OPPOSITION No B 3 027 755

Tod's S.p.A., Via Filippo Della Valle, 1, 63811 Sant'Elpidio a Mare (FM), Italy (opponent), represented by Jacobacci & Partners S.p.A., Corso Emilia, 8, 10152 Torino, Italy (professional representative)

a g a i n s t

PaulValentine GmbH, Kalmitstraße 18, 67256 Weisenheim am Sand, Germany (applicant), represented by Breuer Lehmann Rechtsanwälte Partnerschaft mbB, Steinsdorfstr. 19, 80538 München, Germany (professional representative)

On 15/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 027 755 is upheld for all the contested goods and services.

2. European Union trade mark application No 17 241 514 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 241 514 for the word mark ‘FAYE’. The opposition is based on 1) European Union trade mark registration No 10 158 996 for the word mark ‘FAY’ and on 2) European Union trade mark registration No 11 520 285 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

a) The goods and services

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

1. European Union trade mark registration No 10 158 996:

Class 9: Spectacles, sunglasses, spectacle lenses and frames, contact lenses, optical lenses, magnifying glasses, spectacle cases, chains and cords, parts and fittings for all the aforesaid goods; Covers of leather for digital music players, mobile telephones, DVDs, CDs, computer cables, apparatus for the reproduction of sound, palm-top computers, electronic personal organisers, television cameras and cameras.

Class 35: Retailing of clothing, Footwear and Headgear and accessories, including spectacles and Goods of leather.

2. European Union trade mark registration No 11 520 285:

Class 14: Wristwatches, Clocks and watches, Clocks, Chronographs and chronometers, Raw gems, Precious stones, Diamonds, Corals, Emeralds, Sapphire, Ruby, Opal, Topaz, Aquamarine, Earrings, Rings (jewellery, jewelry (am)), Necklaces, Torq style wristwear (wrist jewellery), Decorative pins of precious metal, Ornaments (shoe —) of precious metal, Pearls, Boxes of precious metal, Jewel boxes made of precious metals, Pins, Stock pins, Tie bars, Cuff links, Watch strap and bracelets.

The contested goods and services are the following:

Class 9: Spectacles [optics]; Sunglasses.

Class 14: Jewellery items; Key rings and key chains, and charms therefor; Paste jewellery [costume jewelry (Am)]; Clocks; Jewellery cases.

Class 35: Wholesaling and retailing, including via the internet, in the fields of spectacles, sunglasses, jewellery, key rings and key chains, and fobs therefor, fashion jewellery, clocks and watches, jewellery cases.

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 9

Sunglasses are identically contained in both the list of goods of the contested application and of earlier mark 1.

The contested spectacles [optics] are included in the broad category of the opponent’s spectacles of earlier mark 1. Therefore, they are identical.

Contested goods in Class 14

Clocks are identically contained in both the list of goods of the contested application and of earlier mark 2.

The contested jewellery items include, as a broader category, the opponent’s rings (jewellery, jewelry (am)) of earlier mark 2. 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 cases include, as a broader category, the opponent’s jewel boxes made of precious metals of earlier mark 2. 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 paste jewellery [costume jewelry (am)] overlaps with the opponent’s necklaces of earlier mark 2 since both the broad category of the contested goods as well as the opponent’s goods include necklaces that are not of precious metal. Therefore, they are identical.

The contested key rings and key chains, and charms therefor, which include such goods of precious metals, are similar to the opponent’s decorative pins of precious metal of earlier mark 2 since they consist of, or can consist of, decorative items of precious metals that target the same relevant public, share the same distribution channels and can be produced by the same undertakings.

Contested services in Class 35

The contested wholesaling and retailing, including via the internet, in the fields of spectacles, sunglasses, jewellery, key rings and key chains, and fobs therefor, fashion jewellery, clocks and watches, jewellery cases are considered similar to the opponent’s retailing of clothing, footwear and headgear of earlier mark 1. The services at issue have the same or a similar nature since both are services concerning the activity of buying and selling goods whether in larger or smaller quantities, the same purpose of allowing consumers to conveniently satisfy different shopping needs, and the same method of use.

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, most of the goods and services found to be identical or similar are directed at the public at large although some services (wholesaling) are directed at business customers with specific professional knowledge or expertise.

The degree of attention is considered to be average in relation to most of the goods and services concerned although it may also be relatively high for example in relation to some of the goods at issue in Class 14. In its decision of 09/12/2010, R 900/2010‑1, Leo Marco (fig.) / LEO, § 22, the Board held that consumers generally put a certain amount of thought into the selection of these goods. In many cases the goods will be luxury items or will be intended as gifts. A relatively high degree of attention on the part of the consumer may be assumed.

Therefore, the degree of attention of the relevant public may vary from average to relatively high depending on the specific goods or services in question.

c) The signs

FAY (earlier mark 1) (earlier mark 2)	FAYE
Earlier trade marks	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 mark 1 is the word mark ‘FAY’ and the earlier mark 2 is a figurative mark consisting of the verbal element ‘Fay’ depicted in white old-fashion style sentence case letters on a rectangular black background with a thin white frame. Above the verbal element there is a figurative element depicting a dog’s head made up of white strokes.

The verbal element ‘FAY’ in both earlier marks means, inter alia, ‘a fairy or sprite‘ in English (information extracted from Collins English Dictionary on 10/01/2019 at www.collinsdictionary.com/dictionary/english/fay). However, it is also a rare Irish surname and it can therefore not be ruled out that at least part of the English-speaking public, e.g. in Ireland, may perceive this element in both earlier marks as a surname. For the non-English-speaking public ‘FAY’ will be perceived as a fanciful word without any meaning. Either way, it has no particular meaning in relation to the goods and services concerned and is, therefore, distinctive.

The contested sign is the word mark ‘FAYE’ which is also likely to be perceived by at least part of the English-speaking public, e.g. in Ireland, as consisting of a surname (‘FAYE’ being a spelling variation of the surname ‘FAY’) and which is, therefore, also distinctive in relation to the goods and services concerned.

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public that may perceive both signs as consisting of or containing spelling variations of the same surname ‘FAY/E’.

The earlier mark 2 has no element that could be considered clearly more dominant (visually eye-catching) than other elements.

As regards the rectangular black background of earlier mark 2, the use of backgrounds such as squares or frames is quite common and they generally serve to highlight other elements (15/12/2009, T-476/08, Best Buy, EU:T:2009:508, § 27; 27/10/2016, T-37/16, CAFFE NERO, EU:T:2016:634, § 42). Therefore, this element of earlier mark 2 will be regarded by consumers as a merely decorative non-distinctive element. However, since the device of a dog’s head has no particular meaning in relation to the goods and services concerned, this figurative element of earlier mark is distinctive. Nevertheless, when signs consist of both verbal and figurative components, 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).

Visually, the earlier mark 1 and the contested sign are both word marks without any particular stylisation and the earlier mark 1 is fully contained at the beginning of the contested sign. Therefore, the only difference between these signs is the additional letter ‘E’ at the end of the contested sign.

The earlier mark 2 and the contested sign also coincide in their verbal elements as described above. However, they differ in the stylisation of the verbal element of earlier mark 2, which will nevertheless not detract the consumer’s attention away from the verbal element as such, in the additional figurative element of this earlier mark and in its additional black rectangular background which is, however, non-distinctive for the reasons set out above.

Therefore, the earlier mark 1 and the contested sign are visually highly similar and the earlier mark 2 and the contested sign are visually similar to an average degree overall.

Aurally, the pronunciation of the signs coincides in the identical sound of the word ‛FAY’ since the additional ‛E’ in the word ‛FAYE’ of the contested sign will not be pronounced by the relevant public under analysis.

Therefore, the signs are aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks to the part of the English-speaking public under analysis. The earlier mark 1 and the contested sign will be perceived as referring to spelling variations of the same rare surname ‘FAY/E’, which is the only concept conveyed by these signs. The earlier mark 2 and the contested sign will also both be associated with the distinctive concept referred to above but the earlier mark 2 will also convey the concept of a dog’s head which is also distinctive and not present in the contested sign. As regards the additional black rectangular background in earlier mark 2, it is non-distinctive and will not convey any particular concept to consumers.

Therefore, the earlier mark 1 and the contested sign are conceptually highly similar and the earlier mark 2 and the contested sign are conceptually similar to an average degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) Distinctiveness of the earlier marks

The distinctiveness of the earlier marks is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier marks have been extensively used and enjoy an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the goods and services in question from the perspective of the public under analysis in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal.

e) Global assessment, other arguments and conclusion

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

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Account should also be taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

In the present case, the goods and services are identical or similar and the degree of attention of the relevant public may vary from average to relatively high.

The earlier marks have a normal degree of distinctiveness. For the part of the English-speaking public under analysis, the signs are visually and conceptually similar to a high or otherwise an average degree and phonetically identical on account of the coincidence in the surname ‘FAY’, albeit spelled in slightly different ways. Furthermore, it is the only element of the contested sign and of earlier mark 1 and plays an independent distinctive role in earlier mark 2 and is also the element to which consumers will pay more attention for the reasons set out above in section c) of this decision.

Therefore, taking into account the identity or similarity between the goods and services concerned and the considerable overall degree of similarity between the signs, and bearing in mind that consumers (even those who may display a higher degree of attention) will have to rely on their imperfect recollection of the signs, there is a likelihood of confusion on the part of the public under analysis in the relevant territory in the sense that consumers would be likely to believe that the goods and services at issue offered under the signs in dispute originated from the same or economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking public under analysis. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registrations No 10 158 996 and No 11 520 285. It follows that the contested trade mark must be rejected for all the contested goods and services.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier marks, there is no need to assess the enhanced degree of distinctiveness of the opposing marks due to their extensive use as claimed by the opponent. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Sandra IBAÑEZ

Sam GYLLING

Justyna GBYL

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.