OPPOSITION No B 3 118 239

Beeline GmbH, Grünstr. 1, 51063 Köln, Germany (opponent), represented by Jonas Rechtsanwaltsgesellschaft mbH, Hohenstaufenring 62, 50674 Köln, Germany (professional representative)

a g a i n s t

International Allied Management Group Co., Ltd., 125 Old Broad Street, London EC2N 1AR, United Kingdom (applicant), represented by Arcade & Asociados, C/ Isabel Colbrand, 6 - 5ª planta, 28050 Madrid, Spain (professional representative).

On 20/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 118 239 is partially upheld, namely for the following contested goods:

Class 14: Jewellery rolls; jewellery boxes; chains [jewellery]; precious stones; rings [jewellery]; cuff links; clocks; watches.

Class 26: Elastic ribbons; decorative articles for the hair; trimmings for clothing; buttons; false hair; artificial flowers; artificial foliage; artificial plants, other than Christmas trees.

2. European Union trade mark application No 18 154 511 is rejected for all the above goods. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

On 04/05/2020, the opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 154 511 for the figurative mark , namely against all the goods in Classes 14 and 26. The opposition is based on, inter alia, international trade mark registration, designating Italy, No 1 054 041 for the figurative mark . The opponent invoked Article 8(1)(a) and (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 opponent’s international trade mark registration, designating Italy, No 1 054 041 for the figurative mark .

a) The goods

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

Class 14: Jewellery and fashion jewellery, including chains and small chains, in particular necklaces, bracelets, ankle chains and bikini chains, chain pendants, earrings, in particular ear studs, tie pins, scarf clips, cufflinks, brooches; finger rings, bangles, all the aforesaid goods in particular made of silver, common metals, plastic, textile, leather, rubber, glass, strass or a combination of these materials; horological instruments and their accessories, included in this class, in particular wrist watches, pocket watches, watch straps, watch cases, watch chains and watch pendants; key rings (trinkets or fobs).

Class 26: Hair ornaments, including hair hoops, combs, hair ties, hair bands, bows, fasteners; shoe bows, shoe laces, belt buckles, ornamental badges; artificial flowers, namely pin-on flowers with brooch clips and ornamental flowers.

The contested goods are the following:

Class 14: Precious metals, unwrought or semi-wrought; silver; jewellery rolls; jewellery boxes; chains [jewellery]; precious stones; rings [jewellery]; cuff links; clocks; watches.

Class 26: Embroidery; elastic ribbons; decorative articles for the hair; trimmings for clothing; buttons; false hair; needles; artificial flowers; artificial foliage; artificial plants, other than Christmas trees.

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

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

However, 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 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 jewellery rolls; chains [jewellery]; rings [jewellery]; cuff links are included in the broad category of the opponent’s jewellery. Therefore, they are identical.

The contested clocks; watches are included in the broad category of the opponent’s horological instruments. Therefore, they are identical.

The contested jewellery boxes are similar to the opponent’s jewellery. These goods are complementary, target the same relevant public and may have the same producers.

The contested precious stones are similar to the opponent’s jewellery. These goods target the same public, have the same distribution channels and may be produced by the same kind of undertakings.

The contested precious metals, unwrought or semi-wrought; silver, the latter being perceived as unwrought silver, are dissimilar to all of the opponent’s goods. In most cases, the mere fact that one product is used for the manufacture of another will not be sufficient in itself to show that the goods are similar, as their nature, purpose, relevant public and distribution channels may be quite distinct (13/04/2011, T‑98/09, T Tumesa Tubos del Mediterráneo S.A., EU:T:2011:167, § 49-51). 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 / KARA et al., EU:T:2012:212, § 53). Furthermore, they are not complementary since one is manufactured with the other, and a 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).

Contested goods in Class 26

The contested decorative articles for the hair include, as a broader category, the opponent’s hair ornaments, including hair hoops, combs, hair ties, hair bands, bows, fasteners. 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 buttons are included in the broad category of, or overlap with, the opponent’s ornamental badges. Therefore, they are identical.

The contested artificial flowers include, as a broader category, the opponent’s artificial flowers, namely pin-on flowers with brooch clips and ornamental flowers. 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 artificial foliage; artificial plants, other than Christmas trees are similar to the opponent’s artificial flowers. These goods share the same purpose, distribution channels and relevant public, and may be produced by the same kind of undertakings.

The contested elastic ribbons forms a broad category that may include for example elasticated hair ribbons. Therefore, these are similar to the opponent’s hair ornaments, including hair bows. These goods may share the same purpose, distribution channels and relevant public, and may be produced by the same kind of undertakings.

The contested trimmings for clothing are similar to the opponent’s artificial flowers, namely pin-on flowers with brooch clips and ornamental flowers. These goods may share the same purpose, distribution channels and relevant public, and may be produced by the same kind of undertakings.

The contested false hair is similar to a low degree to the opponent’s hair ornaments. These goods may have the same distribution channels since false hair is often sold in the same kind of shops where one can buy all kinds of ornaments for the hair. They may also be produced by the same kind of undertakings.

The contested embroidery; needles are dissimilar to all of the opponent’s goods. These goods have a different nature, purpose and method of use. They are neither complementary nor in competition. Furthermore, they do not originate from the same undertakings, are offered through different distribution channels and target a different relevant public.

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 (to varying degrees) are directed at the public at large and at business customers with specific professional knowledge or expertise, for example in the jewellery sector.

The degree of attention varies from average (for the goods in Class 26) to high (at least for some of the goods in Class 14) depending on the price, frequency of purchase, (specialised) nature and conditions of the provided goods.

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 Class 14. In many cases the goods will be luxury items or will be intended as gifts. A relatively high degree of attention on the part of the consumer may be assumed.

c) The signs

Earlier trade mark	Contested sign

The relevant territory is Italy.

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 mark is the figurative mark ‘I am’, written in a fairly standard, bold handwritten typeface with the letter ‘I’ in upper case and the letters ‘am’ in lower case. The contested sign is the figurative mark ‘IAM’, written in fairly standard bold upper-case letters. For a part of the public both marks are meaningless, and another part of the public might perceive the marks as referring to the English wording ‘I am’ (‘io sono’ in Italian). Whether or not they have a meaning, they are distinctive for the relevant goods.

Visually, the signs coincide in the letters ‘I am’ / ‘IAM’. However, they differ in the space between the letter(s) ‘I’ and ‘am’ of the earlier mark and in the different fonts of both marks.

Therefore, the signs are visually similar to a high degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘I am’ or ‘IAM’, present identically in both signs. As mentioned above, a part of the public might pronounce both signs as ‘I-am’, while another part of the public might pronounce the earlier mark as ‘I-am’ and the contested sign by individually pronouncing the letters ‘I’, ‘A’ and ‘M’.

Therefore, the signs are aurally similar to at least a high degree, for at least a significant part of the public.

Conceptually, neither of the signs has a meaning for a part of 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 for this part of the public. For that part of the public who will perceive the meaning of the marks as explained above, the marks are conceptually identical.

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 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

A likelihood of confusion (including a likelihood of association) 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.

The appreciation of a likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association that can be made with the used or registered sign, and the degree of similarity between the trade mark and the sign 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).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods 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, § 20; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The goods have been found to be partly identical, partly similar (to varying degrees) and partly dissimilar.

The signs are visually similar to a high degree, aurally similar to at least a high degree and conceptually either identical or the conceptual comparison remains neutral. The earlier mark has a normal degree of distinctiveness.

Taking into account all relevant factors, it is considered that the relevant public might be led to believe that the relevant goods come from the same undertaking or economically linked undertakings, even for that part of the public paying a higher degree of attention to some of the goods. The (at least) high degree of visual and aural similarity and the conceptual identity (for at least part of the public) will clearly counterbalance even the low degree of similarity between some of the goods, according to the interdependence principle mentioned above.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar (to varying 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.

The opponent has also based its opposition on the following earlier trade marks.

German trade mark registration No 302 25 078 for the figurative mark

Class 14 Jewellery and fashion jewellery, including chains and small chains, in particular necklaces, bracelets, ankle chains and bikini chains, chain pendants, earrings, in particular ear studs, tie pins, scarf clips, cuff links, brooches, artificial flowers, namely pin-on flowers with brooch clips and ornamental flowers, finger rings, bangles, all the aforesaid goods in particular of silver, common metals, plastic, textile, leather, rubber, glass, strass or a combination of these materials; horological instruments and accessories therefore, included in Class 14, in particular wrist watches, pocket watches, watch straps, watch cases, watch chains and watch pendants.

Class 26 Hair ornaments, including hair hoops, combs, hair ties, hair bands, bows, fasteners; cords for spectacles, shoe bows, shoe laces, key fobs, belt buckles, ornamental badges.

Austrian trade mark registration No 241 593 for the figurative mark

Class 14 Jewellery and costume jewellery, especially necklaces, chains and bib necklaces, bracelets, chains and bangles, armlets and arm rings, necklace pendants, jewellery for the ear, earrings and stud earrings, tie-pins, scarf clips, cuff-links, brooches, rings; all such goods being especially in precious metals, base metals, synthetic material, textile, leather, rubber, glass or any combination of such materials; key rings; key ring pendants.

Class 26 Hair ornaments; hair slides, hair ribbons, hair bands and hair hoops, hair grips; belt buckles.

Benelux trade mark registration No 769 021 for the figurative mark

Class 14 Jewellery; costume jewellery; necklaces, bracelets, bangles, pendants, earrings, stud earrings, tie-pins, clips, cuff-links, brooches and rings; all such goods being especially in precious metals, base metals, synthetic material, textile, leather, rubber, glass or any combination of such materials; key rings; key ring pendants.

Class 26 Hair ornaments; hair slides, hair ribbons, hair bands, hair grips; belt buckles.

Spanish trade mark registration No 2 793 129 for the figurative mark

Class 14 Jewellery; costume jewellery; necklaces, bracelets, bangles, pendants, earrings, stud earrings, tie-pins, clips, cuff-links, brooches and rings; all such goods being especially in precious metals, base metals, key rings (trinkets or fobs).

Class 26 Hair ornaments; hair slides, hair ribbons, hair bands, hair grips; belt buckles.

Czech Republic trade mark registration No 306 228 for the figurative mark

Class 14 Jewellery; costume jewellery; necklaces, bracelets, bangles, pendants, earrings, stud earrings, tie-pins, clips, cuff-links, brooches and rings; all such goods being especially in precious metals, base metals, synthetic material, textile, leather, rubber, glass or any combination of such materials; key rings; key ring pendants.

Class 26 Hair ornaments; hair slides, hair ribbons, hair bands, hair grips; belt buckles.

Polish trade mark registration No R.225 790 for the figurative mark

Class 14 Jewellery; costume jewellery; necklaces, bracelets, pendants, earrings, clip-on earrings, stud earrings, tie-pins, cuff-links, brooches, rings; all such goods being especially in precious metals, base metals, synthetic material, textile, leather, rubber, glass or any combination of such materials; key rings, key ring pendants.

Since these marks are identical to the one that has been compared and cover the same or a narrower scope of goods, with the exception of German trade mark registration No 302 25 078, 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.

The other earlier right, namely German trade mark registration No 302 25 078, invoked by the opponent, also covers goods such as artificial flowers, namely pin-on flowers with brooch clips and ornamental flowers; cords for spectacles, key fobs in Class 14, which are also clearly different to the remaining contested goods embroidery; needles. They differ in nature, purpose and method of use. They are neither complementary nor in competition. They target a different public and are not normally produced by the same kind of undertakings. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on the ground under Article 8(1)(a) EUTMR and directed against the remaining goods because the signs are obviously not entirely identical.

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

Saida CRABBE

Chantal VAN RIEL

Marta GARCÍA COLLADO

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.