Jewellery organizer displays.

Class 42: Jewellery design services.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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.

Contested goods in Class 14

Jewellery is identically contained in both lists of goods.

The contested body jewellery is included in the broad category of the opponent’s jewellery. Therefore, they are identical.

The contested jewellery boxes are similar to the opponent’s jewellery as they usually coincide in producer, relevant public and distribution channels. Moreover, they are complementary.

Contested goods in Class 20

The contested jewellery organizer displays are cases meant to present and store pieces of jewellery and are similar to a low degree to the opponent’s jewellery as they usually coincide in producer, relevant public and distribution channels. It is frequent in the relevant market, the producers of jewellery to provide the retailers with the jewellery displays in order to showcase and store their products according to their specifications.

Contested services in Class 42

The contested jewellery design services are similar to a low degree to the opponent’s jewellery as they coincide in the manufacturer/provider and relevant public. The producers of jewellery often offer jewellery design services to their end consumer in order to personalise the items they wish to purchase.

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 found to be identical or similar to a low degree are directed at the public at large and at professionals.

As regards the degree of attention, 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 goods such as jewellery, precious stones, etc. In many cases the goods will be luxury items or will be intended as gifts. The same applies for the contested services as they are specialised design services of jewellery which can be of great value. In relation to other goods (for example, jewellery boxes which may be of little value), the degree of attention may be average. Therefore, the degree of attention may vary between average and high.

3. The signs

AMORE	A.more
Earlier trade mark	Contested sign

The relevant territory is Germany.

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).

Both trade marks are word marks. Therefore, it must be noted that the protection offered by the registration of word marks applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (judgment of 22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43). Consequently, it is irrelevant whether the word mark is depicted in lower or upper case letters.

The element ‘AMORE’ of the earlier mark will be associated by part of the relevant public with the notion of ‘love’ as ‘Amor’ in German refers to the Roman god of love, Cupid (Gott der Liebe, source: https://www.duden.de/rechtschreibung/Amor). Moreover, the relevant public is familiar with the expression ‘con amore’ (meaning with love, italienisch, aus: con =mit (< lateinisch cum) und amore = Liebe < lateinisch amor, source: https://www.duden.de/rechtschreibung/con_amore). This verbal element is not descriptive, allusive in a way that materially affects the distinctiveness or otherwise weak/non-distinctive in relation to the goods at issue.

As regards the contested mark, the Opposition Division considers that although it is not excluded that a part of the public may perceive it as composed of the English indefinite article ‘a’ and the comparative of ‘much’ or ‘many’, ‘more’ or not associate it with a meaning, a significant part of the public will, despite the dot, perceive in the contested sign the same meaning as in the earlier mark (which, as in the earlier mark, is distinctive with regard to the relevant goods and services). The Opposition Division deems it appropriate to proceed with the examination on the basis of this part of the public for which also, on the basis of the above considerations, the signs will be perceived as conceptually identical.

Visually, the only difference is that the contested mark contains a dot between the first letter ‘A’ and the second letter ‘m’. Therefore, the signs are similar to a high degree.

Aurally, the dot in the contested sign will not lead to an audible difference and, therefore, the signs will be pronounced identically.

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

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

In the present case, the goods and services are partly identical and partly similar to a low degree.

The only difference between the conflicting signs is that the contested mark contains a dot between the first letter ‘A’ and the second letter ‘m’. The signs are found to be visually similar to a high degree and aurally and conceptually identical. The earlier mark has a normal degree of distinctiveness for the relevant public.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). In the present case, the degree of attention of the relevant public was considered to vary between average and high; however, even highly attentive consumers need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

Therefore, the Opposition Division is of the view that the dot in the contested sign is not sufficient to outweigh the coincidences between the conflicting signs in all three aspects of the comparison. Therefore, it is concluded that the relevant public could believe that the goods found to be identical come from the same undertaking or economically linked undertakings.

As regards the goods and services that are similar to only a low degree, it must be kept in mind that 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, :1998:4). In the present case, the high degree of similarity between the signs is clearly sufficient to offset the low degree of similarity between the goods and services. Therefore, the opposition is successful, and the contested trade mark must also be rejected in relation to those goods and services.

Considering all the above, there is a likelihood of confusion for a relevant part of the public in Germany. It is sufficient if a relevant part of the relevant public of the goods and services at issue may be confused as to the origin of the goods and services. Therefore, there is no need to establish that all actual or potential consumers of the relevant goods and services are likely to be confused.

Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 30 133 545. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the earlier German trade mark registration No 30 133 545 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Denitza STOYANOVA-VALCHANOVA

Aliki SPANDAGOU

Martin EBERL

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.