OPPOSITION No B 2 604 687

River Light V, L.P., 11 West 19th Street, 7th Floor, 10011 New York, United States (opponent), represented by Bomhard IP, S.L., C/Bilbao, 1, 5º, 03001 Alicante, Spain (professional representative)

a g a i n s t

Damian Arnaldo Lopez, Doctor Fleming, 2, 46185 La Pobla de Vallbona, Spain (applicant), represented by A.A. Manzano Patentes & Marcas, S.L., Avda. Pedro Díez, 21 Duplicado 1º Oficina 9, 28019 Madrid, Spain (professional representative).

On 24/09/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 604 687 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 347 711 for the figurative mark , namely against all the goods and services in Classes 14, 35 and 42. The opposition is based on European Union trade mark registration No 11 248 143 and international registration No 850 292 and No 854 054 designating the European Union, all for the figurative mark . The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

SUBSTANTIATION

According to Article 76 (1) EUTMR (in the version in force at the time of commencement of the adversarial part, now Article 95(1) EUTMR), in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), the Office will give the opposing party the opportunity to submit the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR (in the version in force at the time of commencement of the adversarial part), within the period referred to above, the opposing party must also file evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark that is not a European Union trade mark, the opposing party must submit a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR (in the version in force at the time of commencement of the adversarial part).

In the present case, the notice of opposition was not accompanied by any evidence as regards the earlier International registrations designating the European Union on which the opposition is based.

On 12/11/2015 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 17/03/2016.

The opponent did not submit any evidence concerning the substantiation of the earlier trade marks.

According to Rule 20(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), if until expiry of the period referred to in Rule 19(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on these earlier marks.

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 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 earlier trade mark is a figurative mark consisting of a circle in which are depicted four black curved arrows pointing in four different directions. The display of the arrows consists of inversions, creating, de facto, mirror effects. The opponent argues that the figurative element consists of two letters ‘T’. The Opposition Division disagrees and rather considers that this element will be perceived as containing arrows, or eventually two chandeliers.

On the other hand, the contested sign is also a figurative mark but containing both word and figurative elements.

The word element of the contested sign is ‘anartxy’, written in black lower-case letters and followed by a black full stop. The full stop is an element of little trade mark significance (21/06/2018, R 2427/2017-5, tec.nicum (fig.) / T TECNIUM (fig.), § 95).

The word ‘anartxy’ is meaningless for a vast majority of the relevant public, even if part of the public could perceive it as referring to ‘anarchy’ (e.g. the French- and English speaking part of the public). In both cases, this element has no meaning in relation to the relevant goods and services, which are related to jewellery, and has an average degree of distinctive character.

The contested sign’s figurative element consists of a grey circle in which are depicted two components creating as well a mirror effect.

The figurative elements of both marks are distinctive to an average degree.

Unlike the opponent’s observations, the Opposition Division does not consider that the contested sign is dominated by the figurative elements. On the contrary, it must be considered that there is no clear dominant element in the marks at issue, even if, in the contested sign, the colour and the size of the verbal element makes it slightly more eye catching than the figurative element.

Visually, the overall impression of the conflicting marks is different. The distinctive element ‘anartxy’ of the contested mark has nothing in common with the earlier mark apart from the use of a similar black colour but this mere fact cannot render the marks similar. The same applies to the fact that in both marks, there is a figurative element consisting of a circle in which are depicted elements displayed with a mirror effect. Indeed, the circle is one of the most basic geometrical figures (23/10/2012, R 1950/2011-4, SURFPIN (fig. mark) / DEVICE OF THREEOVERLAPPING CIRCLES (fig. mark) et al. §17). The fact that there is a mirror effect in both marks cannot be considered as sufficient to find the marks similar. In the earlier mark, there are four elements which are figurative arrows, or eventually chandeliers, whereas the contested sign contains two elements which are purely figurative. The colours of the figurative elements are also different, namely grey in the contested sign and black in the earlier mark, as well as the inclination.

The opponent refers to case-law where it was stated that the consumer normally attaches more importance to the first part of trade marks. Even though this statement is correct, the principle does not always apply, in particular in the scenario where the first element has less significance. In the present case, account should be taken of the fact that where a mark contains both word and figurative elements, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37; 19/12/2011, R 233/2011 4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). Therefore, the opponent’s argument must be set aside.

In addition, the opponent argues that the contested sign is used without the word element. However, this argument cannot be taken into consideration, as the marks as registered have to be compared, not the marks as used (see for parallel reasoning, 11/07/2013, T‑208/12, Rote Schnürsenkelenden, EU:T:2013:376, § 44)

Furthermore, the applicant refers to a previous national decision to support its arguments. However, it must be noted that decisions of national courts and national offices regarding conflicts between identical or similar trade marks at national level do not have a binding effect on the Office since the European Union trade mark regime is an autonomous system, which applies independently of any national system (13/09/2010, T‑292/08, Often, EU:T:2010:399).

Even though previous national decisions are not binding, their reasoning and outcome should be duly considered, particularly when the decision has been taken in the Member State that is relevant to the proceedings.

The opponent refers to a decision of the French National Institute of Industrial Property in a case opposing the following marks / . However, in the present case, the decision the opponent refers to is different because the signs under comparison were different from the present proceedings as both the figurative and the word components differ.

Therefore, given the foregoing, the signs are visually dissimilar.

Purely figurative signs are not subject to a phonetic assessment. As one of the signs is purely figurative, it is not possible to compare them aurally.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The earlier mark conveys the concept coming from the four arrows whereas the contested sign conveys at most one concept, namely the reference to ‘anartxy’.

Therefore, the signs are conceptually dissimilar.

b) Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are not similar in any of the relevant criteria, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

This finding would still be valid even if the earlier trade mark were to be considered as enjoying a high degree of distinctiveness. Given that the absence of similarity of the signs cannot be overcome by the highly distinctive character of the earlier trade mark, the evidence submitted by the opponent in this respect does not alter the outcome reached above.

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

 The signs must be either identical or similar.

 The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

 Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

a) The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

As seen above, similarity between the signs is a requirement for the opposition to be successful under Article 8(5) EUTMR. Since the signs are not similar in any of the relevant criteria, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled. Therefore, the opposition must be rejected and there is no need to examine the other conditions laid down by Article 8(5) EUTMR (24/03/2011, C‑552/09 P, TiMiKinderjoghurt, EU:C:2011:177, § 66).

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Nicole CLARKE

Birgit FILTENBORG

Christophe DU JARDIN

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.