OPPOSITION No B 3 068 764

Omega SA (Omega AG) (Omega Ltd.), Jakob-Stämpfli-Strasse 96, 2502 Biel/Bienne, 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 16/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 068 764 is upheld for all the contested goods.

2. European Union trade mark application No 17 927 924 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 17 927 924 for the word mark ‘OLMECA’. The opposition is based on international trade mark registration No 765 501 designating, inter alia, the European Union for the word mark ‘OMEGA’ and international trade mark registration No 1 255 609 designating the European Union for the figurative mark . The opponent invoked Article 8(1)(b) 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.

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 international trade mark registrations No 765 501 designating, inter alia, the European Union and No 1 255 609 designating the European Union.

a) The goods

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

IR No 765 501 (earlier mark 1)

Class 14: Precious metals and their alloys and goods made of or coated with these materials not included in other classes; jewellery, bijouterie, precious stones; horological and chronometric instruments.

IR No 1 255 609 (earlier mark 2)

Class 14: Timepieces and chronometric instruments as well as parts and accessories for the aforesaid goods, watch chains, presentation cases for timepieces, cases for timepieces; smart watches with extended functionality and connected watches as well as parts and accessories for the aforesaid goods.

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; wristwatches.

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. These factors are known as the ‘Canon criteria’ (29/09/1998, C‑39/97, Canon, EU:C:1998:442).

The contested chronographs for use as watches; chronometers; clocks; clocks and watches, electric; wristwatches are identical to the goods of the opponent’s earlier mark 1), either because they are identically contained in both lists (including synonyms) or because the applicant’s goods are included in the opponent’s horological and chronometric instruments.

The contested presentation boxes for watches overlap with presentation cases for timepieces, cases for timepieces of the opponent’s earlier mark 2). The contested watch bands are synonymous with, or at least overlap with, watch chains of the opponent’s earlier mark 2). Therefore, these goods are identical.

The contested movements for clocks and watches; watch glasses; watch hands; watch parts are various parts for clocks or watches. They are included in the broad category of parts for the aforesaid goods [timepieces and chronometric instruments] of the opponent’s earlier mark 2). Therefore, they are identical.

The contested jewelry is synonymous with jewellery of the opponent’s earlier mark 1). In addition, the contested hat jewellery; rings [jewelry] are included in the broad category of jewellery of the opponent’s earlier mark 1). Therefore, they are identical.

The contested jewelry boxes are similar to jewellery of the opponent’s earlier mark 1), because they usually coincide in their producers, target the same relevant public and are distributed through the same channels. Furthermore, they are complementary.

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.

The goods found to be identical or similar are mostly directed, primarily, at the public at large. However, some of the goods, such as the contested movements for clocks and watches target the professional public, such professional in watchmaking.

The goods found to be identical or similar are directed, primarily, at the public at large. However, some of the goods, such as the contested movements for clocks and watches target the professional public, such as professionals in watchmaking.

According to the EU’s General Court,

[a]s regards the relevant public’s level of attention, it must be held that the categories of goods at issue are worded in a manner which is sufficiently broad for them to include some goods which may be purchased by anyone, that is to say even by consumers whose level of attention at the time of purchase is not high. ... [T]he fact remains that ... certain watches, watch bands, alarm clocks, items of costume jewellery ... may be purchased without consumers even paying particular attention to them, in particular when they are ‘inexpensive’ goods.

(12/02/2015, T‑505/12, B, EU:T:2015:95, § 33-34).

This is not to say that consumers are careless, just that their attention will be ‘average’ — but this still amounts to a reasonable level of circumspection and care (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26; 21/11/2018, R 1013/2018‑5, TechnoTime (fig.) / DEVICE OF STYLISED EXTENDED WINGS WITH STYLISED RECTANGULAR ELEMENT IN THE CENTRE (fig.), § 49-50).

Consequently, the public’s degree of attention may vary from average (e.g. the contested jewelry boxes) to high (e.g. the contested jewelry), depending on the specialised nature of the goods, the frequency of purchase and their price.

c) The signs

Earlier mark 1) OMEGA Earlier mark 2)	OLMECA
Earlier trade marks	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 contested sign is meaningless in some territories of the European Union, for example in the Baltic language area and for the Slavic-speaking part of the public. This affects the inherent distinctiveness and perception of the signs by that public, and influences the assessment of likelihood of confusion. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Baltic language area and the Slavic-speaking part of the public, namely on the public in Bulgaria, the Czech Republic, Estonia, Latvia, Lithuania, Poland and Slovakia.

Earlier mark 1) is a word mark composed of the single word ‘OMEGA’ which will be understood as referring to the last letter of the Greek alphabet. As it is not descriptive, allusive or otherwise weak for the opponent’s goods, its inherent distinctiveness is average.

Earlier mark 2) is a figurative mark composed of the word ‘OMEGA’ in black fairly standard and non-distinctive upper-case letters. Above the word, there is the figurative element that also may be understood as referring to the same concept as the word ‘OMEGA’. As these meanings are not descriptive, allusive or otherwise weak for the opponent’s goods, their inherent distinctiveness is average.

Earlier mark 2) (figurative) has no element that could be considered clearly more dominant (eye-catching) than other elements. Although it consists 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; 19/12/2011, R 233/2011-4, BEST TONE (FIG.) / BETSTONE, § 24; 13/12/2011, R 53/2011-5, JUMBO (FIG.) / DEVICE OF AN ELEPHANT (FIG.), § 59).

Earlier mark 1) and the contested sign are of verbal nature. It is noted that the protection that results from the registration of a word mark concerns the word mentioned in the application for registration and not the specific graphic or stylistic elements accompanying it (29/03/2012, T‑369/10, Beatle, EU:T:2012:177, § 42).

Visually, the signs coincide in the sequence of letters ‘O*ME*A’. They differ in the contested sign’s second letter, ‘L’, which has no counterpart in the earlier marks. They also differ in the letters, ‘G’/‘C’, located in penultimate positions, although their anatomical features are not entirely dissimilar. Earlier mark 2) additionally differs in its fairly standard stylisation which, however, is non-distinctive and will not attract much attention of the consumers, if any, and in its normally distinctive figurative element. Overall, 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 ‘O*ME*A’. They differ in the contested sign’s second letter ‘L’ which, however, will introduce only minor phonetic difference, as it is located in-between identical letters ‘O’ and ‘M’. The sound of the signs’ penultimate letters, ‘G’/‘C’, although not identical, is highly similar. The signs will be pronounced in three similar syllables, ‘O-ME-GA’ and ‘OL-ME-CA’ and follow an identical vowel sequence, ‘O**E*A*’. The figurative element of earlier mark 2) is unlikely to be pronounced and its stylisation is not subject to a phonetic assessment. Therefore, the signs are aurally highly similar.

Conceptually, although the public in the relevant territory will perceive the meaning of the word ‘OMEGA’ of the earlier marks and may perceive the meaning of the earlier sign’s figurative element, as explained above, the other sign has no meaning in that territory. 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.

d) Distinctiveness of the earlier marks

The distinctiveness of the earlier marks is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier marks have been extensively used and enjoy 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 marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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

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 that can be made with the registered mark and 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 signs are visually similar to at least an average degree and they are aurally highly similar. As explained above in section c) of this decision, the signs are not conceptually similar.

The earlier marks as a whole have a normal degree of distinctiveness for the relevant public, composed of the public at large and professional public displaying an average to high degree of attention. Account is taken of the fact that average consumers, even those who pay a high degree of attention, 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; 21/11/2013, T 443/12, ancotel, EU:T:2013:605, § 54).

The signs (and the figurative mark’s verbal element) are of nearly identical lengths, five and six, and they coincide in the great majority of these letters, including, importantly, their first letter ‘O’. It is settled case-law that 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 difference in the contested sign’s second letter ‘L’ will introduce only a minor phonetic difference between the signs, as explained above. Likewise, the difference in their penultimate letters ‘G’/‘C’ is not particularly striking visually and these letters will be pronounced in a highly similar way. In addition, they are located in the endings of the signs to which the public normally pays less attention (17/03/2004, T-183/02 & T-184/02, Mundicor, EU:T:2004:79, § 81; 16/03/2005, T-112/03, Flexi Air, EU:T:2005:102, § 64-65). The fact that part of the relevant public will be more attentive (while the remaining part displays only an average degree of attention), does not mean that they will examine the mark before it in the slightest detail. Even for a public with a high level of attentiveness, the fact remains that average consumers only rarely have the chance to make a direct comparison between the different marks but must place their trust in the imperfect picture of them that they have kept in their minds (16/07/2014, T-324/13, Femivia, EU:T:2014:672, § 48).

Moreover, a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Accordingly, a greater degree of similarity between the goods and services may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17). Therefore, in the present case, a lesser visual similarity between the signs and the fact that they are not conceptually similar are offset by an identity of the great majority of the goods.

Taking into account the abovementioned factors, the Opposition Division finds that there is a likelihood of confusion on the part of the public in the Baltic language area and the Slavic-speaking part of the public, namely the public in Bulgaria, the Czech Republic, Estonia, Latvia, Lithuania, Poland and Slovakia. 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.

A likelihood of confusion cannot be excluded also for the contested jewelry boxes which were found similar (and not identical) to the opponent’s goods. This is because the degree of attention of the relevant public in respect of these goods is average (and not high) and, therefore, when it comes to these goods the public may be confused more easily.

Consequently, the opposition is well founded on the basis of the opponent’s international trade mark registrations No 765 501 designating, inter alia, the European Union and No 1 255 609 designating the European Union. 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 marks, there is no need to assess the enhanced degree of distinctiveness of the opposing marks due to their extensive use or reputation as claimed by the opponent. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

As the earlier rights, international trade mark registrations No 765 501 designating, inter alia, the European Union and No 1 255 609 designating the European Union, lead to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent, namely international trade mark registration No 765 501 designating other countries on which the opposition was based (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Liliya YORDANOVA

Jakub MROZOWSKI

Monika CISZEWSKA

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.