OPPOSITION No B 3 069 050

Compagnie des Montres Longines, Francillon S.A. (Longines Watch Co., Francillon Ltd.), 2610 St-Imier, Switzerland (opponent), represented by Despacho González-Bueno, S.L.P., Calle Velázquez 19, 2º dcha., 28001 Madrid, Spain (professional representative)

a g a i n s t

Shenzhen Maoda Watch Company Limited, Baoan District Xixiang Street Community Gushu Wei Shu Road No. 171, group third building six unit 3, Shenzhen People’s Republic of China (applicant), represented by Isabelle Bertaux, 55 rue Ramey, 75018 Paris, France (professional representative).

On 17/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 069 050 is upheld for all the contested goods.

2. European Union trade mark application No 17 927 923 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 17 927 923 for the figurative mark . The opposition is based on international trade mark registration No 1 174 907 designating the European Union for the figurative mark . 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

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

Class 14: Precious metals and their alloys and goods made of these materials or coated therewith included in this class, namely figurines, trophies; jewelry, namely rings, earrings, cuff links, bracelets, charms, brooches, chains, necklaces, tie pins, tie clips, jewelry caskets (cases), cases; precious stones, semi-precious stones; timepieces and chronometric instruments namely chronometers, chronographs, clocks, watches, wristwatches, wall clocks, alarm clocks as well as parts and accessories for the aforesaid goods namely hands, anchors, pendulums, barrels, watch cases, watch straps, watch dials, clockworks, watch chains, movements for timepieces, watch springs, watch glasses, presentation cases for timepieces, cases for timepieces.

The contested goods are the following:

Class 14: Chronographs for use as watches; chronometers; clocks; clocks and watches, electric; hat jewellery; jewelry; jewelry boxes; movements for clocks and watches; presentation boxes for watches; rings [jewelry]; watch bands; watch glasses; watch hands; watch parts.

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

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

The contested chronographs for use as watches are included in the broad category of the opponent’s chronographs. Therefore, they are identical.

Chronometers; clocks; rings [jewelry]; watch bands; watch glasses; watch hands are identically contained in both lists of goods (including synonyms).

The contested clocks and watches, electric are included in the broad category of the opponent’s clocks, watches. Therefore, they are identical.

The contested jewelry includes, as a broader category, the opponent’s jewelry, namely rings. 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 jewelry boxes are synonymous with the opponent’s jewelry caskets (cases). Therefore, they are identical.

The contested movements for clocks and watches are included in the broad category of the opponent’s movements for timepieces. Therefore, they are identical.

The contested presentation boxes for watches are included in the broad category of, or overlap with the opponent’s presentation cases for timepieces. Therefore, they are identical.

The contested watch parts include, as a broader category, the opponent’s parts for the aforesaid goods (applied to ‘watches’) namely hands, anchors, pendulums, barrels. 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 hat jewellery overlaps with the opponent’s jewelry, namely brooches, as they can be fastened to hats. Therefore, they are identical.

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 are directed at the public at large and at business customers with specific professional knowledge or expertise (e.g. movements for clocks and watches; watch glasses; watch hands).

The degree of attention will vary from average to high depending on the specialised nature, the frequency of purchase and their price. 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 these goods will be luxury items or will be intended as gifts.

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 earlier trade mark is a stylised figurative mark consisting of a series of horizontal lines, decreasing in size from top to bottom, joined together to resemble a stylised depiction of a pair of wings. In the centre of the mark, a rectangle is superimposed on the conjoined, extended wings. This rectangle contains two diagonally intersecting lines reminiscent of a letter ‘X’ and two additional horizontal lines.

The opponent describes its mark as the ‘winged hour-glass’. A consumer might perceive the earlier mark in this sense of the object after being informed of it (given the goods at issue and the familiar phrase ‘time flies’), but will be unlikely to arrive at this conclusion without assistance (08/07/2019, R 2427/2018-5, DEVICE OF STYLISED EXTENDED WINGS (fig.) / DEVICE OF STYLISED EXTENDED WINGS (fig.), § 48).

Therefore, in the context of the relevant goods in Class 14, the inherent distinctiveness of this element of the earlier mark is normal.

The contested sign is a stylised figurative mark consisting of a set of figurative elements pointing upwards resembling wings. There is a central element placed in between the two wings that contains diagonal, vertical and horizontal lines. The two wings are joined at the top by a stylised element including a circle.

The distinctiveness of the figurative elements in the contested sign for the goods at issue is normal.

None of the signs has any element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in that both marks depict a device of extended wings with a central element consisting of lines, although the arrangement of these lines in both signs is different. There are differences in the stylisation of the feathers in the signs, namely they form horizontal lines in the earlier mark, while in the contested sign they are slightly curved and pointing upwards. The figurative elements representing a set of wings are conjoined in both signs, although in the contested sign they are attached to a circle, while in the earlier mark the wings constitute a unit.

The signs at issue have the same kind of overall stylization. The differences in the signs are minor elements that the relevant public is not likely to remember as effective distinguishing features.

Therefore, the signs are visually similar to an average degree.

Aurally, the signs are not subject to a phonetic assessment because they are both purely figurative and, as such, it is not possible to compare them aurally.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs convey the concept of extended wings and to this extent they are similar to an average degree.

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. 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).

The goods are identical and they are directed at the public at large and at professionals. The signs in dispute have been found to be visually and conceptually similar to an average degree, while an aural comparison is not possible. The earlier mark is considered to enjoy a normal degree of inherent distinctiveness.

It should be noted that the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (28/06/2005, T-301/03, Canal Jean, § 50). Account should also be 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).

In the case at issue the Opposition Division finds that the differences between the signs relate more to details and that the devices look similar overall. The visual discrepancies might be noticed during a direct and detailed visual examination of the signs in question, looking at one trade mark next to the other. However, such differences are not likely to be retained by consumers in the imperfect impression that they will keep in their mind. The relevant public will focus on the overall image of the extended wings’ devices, without analysing each and every single detail, and will be unable to differentiate between the trade marks in question (14/12/2006, T-81/03, T-82/03 and T-103/03, Venado, § 103).

In consequence, the Opposition Division is of the opinion that the public could believe that the identical goods come from the same undertaking or from economically-linked undertakings.

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 international trade mark registration No 1 174 907. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is 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 reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

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, 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

Helen Louise MOSBACK

Marzena MACIAK

Alicia BLAYA ALGARRA

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.