OPPOSITION No B 3 015 529

Cartier International AG, Hinterbergstr. 22, Postfach 61, 6312 Steinhausen, Switzerland (opponent), represented by Cabinet Germain & Maureau, 12, rue Boileau, 69006 Lyon, France (professional representative)

a g a i n s t

Shenzhenshi Huiyu Dianzishangwu Youxiangongsi, Shenzhenshi Longhuaqu Longhuajiedao, Yousonglu Xinglongfu Chuangkeyuan A709, People’s Republic of China (applicant), represented by The Trade Marks Bureau, 3rd Floor, 14 Hanover Street, Hanover Square, London, W1S 1YH, United Kingdom (professional representative).

On 18/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 015 529 is partially upheld, namely for the following contested goods:

Class 14: Alloys of precious metal; jewellery chains; jewellery; semi-precious stones; spinels; earrings; cabochons; jewellery made in whole or significant part of {silver}; jewellery findings, namely, jump rings, toggles, clasps; jewellery findings; jewellery charms; necklaces [jewellery]; ornaments [jewellery]; precious stones; paste jewellery; pins being jewellery; synthetic diamonds; jewellery cases; jewellery boxes; presentation boxes for jewellery.

2. European Union trade mark application No 17 232 315 is rejected for all the above goods. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 232 315 for the word mark ‘Beyond Love’. The opposition is based on international trade mark registration No 1 029 142 designating the European Union for the figurative mark . The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

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.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in the European Union.

Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case, the contested trade mark was filed on 21/09/2017. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely:

Class 14: Goods in precious metals and coated therewith; cuff-links, tie clips, rings, bracelets, earrings, necklaces, brooches, key rings; watches, chronometers, clocks, watch straps, watch bracelets, boxes of precious metals for watches and jewellery.

The opposition is directed against the following goods and services:

Class 14: Alloys of precious metal; jewellery chains; jewellery; semi-precious stones; spinels; earrings; cabochons; jewellery made in whole or significant part of {silver}; jewellery findings, namely, jump rings, toggles, clasps; jewellery findings; jewellery charms; necklaces [jewellery]; ornaments [jewellery]; precious stones; paste jewellery; pins being jewellery; synthetic diamonds; jewellery cases; jewellery boxes; presentation boxes for jewellery.

Class 35: Demonstration of goods; distribution of samples; advertising and publicity; on-line advertising on a computer network; pay per click advertising; direct mail advertising; advertising; modelling services for advertising or sales promotion; presentation of goods on communication media, for retail purposes; providing business information via a website.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 04/05/2018, the opponent submitted the following evidence:

• Extracts (undated), in English, French, German, Spanish and Italian, from the websites cartier.com, cartier.fr, cartier.de, cartier.es and cartier.it, on the history of the mark, stating ‘a child of 1970s New York, the collection remains today an iconic symbol of that transgresses convention. The screw motifs, ideal oval shape and undeniable elegance establish the piece as a timeless tribute to passionate romance. Studded with diamonds, yellow gold or rose gold: how far would you go for love? … iconic designs that never go out of style. Find a to call your own with necklaces, rings, and bracelets. Explore Trinity de Cartier jewellery for a timeless expression of , fidelity, and friendship. Explore classic designs by Cartier and learn how these creations are classics for a modern age.’

• Extracts from various magazines, leaflets and websites, dated between 2006 and 2018, and from various countries in the European Union (France, Germany, the United Kingdom, Belgium, Italy, etc.), mentioning and/or displaying ‘Cartier’s Love collection’, the ‘Love bracelet’, etc. The earlier mark appears as registered in many of the documents. For example: an extract from the website www.grazia.fr, which reads, ‘In the Early 70’s, Peace and Love echoes to the plush corridors of the house CARTIER in New York City. The luxurious brand winked at hippie movement, naming one of its bracelets LOVE’; an extract from www.blog.myluxury.biz, stating, ‘The launch of the bracelet began in 1970 and immediately became a resounding success’; an extract from Madame Figaro, stating, ‘Symbol of unalterable and definitive bound, the famous LOVE bracelet of Cartier keeps its same significant power since its creation in years 1970’; an extract from Psychologies, stating, ‘Cult jewel of the 1970’s, the LOVE bracelet is in the trend again’; an extract from Valeurs actuelles, stating, ‘Love talisman, the Love bracelet has become a myth after being chosen by legendary couples such as Elizabeth Taylor and Richard Burton, Ali MacGraw and Steve McQueen’; an extract from www.puretrend.com (2016), stating, ‘The Cartier Love bracelet is having a major resurgence, in part fuelled by one of the most divisive celebrities around. In 2013, the Huffington Post pointed out that Kylie Jenner – then just 16 – was wearing roughly $40,000 worth of the iconic bracelets. In 2014, MTV said that she was casually wearing the price of a college education on her arm’; an extract from www.piaoliu.blogspace.be, stating, ‘Cartier Love rings collection of exquisite jewellery models with its innovative designs and modern charms’; an extract from www.vogue.es, referring to ‘the mythical bracelet Love’; an extract from www.styleinstitute.co.uk, stating, ‘These exquisite Love bracelets have been seen on almost every celebrity on the planet (male and female) since the 60’s and have never lost their popularity due to their unique look and exquisite style’; an extract from www.townandcountrymag.com, dated 30/08/2017, stating, ‘Cartier’s Love bracelet is one of the most iconic pieces of jewelry ever designed – and also one of the most popular: last year, it was the most Googled piece of jewellery in the world’; and an extract from www.lifestyleasia.com, dated 30/01/2018, stating, ‘from Angelina Jolie to Elizabeth Taylor, Kylie Jenner and the late Princess Diana, Cartier’s iconic Love bracelet has been adored by celebrities and royals for decades’.

• Sample material from advertising campaigns (undated), showing bracelets from the ‘LOVE’ collection and featuring the earlier mark, . The opponent also mentions in its arguments (without providing any supporting evidence) that it spent EUR 2 195 million in 2007, EUR 2 575 million in 2008 and EUR 903 000 in 2009 on promoting the mark.

• Information relating to the opponent’s involvement in charitable associations. It runs the worldwide ‘LOVE Charity Day’, during which profits from the sales of ‘LOVE’ bracelets are donated to charitable associations chosen by the celebrities who support the event.

• Some decisions (dated 2010-2013) from the French INPI (Institut National de la Propriété Industrielle) confirming the reputation of the earlier mark.

On the basis of the above, the Opposition Division concludes that the earlier trade mark has a certain degree of reputation in the European Union for bracelets in Class 14.

Although there is no direct evidence of the recognition of the mark by the relevant public (e.g. there are no surveys), it is clear from the evidence that the earlier trade mark has been subject to long-standing and intensive use and is generally known in the relevant market, where it enjoys a consolidated position and has built up an image of exclusivity and luxury, as has been attested by diverse independent sources (e.g. www.grazia.fr and www.vogue.es). The various references in the press to its success all unequivocally show that the mark enjoys a high degree of recognition among the relevant public.

The material submitted shows that the mark has been extensively used in or on French-, English-, German-, Italian- and Spanish-language advertisements, media campaigns, home pages, newspapers and leaflets promoting charity events during the period between 2006 and 2018 in relation to bracelets.

The samples of material from advertising campaigns for the ‘LOVE’ collection suggest that a considerable investment has been made in marketing.

Furthermore, from the evidence, it is clear that the goods sold under the earlier mark are very popular with celebrities, as discussed in various press articles.

Therefore, the documents show that the trade mark is widely known by the relevant public.

This finding is also confirmed by the previous EUIPO and INPI decisions referred to by the opponent and by 04/11/2015, R 23/2015-1, Love Literally / Love (FIG. MARK) et al.

However, the evidence does not succeed in establishing that the trade mark has a reputation for all the goods on which the opposition is based and for which reputation has been claimed. The evidence mainly relates to bracelets, whereas there is little or no reference to the remaining goods. This is clear, for example, from the press clippings and advertisements, in which mainly the former are mentioned.

2. The signs

	Beyond Love
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). This applies by analogy to international registrations designating the European Union.

All verbal elements of the signs will be understood by the English-speaking part of the public in the relevant territory. Although the second letter of the earlier mark is highly stylised, the relevant public will perceive it as the letter ‘O’, since it is most similar to that letter, and will perceive the whole earlier sign as ‘LOVE’, and not as ‘LEVE’, as argued by the applicant, since not only is the public more likely to look for a meaningful word, but also the second letter, albeit highly stylised, is completely closed, and is clearly different from the last letter, which is clearly an ‘e’.

Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The word ‘LOVE’, present in both signs, refers to an intense emotion of affection, warmth, fondness and regard towards a person or thing.

Although some of the goods in Class 14 may be purchased for loved ones, this does not constitute a strong enough link with the word ‘LOVE’ to render it non-distinctive, and, consequently, this element has an average degree of distinctiveness for all the goods concerned. The word ‘LOVE’ is also distinctive for the services in Class 35.

The element ‘Beyond’ in the contested sign will be perceived as ‘more extreme than, further-reaching than’. This element has a normal degree of distinctiveness in relation to the relevant goods and services. The contested sign as a whole will be perceived as ‘more extreme than love’ or ‘further reaching than love’. The contested sign has no elements that are more distinctive than others.

Neither sign has any elements that are more dominant than others.

Visually, the signs coincide in the verbal element ‘LOVE’, which is the sole verbal element in the earlier mark and the second verbal element in the contested sign. However, they differ in the additional verbal element, ‘Beyond’, in the contested sign and in the stylisation of the earlier mark. The contested sign is a word mark. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether they are presented in upper or lower case letters, or in a combination thereof.

Taking the above into account, the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the word ‘LOVE’, present identically in both signs. The pronunciation differs in the sound of the additional element, ‘Beyond’, in the contested sign.

Therefore, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with similar meanings on account of the distinctive element ‘LOVE’, while the contested sign has an additional word that further qualifies this concept, the signs are conceptually similar to an average degree.

Taking into account that the signs have been found similar in at least one aspect of the comparison, the examination of the existence of a risk of injury will proceed.

3. The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are aurally and conceptually similar to an average degree, and visually similar to a low degree. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed by several judgments (23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29, 31; 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 66). It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 42):

 the degree of similarity between the signs;

 the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 the strength of the earlier mark’s reputation;

 the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

As concluded above, the earlier mark has a reputation in the European Union for bracelets. The mark has been used for over 40 years to refer to what has become a famous cult bracelet.

The conflicting marks are aurally and conceptually similar to an average degree, and visually similar to a low degree.

The earlier mark has a reputation for bracelets. The contested goods in Class 14 are alloys of precious metal; jewellery chains; jewellery; semi-precious stones; spinels; earrings; cabochons; jewellery made in whole or significant part of {silver}; jewellery findings, namely, jump rings, toggles, clasps; jewellery findings; jewellery charms; necklaces [jewellery]; ornaments [jewellery]; precious stones; paste jewellery; pins being jewellery; synthetic diamonds; jewellery cases; jewellery boxes; presentation boxes for jewellery.

Some of the contested goods in Class 14 are identical to the opponent’s bracelets; this is the case, for example, for jewellery, as the latter includes the opponent’s bracelets. Other contested goods are similar to the opponent’s bracelets; this is the case, for example, for necklaces [jewellery]; semi-precious stones; earrings and jewellery charms. Charms, necklaces and earrings are, like bracelets, types of jewellery; therefore, they have the same nature, and they can have the same producers, relevant public and distribution channels. Precious and semi-precious stones, especially in mountings, might form part of the opponent’s goods. The opponent’s goods and these contested goods can be found in the same outlets, since a jeweller’s shop will usually not only offer the finished product but also provide the customer with a range of unworked or faceted precious stones for personalised creations. The colour, shape and size of a precious stone are all elements that may make jewellery individual and valuable. These goods target the same consumers and can serve the same purpose as the opponent’s goods. The remaining contested goods, for example alloys of precious metal; jewellery findings, are perhaps not similar to the opponent’s goods, but they are certainly closely related. The contested goods are used in the manufacture of the opponent’s goods and belong, therefore, to the same sector, that of jewellery. The same applies to jewellery cases; jewellery boxes; presentation boxes for jewellery, which are closely related to the opponent’s bracelets, since they are used to store or present jewellery items.

The applicant refers to 27/11/2017, R 369/2017-1, in support of its argument that some of the conflicting goods are dissimilar. That decision is not relevant in the present case. First of all, the goods under comparison are not the same. In the case referred to by the applicant, the opponent’s goods were watches and parts thereof, while in the present case the opponent’s goods are bracelets. Furthermore, the decision referred to concerned an assessment under Article 8(1)(b) EUTMR, and not under Article 8(5) EUTMR, as in the present case, for which identity or similarity is not required and a certain connection between the goods might be sufficient.

The relevant public for the opponent’s bracelets is the public at large. Most of the contested goods in Class 14 also target the public at large, while some target a more professional public exclusively (e.g. alloys of precious metal; jewellery findings). Nevertheless, the professional public purchasing these raw materials is producing and selling final jewellery products and, therefore, it is also aware of the marks in its sector that have reputations. Therefore, there is a clear overlap in the relevant publics.

The applicant argues that the services in Class 35, namely demonstration of goods; distribution of samples; advertising and publicity; on-line advertising on a computer network; pay per click advertising; direct mail advertising; advertising; modelling services for advertising or sales promotion; presentation of goods on communication media, for retail purposes; providing business information via a website, are similar to the opponent’s goods, as they are complementary. In support of this reasoning, the applicant refers to previous Office decisions, namely 21/02/2017, B 2 443 904, and 28/03/2011, B 1 352 626. However, the services in those decisions concerned retail services of particular goods that were found to be similar to a low degree to those particular goods. In the present case, the contested services in Class 35 are not retail services but mainly business and advertising services. Therefore, the same reasoning is not applicable in the present case.

The contested services are services to support other businesses. They are aimed at helping other businesses to do or improve business and in principle target a professional public. More specifically, advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and enabling them to acquire a competitive advantage through publicity. These services are very different from the manufacturing of bracelets.

In the absence of any evidence or at least of a coherent argument demonstrating why the relevant public would establish a link between the signs in respect of those services, the Opposition Division cannot conclude, prima facie, that such a link is likely to be established in the ordinary course of events. The contested business and advertising services are mostly services that are not commonly provided by the producers of jewellery or connected to the manufacturing of jewellery. Moreover, the Opposition Division is not aware of any market reality that would allow it to reach any other conclusion.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that, when encountering the contested mark in relation to the contested goods in Class 14, the relevant consumers are likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs. However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T‑301/09, Citigate, EU:T:2012:473, § 96).

As far as the remaining services in Class 35 are concerned, and taking into account and weighing up all of the relevant factors of the present case, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them. Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected for those services.

The decision will now examine the risk of injury with respect to the goods in Class 14 for which a link has been established.

4. Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

 it takes unfair advantage of the distinctive character or the repute of the earlier mark;

 it is detrimental to the repute of the earlier mark;

 it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

The opponent claims that use of the contested trade mark would take unfair advantage of the repute of the earlier trade mark.

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free‑riding on the coat‑tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 48; 22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 40).

The opponent bases its claim on the following:

The applicant takes unfair advantage of the reputation of , using the prestigious image of the brand to designate its own products and giving consumers a false impression of luxury. On the basis of Article 8(5) EUTMR, there is an obvious attempt due to the reputation of the earlier mark, the identity and similarity of activities and the link which will be made by the consumer.

The earlier mark is being used for about 50 years and has built up an image of exclusivity and luxury. As the relevant public would establish a link (or form an association) between the signs, for the reasons explained above, the luxurious image of the earlier mark would inevitably be transferred to the applicant’s goods if they were marketed under the contested sign. Consequently, the applicant’s goods would in principle be made easier to market.

The fact that the contested sign includes the terms ‘Beyond Love’ for goods that are linked to those of the opponent might motivate the consumer to purchase the applicant’s goods. In this way, the applicant would take advantage of the success of the opponent’s company. It would take a ‘free ride’ on the investment of the opponent in promoting and building up goodwill for its mark; it would exploit without paying any financial compensation the marketing effort expended by the opponent in order to create and maintain the image of that mark.

Taking into account the above, the applicant would be ‘free-riding on the coat-tails’ of the earlier reputed mark and would be attempting to trade on its reputation. This would amount to taking unfair advantage of the distinctive character or/and repute of the earlier mark.

When assessing unfair advantage, the applicant’s intention is not a material factor. Taking unfair advantage does not necessarily require a deliberate intention to exploit the goodwill attached to someone else’s trade mark. The concept of taking unfair advantage ‘concerns the risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods covered by the mark applied for, with the result that the marketing of those goods is made easier by that association with the earlier mark with a reputation’ (19/06/2008, T‑93/06, Mineral Spa, EU:T:2008:215, § 40; 22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 40; 30/01/2008, T‑128/06, Camelo, EU:T:2008:22, § 46).

To determine whether the use of a sign takes unfair advantage of the distinctive character or the repute of the mark, it is necessary to undertake an overall assessment that takes into account all the factors relevant to the circumstances of the case (10/05/2007, T‑47/06, Nasdaq, EU:T:2007:131, § 53; confirmed, on appeal, by 12/03/2009, C‑320/07 P, Nasdaq, EU:C:2009:146; see also 23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29, 30, 38; 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 57, 58, 66; 24/03/2011, C‑552/09 P, TiMiKinderjoghurt, EU:C:2011:177, § 53).

According to the Court of Justice of the European Union

… as regards injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, in so far as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, the existence of such injury must be assessed by reference to average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect.

(27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 36.)

Therefore, for the purpose of the present evaluation, whether or not the contested mark takes unfair advantage of the earlier mark must be assessed by reference to the average European consumer of the contested goods in Class 14 for which a link was found, namely alloys of precious metal; jewellery chains; jewellery; semi-precious stones; spinels; earrings; cabochons; jewellery made in whole or significant part of {silver}; jewellery findings, namely, jump rings, toggles, clasps; jewellery findings; jewellery charms; necklaces [jewellery]; ornaments [jewellery]; precious stones; paste jewellery; pins being jewellery; synthetic diamonds; jewellery cases; jewellery boxes; presentation boxes for jewellery.

These goods target the general public and/or a professional public, whose degree of attention will vary from average to high, depending on the price, nature and frequency of purchase of the goods.

The earlier mark has been used for over 40 years and has built up an image of exclusivity and luxury.

As the relevant public would establish a link (or form an association) between the signs, for the reasons explained above, the luxurious image of the earlier mark would inevitably be transferred to the applicant’s goods if they were marketed under the contested sign.

Consequently, the applicant’s goods would in principle be made easier to market. The fact that the contested sign includes the element ‘LOVE’, accompanied by the word ‘Beyond’, which serves only to further qualify this concept for goods that are linked to those of the opponent, might motivate the consumer to purchase the applicant’s goods.

In this way, the applicant would take advantage of the success of the opponent’s company. It would take a ‘free ride’ on the opponent’s investment in promoting and building up goodwill for its mark; it would exploit the opponent’s mark without making any financial contribution to the opponent’s marketing efforts to create and maintain the image of that mark.

Taking into account all of the above, in particular the facts that the earlier mark has a certain degree of reputation, that the marks coincide in the distinctive verbal element ‘LOVE’ and that there is a close connection between the opponent’s and the abovementioned contested goods, it must be held that there is a high probability that the use of the contested sign may lead to free-riding, that is to say, that it would take unfair advantage of the well-established reputation of the earlier mark and the considerable investment made by the opponent to achieve that reputation.

The relevant public for the abovementioned goods in Class 14 might even think that the contested sign, ‘Beyond Love’, is a new version of the opponent’s sign with a reputation or a new mark from the opponent offering other goods in the jewellery sector.

On the basis of the above, the Opposition Division concludes that the contested trade mark is likely to take unfair advantage of the repute of the earlier trade mark with respect to the goods in Class 14.

The decision will now continue with the examination of the opposition with respect to the services in Class 35, for which Article 8(5) EUTMR was not successful, based on 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.

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

Class 14: Goods in precious metals and coated therewith; cuff-links, tie clips, rings, bracelets, earrings, necklaces, brooches, key rings; watches, chronometers, clocks, watch straps, watch bracelets, boxes of precious metals for watches and jewellery.

The contested services are the following:

Class 35: Demonstration of goods; distribution of samples; advertising and publicity; on-line advertising on a computer network; pay per click advertising; direct mail advertising; advertising; modeling services for advertising or sales promotion; presentation of goods on communication media, for retail purposes; providing business information via a website.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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.

As mentioned in section c) of this decision above, the contested services are those that support other businesses. They are aimed at helping other businesses to do or improve business and in principle target a professional public. More specifically, advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale or of reinforcing the client’s position in the market and enabling it to acquire a competitive advantage through publicity. These services are very different from the opponent’s goods in Class 14. These goods and services have different natures, purposes and methods of use. They are not complementary to (contrary to the applicant’s arguments, as explained in section c) of this decision above) or in competition with each other. Furthermore, they do not originate from the same undertakings, they are offered through different distribution channels and they target a different relevant public. Therefore, they are dissimilar.

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, 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 dissimilarity of the goods and services 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.

Conclusion

Taking into account the above, the opposition is rejected with respect to the contested services in Class 35, both on Article 8(1)(b) EUTMR and Article 8(5) EUTMR.

The opposition is upheld with respect to the contested goods in Class 14 based on Article 8(5) 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. 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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Chantal VAN RIEL

Saida CRABBE

Michal KRUK

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.