OPPOSITION Nо B 3 053 325

 

Anonimo S.A., 24, Rue Astrid, 1143 Luxembourg, Luxembourg (opponent), represented by Office Freylinger S.A., 234, route d'Arlon B.P. 48, 8001 Strassen, Luxembourg (professional representative) 

 

a g a i n s t

 

Dadonautica SRL, P.zza Ammiraglio D'Azeglio, 5, 55049 Viareggio, Italy (applicant), represented by Italbrevetti S.R.L., Via Salvo D'Acquisto, 40/n, 56025 Pontedera (pi), Italy (professional representative).

On 26/01/2021, the Opposition Division takes the following

 

 

DECISION: 

 

1.	Opposition No B 3 053 325 is upheld for all the contested goods.

 

2.	European Union trade mark application No 17 899 001 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 of European Union trade mark application No 17 899 001 DINOZEI (word mark), namely all the goods in Class 14. The opposition is based on EUTM registration No 17 895 697, DINO ZEI (word mark). The opponent invoked  Article 8(1)(a) EUTMR and 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: Precious metals; Alloys of precious metal; Semi-precious stones; Jewellery; Precious stones; Chronometric apparatus and instruments; Watches; Watch hands; Watch cases [parts of watches]; Watch bands; Watch fobs; Watch dials; Watch chains; Chronographs [watches]; Cases for watches [presentation]; Watch crowns; Presentation boxes for watches; Watch clasps; Automatic watches; Jewellery boxes and watch boxes; Wristwatches; Divers' watches; Sports watches; Silver watches; Watches made of gold; Platinum watches; Dress watches; Mechanical watches; Women's watches; Watch movements; Oscillators for watches; Watch winders; Watch springs; Watch glasses; Buckles for watchstraps; Watchstraps made of leather; Watch straps made of metal or leather or plastic; Watch straps of plastic; Clock cases; Chronographs for use as watches; Watches containing a game function; Watches made of precious metals or coated therewith.

 

The contested goods are the following:

 

Class 14: Barrels [clock- and watchmaking]; Pendulums [clock- and watchmaking]; Watch bands; Clock cases; Watch cases [parts of watches]; Watch chains; Chronographs [watches]; Chronometers; Stopwatches; Chronoscopes; Clock hands; Watch hands; Movements for clocks and watches; Watch springs; Watches; Clocks; Atomic clocks; Wristwatches; Control clocks [master clocks]; Clocks and watches, electric; Dials [clock- and watchmaking]; Clockworks; Boxes of precious metal; Presentation boxes for watches; Time instruments; Watch glasses.

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

Watch bands; Clock cases; Watch cases [parts of watches]; Watch chains; Chronographs [watches]; Watch hands; Movements for watches; Watch springs; Watches; Wristwatches; Presentation boxes for watches; Watch glasses; Dials [watchmaking];   are identically contained in both lists of goods (including synonyms).

The contested Chronometers; Stopwatches; Chronoscopes; Clocks; Atomic clocks; Control clocks [master clocks]; Clocks and watches, electric; Time instruments are included in the broad category of, or overlap with, the opponent’s Chronometric apparatus and instruments. Therefore, they are identical.

The contested Boxes of precious metal include, as a broader category, or overlap with, the opponent’s Cases for watches [presentation] since these can also be made of precious metal. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested Barrels [clock- and watchmaking]; Pendulums [clock- and watchmaking]; Dials [clockmaking]; Clockworks; Movements for clocks; Clock hands are similar to the opponent`s Watch cases [parts of watches]; Watch fobs; Watch dials; Watch crowns; Watch movements; Oscillators for watches; Watch winders; Watch springs. All these goods are parts of clocks and watches. Insofar they are of similar nature and purpose, they share distribution channels and will be offered by the same producers.

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 are directed at the public at large and 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.

 

c) The signs

 

DINO ZEI	DINOZEI
Earlier trade mark	Contested sign

 

 

The relevant territory is  EU.

 

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).

 

Neither the earlier nor the contested sign has a meaning for the relevant public and they are, therefore, distinctive.

 

Visually, the signs coincide in ‘DINO*ZEI’. They differ solely in the space between the elements ‘DINO’ and ‘ZEI’ in the earlier sign.

  

Therefore, the signs are at least highly similar.

 

Aurally, the Opposition Division considers that the space between the elements ‘DINO’ and ‘ZEI’ in the earlier sign will not have an impact when pronouncing the signs

 

Therefore, the signs are identical.

  

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

 

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 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.

 

e) 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 conflicting goods were found to be identical and similar. The signs are visually at least highly similar and aurally identical.

 

Except the space between the elements ‘DINO’ and ‘ZEI’ in the earlier sign, the signs are identical. Therefore there is a likelihood of confusion.

 

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).

  

The applicant argues that it is the owner of the earlier Italian Trademark No 1065304 ‘DINOZEI’ and therefore is the only legal owner of the rights concerning this sign.

 

The Opposition Division points out that the right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings. Therefore the fact that the applicant is the owner of a national right which precedes the opponents EUTM is not relevant for the present proceedings because the rights of the opponent, insofar as they concern the EUTM, are earlier than the applicant’s EUTM.

  

The opponent stated that the applicant filed the contested trade mark in bad faith. This cannot be a basis for the opposition. Article 46 EUTMR states that an opposition can only be filed on the grounds set forth in Article 8 EUTMR. Since this Article does not include bad faith as a ground for opposition, this point will not be addressed.

 

Considering all the above, there is a likelihood of confusion on the part of the public.

 

Therefore, the opposition is well founded on the basis of the opponent’s EUTM registration No 17 895 697. It follows that the contested trade mark must be rejected for all the contested goods.

 

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) EUTMR.

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, 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

 

 

Tobias KLEE

Reiner SARAPOGLU

Ferenc GAZDA

 

 

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.