OPPOSITION No B 3 068 121

Cada-Schmuck Annette Kopp GmbH, Maffeistraße 8, 80333 München, Germany (opponent), represented by Beiten Burkhardt, Postfach 20 03 35, 80003 München, Germany (professional representative)

a g a i n s t

Shenzhen LangYao E-commerce Co., Ltd., F03, Building 2, NO. 49, Shuitian 2nd Street, Tianbei 4th Road, Luohu District, Shenzhen, People's Republic of China (applicant), represented by Ingenias, Av. Diagonal, 421,2º, 08008 Barcelona, Spain (professional representative).

On 02/08/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 068 121 is partially upheld, namely for the following contested goods:

Class 14: Jewellery boxes; jewellery charms; jewellery; precious stones; Jade; Figurines made from silver; Jewellery chains; Ivory jewellery; watches; paste jewellery; Women's jewelry; Works of art of precious metal; jewellery findings; Unwrought precious stones; cloisonné jewellery; tie clips; jewellery rolls.

2. European Union trade mark application No 17 926 010 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 17 926 010 for the figurative mark . The opposition is based on European Union trade mark registration No 10 745 206 for the figurative mark and German trade mark registration No 1 190 986 for the word mark ‘CADA’. 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 European Union trade mark registration No 10 745 206.

1. The goods

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

Class 14: Jewellery, jewellery of precious metals or produced preferably using precious metals or their alloys, including with the use of precious stones or semi-precious stones.

The contested goods are the following:

Class 14: Precious metals, unwrought or semi-wrought; jewellery boxes; jewellery charms; jewellery; precious stones; Jade; Figurines made from silver; Jewellery chains; Ivory jewellery; watches; paste jewellery; ingots of precious metals; Women's jewelry; Works of art of precious metal; jewellery findings; Unwrought precious stones; cloisonné jewellery; tie clips; jewellery rolls; gold, unwrought or beaten.

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

The term ‘including’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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.

The contested jewellery charms; jewellery; jewellery chains; ivory jewellery; paste jewellery; women's jewelry; cloisonné jewellery; tie clips are identical to the opponent’s jewellery, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, or overlap with, the contested goods.

The contested watches are highly similar to the opponent’s jewellery as they have the same nature. They usually coincide in producer, relevant public and distribution channels. Furthermore, they are complementary.

The contested jewellery findings are at least similar to the opponent’s jewellery, since they are components used to make jewellery items such as clasps or connectors. In that sense, they may coincide in producer, relevant public, as well as the distribution channels. Furthermore, they are complementary.

The contested precious stones; jade; unwrought precious stones are similar to the opponent’s jewellery as they usually coincide in producer, relevant public and distribution channels.

The contested jewellery boxes; jewellery rolls (organisers which protect and store jewellery, in particular while travelling) are similar to the opponent’s jewellery as they can coincide in producer, end user and distribution channels. Furthermore, they are complementary.

The contested figurines made from silver; works of art of precious metal are similar to the opponent’s jewellery as they have the same purpose. They usually coincide in producer and distribution channels.

The contested precious metals, unwrought or semi-wrought; ingots of precious metals; gold, unwrought or beaten are dissimilar to the opponent’s goods. These contested goods are raw materials that are used for the manufacture of the opponent’s jewellery items. The mere fact that one product is used for the manufacture of another is not sufficient for establishing similar, as their nature, purpose, relevant public and distribution channels are distinct. 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, they 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).

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 varying degree) are directed at the public at large and at business customers with specific professional knowledge or expertise (e.g. precious stones). The level of attention of the relevant public may vary from average (e.g. jewellery rolls) to high (e.g. precious stones), in particular depending on specialised nature of the goods purchased and their price.

3. The signs

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.

Since some of the elements are meaningful, for example in French and in Dutch, in the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the French- and Dutch-speaking part of the relevant public, since for reasons that will public apparent, the similarity between the signs will be higher for this part of the public.

The verbal element included in both signs, ‘CADA’, has no meaning for the relevant public. Therefore, its distinctiveness is normal.

The verbal element, ‘Prive’, included in the contested sign may be perceived as ‘private’ given there is a highly similar equivalent form in Dutch and in French, namely ‘privé’, or because of its widespread use in trade. Consumers will perceive it as something that belongs to, concerns or is accessible only to a limited number of people. Therefore, this word is of a reduced distinctive character in relation to the goods in question.

Even though the earlier mark is reproduced on a split level, namely ‘CA’ is above ‘DA’, the public reads from top to bottom and left to right and, thus, this representation does not prevent the consumers from reading ‘CADA’. As to the stylisation of the contested mark, this is so minimal that it will rather go unnoticed.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

The signs have no elements that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the distinctive verbal element ‘CADA’ and differ in the second component of the contested sign, ‘Prive’, as well as the signs’ representation as referred to above. The word ‘CADA’ is the sole verbal element of the earlier mark and the most distinctive element of the contested sign. Concerning the different arrangement of the signs, it is considered of minor impact when comparing with the verbal elements of the signs because the relevant consumers will rather memorise the verbal element of the sign than its graphical representation.

As a rule, when the earlier trade mark is wholly incorporated in the contested sign and performs an independent and distinctive role therein, this is an indication that the two signs are similar (13/06/2012, T‑519/10, SG Seikoh Giken, EU:T:2012:291, § 27; 24/01/2012, T‑260/08, Visual Map, EU:T:2012:23, § 32; 22/05/2012, T‑179/11, Seven Summits, EU:T:2012:254, § 26).

In light of the above, the signs are considered visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘C-A-D-A’, present identically in both signs and differs in the pronunciation of the letters ‘P-R-I-V-E’ in the final part of the contested sign. Therefore, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the public will perceive the meaning of the lowly distinctive element ‘Prive’ of the contested sign, as explained above, the other sign has no meaning. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 (eleventh recital of the EUTMR). 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).

As has been concluded above, the earlier mark is considered to enjoy a normal degree of inherent distinctiveness. Furthermore, the contested goods were found partially identical, partially similar to various degrees and partially dissimilar to those of the earlier mark and are directed at the public at large and at professionals whose degree of attention may vary from average to high. The marks in dispute have been found to be visually and aurally similar to an average degree, while the signs are not conceptually similar.

Therefore, in an overall assessment, taking into account that the sole verbal distinctive element of the earlier mark is entirely contained at the beginning of the contested sign as a distinctive and autonomous element, it is reasonable to assume that when confronted with the contested sign in relation to identical and similar goods, consumers are likely to confuse the marks and believe that these goods come from the same undertaking or, as the case may be, economically linked undertakings.

It is settled case-law that 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 covered are from the same or economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark, as a sub-brand, a variation of the earlier mark configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the French- and Dutch-speaking public. Therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 10 745 206. 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 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.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent and in relation to identical and similar goods. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods, as the similarity of goods and services is a sine qua non for there to be likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

The opponent has also based its opposition on the earlier German trade mark No 1 190 986 for the word mark ‘CADA’. This mark is highly similar to the one which has been compared and covers a narrower scope of goods (goods made of precious metals or their alloys, namely objects of applied art, ornaments), as the use of the term ‘namely’ in the opponent’s list of goods restricts the scope of protection only to the goods specifically listed. In this regard, the Opposition Division refers to its previous findings concerning the dissimilar contested goods since the reasoning and conclusion are also relevant here. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, 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

Vanessa PAGE

Marzena MACIAK

Eva Inés PÉREZ SANTONJA

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.