OPPOSITION No B 2 449 091

Diesel S.P.A., Via dell'Industria 4-6, 36042 Breganze (VI), Italy (opponent), represented by Barzano' & Zanardo Milano S.P.A., Via Borgonuovo, 10, 20121 Milano, Italy (professional representative)

a g a i n s t

Xiangge Wang, Avda Alacant, 1, 03770 El Verger, Spain (applicant), represented by Onofre Indalecio Sáez Menchón, Gran Via 69 -5° Of. 412, 28013 Madrid, Spain (professional representative).

On 25/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 449 091 is partially upheld, namely for the following contested goods:

Class 14: Timepiece; Jewellery; Gemstones, pearls and precious metals, and imitations thereof; time instruments; Apparatus for sports timing [stopwatches]; Chronometric apparatus and instruments; Apparatus for timing sports events; Chronographs; Watches made of rolled gold; Atomic clocks; Watches; Jewellery, clocks and watches; Horological instruments having quartz movements; Horological instruments made of gold; Digital time indicators having temperature displays; Timing clocks; Ship's chronometers; Stopwatches; Alarm clocks; Electronic alarm clocks; Digital clocks; Sports watches; Travel clocks; Time clocks [master clocks] for controlling other clocks; Divers' watches; Sundials; Mantle clocks; Women's watches; Watches made of precious metals; Mechanical watches; Clocks and watches; Pendulum clocks; Table watches; Watches made of gold; Wall clocks; Clocks and watches for pigeon-fanciers; Floor clocks; Grandfather clocks; Watches made of plated gold; Watches made of precious metals or coated therewith; Pendant watches; Watches bearing insignia; Clocks incorporating radios; Pocket watches; Quartz watches; Timekeeping systems for sports; Clocks; Watches containing a game function; Watches incorporating a memory function; Clocks incorporating ceramics; Watches containing an electronic game function; Small clocks; Watches for outdoor use; Clocks and watches, electric; Miniature clocks; Industrial clocks; Master clocks; Mechanical watches with automatic winding; Mechanical watches with manual winding; Automobile clocks; Watches for nurses; Clocks for world time zones Digital clocks incorporating radios; Digital watches with automatic timers; Digital clocks being electronically controlled; Clock hands [clock- and watchmaking]; Housings for clocks and watches; Horological articles; Watch chains; Clock cases; Watch cases; Watch clasps; Pendants for watch chains; Watch crowns; Watchstraps; Watch straps of polyvinyl chloride; Watch straps of synthetic material; Watch straps of nylon; Watch straps of plastic; Non-leather watch straps; Watchstraps made of leather; Watch straps made of metal or leather or plastic; Metal watch bands; Watch crystals; Anchors [clock- and watchmaking]; Pendulums [clock- and watchmaking]; Metal expanding watch bracelets; Bracelets for watches; Parts for clocks; Parts for clockworks; Mechanical watch oscillators; Electronically operated movements for watches; Movements for clocks and watches; Buckles for watchstraps; Escapements; Dials [clock- and watchmaking]; Cases for watches and clocks; Barrels [clock- and watchmaking]; Watch pouches; Watch springs; parts for clocks; Jewellery boxes and watch boxes; Boxes for timepieces; Cases for watches [presentation]; Statues and figurines, made of or coated with precious or semi-precious metals or stones, or imitations thereof; Ornaments, made of or coated with precious or semi-precious metals or stones, or imitations thereof; Trinkets coated with precious metal; Trinkets of bronze; Objet d'art of enamelled gold; Objet d'art of enamelled silver; Objet d'art made of precious stones; Works of art of precious metal; Silver objets d'art; Commemorative shields; Trophies coated with precious metal alloys; Boxes of precious metal and Key charms coated with precious metals Key rings [trinkets or fobs] of precious metal; Key rings [trinkets or fobs]; Fancy keyrings of precious metals Key fobs [rings] coated with precious metal; Key fobs of precious metals.

Class 18: Bags; Luggage, wallets and other carriers; Shoulder belts; Leather shoulder belts.

Class 25: Clothing; footwear; headgear.

2. European Union trade mark application No 13 226 824 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 13 226 824. The opposition is based on Italian trade mark registration No 1 538 950 for the word mark ‘DIESEL’ and international trade mark registration No 608 499 designating Spain, France and Portugal for the word mark ‘DIESEL’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition, now Article 47(2) and (3) EUTMR), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

For international registrations designating the European Union, the ‘date of publication’ of the contested mark within the meaning of Article 42(2) EUTMR (in the version in force at the time of filing of the opposition, now Article 47(2) EUTMR), that is to say for the purposes of establishing the five-year period of use obligation for the earlier mark, is considered to be six months after the first republication of the international registration, which corresponds to the beginning of the opposition period (Article 156 EUTMR in conjunction with Article 152 EUTMR, in the version in force at the time of filing of the opposition, now Article 196 EUTMR in conjunction with Article 190 EUTMR). The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based: Italian trade mark registration No 1 538 950 and international trade mark registration No 608 499 designating Spain, France and Portugal.

The contested application was published on 17/09/2014. The opponent was therefore required to prove that the trade marks on which the opposition is based was were put to genuine use Italy, Spain, France and Portugal from 17/09/2009 to 16/09/2014 inclusive.

The request was submitted in due time and is admissible as the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

Furthermore, the evidence must show use of the trade marks for the goods on which the opposition is based, namely the following:

Class 14: Timepieces; bijouterie; jewellery.

Class 18: Leather and imitations of leather, goods made thereof not included in other classes; animal skins; trunks and suitcases; umbrellas, parasols and walking sticks; whips and saddlery.

Class 25: Clothing; footwear; headgear.

According to Rule 22(3) EUTMIR (in the version in force at the moment of filing the request for proof of use), the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 03/07/2015 (for the territory of Spain, France and Portugal) and 15/04/2016 (for the territory of Italy), in accordance with Rule 22(2) EUTMIR (in the version in force at the moment of filing the request for proof of use), the Office gave the opponent until 08/09/2015 (for the territory of Spain, France and Portugal) 20/06/2016 (for the territory of Italy) to submit evidence of use of the earlier trade marks. On 05/11/2015, within the duly extended time limit, the opponent submitted evidence of use for all territories.

The evidence to be taken into account is in particular, the following:

 Invoices: As a preliminary remark it needs to be noted that all invoices cover rather high quantities of products and rather high amounts, ranging from several thousand Euros to nearly half a million Euros.

 several hundred Invoices for different clothing articles (trousers, shirts, jackets, skirts, etc.), covering the period from 2010 - 2014, being addressed to different retail clients in Italy, Spain, France and Portugal, showing the sign .

 several Invoices for different leather articles (bags, wallets, keyrings, etc.), covering the period from 2010 - 2014, being addressed to different retail clients in Italy, Spain, France and Portugal showing the sign .

 several Invoices for bracelets covering the period from 2010 - 2014, being addressed to different retail clients in Italy, Spain, and France showing the sign .

 several Invoices for shoes and sneakers, covering the period from 2010 - 2014, being addressed to different retail clients in Portugal showing the sign .

 Press articles and press advertising extracts:

 several hundred press clips of well-known fashion magazines in Italy, Spain and France featuring different clothing articles (trousers, shirts, jackets, skirts, etc.) and different types of hats / caps, covering the period from 2010 - 2014, all referring to the word mark ‘DIESEL’

 several press clips of well-known fashion magazines in Italy, Spain, France and Portugal featuring different watches covering the period from 2010 - 2014, all referring to the word mark ‘DIESEL’

 several press clips of well-known fashion magazines in Italy, Spain and France featuring bags and handbags covering the period from 2010 - 2014, all referring to the word mark ‘DIESEL’

 several press clips of well-known fashion magazines in Spain and Portugal featuring shoes and sneakers covering the period from 2010 - 2014, all referring to the word mark ‘DIESEL’

 some press clips of well-known fashion magazines in Spain and France featuring necklaces and bracelets in 2013, referring to the word mark ‘DIESEL’

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, and its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The documents filed, namely the invoices and press advertising, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. The invoices and press coverings cover practically the entire five year period and amount to significant sales numbers and turnover figures.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, although the evidence submitted by the opponent does not provide advertising and invoices for all goods, it does reach the minimum level necessary to establish genuine use of the earlier trade marks during the relevant period in the relevant territories. The impressive sales numbers allow to offset and/or to extrapolate missing advertising items for individual goods and vice versa.

In the context Rule 22(3) EUTMIR ((in the version in force at the time of filing of the opposition, now Article 10(3) EUTMDR), the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 18(1), second subparagraph, point (a), EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements that do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 47(2) and (3) EUTMR, Article 18 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, the sign as used in a manner that  does not alter the distinctive character of the mark in the form in which it was registered, namely the sign has been used on a red label like background with a white font, which is commonplace stylisation. Further the laudatory and motivational slogan “for successful living” has been added in a very small font. Both elements do not alter the distinctive character of the verbal element “DIESEL” which remains the dominant and the only distinctive element of the sign as used.

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 18(1), second subparagraph, point (a), EUTMR.

However, the evidence filed by the opponent does not show genuine use of the trade marks for all the goods covered by the earlier trade marks.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

In the present case the evidence shows genuine use of the trade mark for the following goods.

.

Class 25: Clothing; footwear; headgear

As regards the goods in Class 14 timepieces, it needs to be mentioned that according to case-law, when applying the abovementioned provision the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub‑categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub‑category or sub‑categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub‑categories. (14/07/2005, T‑126/03, Aladin, EU:T:2005:288).

In the present case, the evidence proves use only for wristwatches. These goods can be considered to form an objective subcategory of timepieces. Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for wristwatches.

As regards the goods in Class 14 bijouterie; jewellery, the abovementioned considerations apply as well. However, In the present case, the evidence proves use only for bracelets; necklaces belonging to the overlapping categories bijouterie; jewellery in the specification. As the opponent is not required to prove all the conceivable variations of the category of goods for which the earlier marks are registered and as the goods for which use has been proved do not constitute a coherent subcategory within the broad category in the specification to which they belong, the Opposition Division considers that the evidence shows genuine use of the trade mark for bijouterie; jewellery.

As regards the goods in Class 18, the abovementioned considerations as to sub-categories apply.

In the present case, the evidence proves use only for handbags, travelling bags, backpacks, keyrings and wallets. Some of these goods can be considered to form an objective subcategory of goods made from leather and imitations of leather, namely bags and backpacks made from leather and imitations of leather. Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for handbags, travelling bags, backpacks, keyrings and wallets made from leather and imitations of leather.

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: Wristwatches; bijouterie; jewellery.

Class 18: Handbags, travelling bags, backpacks, keyrings and wallets made from leather and imitations of leather

Class 25: Clothing; footwear; headgear.

The contested goods are the following:

Class 14: Time instruments; Jewellery boxes and watch boxes; Jewellery; Gemstones, pearls and precious metals, and imitations thereof; Statues and figurines, made of or coated with precious or semi-precious metals or stones, or imitations thereof; Ornaments, made of or coated with precious or semi-precious metals or stones, or imitations thereof; Trinkets coated with precious metal; Trinkets of bronze; Boxes of precious metal; Key charms coated with precious metals; Copper tokens; Key fobs [rings] coated with precious metal; Key fobs of precious metals; Gold ingots; Key rings [trinkets or fobs] of precious metal; Key rings [trinkets or fobs]; Fancy keyrings of precious metals; Coins; Collectible coins; Commemorative coins; Gold bullion coins; Non-monetary coins; Objet d'art of enamelled gold; Objet d'art of enamelled silver; Objet d'art made of precious stones; Works of art of precious metal; Silver objets d'art; Commemorative shields; Trophies coated with precious metal alloys; Clock hands [clock- and watchmaking]; Apparatus for sports timing [stopwatches]; Chronometric apparatus and instruments; Apparatus for timing sports events; Housings for clocks and watches; Horological articles; Watch chains; Clock cases; Boxes for timepieces; Watch cases; Watch clasps; Pendants for watch chains; Watch crowns; Watchstraps; Watch straps of polyvinyl chloride; Watch straps of synthetic material; Watch straps of nylon; Watch straps of plastic; Non-leather watch straps; Watchstraps made of leather; Watch straps made of metal or leather or plastic; Metal watch bands; Watch crystals; Chronographs; Anchors [clock- and watchmaking]; Watches made of rolled gold; Atomic clocks; Watches; Pendulums [clock- and watchmaking]; Metal expanding watch bracelets; Bracelets for watches; Timepieces; Parts for clocks; Parts for clockworks; Mechanical watch oscillators; Electronically operated movements for watches; Movements for clocks and watches; Jewellery, clocks and watches; Horological instruments having quartz movements; Horological instruments made of gold; Digital time indicators having temperature displays; Buckles for watchstraps; Escapements; Dials [clock- and watchmaking]; Cases for watches and clocks; Timing clocks; Ship's chronometers; Stopwatches; Alarm clocks; Electronic alarm clocks; Digital clocks; Sports watches; Travel clocks; Time clocks [master clocks] for controlling other clocks; Divers' watches; Sundials; Mantle clocks; Women's watches; Watches made of precious metals; Mechanical watches; Clocks and watches; Pendulum clocks; Table watches; Watches made of gold; Wall clocks; Clocks and watches for pigeon-fanciers; Floor clocks; Grandfather clocks; Watches made of plated gold; Watches made of precious metals or coated therewith; Pendant watches; Watches bearing insignia; Clocks incorporating radios; Pocket watches; Quartz watches; Barrels [clock- and watchmaking]; Timekeeping systems for sports; Watch pouches; Watch springs; Clocks and parts therefor; Watches containing a game function; Watches incorporating a memory function; Clocks incorporating ceramics; Watches containing an electronic game function; Small clocks; Watches for outdoor use; Clocks and watches, electric; Miniature clocks; Industrial clocks; Master clocks; Mechanical watches with automatic winding; Mechanical watches with manual winding; Automobile clocks; Watches for nurses; Clocks for world time zones; Cases for watches [presentation]; Digital clocks incorporating radios; Digital watches with automatic timers; Digital clocks being electronically controlled.

Class 18: Saddlery, whips and animal apparel; Luggage, bags, wallets and other carriers; Umbrellas and parasols; Sausage skins and imitations thereof; Walking sticks; Trimmings of leather for furniture; Shoulder belts; Leather shoulder belts; Chin straps, of leather; Kid; Boxes made of leather; Leatherboard; Coverings of skins [furs]; Laces (Leather -); Straps for soldiers' equipment; Straps (Leather -); Straps made of imitation leather; Straps for skates; Shoulder straps; Imitation leather; Polyurethane leather; Leather and imitation leather; Leather, unworked or semi-worked; Leather for furniture; Leather for shoes; Butts [parts of hides]; Cases, of leather or leatherboard; Casings, of leather, for springs; Skins of chamois, other than for cleaning purposes; Leather thread; Valves of leather; Skin (Goldbeaters' -); Leather thongs; Studs of leather; Moleskin [imitation of leather]; Curried skins; Animal skins, hides; Cattle skins; Worked or semi-worked hides and other leather; Leather cloth; Industrial packaging containers of leather; Furniture coverings of leather; Sheets of leather for use in manufacture; Sheets of imitation leather for use in manufacture.

Class 25: Headgear; Footwear; Clothing.

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 timepieces as well as the contested horological articles include, as a broader category the opponent’s wristwatches. 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 jewellery is identically included in the list of goods and services of both marks.

The contested time instruments are a different wording for timepieces, which include, as a broader category the opponent’s wristwatches. 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 Apparatus for sports timing [stopwatches]; Chronometric apparatus and instruments; Apparatus for timing sports events; Chronographs; Watches made of rolled gold; Atomic clocks; Watches; clocks and watches; Horological instruments having quartz movements; Horological instruments made of gold; Digital time indicators having temperature displays; Timing clocks; Ship's chronometers; Stopwatches; Alarm clocks; Electronic alarm clocks; Digital clocks; Sports watches; Travel clocks; Time clocks [master clocks] for controlling other clocks; Divers' watches; Sundials; Mantle clocks; Women's watches; Watches made of precious metals; Mechanical watches; Clocks and watches; Pendulum clocks; Table watches; Watches made of gold; Wall clocks; Clocks and watches for pigeon-fanciers; Floor clocks; Grandfather clocks; Watches made of plated gold; Watches made of precious metals or coated therewith; Pendant watches; Watches bearing insignia; Clocks incorporating radios; Pocket watches; Quartz watches; Timekeeping systems for sports; Clocks; Watches containing a game function; Watches incorporating a memory function; Clocks incorporating ceramics; Watches containing an electronic game function; Small clocks; Watches for outdoor use; Clocks and watches, electric; Miniature clocks; Industrial clocks; Master clocks; Mechanical watches with automatic winding; Mechanical watches with manual winding; Automobile clocks; Watches for nurses; Clocks for world time zones; Digital clocks incorporating radios; Digital watches with automatic timers; Digital clocks being electronically controlled are all different kind of devices to measure and/or indicate time and therefore partially identical and partially similar including similar to a low degree to the wristwatches of the earlier mark.

The contested Clock hands [clock- and watchmaking]; Housings for clocks and watches; Watch chains; Clock cases; Watch cases; Watch clasps; Pendants for watch chains; Watch crowns; Watchstraps; Watch straps of polyvinyl chloride; Watch straps of synthetic material; Watch straps of nylon; Watch straps of plastic; Non-leather watch straps; Watchstraps made of leather; Watch straps made of metal or leather or plastic; Metal watch bands; Watch crystals; Anchors [clock- and watchmaking]; Pendulums [clock- and watchmaking]; Metal expanding watch bracelets; Bracelets for watches; Parts for clocks; Parts for clockworks; Mechanical watch oscillators; Electronically operated movements for watches; Movements for clocks and watches; Buckles for watchstraps; Escapements; Dials [clock- and watchmaking]; Cases for watches and clocks; Barrels [clock- and watchmaking]; Watch pouches; Watch springs; parts for clocks; are all parts and accessories to be used in connection with either the wristwatches of the earlier mark, namely to repair or build them, or with other time measuring instruments. It is usual that these parts are sold in the same outlets as wristwatches themselves. The parts usually are produced by the same undertakings as the finished products and are bought by the same consumers. Moreover wristwatches and their relevant parts are complementary. These goods are therefore considered similar.

The contested Gemstones, pearls and precious metals, and imitations thereof are similar to the bijouterie of the earlier mark as the goods share end consumers, distribution channels and producers.

The contested Jewellery boxes and watch boxes; Boxes for timepieces; Cases for watches [presentation] will be used in connection with the earlier mark’s jewellery, bijouterie and wristwatches respectively. They are usually sold in the same outlets, can stem from the same producers and are addressed to the same consumers and are therefore considered similar.

The contested Statues and figurines, made of or coated with precious or semi-precious metals or stones, or imitations thereof; Ornaments, made of or coated with precious or semi-precious metals or stones, or imitations thereof; Trinkets coated with precious metal; Trinkets of bronze; Objet d'art of enamelled gold; Objet d'art of enamelled silver; Objet d'art made of precious stones; Works of art of precious metal; Silver objets d'art; Commemorative shields; Trophies coated with precious metal alloys can take a lot of different forms and sizes, amongst others they can be very small decorative objects. The same can be said for the contested Boxes of precious metal and Key charms coated with precious metals. Thus the contested goods might be produced by the same producers as the earlier right’s jewellery. As the goods can further share distribution channels and are moreover addressed to the same public they are considered to be similar.

The contested Key rings [trinkets or fobs] of precious metal; Key rings [trinkets or fobs]; Fancy keyrings of precious metals Key fobs [rings] coated with precious metal; Key fobs of precious metals; are all intended to store keys together, however, are considered by the public as fashion / decorative articles. For that reason they are often produced by undertakings of the jewellery/bijouterie industry. They share producers, relevant public and distribution channels and are therefore similar to a low degree.

The contested Copper tokens; Coins; Collectible coins; Commemorative coins; Gold bullion coins; Non-monetary coins; Gold ingots; are goods made from metal to basically make it easier to handle. These goods don’t have anything in common with the earlier mark’s bijouterie, which, despite also being made of (precious) metal, is intended for decoration of the human body. Neither are these goods usually produced by the same producers, nor sold in the same outlets. They are therefore dissimilar.

Contested goods in Class 18

The contested bags include, as a broader category he opponent’s bags and backpacks made from leather and imitations of leather. 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 wallets include, as a broader category he opponent’s wallets made from leather and imitations of leather. 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 Luggage, and other carriers are goods used to transport someone’s belongings while outside the house, namely while travelling. The earlier mark’s bags and backpacks made from leather and imitations of leather serve the same purpose. They are usually sold in the same stores, produced by the same undertakings and bought by the same consumers, often even in connection with one another. They are moreover interchangeable. These goods are therefore similar to a high degree.

The contested Shoulder belts; Leather shoulder belts are accessories which may be used in connection with the earlier trademark’s bags and backpacks made from leather and imitations of leather. These goods are typically sold together in the same stores, are produced by the same undertakings and bought together by the same public. Thus they are similar.

The contested Chin straps, of leather; Laces (Leather -); Straps for soldiers' equipment; Straps (Leather -); Straps made of imitation leather; Straps for skates; Shoulder straps; Boxes made of leather; are bands made from leather which serve to hold together or in a certain position parts or assemblies of other goods, Casings, of leather, for springs; Studs of leather; Furniture coverings of leather; Industrial packaging containers of leather are different products in which leather or imitations thereof are used to protect other goods (like springs or furniture). The nature of these goods is very different from that of wristwatches; bijouterie; jewellery in Class 14, Handbags, travelling bags, backpacks, keyrings and wallets made from leather and imitations of leather in Class 18 and clothing, headgear and footwear in Class 25. They serve very different purposes (holding together, storage, protection from damage, versus transport of one’s belongings and covering/protecting the human body). They do not usually have the same retail outlets and are not usually made by the same manufacturers. These goods are considered dissimilar.

The contested umbrellas are devices for protection from the weather consisting of a collapsible, usually circular canopy mounted on a central rod; parasols are light umbrellas carried for protection from the sun; walking sticks are canes or other staffs used as aids for walking; whips are instruments used for driving animals; saddlery and animal apparel is equipment for horses, such as saddles and harnesses. The nature of these goods is very different from that of wristwatches; bijouterie; jewellery in Class 14, bags and backpacks made from leather and imitations of leather in Class 18 and clothing, headgear and footwear in Class 25. They serve very different purposes (storage, protection from rain/sun, assistance with walking, aid in the control and/or riding of animals versus transport of one’s belongings and covering/protecting the human body). They do not usually have the same retail outlets and are not usually made by the same manufacturers. These goods are considered dissimilar.

The contested Leatherboard; Coverings of skins [furs]; Imitation leather; Polyurethane leather; Leather and imitation leather; Leather, unworked or semi-worked; Leather for furniture; Leather for shoes; Butts [parts of hides]; Cases, of leather or leatherboard; Skins of chamois, other than for cleaning purposes; Leather thread; Valves of leather; Skin (Goldbeaters' -); Leather thongs; Trimmings of leather for furniture; Moleskin [imitation of leather]; Curried skins; Kid; Sausage skins and imitations thereof; Animal skins, hides; Cattle skins; Worked or semi-worked hides and other leather; Leather cloth; Sheets of leather for use in manufacture; Sheets of imitation leather for use in manufacture. Leather and imitations of leather; animal skins and hides in Class 18 refer to the skins of various kinds of animals (or imitations thereof) and other comparable goods. These are all raw materials. The fact that one product is used for manufacturing another (for example, leather for handbags) is not sufficient in itself for concluding that the goods are similar, as their nature, purpose, relevant public and distribution channels may be quite distinct. The abovementioned raw materials in Class 18 are intended for use in industry rather than for direct purchase by the final consumer. They are sold in different outlets, are of a different nature and serve a different purpose from all earlier goods in Classes 14 ,18 and 25 which are finished products intended for the purchase and use by individuals rather than by the industry. Therefore, these goods are dissimilar.

Contested goods in Class 25

Clothing; footwear; headgear are identically protected by both marks.

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 are directed at the public at large. The degree of attention will vary from average for the rather inexpensive goods like (standard) clothing or inexpensive watches to high for the more expensive goods like jewellery as the consumers tend to pay more attention when acquiring high priced goods.

c) The signs

DIESEL
Earlier trade mark	Contested sign

The relevant territory is Italy, Spain, France and Portugal.

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 a word mark, showing the word Diesel. It will be perceived as referring to the fuel type “Diesel”.

The contested sign is a figurative mark, consisting of the bold printed capital letter sequence I E 5 E L, preceded by a stylised letter B being slightly bigger than the rest of the letters and having the lower half circle depicted significantly bigger than the upper half circle. As the number 5 in the middle of the word does not make any sense it will be read as the letter S by at least part of the public. Moreover the design of the initial letter B will lead part of the public to read it as a stylised letter D, this reading is reinforced by the fact that the word “Biesel” does not exist in the relevant territory, while “Diesel” is a commonly known fuel type. As the meaning of the word has nothing to do with the goods and services at hand, the distinctiveness of the sign can be seen as normal.

Visually, the signs coincide in the letter string “- IE-EL”, while they differ in the initial letters “D” of the earlier mark and “B” of the contested mark and the middle part of the signs being the letter “S” and the number “5” respectively. For the part of the public who sees the initial letter of the contested mark as the stylised letter “D” the marks differ only in the middle letter/number “S” and “5”.

Therefore, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the in the letter string “- IE-EL”, while it differs in the initial letters “D” of the earlier mark and “B” of the contested mark and the middle part of the signs being the letter “S” and the number “5” respectively for a part of the public. For the part of the public who sees the initial letter of the contested mark as the stylised letter “D” and who pronounces/sees the number “5” in the contested sign as replacing the letter “S” the signs are aurally identical.

Conceptually, while the public in the relevant territory will perceive the earlier sign as being the common name of a car fuel variety, for part of the public the contested sign lacks any meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar for this part of the public. For the part of the public who reads the contested sign as “Diesel” the signs share the identical concept.

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

The signs were found to be highly similar for a part of the public and the contested goods were found to be identical, similar and partly dissimilar to those covered by the earlier trade marks. Given the high similarity of the signs, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition is upheld also insofar as it is directed against identical and similar goods.

There is a likelihood of confusion because the differences between the signs are confined to stylisations of the contested sign that will not be perceived as differences by part of the public.

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). As in the present case, part of the public will see the contested sign as a mere stylised, fanciful version of the earlier sign the signs are close to being seen as identical and therefore likelihood of confusion exists even for goods that have been found similar only to a low degree and for the part of the public who is paying a high degree of attention to their purchase.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion and therefore the opposition is partly well founded on the basis of the opponent’s earlier Italian trade mark registration No 1 538 950 and international trade mark registration No 608 499 designating Spain, France and Portugal.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade marks.

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.

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

Dorothee SCHLIEPHAKE

Volker Timo MENSING

Sandra KASPERIUNAITE

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.