OPPOSITION No B 3 065 445

Mido AG (Mido SA) (Mido LTD), Chemin de Tourelles 17, 2400 Le Locle, Switzerland (opponent), represented by Despacho González-Bueno, S.L.P., Calle Velázquez 19, 2ºdcha., 28001 Madrid, Spain (professional representative)

a g a i n s t

NV Capital Partners Sp. z o.o., ul. Powązkowska 44C, 01-797 Warsaw, Poland (applicant), represented by Chmura & Wspólnicy, ul. J.P. Woronicza 31/142, 02-640 Warsaw, Poland (professional representative).

On 26/11/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 065 445 is upheld for all the contested goods, namely

Class 14: Jewellery boxes and watch boxes; Gemstones, pearls and precious metals, and imitations thereof; Jewels; Decorative articles [trinkets or jewellery] for personal use; Trinkets of bronze.

2. European Union trade mark application No 17 893 701 is rejected for all the contested goods. It may proceed for the remaining goods and services.

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

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 893 701 ‘miloo’ namely against all the goods in Class 14. The opposition is based on, inter alia, European Union trade mark registration No 103 358 ‘MIDO’. The opponent invoked Article 8(1)(b) and Article 8(5) 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 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 103 358 ‘MIDO’.

a) The goods

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

Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments.

The contested goods are the following:

Class 14: Jewellery boxes and watch boxes; Gemstones, pearls and precious metals, and imitations thereof; Jewels; Decorative articles [trinkets or jewellery] for personal use; Trinkets of bronze.

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.

From the outset it is noted as to the applicant’s argument that the applicant’s offer ‘includes only and solely products related to interior design equipment/accessories’, that the scope of the goods and services covered by a trade mark registration is defined by the wording of the list of goods and services itself for which it is registered (17/01/2012, T-249/10, Kico, EU:T:2012:7, § 23).

Contrary to what the applicant suggests, the wording of that list is not limited to the goods and services which are currently being provided by the parties. Particular circumstances in which the goods and services in question were marketed, such as marketing strategies or intentions, are not to be taken into account since these may vary in time depending on the wishes of the proprietors of the opposing marks (15/03/2007, C-171/06 P, Quantum, EU:C:2007:171, § 59; 09/09/2008, T-363/06, Magic seat, EU:T:2008:319, § 63; 21/01/2016, T-846/14, SPOKeY, EU:T:2016:24, § 26).

Consequently, the assessment of the goods and services must be based on the wording of the goods as applied for and registered.

The contested jewels; gemstones and precious metals, and imitations thereof decorative articles [trinkets or jewellery] for personal use; trinkets of bronze are included in or overlap with the opponent’s broad category precious metals and their alloys; jewellery, precious stones. Therefore, they are identical.

The contested pearls are highly similar to the opponent’s precious stones. They usually coincide in producer, relevant public, distribution channels and method of use. Furthermore they have the same purpose and hence they may be considered in competition.

Considering that the opponent’s broad category horological and chronometric instruments includes watches, the contested jewellery boxes and watch boxes are complementary to the opponent’s jewellery and horological and chronometric instruments respectively. They also coincide in end user and in producer. Therefore, they are similar.

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 and similar to varying degrees are directed at the public at large. The degree of attention will vary between average and high depending on the sophistication of the goods and their price but it cannot be considered as extremely high for all the relevant goods as the applicant argues (see 12/01/2006, T‑147/03, QUANTUM, EU:T:2006:10, § 63 confirmed by 15/03/2017, C‑171/06 P, QUANTUM, EU:C:2007:171; 12/02/2015, T‑76/13, QUARTODIMIGLIO QM, EU:T:2015:94, § 34).

c) The signs

MIDO	miloo
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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The marks in conflict in the present case are word marks. The earlier mark could be perceived as meaningful by part of the consumers in the relevant territory, for example, the consumers in Spain where the earlier mark could be seen as corresponding to the conjugation of the Spanish verb medir in the first person. In that connection it is noted that medir means ‘to measure’ and therefore, the earlier mark ‘mido’ could be seen as conveying a descriptive message in relation to part of the goods, for example, horological and chronometric instruments indicating that these goods’ purpose is to measure (time). In contrast, neither of these signs has a meaning for the remaining part of the public, such as the public in France, the United Kingdom, Poland or Bulgaria and therefore, they will be perceived as fanciful and distinctive. Considering that they are word marks, their representation in upper or lower case letters is irrelevant.

The meaning of the earlier mark above mentioned affects the distinctiveness of the earlier mark in relation to part of the goods in relation to the Spanish-speaking public. Moreover, it is settled case-law that conceptual differences may, to a large degree, counteract phonetic and visual similarities between the marks at issue, provided that at least one of those marks has, from the point of view of the relevant public, a clear and specific meaning, so that the public is capable of grasping it immediately (see, 18/12/2008, C-16/06 P, Les Éditions Albert René SARL v European Union Intellectual Property Office EU:C:2008:73998, § 98; 11/11/2009, T-277/08, CITRACAL, § 53; 12/07/2006, T-277/04, VITACOAT, EU:T:2006:202, § 56 to 62). Therefore, the Opposition Division finds it appropriate to focus on the part of the public for which neither of the signs has a meaning, which excludes the Spanish-speaking public.

Visually, the signs coincide in ‘MI*O’. However, they differ in their third respective letter, that is, ‘D’ in the earlier mark versus ‘L’ in the contested sign. They further differ in so far the last letter ‘O’ of the contested sign does not have counterpart in the earlier mark.

Considering that consumers tend to attach more importance to the beginning of a sign than to its ending, the differing letters are placed in a position where they do not particularly attract the attention and hence the signs are visually similar to an average degree at least.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘MI’ in the beginning of the signs and, for part of the public, like the Polish-speaking public for example, they also coincide in the letter ‘O’ in the end of the signs. As the signs have the same number of syllables, these also share the same rhythm and intonation.

On the other hand, the signs differ in the sound of the letter ‘D’ of the earlier mark versus ‘L’ of the contested sign and, depending on the different pronunciation rules in different parts of the relevant territory, the signs further differ in the sound of the letters ‘OO’ of the contested sign. For example, according to English-speaking pronunciation rules, the letters ‘OO’ of the contested sign will be pronounced as [ʊ] while the earlier mark’s single letter ‘O’ will be pronounced as [ɒ].

However, in contrast with the applicant’s claim, in certain languages like in Polish, the aural difference created by the third letter will not be stressed but is really slight and the addition of a letter ‘o’ in the end of the contested sign does not result in any aural difference.

Therefore, the signs are aurally similar to an average or high degree depending on the part of the public concerned.

Conceptually, neither of the signs has a meaning for the public 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.

According to the opponent, the earlier mark has been extensively used and enjoys 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 mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

In its observations, the applicant argues that there are a few registrations in its name including the element ‘Miloo’ in the European Union trade marks registry (for example, European Union trade mark registration No 17 893 707 ‘MILOO HOME’ (fig.)), which coexist with the opponent’s earlier marks. In the same line, it claims that it has been for many years ‘the owner of a chain of stores with interior design furnishing marketed under the name ‘miloo’’.

According to case-law, the possibility cannot be ruled out that the coexistence of two marks on a particular market might, together with other elements, contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public (03/09/2009, C-498/07 P, La Española, EU:C:2013:302, § 82). In certain cases, the coexistence of earlier marks in the market could reduce the likelihood of confusion that the Office finds between two conflicting marks (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86). However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds for refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard it should be noted that formal coexistence in national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) at national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis, and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

Therefore, in the absence of any argument and evidence thereof, this argument of the applicant must be rejected as unfounded.

The applicant also refers to previous decisions of the Office to support its arguments that there can be no confusion between the marks in question.

In that connection, the Opposition Division recalls that the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case. While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

As to the decision of 22/01/2019, R 1156/2018-5, EEZZY (fig.) / Breezy et al., it is noted the conclusion of the Board of Appeal that there was no likelihood of confusion was justified by the fact that the marks in question in that case had a different beginning and the aural similarity was considered low for the relevant public. In the decision of 21/01/2019, R 687/2018-2, WTF / WT et al., the Board considered it implausible that the relevant public, whose level of attention was deemed high, would not be able to distinguish the short marks from each other. In decision of 20/12/2017, R 1322/2017-4, SOLGAR Since 1947 MultiPlus WHOLEFOOD CONCENTRATE MULTIVITAMIN FORMULA (fig.) / MULTIPLUS, the outcome was justified by the fact that the signs only displayed limited similarities due to the coincidence in the weak (with respect to the earlier mark) or even non-distinctive (with respect to the contested sign) element ‘MULTIPLUS’ which was hence not given a determining weight in the assessment of the likelihood of confusion between these marks. Finally, in the decision of 13/12/2018, R 1187/2016-2, ILLUMINA / ILLINA, as actually quoted by the applicant itself, it was considered that ‘although the signs coincide in the pronunciation of the letters ‘ILL*( )NA’, the length of the signs and also their rhythm and intonation differ. In addition, the clear and perceptible concept for the relevant public of ‘light’ of the contested sign gives a different overall impression of the signs’.

As apparent from the above, none of the considerations developed in the decisions referred to by the applicant is applicable in the present case. First of all, the earlier mark ‘MIDO’ has an average degree of inherent distinctiveness. Second of all, the signs share the same beginning and also the same ending as both end with the letter ‘O’ and, therefore, they were found visually similar to an average degree at least and aurally similar to an average to high degree depending on the specific part of the relevant public concerned. Finally, the conceptual aspect is neutral and therefore, it is not capable of allowing consumers to distinguish between the signs.

Therefore, the previous cases referred to by the applicant are not relevant to the present proceedings.

As in the case under examination, the contested goods are identical and similar, including to a high degree, to the goods covered by the earlier mark, consumers relying on their imperfect recollection of the latter could be confused as to the origin of these goods if they were to be marketed under the contested sign.

In that respect, it has to be emphasised that, in contrast with the applicant’s contentions, the high degree of attention that the relevant public may display when purchasing some of the relevant goods is not likely to prevent confusion between the marks in question since 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).

Considering all the above, there is a likelihood of confusion on the part of the public that does not speak Spanish for example, the public in Poland and therefore the opposition is well founded on the basis of the opponent’s European Union trade mark registration. 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.

It follows from the above that the contested trade mark must be rejected for all the contested goods.

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

As the earlier European Union trade mark registration No 103 358 ‘MIDO’ leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Finally, since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(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.

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, 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

Zuzanna STOJKOWICZ

Marine DARTEYRE

Claudia ATTINÀ

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.