OPPOSITION Nо B 3 118 426

 

Sc Razadi Srl, Str. Felix, Nr. 25, Bl. 107, Sc. B, Ap. 2, 300634 Timisoara, Romania (opponent), represented by S.C. Ariana Agentie de Proprietate Industriala S.R.L., Calea Aradului Nr.33, Ap. 7, 300629 Timisoara, Romania (professional representative) 

 

a g a i n s t

 

Thomas Weidling, Sternenstraße 8, 79367 Weisweil, Germany (applicant), represented by Recht 24/7 Schröder Rechtsanwaltsgesellschaft mbH, Rosenstr. 7, 80331 München, Germany (professional representative).

On 08/06/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 118 426 is upheld for all the contested services, namely:

 

Class 35: Retail services in relation to jewellery.

 

2.	European Union trade mark application No 18 179 005 is rejected for all the contested services. It may proceed for the remaining goods.

 

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

 

REASONS

 

On 05/05/2020, the opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 179 005 (figurative mark), namely against all the services in Class 35. The opposition is based on, inter alia, European Union trade mark registration No 11 593 928, (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 European Union trade mark registration No 11 593 928.

 

a) The services

 

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

 

Class 35: Commercial information and advice for consumers [consumer advice shop].

The contested services are the following:

Class 35: Retail services in relation to jewellery.

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 retail services in relation to jewellery are similar to the opponent's commercial advice for consumers [consumer advice shop] because consumer information services directly relate to the activities surrounding the actual sale of goods including information about the goods themselves, encouraging a consumer to make a sales transaction with a particular retailer, rather than with a competitor. Such services are often provided by the retailer itself at an information or customer service desk in a retail outlet, or via a dedicated section of an online store, where also the retail services are offered to the same consumer. These services may be provided through the same distribution channels to the same relevant consumers. Moreover, they may coincide in providers.

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 contrary to the opponent’s arguments, in the present case, the services found to be similar are directed at the public at large whose degree of attention is average.  

 

c) 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.

The word ‘CUPIO’ has a meaning in Latin, namely ‘desire, long for’ (information extracted from Latin Dictionary & Grammar Resources on 02/06/2021 at https://latin-dictionary.net/search/latin/cupio) and will probably be understood as such by the part of the relevant public which languages have a Latin origin. Consequently, in order to avoid unnecessary considerations regarding the perception of this word and its impact on the conceptual comparison of the signs, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public for whom the signs are meaningless, such as the English-speaking part of the public. For the reason stated above, the public under analysis perceives the word element as an invented term, distinctive in relation to the goods at issue.

The earlier mark is a figurative mark composed of a word element ‘CUPIO’ written in a red, stylised typeface which is essentially decorative and will play a secondary role in the overall impression of the sign.

The contested sign is a figurative mark composed of two stylised word elements ‘CUPIO’ and ‘JEWELLERY’ represented in a handwriting style.

The element ‘JEWELLERY’ of the contested sign will be associated with jewellery per se. Bearing in mind that the relevant services are ‘retail services in relation to jewellery’ this element is non-distinctive for the public under analysis.

The word element ‘CUPIO’ overshadows the secondary verbal element ‘JEWELLERY’ by virtue of its central position and size. Therefore, the word element ‘CUPIO’ is the dominant element of the contested sign. Although some letters are highly stylized, a significant part of the public will read this word as ‘CUPIO’.

Visually and aurally, the signs coincide in the distinctive word element ‘CUPIO’ which is also dominant in the contested sign. They differ in the non-distinctive and secondary verbal element ‘JEWELLERY’ in the contested sign, as well as in the stylisations and in the colours of the marks. These differences between the signs are substantially outweighed by the coincidence in their entire verbal element. The verbal element ‘JEWELLERY’ will not be pronounced by the English-speaking public because of its non-distinctiveness and very small size.

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

Conceptually, although the public in the relevant territory will perceive the meaning of the element ‘JEWELLERY’ of the contested sign 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.

 

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 as a whole has no meaning for any of the services 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

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.

The contested services are similar to the opponent’s services, and they target the general public whose degree of attention is average. The earlier mark enjoys an average degree of inherent distinctiveness, which affords it a normal scope of protection. The signs are visually highly similar, aurally identical and conceptually not similar.

There is a likelihood of confusion because the differences between the signs are confined to non-distinctive or secondary elements and aspects.

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 or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. 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 11 593 928. It follows that the contested trade mark must be rejected for all the contested services.

As the earlier European Union trade mark registration No 11 593 928 leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (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(1)(a) 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

 

 

Victoria DAFAUCE MENÉNDEZ

Benoît VLEMINCQ

Sylvie ALBRECHT

 

 

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.