OPPOSITION Nо B 3 130 016

 

Goldschmiede Hofacker GmbH, Schloßstr. 14, 56068 Koblenz, Germany (opponent), represented by Brinkmann & Partner Patentanwälte Partnerschaft mbB, Am Seestern 8, 40547 Düsseldorf, Germany (professional representative)

a g a i n s t

S. Malhotra & Co. AG, Haldenstrasse 5, 6340 Baar, Switzerland (applicant), represented by Sonia del Valle Valiente, C/ Miguel Ángel Cantero Oliva, 5, 53, 28660 Boadilla del Monte (Madrid), Spain (professional representative).

On 22/07/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 130 016 is upheld for all the contested goods, namely:

 

	Class 14: Precious metals; alloys of precious metal; jewellery; precious stones; semi precious stones; gemstones, pearls and precious metals and imitations thereof; key rings and key chains and charms therefor; ornaments, made of or coated with precious or semi-precious metals or stones, or imitations thereof; statues and figurines, made of or coated with precious or semi-precious metals or stones, or imitations thereof; time instruments; chronometric instruments; clocks; watches; jewellery boxes and watch boxes.
2.		European Union trade mark application No 18 240 505 is rejected for all the contested goods. It may proceed for the remaining goods.

 

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

REASONS

 

On 02/09/2020, the opponent filed an opposition against some of the goods of European Union trade mark application No 18 240 505 ‘LES MYSTÈRES DE PARIS’ (word mark), namely against all the goods in Class 14. The opposition is based on German trade mark registration No 302 018 113 826 (figurative mark). 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.

a) The goods

 

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

 

Class 14: Jewelry, jewelery; rings; earrings; ear clips; brooches; necklaces; collars; pendant; chains; bracelet; bangles; choker; gemstones; pearls; packaging, namely jewelry boxes and jewelry cases; unprocessed minerals [stones] being decorations, jewelery and collectibles for the aforesaid goods; parts and fittings for the aforesaid goods, included in class 14; silver; silver alloys; tarnish-resistant silver alloys; clocks, in particular jewelry clocks; clocks and chronometric instruments, in particular small clocks, wristwatches, clock parts, dials, clock cases, clockworks, clockwork parts.

The contested goods are the following:

Class 14: Precious metals; alloys of precious metal; jewellery; precious stones; semi precious stones; gemstones, pearls and precious metals and imitations thereof; key rings and key chains and charms therefor; ornaments, made of or coated with precious or semi-precious metals or stones, or imitations thereof; statues and figurines, made of or coated with precious or semi-precious metals or stones, or imitations thereof; time instruments; chronometric instruments; clocks; watches; jewellery boxes and watch boxes.

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

The term ‘in particular’, 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).

 

However, the term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods and services 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.

Jewellery; gemstones; pearls; chronometric instruments; clocks; jewellery boxes are identically contained in both lists of goods (including synonyms).

The contested precious stones are identical to the opponent’s gemstones since they are synonyms (according to Collins dictionary at https://www.collinsdictionary.com/dictionary/english/gemstone a gemstone is ‘a precious or semiprecious stone, esp. one cut and polished for setting in jewellery’).

The contested precious metals (listed twice); alloys of precious metal include respectively, as broader categories, the opponent’s silver; silver alloys. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested ornaments, made of or coated with precious or semi-precious metals or stones, or imitations thereof include, as a broader category the opponent’s jewelery and collectibles for the aforesaid goods. Indeed, pieces of jewellery are sometimes referred to as ornaments. 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 time instruments; watches include, are included in, or overlap with, the opponent’s clocks and chronometric instruments, in particular small clocks, wristwatches, clock parts, dials, clock cases, clockworks, clockwork parts. Therefore, they are identical.

The contested semi precious stones are similar to a high degree to the opponent’s gemstones. These goods have the same purposes, methods of use, manufacturers, distribution channels, they target the same public and they are in competition.

The contested imitations of precious metal are similar to a high degree to the opponent’s silver; silver alloys. These goods have the same purposes, methods of use, manufacturers, distribution channels, they target the same public and they are in competition.

The contested watch boxes are similar to a high degree to the opponent’s packaging, namely jewelry boxes. These goods have the same natures, purposes, methods of use, manufacturers, distribution channels and they target the same public.

The contested statues and figurines, made of or coated with precious or semi-precious metals or stones, or imitations thereof are at least similar to a low degree to the opponent’s unprocessed minerals [stones] being decorations and collectibles for the aforesaid goods. These goods have the same purpose since they are decorative items made of precious or semi precious materials, they target the same public and they coincide in their distribution channels.

The contested key rings and key chains and charms therefor are similar to a low degree to the opponent’s jewellery. These goods coincide in their manufacturers, distribution channels and they target the same public. Furthermore, these items are decorative and they can have the same purpose although their basic nature is not the same.

 

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.

 

The degree of attention may vary from average to high, depending on the specialised nature of the goods, 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 some of these goods such as jewellery, precious stones as they are luxury items and/or will be intended as gifts. A relatively high degree of attention on the part of the consumer may be assumed.

 

c) The signs

 

	LES MYSTÈRES DE PARIS
Earlier trade mark	Contested sign

 

The relevant territory is Germany.

 

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 consists in the French word ‘MYSTÈRE’ written in a slightly stylised typeface. For part of the public, this word is meaningless whereas for another part of the public it will be perceived as meaning ‘mystery’ since it is quite similar to the German word ‘Mysterium’. Whether or not understood, it is distinctive to an average degree since it has no meaning in relation to the goods.

Regarding the stylisation of the earlier mark, it is not particularly striking and it performs an essentially decorative function. The public is used to perceive such depiction as ornamental element and will instantly attribute more trade mark significance to the verbal element of the sign.

The contested mark is the word mark ‘LES MYSTÈRES DE PARIS’. As a whole, this French expression is meaningless for the majority the relevant public. However, ‘PARIS’ will be perceived by the public as France’s capital. Its degree of distinctiveness is rather low since it is likely to be perceived as designating the geographical origin of the goods and/or the applicant given that Paris is a well-known place for fashion and related accessories. ‘LES’ and ‘DE’ might be perceived by part of the public with a good command of French respectively as an article and a preposition. The above considerations concerning the meaning and distinctiveness of the word ‘MYSTÈRE’ of the earlier mark equally applies to the component ‘MYSTÈRES’ of the contested sign, although it is written in plural.

The signs have no element that could be considered clearly more dominant than other elements. 

 

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.

 

Visually and aurally, the signs coincide in the string of letters ‘M-Y-S-T-È-R-E’ and in their sounds. The earlier mark is fully included in the first part of the contested sign. The signs visually differ in the stylisation of the earlier mark and in the final letter ‘S’ (of the component ‘MYSTÈRES’) and in the additional elements ‘LES’, ‘DE’ and ‘PARIS’ of the contested sign and their sounds. Given the above considerations concerning the distinctive elements of the signs, the signs are considered visually and aurally similar to an above-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 word ‘PARIS’ of the contested sign, for part of public the earlier mark has no meaning. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar. However, for another part of the public, both signs will be associated with the same concept of ‘mystery’ and are therefore conceptually similar to an above-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.

 

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 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

 

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

Account is 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).

The goods are partly identical and partly similar to varying degrees. The degree of attention of the public varies from average to high.

The signs are visually and aurally similar to an above-average degree. For part of the public, the signs are also conceptually similar to an above-average degree.

 

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.

 

In the present case, due to the coinciding distinctive element ‘MYSTÈRE’ and the fact that the earlier mark is fully included in the contested sign, 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).

The addition of the component ‘PARIS’ in the contested sign is clearly insufficient to distinguish between the signs since it is a rather weak element that is likely to indicate the geographical origin of the goods and/or the applicant.

 

Considering all the above, there is a likelihood of confusion, including a likelihood of association, on the part of the public, even when it displays a high degree of attention.

 Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 302 018 113 826. It follows that the contested trade mark must be rejected for all the contested goods, including those similar to a low degree given the relevant similarities between the signs.

 

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

 

 

Begoña URIARTE VALIENTE

Frédérique SULPICE

Martina GALLE

 

 

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.