OPPOSITION Nо B 3 054 178

 

Cameleon, Rue Buchholtz 8-10, 1050 Ixelles, Belgium (opponent), represented by Gevers, Brussels Airport Business Park Holidaystraat, 5, 1831 Diegem, Belgium (professional representative) 

 

a g a i n s t

 

Jewelpops Inc., 63 Tacoma Drive, Suite 101, Dartmouth B2W 3E7, Canada (applicant), represented by Heuking Kühn Lüer Wojtek - Partnerschaft von Rechtsanwälten und SteuerberaternmbB, Neuer Wall 63, 20354 Hamburg, Germany (professional representative).

On 22/01/2021, the Opposition Division takes the following

 

 

DECISION:

 

 

1.

Opposition No B 3 054 178 is partially upheld, namely for the following contested goods: Class 14: Jewellery; imitation jewellery; bangles; brooches; chains; necklaces; pendants; earrings; cuff-links; medallions; bracelets; goods in precious metals or coated therewith, namely, bangles, brooches, chains, necklaces, pendants, earrings, cuff-links, medallions, bracelets.

 

2.	European Union trade mark application No 17 768 821 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 (Class 14) of European Union trade mark application No 17 768 821 ‘KAMELEON’ (word mark). The opposition is based on, inter alia, Benelux trade mark registration No 790 976, ‘CAMELEON’ (word mark). The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK

In the document submitted together with the opposition notice that opponent claimed that the opposition is ‘based on earlier registered mark and well-known mark’ [sic]. No further explanations as regards the well-known mark, such as its representation or territory are included. Therefore, the Opposition Division understands this wording as a reference to the marks, which are indicated in the opposition notice. According to the Office’s practice, if the opponent invokes a registered trade mark and claims the same mark as a well-known mark, this will in general be taken as an additional claim that its registered mark has acquired a high degree of distinctiveness by use. Therefore, this indication in the notice of opposition is to be interpreted as a claim of enhanced distinctiveness of the registered mark and not as a separate earlier right invoked according to Article 8(2)(c) in conjunction with Article 8(1)(b) EUTMR.

In any case, and for the sake of completeness, it is noted that, if the opposition is based on a well-known mark within the meaning of Article 8(2)(c) EUTMR, the opposing party must submit evidence showing that this mark is well known in the relevant territory — Rule 19(2)(b) EUTMIR. In the present case, the notice of opposition was not accompanied by any evidence as regards the said earlier trade mark. Neither did the opponent submit the relevant evidence within the time limit given to him in order to substantiate the earlier trade marks on which the opposition is based.

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 Benelux trade mark registration No 790 976.

 

a) The goods and services

 

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

Class 24: Textiles and textile goods not included in other classes; bed and table covers.

Class 25: Clothing, footwear, headgear.

Class 35: Advertising; business management; business administration; clerical services; retail, retail by electronic means and by mail order, of furniture and decorative items, clothing and fashion accessories, textiles, footwear, leather goods, bags, cosmetics, glasses, watches, condiments, candles, household linen, household goods and for the kitchen, lighting apparatus. 

The contested goods are the following:

 

Class 14: Jewellery; imitation jewellery; semi-precious and precious stones; bangles; brooches; chains; necklaces; pendants; earrings; cuff-links; medallions; bracelets; precious metals and their alloys and goods in precious metals or coated therewith, namely, bangles, brooches, chains, necklaces, pendants, earrings, cuff-links, medallions, bracelets; precious metals, unwrought or semi-wrought; gold, unwrought or beaten; palladium; platinum [metal]; rhodium; ruthenium; silver thread; silver, unwrought or beaten; jets, unwrought or semi-wrought; gold thread. 

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

 

The term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

 

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

Retail services concerning the sale of specific goods are similar to an average degree to these specific goods. Although the nature, purpose and method of use of these goods and services are not the same, they are similar because they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

The contested bracelets; bangles; earrings; necklaces; pendants; cuff-links; brooches; medallions; imitation jewellery; chains; jewellery; goods in precious metals or coated therewith, namely, bangles, brooches, chains, necklaces, pendants, earrings, cuff-links, medallions, bracelets are identical to fashion accessories as the latter constitute a broader category that includes the former. Therefore, the contested goods are similar to an average degree to the opponent's retail by electronic means and by mail order, of fashion accessories because they are complementary, they coincide in distribution channels and in end user.

The rest of the contested goods, namely, semi-precious and precious stones; precious metals and their alloys; precious metals, unwrought or semi-wrought; gold, unwrought or beaten; palladium; platinum [metal]; rhodium; ruthenium; silver thread; silver, unwrought or beaten; jets, unwrought or semi-wrought; gold thread are dissimilar to the goods and services on which the opposition is based on, as they have no points in common, the opponent’s goods in Class 24 being mainly textile products, in Class 25 items of clothing, footwear and headgear and the opponent’s services in Class 35 being services of business management, advertising, and clerical and retail services.

More precisely, contrary to the contested goods that consist of fashion accessories and, more precisely, various items of jewellery, the above listed goods cannot be found similar to the opponent’s retail by electronic means and by mail order, of fashion accessories, as they are raw materials that have nothing in common with the finished goods (fashion accessories). These goods are not commonly retailed together and target different publics.

In most cases, the mere fact that one product is used for the manufacture of another will not be sufficient in itself to show that the goods are similar, as their nature, purpose, relevant public and distribution channels may be quite distinct (13/04/2011, T-98/09, T Tumesa Tubos del Mediterráneo S.A., EU:T:2011:167, § 49-51). According to case-law, the raw materials subjected to a transformation process are essentially different from the finished products that incorporate, or are covered by, those raw materials, in terms of nature, aim and intended purpose (03/05/2012, T-270/10, Karra, EU:T:2012:212, § 53). Furthermore, these goods are not complementary since one is manufactured with the other, and raw material is in general intended for use in industry rather than for direct purchase by the final consumer (09/04/2014, T-288/12, Zytel, EU:T:2014:196, § 39-43).

For the aforementioned reasons, the rest of the contested goods are dissimilar to all the goods and services upon which the opposition is based.

 

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 and services found to be similar are directed at the public at large.

The degree of attention may vary from average to high. The degree of attention would be higher for the part of the products in question that consist of luxury items that are more costly than ordinary fashion accessories.

  

c) The signs

 

CAMELEON	KAMELEON
Earlier trade mark	Contested sign

 

 The relevant territory consists of the Benelux countries.

 

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 word mark consists of the word ‘CAMELEON’. This verbal element will be associated with a meaning in all the three official languages of the relevant territory., This word is almost identical to the French word ‘Caméléon’ meaning ‘chameleon’ (= type of reptile that can change colour according to its surroundings). In Dutch, this word will be also understood as it is very close, spelling-wise, to the equivalent Dutch word ‘kameleon’, which also means ‘chameleon’. Lastly, the same applies to German-speakers, who are likely to interpret the earlier mark as a version of the equivalent German word ‘Chamäleon’. Bearing in mind the nature of the goods and services upon which the opposition is based, this element is distinctive for those goods and services.

The contested word mark is composed of the verbal element ‘KAMELEON’. This element will also be understood by the French, Dutch and German-speaking public in the relevant territory. More precisely, it is identical to the Dutch word ‘kameleon’ and for the French and the German-speaking part of the public it will evoke the equivalent words in those languages respectively. This element is equally distinctive for the contested goods as it is not related to their nature.

 

Visually, the signs coincide in the letters ‘‘⃰AMELEON’. However, they differ in their first letter which is ‘C’ in the earlier mark and ‘K’ in the contested one. Seeing as this difference is confined to one single letter, the signs are visually highly similar.

 

Aurally,  the signs will be pronounced the same, as the ‘K’/C’ in the beginning of each sign will produce the same sound. Therefore, the signs are aurally identical.

  

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as ‘chameleon’, 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 claimed in their observations that the earlier trade mark is a well-known mark, which might be perceived also as a claim of enhanced distinctiveness. The Opponent did not, however, file any evidence in order to prove such a claim.

 

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 and services 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

  

As established above, some of the relevant goods and services are similar, while the rest of the contested goods are dissimilar.

When it comes to the relevant public, it is the public at large. The degree of attention is deemed to vary from average to high.

As for the signs, they coincide in seven letters, out of eight, with only their first letter being different. In addition, they are the same length. Thus these coincidences contribute to their high visual similarity. Their first letters, ‘K’ and ‘C’, will be pronounced identically and they are also conceptually identical.

  

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).

 

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).

 

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Benelux trade mark registration No 790 976, ‘CAMELEON’ (word mark).

 

It follows from the above that the contested trade mark must be rejected for the goods found to be similar 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.

 

The opponent has also based its opposition on the earlier Benelux trade mark registration No 455 387, ‘CAMELEON’ (word mark).

  

The other earlier right invoked by the opponent covers  partly the same goods as already compared above, namely the goods in Class 24 and 25, in addition to goods in Class 18, namely leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins; trunks and suitcases; umbrellas, parasols and sticks; whips, harness and saddlery, which are clearly different to those applied for in the contested trade mark. That is because the contested goods, consisting of jewellery, precious metals and precious stones do not coincide in nature, purpose or method of use with the ones the opposition is based on. Furthermore, they are not distributed via the same market channels nor are they produced by the same type of companies, as they are completely different business sectors. Finally, they are not in competition or complementary to each other. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.

 

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

 

 

Renata COTTRELL

Birgit CESSY FILTENBORG

Lucinda CARNEY

 

 

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.