OPPOSITION No B 3 057 658

Swatch AG (Swatch SA) (Swatch Ltd), Jakob-Stämpfli-Str. 94, 2502 Biel/Bienne, Switzerland (opponent), represented by Despacho González-Bueno, S.L.P., Calle Velázquez 19, 2º dcha., 28001 Madrid, Spain (professional representative)

a g a i n s t

Andrea Giuriani, Αγιασ Παρασκευησ 19, 84600 Μυκονοσ, Greece (applicant).

On 29/05/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 057 658 is upheld for all the contested goods, namely:

Class 14: Time instruments; jewellery boxes and watch boxes; buckles for watchstraps; watch chains; silver watches; automatic watches; women's watches; clock hands; clock and watch hands; mantle clocks; watch fobs; table clocks; cases for watches [presentation]; watch dials; bracelets for watches; small clocks; watch movements; metal watch bands; parts for clockworks; parts for clocks; watchstraps; watch straps of synthetic material; watch straps made of metal or leather or plastic; watchstraps made of leather; pendant watches; control clocks [master clocks]; watch clasps; clock cases; dress watches; platinum watches; clocks and parts therefor; watches for outdoor use; clocks and watches for pigeon-fanciers; travel clocks; clocks and watches; watches; pocket watches; watches made of gold; watches made of precious metals or coated therewith; divers' watches; watches incorporating a memory function; timing clocks; chronometric apparatus and instruments; time clocks [master clocks] for controlling other clocks; digital clocks; digital clocks being electronically controlled; digital clocks incorporating radios; digital watches with automatic timers; clocks and watches, electric; cases [fitted] for horological articles; cases [fitted] for jewels; cases [fitted] for clocks; cases of precious metals for horological articles; cases for watches and clocks; cases for chronometric instruments; watch cases; presentation cases for horological articles; jewelry cases [caskets or boxes]; jewelry boxes of metal; jewel cases; presentation boxes for horological articles; presentation boxes for watches; watch pouches; clock cases being parts of clocks; housings for clocks and watches; jewelry rolls.

2. European Union trade mark application No 17 877 818 is rejected for all the contested goods. It may proceed for the remaining goods.

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

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 877 818 for the word mark ‘mykonoswatch’, namely against all the goods in Class 14. The opposition is based on, inter alia, European Union trade mark registration No 226 019 for the word mark ‘SWATCH’. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

REPUTATION — ARTICLE 8(5) EUTMR

For reasons of procedural economy, the Opposition Division will first examine the opposition under Article 8(5) EUTMR in relation to earlier European Union trade mark registration No 226 019 for the word mark ‘SWATCH’.

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.

a) Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in the European Union for goods in Class 14.

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 19/03/2018. 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 the following:

Class 14: Horological and chronometric instruments.

The opposition is directed against the following goods:

Class 14: Time instruments; jewellery boxes and watch boxes; buckles for watchstraps; watch chains; silver watches; automatic watches; women's watches; clock hands; clock and watch hands; mantle clocks; watch fobs; table clocks; cases for watches [presentation]; watch dials; bracelets for watches; small clocks; watch movements; metal watch bands; parts for clockworks; parts for clocks; watchstraps; watch straps of synthetic material; watch straps made of metal or leather or plastic; watchstraps made of leather; pendant watches; control clocks [master clocks]; watch clasps; clock cases; dress watches; platinum watches; clocks and parts therefor; watches for outdoor use; clocks and watches for pigeon-fanciers; travel clocks; clocks and watches; watches; pocket watches; watches made of gold; watches made of precious metals or coated therewith; divers' watches; watches incorporating a memory function; timing clocks; chronometric apparatus and instruments; time clocks [master clocks] for controlling other clocks; digital clocks; digital clocks being electronically controlled; digital clocks incorporating radios; digital watches with automatic timers; clocks and watches, electric; cases [fitted] for horological articles; cases [fitted] for jewels; cases [fitted] for clocks; cases of precious metals for horological articles; cases for watches and clocks; cases for chronometric instruments; watch cases; presentation cases for horological articles; jewelry cases [caskets or boxes]; jewelry boxes of metal; jewel cases; presentation boxes for horological articles; presentation boxes for watches; watch pouches; clock cases being parts of clocks; housings for clocks and watches; jewelry rolls.

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 13/07/2018 the opponent submitted the following evidence:

 Annex 1: copies of advertisements in various magazines, such as Elle, Air France Magazine, Glamour, Maxim, ¡Hola!, FHM, Marie Claire, Cosmopolitan, Gala, Madame Figaro and Joyce, dated between 2005 and 2009 and between 2012 and 2014, referring to Austria, Bulgaria, Cyprus, France, Germany, Greece, Hungary, Italy, the Netherlands, Spain and the United Kingdom (which can be inferred from the languages of the publications and the indications in some of the documents of the countries concerned). They display the opponent’s mark ‘SWATCH’ in connection with watches and jewellery.

 Annex 2: a copy of a report in German, with a translation into English, entitled Outfit 6 — Trends & Entwicklungen in der Modebranche (Trends & Developments in the Fashion Industry) prepared by Der Spiegel, dated April 2007 and relating to the German market. According to this study, The Swatch Group was the company that carried out the most advertising for wristwatches and jewellery in 2006, and the mark ‘SWATCH’ was the second best-known trade mark for wristwatches in 2007, with 85% of the German consumers questioned being aware of the mark.

 Annex 3: a copy of a report, Outfit 5, prepared by Der Spiegel, containing references to 2001, about a survey regarding a number of brands of wristwatches, including the opponent’s brand . It states that the awareness among the German population of the opponent’s brand is 89% and that 36% of consumers would be willing to purchase goods sold under this brand.

 Annex 4: a printout from the website http://www.rankingthebrands.com dated 29/07/2015 and showing the results of a survey on the ranking of companies, where The Swatch Group is ranked 58th out of 100 in the global brand ranking for 2015.

 Annex 5: a catalogue of ‘SWATCH’ goods, entitled Swatch-Clopedia 1983–2008 — The ultimate Swatch guide, international version 2008, containing information (in English, French, German, Italian, Portuguese and Spanish) about various watches and some items of jewellery bearing the mark ‘SWATCH’ and showing pictures and article codes relating to the goods.

 Annex 6: catalogues of ‘SWATCH’ watches, dated between 2004 and 2013, and ‘SWATCH’ jewellery, dated between 2005 and 2009, which mention that there are ‘SWATCH’ stores in France, Germany, Italy, Japan, Sweden, Switzerland, Spain, the United Kingdom and the United States of America. This annex also contains three printouts from the opponent’s UK website dated in or containing references to 2015 and showing watches and jewellery offered for sale with the mark ‘SWATCH’.

 Annex 7: an undated list of trade mark registrations belonging to the opponent in various countries for goods in, inter alia, Classes 9 and 14 for the marks ‘SWATCH’, and for marks featuring these elements.

 Annex 8: copies of online media articles from, for example, BBC News, Business Insider, CNBC, El Mundo, El Economista, the Financial Times, Le Monde, Welt Online, the Telegraph, 20 Minutes and CNET France, dated between 10/01/2012 and 01/09/2015, and published in English, French, German, Italian and Spanish. The articles contain information about watches and smartwatches produced or about to be produced and marketed by the opponent. An article dated 12/03/2015 and published on BBC News makes reference to the opponent as ‘the world’s bestselling watchmaker’. An article dated 13/03/2015 and published on http://www.cnet.com mentions that ‘Swatch is the world’s best-selling watchmaker with 18 per cent of the market share’. An article dated 10/01/2012 and published on the website of the Financial Times states that The Swatch Group had sales of USD 7.4 billion in 2011 and that ‘watches and jewellery, the group’s core division, saw sales rise by more than 14 per cent to 6.31 billion Swiss Francs’.

 Annex 9: printouts from the opponent’s website www.swatch.com, containing some references to 2015 and showing watches bearing the mark ‘SWATCH’.

 Annex 10: printouts from the opponent’s website showing watches bearing the mark ‘SWATCH’ or relating to ‘SWATCH’ sponsorship of athletes. These printouts also refer to several events: the ‘Swatch Free4Style’ event held annually in Switzerland; the ‘Swatch Skiers Cup’ event, held for the first time in 2011 in Chile; and the ‘Swatch Girls Pro China’ surfing event held in 2011. One of the printouts refers to an art event, ‘the 54th International Art Exhibition — la Biennale di Venezia’, and mentions collaborations between the opponent and some artists. The printouts are undated; the document files were created on 16/02/2012.

 Annex 11: a printout from the opponent’s website www.swatchgroup.com, containing information on the company’s key financial figures for 2014.

 Annex 12: undated printouts from the opponent’s website www.swatch.com, showing maps with numerous locations of the opponent’s shops in the United Kingdom, France, Italy and Germany.

 Annex 13: two sets of invoices:

- A set of invoices dated between 2005 and 2009, issued by Swatch AG (the opponent) with an address in Switzerland. Of these invoices, 14 were sent to The Swatch Group (France) SA and billed to The Swatch Group (Europa-FR), both of which have addresses in France; 10 were sent to The Swatch Group (Deutschland) GmbH, with an address in Germany, and billed to The Swatch Group (Europa-DE), with an address in Portugal; and 10 were sent to The Swatch Group (España) SA, with an address in Spain, and billed to The Swatch Group (Europa-ES), with an address in Portugal. Each invoice shows the signs and at the top of the first page. The goods are referred to by various names and article codes. When read together with the information and article codes in the catalogue submitted as Annex 6, it can be inferred that the invoices relate to the distribution of watches, straps, rings, necklaces, bracelets and earrings. The amounts referred to in the invoices vary from several thousand to several hundred thousand euros.

- A set of invoices and credit notes, dated between 2012 and 2014 (one invoice per country for the end of each year), issued by The Swatch Group Europa SA, with an address in Switzerland, to The Swatch Group (UK) Limited, The Swatch Group (France) SAS, The Swatch Group (Deutschland) GmbH and The Swatch Group (España) S.A., with addresses in the United Kingdom, France, Germany and Spain, respectively. Some of the information in these documents has been blanked out, but sales figures for watches, accessories and jewellery under the mark ‘SWATCH’ are visible and refer to several hundred thousand euros or pounds sterling, and even several million euros in some cases.

On the basis of the documents listed above, the Opposition Division concludes that the earlier trade mark ‘SWATCH’ has acquired reputation in the European Union for some of the goods.

Although the evidence does not refer to all the countries of the European Union, the European Court of Justice has clarified that, for an earlier European Union trade mark, reputation throughout the territory of a single Member State may suffice (06/10/2009, C‑301/07, PAGO, EU:C:2009:611, § 30). Therefore, the Opposition Division acknowledges that proving reputation in at least France, Germany, Spain and the United Kingdom is sufficient for a conclusion that the earlier trade mark has a reputation in the European Union.

The documents demonstrate that the earlier mark ‘SWATCH’ has been subject to long-standing and intensive use in the European Union, in particular in France, Germany, Spain and the United Kingdom, in relation to watches, and that it is generally known in the relevant market.

The advertisements published in various magazines (e.g. Elle, Glamour, Maxim, FHM and Marie Claire) in 2005-2009 and 2012-2014 and the documents referring to the sponsorship of various athletes under the opponent’s mark give information on the opponent’s investments and its promotional, communication and marketing strategies. The opponent’s intensive and widespread sales and promotional activities — mostly in France, Germany, Spain and the United Kingdom but also in various other countries in the European Union — are considered strong indications that the mark has earned recognition among the relevant public in relation to watches, and that the opponent has undertaken steps to build up a brand image and enhance trade mark awareness among the public. The effects of these actions in Germany are reported in the 2007 study entitled Trends & Entwicklungen in der Modebranche (Trends & developments in the fashion industry), which shows that the opponent was the company that carried out the most advertising in Germany for wristwatches and jewellery in 2006, and that the mark ‘SWATCH’ was the second best-known trade mark for wristwatches in 2007 in that territory.

Although a certain amount of time elapsed between the most recent study submitted by the opponent and some of the other documents, on one side, and the relevant point in time for proving reputation, on the other side, account is taken of the relevant market sector and the fact that the remainder of the documents submitted show that the opponent continued to use and advertise its mark extensively in subsequent years and, consequently, remained active on the market.

Furthermore, changes in consumer habits and perceptions take some time to happen. The market in question – the one of watches – is indeed highly competitive but the number of real ‘big players’ is not that high, which makes it less likely that they are forgotten by consumers even if they are no longer leaders in the sector.

Consequently, the evidence submitted demonstrates that the trade mark ‘SWATCH’ has a consolidated position in the market and that the opponent has made intensive and long-standing use of its mark in at least France, Germany, Spain and the United Kingdom, and that the mark ‘SWATCH’ is widely known by the public in the relevant territory for watches, which belong to the broader categories of horological and chronometric instruments in Class 14, for which reputation has been claimed. The evidence does not refer to other goods belonging to these broad categories and for which reputation has been claimed.

Under these circumstances, the Opposition Division finds that, taken as a whole, the evidence indicates that earlier European Union trade mark registration No 226 019 ‘SWATCH’ has been subject to long-standing and intensive use and is generally known in the relevant market. The documents submitted show that the mark enjoys a high degree of recognition and reputation among the relevant public for watches in Class 14.

b) The signs

SWATCH	mykonoswatch
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).

Both signs are word marks. In the case of word marks, the word as such is protected, not its written form. Therefore, it is irrelevant whether the word mark is depicted in lower- or upper-case letters, or in a combination thereof.

The earlier mark will be perceived as meaning ‘a sample of cloth’ by the English-speaking part of the public in the relevant territory. The rest of the public, such as the French- or Spanish-speaking public, will not attribute a meaning to that mark. In any case, this word is fully distinctive in relation to the relevant goods, as it has no connection to these goods or any of their essential characteristics.

As regards the contested sign, it does not exist as a word in any of the relevant languages. It should be noted that the Court has held that, although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57).

Consequently, at least a part of the public in the relevant territory will see a reference in the first part of the mark to Mykonos - a Greek island in the South Aegean Sea, as a sufficiently big part of the public will be familiar with this island which is a popular tourist resort. Consequently, the English-speaking part of the public familiar with the island is likely to split the contested sign into ‘MYKONOS’ and ‘WATCH’, in which case the first word is likely to be perceived as a geographical reference and, consequently, weak as it will be associated with the geographical origin of the goods in question, while the second part of the mark refers to the nature of part of the goods and is at best weak for those goods, while distinctive for other goods.

The part of the non-English-speaking public that will be familiar with the Greek island mentioned above may split the mark in ‘MYKONOS’ and ‘WATCH’ or possibly ‘MYKONO’ and ‘SWATCH’ given the differences in the spelling and pronunciation of the name of the island in the different languages (e.g. ‘Miconos’, ‘Micona’ or ‘Micono’ in Spanish). The above considerations regarding the distinctiveness of the first part of the mark referring to the island are also valid here, whereas the remaining letters of the mark will be perceived as meaningless and fully distinctive.

Finally, another part of the public (those consumers not familiar with the island nor with the English word ‘watch’) will not dissect the contested sign into parts and associated it with any meaning. Therefore, the word ‘MYKONOSWATCH’ is distinctive to an average degree in relation to all the relevant goods for those consumers.

Considering all of the above, the Opposition Division finds it appropriate to focus the comparison of the signs on that part of the non-English-speaking public (for which there are no meanings in the earlier mark ‘SWATCH’ or in the ending ‘WATCH’ of the contested sign) that will recognise and dissect the name of the Greek island Mykonos in the contested sign.

Visually, the signs are similar to the extent that they coincide in the sequence of letters ‘SWATCH’, which constitute the entire earlier mark and are placed in the same order in the beginning of the contested sign. The marks differ in the first letters, ‘MYKONO’, of the contested sign.

The differences in the beginnings and the lengths of the conflicting signs are particularly relevant. It should be noted that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Nevertheless, for the public taken into consideration the beginning of the contested sign is of lesser distinctiveness, as explained above, than its meaningless ending.

Therefore, taking into account all the relevant factors, it can be concluded that the signs are visually similar to a low degree for the part of the public taken into account.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of their last letters, ‘SWATCH’, and differs in the sound of the additional letters, ‘MYKONO’, at the beginning of the contested sign. However, the differing sounds of the marks are at their beginnings, where consumers generally tend to focus their attention, and add additional syllables to the contested sign, which leads to a different length and aural rhythm between the marks.

Taking into account the abovementioned differences, the marks are aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks for the part of the public taken into account.

The relevant public is not likely to attribute a meaning to the word ‘SWATCH’ constituting the earlier mark but will perceive the beginning ‘MYKONO’ / ‘MYKONOS’ in the contested sign as having a meaning. Since one of the signs (the earlier mark) will not be associated with any meaning, the signs are not conceptually similar. However, the difference from the conceptual point of view has little impact because the beginning of the contested sign is weak for the goods at issue.

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.

c) The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar to some extent. 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 regards the degree of similarity between the signs required under Article 8(5) EUTMR, the Court has held that it differs from that required under Article 8(1)(b) EUTMR. Whereas the implementation of the protection provided for under Article 8(1)(b) EUTMR is conditional upon a finding of a degree of similarity between the marks at issue such that there exists a likelihood of confusion between them on the part of the relevant section of the public, the existence of such a likelihood is not necessary for the implementation of the protection conferred by Article 8(5) EUTMR. Accordingly, the types of injury referred to in Article 8(5) EUTMR may result from a lesser degree of similarity between the marks in question, provided that it is sufficient for the relevant section of the public to make a connection between those marks, that is to say, to establish a link between them (23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 27, 29, 31; 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 57, 58, 66).

In the present case, the signs are similar insofar as the earlier mark, ‘SWATCH’, is entirely included at the end of the contested sign. Moreover, for the part of the public taken into consideration the beginning of the contested sign will be perceived as a geographical reference and is thus, of limited distinctiveness and impact in the mark, whereas the earlier mark and the ending of the contested sign are meaningless and fully distinctive for the part of the public under consideration and thus do not evoke any meanings which could help differentiate between them. In addition, the earlier mark is inherently distinctive for the goods concerned and, moreover, enjoys a high degree of recognition and reputation for watches.

It should, furthermore, be noted that the establishment of a link, while triggered by similarity between the signs, requires that the relevant sections of the public for each of the goods covered by the trade marks in dispute are the same or overlap to some extent.

The goods for which the earlier mark has a reputation are the following:

Class 14: Watches.

The contested goods are the following:

Class 14: Time instruments; jewellery boxes and watch boxes; buckles for watchstraps; watch chains; silver watches; automatic watches; women's watches; clock hands; clock and watch hands; mantle clocks; watch fobs; table clocks; cases for watches [presentation]; watch dials; bracelets for watches; small clocks; watch movements; metal watch bands; parts for clockworks; parts for clocks; watchstraps; watch straps of synthetic material; watch straps made of metal or leather or plastic; watchstraps made of leather; pendant watches; control clocks [master clocks]; watch clasps; clock cases; dress watches; platinum watches; clocks and parts therefor; watches for outdoor use; clocks and watches for pigeon-fanciers; travel clocks; clocks and watches; watches; pocket watches; watches made of gold; watches made of precious metals or coated therewith; divers' watches; watches incorporating a memory function; timing clocks; chronometric apparatus and instruments; time clocks [master clocks] for controlling other clocks; digital clocks; digital clocks being electronically controlled; digital clocks incorporating radios; digital watches with automatic timers; clocks and watches, electric; cases [fitted] for horological articles; cases [fitted] for jewels; cases [fitted] for clocks; cases of precious metals for horological articles; cases for watches and clocks; cases for chronometric instruments; watch cases; presentation cases for horological articles; jewelry cases [caskets or boxes]; jewelry boxes of metal; jewel cases; presentation boxes for horological articles; presentation boxes for watches; watch pouches; clock cases being parts of clocks; housings for clocks and watches; jewelry rolls.

There is a connection between the opponent’s watches for which the earlier mark has a reputation and the abovementioned contested goods.

The goods under comparison are identical or closely related, as the abovementioned contested goods are watches (or time instruments in general, which include watches), other types of time instruments such as clocks, parts for time instruments, as well as jewellery articles and boxes and cases which are or can be used for time instruments and jewellery. These goods can be produced by the same companies and the relevant public of the goods concerned is the same. The goods for which the opponent’s mark is reputed, watches, in addition to functioning as time measurement instruments, may also be worn as adornments, for instance designed in the form of bracelets. Furthermore, the goods under comparison may have the same distribution channels, such as large jewellery stores where watches and jewellery items are offered. The contested boxes and cases for time instruments and jewellery are articles often offered/used together with watches and jewellery to house them or keep them in and are also found in jewellery shops. Therefore, it is likely that the contested mark will bring the earlier mark to the mind of the relevant public in relation to the contested goods.

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 abovementioned goods in Class 14, the relevant consumers may 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).

d) 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.

In the present case, the opponent argues that the trade mark ‘SWATCH’ has acquired great renown in the watch sector in the European Union and all over the world. It claims that the trade mark ‘SWATCH’ has acquired a high degree of recognition and an excellent reputation among consumers, in the sense that it reflects a positive image, which influences the choice of the consumers. According to the opponent, the distinctiveness of the earlier mark will be detrimentally affected by the use of the contested mark, since it will cease to be associated with a single source of origin. It argues that the contested sign is likely to devalue the image and prestige that the trade mark ‘SWATCH’ has acquired among the public. Furthermore, it considers that the contested mark is likely to benefit from the value of the earlier mark and will take unfair advantage of the opponent’s efforts in promoting it.

In other words, the opponent claims that use of the contested trade mark would take unfair advantage of the distinctive character or the repute of the earlier trade mark and be detrimental to the distinctive character or 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).

According to the opponent, the contested mark is likely to benefit from the attractiveness of the earlier mark. It considers that, because of its outstanding reputation and distinctiveness, the earlier mark will easily be recognised in any context and it argues that the earlier mark’s strong reputation makes it more tempting for the applicant to benefit from its value. The opponent states that the earlier mark ‘SWATCH’ has acquired not only a high degree of recognition amongst consumers, but also an excellent reputation, in the sense that it reflects an image of excellence, reliability and quality, which positively influences the choice of consumers. Consequently, it considers that the contested mark will gain an unfair advantage as a consequence of an association between the marks. The opponent refers to numerous previous decisions in which unfair advantage has been established in relation to the use of a contested trade mark for both horological instruments and jewellery based on the reputation of the earlier mark ‘SWATCH’ for watches.

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.)

As seen above, there is a link between the signs, since they are similar to a certain degree and there is a clear relationship between watches in Class 14, for which the earlier mark is reputed, and the contested goods in Class 14. The opponent argues that the contested mark will benefit from the attractiveness of the earlier mark and the investment of the opponent in promoting and building-up an image for its mark in the horological and jewellery market.

Considering the similarity between the signs and the relationship between the goods at issue (as also explained above in ‘the link’ section’), there is a high probability that the use of the mark applied for, for the goods mentioned above, may lead to free-riding, that is to say, it would take unfair advantage of the established reputation of the earlier trade mark for watches and the investments undertaken by the opponent to achieve that reputation. For example, the use of the trade mark applied for in relation to the abovementioned goods could be more attractive for consumers, due to the reputation of the earlier mark and, therefore, could facilitate the marketing of the abovementioned contested goods, or the applicant may unfairly benefit from the reputation of the earlier mark. It seems inevitable that the image of the earlier mark and its reputation for quality watches, as demonstrated by the evidence submitted, will be transferred to the aforementioned contested goods, which are all related to the time instruments and jewellery markets, if they are marketed under the contested sign. In this way, the contested sign would receive an unfair ‘boost’ as a result of its being linked with the opponent’s mark in the minds of consumers.

On the basis of the above, the Opposition Division concludes that, based on the perception of the signs by the part of the public considered, the contested trade mark is likely to take unfair advantage of the distinctive character or the repute of the earlier trade mark.

Other types of injury

The opponent also argues that use of the contested trade mark would be detrimental to the distinctive character and repute of the earlier trade mark.

As seen above, the existence of a risk of injury is an essential condition for Article 8(5) EUTMR to apply. The risk of injury may be of three different types. For an opposition to be well founded in this respect it is sufficient if only one of these types is found to exist. In the present case, as seen above, the Opposition Division has already concluded that the contested trade mark would take unfair advantage of the distinctive character or repute of the earlier trade mark. It follows that there is no need to examine whether other types also apply.

e) Conclusion

Considering all the above, the opposition is well founded under Article 8(5) EUTMR. Therefore, the contested trade mark must be rejected for all the contested goods.

Given that the opposition is entirely successful under Article 8(5) EUTMR, it is not necessary to examine the remaining grounds and earlier rights on which the opposition was based.

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

Catherine MEDINA

Boyana NAYDENOVA

Begoña URIARTE VALIENTE

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.