OPPOSITION No B 3 038 315

Montblanc-Simplo GmbH, Hellgrundweg 100, 22525 Hamburg, Germany (opponent), represented by Cabinet Lavoix, 62, rue de Bonnel, 69448 Lyon Cédex 03, 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 15/11/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 038 315 is partially upheld, namely for the following contested goods:

Class 14: Jewellery; precious stones; chronometric instruments; semi precious stones; horological instruments.

Class 18: Leather and imitations of leather; animal skins and hides; luggage, bags, wallets and other carriers; baby backpacks; baby carriers [slings or harnesses]; baby carriers worn on the body; baby carrying bags; back frames for carrying children; backpacks for carrying babies; beauty cases; children's shoulder bags; diaper bags; music bags; music cases; nappy bags; pouch baby carriers; reins for guiding children; school backpacks; school bags; school book bags; school knapsacks; school satchels; schoolbags; shoe bags; toilet bags; toiletry bags; trunks and suitcases; backpacks; briefcases and attaché cases; business cases; carrying cases; cases for keys; credit card cases; flight bags; garment bags; hand bags; saddlery; harnesses; collars of animals; animal leashes.

2. European Union trade mark application No 17 305 707 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 305 707 for the word mark ‘LA BOHÈME’. The opposition is based on European Union trade mark registration No 12 722 898 for the word mark ‘BOHEME’. 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.

a) The goods

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

Class 14: Jewellery; cuff links; tie clips; rings (jewellery); bracelets (jewellery); earrings; necklaces (jewellery); brooches (jewellery); key rings of precious metal; watches, chronometers; clocks; watch movements; watch straps; watch bracelets; boxes of precious metal for watches and jewelry.

Class 18: Leather and imitation leather, handbags, travelling bags, rucksacks, garment bags for travel, traveling sets (leatherware), bags for sports, wheeled bags, wallets, purses, name cards cases, briefcases, attaché-cases, key holders (leatherware); travelling trunks; vanity cases (not fitted); evening purses (handbags); straps; boxes of leather or leather board, trunks and suitcases.

The contested goods are the following:

Class 14: Precious metals; alloys of precious metal; jewellery; precious stones; chronometric instruments; semi precious stones; horological instruments.

Class 18: Leather and imitations of leather; animal skins and hides; luggage, bags, wallets and other carriers; baby backpacks; baby carriers [slings or harnesses]; baby carriers worn on the body; baby carrying bags; back frames for carrying children; backpacks for carrying babies; beauty cases; children's shoulder bags; diaper bags; music bags; music cases; nappy bags; pouch baby carriers; reins for guiding children; school backpacks; school bags; school book bags; school knapsacks; school satchels; schoolbags; shoe bags; toilet bags; toiletry bags; trunks and suitcases; backpacks; briefcases and attache cases; business cases; carrying cases; cases for keys; credit card cases; flight bags; garment bags; hand bags; umbrellas and parasols; walking sticks; saddlery; whips; harnesses; clothing for animals; collars of animals; animal leashes.

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 chronometric instruments include, as a broader category the opponent’s chronometers. The contested horological instruments include, as a broader category, the opponent’s clocks. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested precious stones and semi precious stones are raw materials used in the manufacture of jewellery. In principle, the fact that one product is used in the manufacture of another is not sufficient to conclude that the goods concerned are similar. However, precious stones or semi-precious stones can be obtained in jewellery shops independently of the final good. Therefore, the contested goods and the opponent’s jewellery may coincide in producers and distribution channels. Moreover, they target the same consumers. Consequently, the goods are considered to be similar.

The same does not apply, however, to the remaining contested precious metals and alloys of precious metal. As mentioned above, the mere fact that the contested goods as raw materials are used for the manufacture of, inter alia, the opponent’s goods in Class 14 such as, rings (jewellery); bracelets (jewellery); earrings or necklaces (jewellery) is not sufficient in itself to find a similarity between them. They have a different nature (raw or semi-finished materials versus finished goods), purpose and method of use. They are not in competition or complementary thereto. Furthermore, they are directed at different publics (alloys of precious metals; precious metals at the professionals and the opponent’s goods at the general public) and do not usually share the same distribution channels. They are, therefore, found dissimilar.

The contested precious metals and alloys of precious metal are also dissimilar to the opponent’s goods in class 18. In both cases their nature is dissimilar (as seen above, the former are leather and bags for different purposes whereas the latter are metallic raw materials). Their method of use is different, their commercial origin and channels of trade have nothing in common and they are neither complementary nor in competition with each other.

Contested goods in Class 18

Leather and imitations of leather; wallets; beauty cases; trunks and suitcases; briefcases and attaché cases; business cases; hand bags are identically contained in both lists of goods (including synonyms).

The contested luggage, bags and other carriers include, as broader categories, or overlap with, the opponent’s travelling bags. The contested garment bags include, as a broader category, the opponent’s garment bags for travel. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested cases for keys are highly similar to the opponent’s key holders since they have the same nature and purpose. They usually coincide in producer, relevant public, distribution channels and method of use.

The contested animal skins and hides are similar to the opponent’s leather as they have the same purpose. They usually coincide in producer and distribution channels. Furthermore they are in competition.

The baby backpacks; baby carriers [slings or harnesses]; baby carriers worn on the body; baby carrying bags; back frames for carrying children; backpacks for carrying babies; pouch baby carriers are all goods for carrying children. They are considered at least similar to the opponent’s rucksacks as they have the same method of use. They may coincide in producer and distribution channels.

The contested children's shoulder bags; diaper bags; music bags; nappy bags; school backpacks; school bags; school book bags; school knapsacks; school satchels; schoolbags; shoe bags; toilet bags; toiletry bags; backpacks; flight bags are all goods for carrying different items. They are considered at least similar to the opponent’s rucksacks as they have the same purpose of carrying items. Moreover, they may coincide in producer and distribution channels.

The contested music cases; carrying cases are similar to the opponent’s trunks as they have the same purpose. They usually coincide in producer, relevant public and distribution channels.

The contested credit card cases are at least similar to the opponent’s name cards cases since they may coincide in producer, method of use, relevant public and distribution channels.

The contested reins for guiding children; saddlery; harnesses; collars of animals and animal leashes are similar to the opponent’s straps which are strips of leather, cloth, or other flexible material, often with a buckle, used to fasten, secure, or carry something or to hold onto something. These goods may have the same nature and may coincide in producer and distribution channels.

The rest of the contested goods, namely umbrellas and parasols; walking sticks; whips; clothing for animals are goods for protection from rain or sun, articles for walking aid, equipment for riding horses or articles for pets and are dissimilar to the opponent’s goods in classes 14 and 18. The goods under comparison differ significantly in their natures and purposes. They target a different public via different distribution channels. They are neither in competition, nor complementary to each other. Even though some of the contested goods are made of leather, the Opposition Division considers that it is not sufficient for finding them similar to the opponent’s goods. Furthermore, their origin of production is different.

b) 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 various degrees are directed at the public at large and, in the case of precious or semi-precious stones in Class 14 and leather and imitations of leather in Class 18, also at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

As regards precious and semi-precious stones, 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.

c) The signs

BOHEME	LA BOHÈME
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The element ‘BOHEME’ of the earlier mark and the element ‘BOHÈME’ in the contested sign will be associated with the same meaning in certain territories, for example in those countries where Spanish is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public.

The earlier mark ‘BOHEME’ does not exist as such in Spanish, however, due to its resemblance to the Spanish word “bohemio/a”, will be associated with someone who deviates from social norms and conventions such as that attributed to artists. As this element has no clear meaning in relation to the goods in question, it is distinctive to an average degree for the relevant public.

The first element ‘LA’ of the contested mark will be understood as the Spanish female definite article in singular. It will be perceived as fulfilling the purpose of introducing the following word ‘BOHÈME’ and not as an indicator of origin. This element is, therefore, of limited distinctiveness. The second element ’BOHÈME’ will be associated with the same concept as explained above as regards the earlier mark and, thus, has a normal degree of distinctiveness. Moreover, a part of the public will associate the whole mark ‘LA BOHÈME’ with the Italian opera of Giacomo Puccini, also having a normal distinctiveness due to the lack of connection to the relevant goods.

Visually, the signs coincide in ‘BOHEME’. However, they differ in the element ‘LA’ having a limited distinctiveness and an accent upon the letter ‘E’ of the element ‘BOHÈME’ in the contested sign.

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the syllables /BO-HE-ME/, present identically in both signs, despite the accent upon the first letter È in the contested sign. The pronunciation differs in the syllable ‘LA’ at the beginning of the contested sign which correspond to an element of limited distinctiveness.

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Irrespective of whether the element ‘LA’ appears in the contested sign, as both marks will be perceived as someone who deviates from social norms and conventions such as that attributed to artists, the signs are conceptually identical.

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

d) 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 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.

e) Global assessment, other arguments and conclusion

A likelihood of confusion (including a likelihood of association) 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.

The contested goods are identical and similar to various degrees to the opponent’s goods. They are directed at the public at large and at professionals. The level of attention is considered to vary from average to high. The earlier mark has a normal degree of distinctiveness.

The marks are visually and aurally similar to a high degree and conceptually identical, since the earlier mark is included in the contested sign with the only difference of a definitive article before the common element and an accent in one letter in the contested sign.

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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to various degrees to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

COSTS

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

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

The Opposition Division

Manuela RUSEVA

Victoria DAFAUCE MENENDEZ

Vita VORONECKAITE

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.