OPPOSITION No B 3 064 887

Bremont Watch Company Limited, The Sawmills Marlow Road, RG9 3AQ Henley on Thames, United Kingdom (opponent), represented by Nucleus IP Limited, 10 St. Bride Street, EC4A 4AD London, United Kingdom (professional representative)

a g a i n s t

Belmont Reclaim, S.L., Calle Almirante Cadarso 11, Pta 14, 46005 Valencia, Spain (applicant), represented by RMA Legal S.L.P., Gran Vía del Marqués del Turia 49, 6, 3, 46005 Valencia, Spain (professional representative).

On 19/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 064 887 is upheld for all the contested goods and services, namely

Class 14: Watch bands; watch cases [parts of watches]; sports watches; clocks and parts therefor.

Class 35: Online retail services in relation to watch cases [parts of watches]; online retail services in relation to clocks and parts therefor; online retail services in relation to sports watches; online retail services in relation to watch bands; retail services in relation to watch cases [parts of watches]; retail services in relation to clocks and parts therefor; retail services in relation to sports watches; retail services in relation to watch bands.

2. European Union trade mark application No 17 913 616 is rejected for all the contested goods and services. It may proceed for the remaining goods and services.

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

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 913 616 , namely against all the goods in Class 14 and some of the services in Class 35. The opposition is based on European Union trade mark registration No 4 505 351 ‘BREMONT’. The opponent invoked Article 8(1)(b) and Article 8(5) 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 and services

The goods on which the opposition is based are, inter alia, the following:

Class 14: Precious metals and their alloys; goods in precious metals and/or their alloys or coated with the aforesaid, not included in other classes; jewellery, precious and semi-precious stones, horological and chronometric instruments; parts and fittings for the aforesaid; chronometrical instruments, clock cases, clock hands, clocks, clocks and watches, dials for watches and clocks, straps for wrist watches, sun dials, watch bands, watch cases, watch chains, watch crystals, watch glasses, watch straps, watches, wrist watches, all of precious metals and/or their alloys.

The contested goods and services are the following:

Class 14: Watch bands; watch cases [parts of watches]; sports watches; clocks and parts therefor.

Class 35: Online retail services in relation to watch cases [parts of watches]; online retail services in relation to clocks and parts therefor; online retail services in relation to sports watches; online retail services in relation to watch bands; retail services in relation to watch cases [parts of watches]; retail services in relation to clocks and parts therefor; retail services in relation to sports watches; retail services in relation to watch bands.

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

The contested watch bands; watch cases [parts of watches]; sports watches; clocks and parts therefor are identical to the opponent’s watch bands, watch cases, watches, clocks, all of precious metals and/or their alloys; parts and fittings for the aforesaid, either because they are identically listed, or the opponent’s goods include or are included in the contested goods.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar (to a low degree) to these particular goods (05/05/2015, T‑715/13, Castello (fig.) / Castelló y Juan S.A. (fig.) et al., EU:T:2015:256, § 33). Although the nature, purpose and method of use of these goods and services are not the same, it should be noted that they display similarities, as 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 goods covered by the retail services and the specific goods covered by the other mark have to be identical in order to find similarity, that is to say, they must either be exactly the same goods or fall under the natural and usual meaning of the category.

Consequently, the contested online retail services in relation to watch cases [parts of watches]; online retail services in relation to clocks and parts therefor; online retail services in relation to sports watches; online retail services in relation to watch bands; retail services in relation to watch cases [parts of watches]; retail services in relation to clocks and parts therefor; retail services in relation to sports watches; retail services in relation to watch bands are similar to a low degree to the opponent’s goods in Class 14.

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 and services found to be identical or similar to a low degree are directed at the public at large. The degree of attention varies from average to relatively high, since consumers often put a certain amount of thought into the selection of watches, because in some cases these are luxury items or will be intended as gifts (09/12/2010, R 900/2010‑1, Leo Marco (fig.) / LEO, § 22).

3. The signs

BREMONT
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 earlier mark is a word mark composed of one meaningless word ‘BREMONT’ and, therefore, has an average degree of distinctiveness in relation to the goods in question.

The contested sign is a figurative mark consisting of the verbal element ‘BELMONT’, written in fairly standard uppercase letters with a figurative element to its left, composed of three vertical lines. It cannot be excluded that, for example, the English- or French-speaking part of the public will perceive the word ‘BELMONT’ as a surname. However, for a significant part of the relevant public this word does not convey any meaning. Since the absence of a meaning that could differentiate the contested sign from the earlier mark enhances the likelihood of confusion, the Opposition Division will first examine the mark from the perception of the part of the public that will perceive the word ‘BELMONT’ as meaningless and which is more likely to confuse the signs. In relation to the goods and services in question, ‘BELMONT’ has an average degree of distinctiveness. The figurative element also has an average degree of distinctiveness, since, just like the verbal element, it does not convey any meaning and, therefore, does not directly describe or allude to any characteristics of the goods and services in question.

As both elements in contested sign are of a similar size, it does not have any dominant element. However, account must be taken of the fact, that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

Visually, the signs coincide in the sequence of letters ‘B**MONT’, which constitute five out of seven letters of both the earlier mark and the verbal element of the contested sign. The signs also share the letter ‘E’ albeit in different positions (the third letter of the earlier mark and the second letter of the contested sign). The signs differ in the second letter, ‘R’, in the earlier mark and the third letter, ‘L’, in the verbal element of the contested sign, as well as in the figurative element of the contested sign.

The verbal elements of both signs are composed of the same number of letters, the majority of which coincide, and they have the same first letter and final four letters in the same positions. The two-letter difference in the middle of the two verbal elements (one of which is the same letter but in a different position) will not distract the consumers’ attention from the abovementioned commonality. Although the contested sign has an additional distinctive figurative element, the verbal element will still have a stronger impact on the relevant consumers (as explained above). Therefore, the signs are visually similar to at least an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘B**MONT’, present identically in the verbal elements of both signs. The pronunciation differs in the sound of their respective middle letters, namely ‘RE’ in the earlier mark and ‘EL’ in the contested sign. However, they still share the same sound of the letter ‘E’, albeit in different positions.

As the signs coincide in the majority of their sounds, the difference in pronunciation in the middle of the marks will not create any significant aural difference between them. Therefore, the signs are aurally highly similar.

Conceptually, neither of the signs has a meaning for the public in the relevant territory subject of the current assessment. 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.

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 invoked Article 8(5) EUTMR as one of the grounds for opposition, which constitutes an implicit claim of enhanced distinctiveness. However, no argument or evidence was submitted by the opponent to support this 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 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/or 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).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

As concluded above, the contested goods are identical and the contested services are similar to a low degree to the opponent’s goods. They target the public at large, and the degree of attention varies from average to relatively high. The distinctiveness of the earlier mark is normal.

As detailed in section c), the earlier mark and the contested sign are visually similar to at least an average degree and aurally highly similar. The conceptual aspect does not influence the assessment of similarity between the signs. The verbal element of the contested sign reproduces the majority of the letters of the earlier mark with the exception of two letters in the middle of the word elements. Although the contested sign has an additional figurative element, this will not distract the consumers’ attention from the abovementioned commonalities in the verbal elements of the signs.

Taking into account that 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) and the fact that neither of the signs conveys any concept that could clearly differentiate them from each other, it is highly conceivable that the relevant consumers, even with a relatively high degree of attention, relying on their imperfect recollection, will be led to believe that the goods and services in question come from the same undertaking or, as the case may be, from economically linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion, at least on the part of the public that will perceive the verbal element ‘BELMONT’ in the contested sign as meaningless. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 4 505 351, ‘BREMONT’. Therefore, the contested trade mark must be rejected for all the contested goods that were found identical to the opponent’s goods. Taking into account the abovementioned principle of interdependence, the contested trade mark must also be rejected for the services found to be similar to a low degree to the goods of the earlier mark, as the obvious similarities between the signs offset the low degree of similarity between the goods and services.

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(5) 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 (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

Cynthia DEN DEKKER

Rasa BARAKAUSKIENE

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.