OPPOSITION No B 3 049 946

AR, 23 rue Jean Jaurès, 1836 Luxembourg, Luxembourg (opponent), represented by Dennemeyer & Associates, 55 rue des Bruyères, 1274 Howald, Luxembourg (professional representative)

a g a i n s t

Zilente S.A.S., Calle 50, No. 46-41, Local 104 A, Centro Comercial Colombia, Medellín (Antioquia), Colombia (applicant) represented by Merx Patentes y Marcas S.L.P., Calle Pinar 5, 28006 Madrid, Spain (professional representative).

On 26/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 049 946 is partially upheld, namely for the following contested goods:

Class 14: Clocks and watches, electric; Control clocks [master clocks]; Wristwatches; Watches; Horological articles; Chronometric apparatus and instruments; Alloys of precious metal; Jewelry.

2. European Union trade mark application No 17 591 215 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 of the goods of European Union trade mark application No 17 591 215 for the figurative mark , namely against all the goods in Classes 9 and 14.

The opposition is based on European Union trade mark registration No 16 006 322 for the word mark ‘REZA’ and French trade mark registration No 4 270 710. The opponent invoked Article 8(1)(b) EUTMR. The opposition was initially also based on French trade mark registration No 1 247 774. Nevertheless, the latter was withdrawn as a basis of opposition by the opponent in its observations of 21/12/2018.

PRELIMINARY REMARKS REGARDING THE PROOF OF USE REQUESTED BY THE APPLICANT

In accordance with 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 filing or, where applicable, the date of priority 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. In its submissions of 03/10/2018 the applicant requested proof of use of the earlier marks on which the opposition is based, namely, European Union trade mark registration No 16 006 322 and French trade mark registrations Nos 4 270 710 and 1 247 774. As mentioned above, French trade mark registration No 1 247 774 was withdrawn as a basis of opposition by the opponent.

In the present case, the date of filing of the contested trade mark is 12/12/2017.

Earlier European Union trade mark registration No 16 006 322 was registered on 09/03/2017 and earlier French trade mark No 4 270 710 was registered on 09/05/2017. Therefore, the request for proof of use is inadmissible as far as these two earlier rights are concerned.

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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 16 006 322.

a) The goods and services

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

Class 14: Jewelry; Jewellery; Precious stones; Alloys of precious metal; Cuff links; Tie clips; Rings (jewellery, jewelry (am)); Bracelets; Earrings; Pendants; Necklaces [jewellery, jewelry (Am)]; Charms; Key fobs of precious metals; Works of art of precious metal; Jewel cases; Boxes of precious metal; Horological and chronometric instruments; Watches; Chronometers; Pendulums; Miniature clocks; Watch cases; Watchstraps; Watch chains, springs or glasses; Cases for clock and watch-making, cases for watches (presentation); Presentation boxes for watches; Pearls (jewellery); Brooches (jewellery).

Class 35: Retailing or wholesaling of the following articles: jewellery, precious stones, precious metals and their alloys, pearls, cuff-links, tie-pins, rings, bracelets, earrings, pendants, necklaces, brooches, charms, keyrings of precious metal, works of art of precious metal, jewellery boxes, containers of precious metal, horological and chronometric instruments, watches, stopwatches, clocks, miniature clocks, watch casings, watch straps, chains, springs and dials for watches, presentation cases and caskets for watches, presentation boxes for watches; Retailing online via the internet or other electronic or computerised telecommunications networks of the following articles: Jewellery, Costume jewellery, Precious stones, Precious metals and their alloys, Pearls, Cufflinks, tie-clips, rings, Bracelets, Earrings, pendants, necklaces, Brooches, charms, key holders of precious metals, Works of art of precious metal, Jewellery cases, Boxes of precious metals, Horological and other chronometric instruments, Watches, stopwatches, Clocks and watches, small clocks, watch cases, Watch bands, chains, Spring and watch glasses, Cases for clock and watch-making, cases for watches (presentation), Presentation boxes for watches; Presentation of goods on communications media of all kinds, for the retailing or wholesaling of the following articles: jewellery, precious stones, precious metals and their alloys, pearls, cuff-links, tie-pins, rings, bracelets, earrings, pendants, necklaces, brooches, charms, keyrings of precious metal, works of art of precious metal, jewellery boxes, containers of precious metal, horological and chronometric instruments, watches, stopwatches, clocks, miniature clocks, watch casings, watch straps, chains, springs and dials for watches, presentation cases and caskets for watches, presentation boxes for watches; Consultancy in the purchase and sale of the following articles: jewellery, precious stones, precious metals and their alloys, pearls, cuff-links, tie-pins, rings, bracelets, earrings, pendants, necklaces, brooches, charms, keyrings of precious metal, works of art of precious metal, jewellery boxes, containers of precious metal, horological and chronometric instruments, watches, stopwatches, clocks, miniature clocks, watch casings, watch straps, chains, springs and dials for watches, presentation cases and caskets for watches, presentation boxes for watches; Fashion shows for promotional purposes (Organization of -); Organisation of exhibitions and/or trade fairs for commercial or advertising purpose.

The contested goods are the following:

Class 9: Spectacles [optics]; Spectacles [optics]; Sports glasses; Sunglasses; Spectacle lenses; Spectacle cases; Spectacle cords; Pince-nez chains; Spectacle frames; Contact lenses; Spectacle lenses; Optical apparatus and instruments; Monitors; Monitors; Optical data media; Optical character recognition apparatus; Optical inspection apparatus for industrial use; Checking (supervision) apparatus and instruments.

Class 14: Clocks and watches, electric; Control clocks [master clocks]; Wristwatches; Watches; Horological articles; Chronometric apparatus and instruments; Alloys of precious metal; Jewelry.

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

The opponent argues that the applicant’s glasses and spectacles are lowly similar to the opponent’s jewellery. In support of this claim, the opponent argues that fashion designers sell glasses and jewellery under their marks, and it is common for stores, such as department stores, to sell both glasses and jewellery next to each other. The opponent also argues that although jewels are worn for personal adornment, this may also be the case for spectacles, apart from their main function which is to improve eyesight. They can share the same distribution channels and be in competition.

However, the Opposition Division is of the opinion that there is no competition between jewellery and glasses, and despite the fact they may both be put on sale in the same outlet, this is not sufficient to consider the goods as similar. A customer seeking to purchase jewellery will not consider glasses as an alternative. Neither do the goods have the same nature or serve the same purpose. Jewellery is precious metal worked on and shaped into decorative items and is worn for personal adornment. The intended purpose of glasses is to improve the sight of the wearer, even if aesthetic considerations can also play a part when purchasing glasses. Nor would consumers necessarily believe that the two sets of goods come from the same trader. Therefore, the Opposition Division considers that the contested Spectacles [optics]; Spectacles [optics]; Sports glasses; Sunglasses; Spectacle lenses; Spectacle cases; Spectacle cords; Pince-nez chains; Spectacle frames; Contact lenses; Spectacle lenses; Optical apparatus and instruments; Monitors; Monitors; Optical data media; Optical character recognition apparatus; Optical inspection apparatus for industrial use; Checking (supervision) apparatus and instruments are dissimilar to all the opponent’s goods which are jewellery, chains, horological instruments and their parts, watches, bracelets, rings, earrings, pendants, necklaces, brooches, charms, key holders of precious metals, keyrings, precious stones and metals, cuff links and tie clips, key fobs, works of art of precious metal, cases and boxes.

Furthermore, the abovementioned contested goods in Class 9 are also dissimilar to the opponent’s services Retailing or wholesaling of-; retailing online via the internet or other electronic or computerised telecommunications networks of Jewellery, Costume jewellery, Precious stones, Precious metals and their alloys, Pearls, Cufflinks, tie-clips, rings, Bracelets, Earrings, pendants, necklaces, Brooches, charms, key holders of precious metals, Works of art of precious metal, Jewellery cases, Boxes of precious metals, Horological and other chronometric instruments, Watches, stopwatches, Clocks and watches, small clocks, watch cases, Watch bands, chains, Spring and watch glasses, Cases for clock and watch-making, cases for watches (presentation), Presentation boxes for watches; Consultancy in the purchase and sale of, and presentation of goods on communications media of all kinds, for the retailing or wholesaling of the following articles: jewellery, precious stones, precious metals and their alloys, pearls, cuff-links, tie-pins, rings, bracelets, earrings, pendants, necklaces, brooches, charms, keyrings of precious metal, works of art of precious metal, jewellery boxes, containers of precious metal, horological and chronometric instruments, watches, stopwatches, clocks, miniature clocks, watch casings, watch straps, chains, springs and dials for watches, presentation cases and caskets for watches, presentation boxes for watches; Fashion shows for promotional purposes (Organization of -); Organisation of exhibitions and/or trade fairs for commercial or advertising purpose either. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary. Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case, since the goods at issue are dissimilar.

The contested goods in Class 9 are therefore considered dissimilar to all the opponent’s goods and services.

Contested goods in Class 14

Alloys of precious metal are identically contained in both lists of goods.

Jewelry is identically contained in both lists of goods.

The contested Clocks and watches, electric; Control clocks [master clocks]; Wristwatches; Watches; Horological articles; Chronometric apparatus and instruments are identical to the opponent’s horological and chronometric instruments either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, are included in, or overlap with, the contested goods.

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 are directed at the public at large and at business customers with specific professional knowledge or expertise.

In this present case, as the goods found to be identical in many cases 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.

c) The signs

REZA
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 mark is the word mark ‘REZA’ which is a word that exists in Spanish meaning ‘pray’ and which may therefore be understood as such by at least the Spanish part of the relevant public. The earlier mark REZA is meaningless for the remaining part of the public. The applicant argues that it will be perceived as a surname. However, this is not the case when used on its own (i.e. not preceded by a given name, a title, an initial).

The contested sign is a figurative mark consisting of the verbal element ‘RAZZA’ depicted in slightly stylized black upper case letters. Even if the letters ‘A’ are depicted without a cross bar they will, due to their position between the other letters in the contested sign and their shape, be perceived as stylised representations of the letter ‘A’. Although the letters in the verbal element of the contested sign are stylised, this will essentially be perceived as a decorative feature of the sign and will thus not detract the public’s attention away from the relevance of the verbal element as such.

The verbal element ‘RAZZA’ has a meaning for part of the public, such as the Italian-speaking public, for whom it means ‘race’. For another part of the relevant public, such as at least the English- French- and Swedish-speaking part of the public, ‘RAZZA’ is meaningless, and therefore distinctive.

The Opposition Division notes that a conceptual difference between the signs could help consumers to more easily distinguish between them. However, for part of the consumers in the European Union, such as the English-, French- and Swedish-speakers the verbal elements in both signs will be perceived as having no meaning. Therefore, and since it is not necessary to establish that there is a likelihood of confusion for the whole of the relevant public (20/07/2017, T-521/15, Diesel v EUIPO, EU:T:2017:536, § 69), the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public in the relevant territory that will not perceive any meaning in either of the signs, such as the English-, French- and Swedish-speaking part of the public.

Visually, the signs coincide in the letters ‘R*ZA’. The verbal elements differ in their second letters ‘E’/’A’ and the additional ‘Z’ in the contested mark. The marks also differ in the slightly stylized elements of the contested sign which will however have less impact on consumers for the reasons set out above.

Therefore, the signs are similar to an average degree.

Aurally, since consumers will perceive the contested sign as the word ‘RAZZA’ for the reasons explained above and as the double Z is pronounced very similarly to the single ‘Z’ by part of the public under analysis, such as the French-, English- and Swedish-speaking part of the public, the only clearly audible difference is in the sounds of the second letters ‘E’/’A’.

Since the signs have a similar intonation and rhythm and only differ in the pronunciation of one letter the marks are aurally highly similar, at least for the part of the public previously mentioned.

Conceptually, neither of the signs has a meaning for the public under analysis in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 has no meaning for any of the goods in question from the perspective of the public under analysis in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

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

In the present case, the signs are visually similar to an average degree and at least for a significant part of the public under analysis aurally highly similar. The goods and services have been found partly identical and partly dissimilar, the distinctiveness of the earlier mark is normal and the degree of attention of the relevant public is assumed to be higher than average. The respective verbal elements of both signs are meaningless for the relevant public under analysis and produce no conceptual difference which may allow the public to safely distinguish between the marks.

Taking into account 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) and that 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 degree of similarity between the marks is sufficient for it to be concluded that the relevant public under analysis may reasonably believe that the goods found to be identical originate from the same undertaking or economically linked undertakings, even when the degree of attention is high.

Therefore, the Opposition Division considers that the differences between the signs are not sufficient to counterbalance the similarities and to safely distinguish between the signs, in particular taking into account the fact that part of the contested goods are identical.

Considering all the above, there is a likelihood of confusion at least as regards a significant part of the public in the relevant territory including the English-, French- and Swedish-speaking public. As stated above in section c) of this decision, a likelihood of confusion for only a part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is partially well founded on the basis of the opponent’s European Union trade mark registration No 16 006 322.

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

The opponent has also based its opposition on the following earlier trade mark, (following the withdrawal of the French National Trademark application 1 247 774 as basis of opposition on 21/12/2018):

French trade mark registration No 4 270 710 for the word mark .

Since this mark covers the same or a narrower scope of goods and services the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.

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

Helen Louise MOSBACK

Martin INGESSON

Catherine MEDINA

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.