OPPOSITION No B 3 098 210

Zodiax a.s., Golčova 1/2, 14800 Praha 4 - Kunratice, Czech Republic (opponent), represented by Halaxová & Halaxová, Tetrapat, Jinonická 80, 158 00 Prague, Czech Republic (professional representative)

a g a i n s t

Danfil Jewellery s.r.o., Lomová 704, 46312 Liberec, Czech Republic (applicant), represented by Ota Klekner, Na Rybnicku 387/6, 46007 Liberec, Czech Republic (professional representative).

On 08/10/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 098 210 is upheld for all the contested goods and services.

2. European Union trade mark application No 18 093 213 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 18 093 213 for the word mark ‘Cutie’, namely against all the goods and services in Classes 14, 35 and 40. The opposition is based on European Union trade mark registration No 10 027 837 for the figurative mark . The opponent invoked Article 8(1)(a) and (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 the following:

Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, jewellery, precious stones, clocks and watches, cuff links, ornamental tie pins, tie clips, jewellery of metal, semi-precious stones and imitations thereof and goods made therefrom, hat ornaments of precious metal, medals, coins, paste jewellery, brooches - all included in this class.

Class 35: Auctioneering, presentation of goods on communication media, for retail purposes, sales promotion, organisation of exhibitions for commercial or advertising purposes, demonstration of goods, advertising, arranging and concluding commercial transactions and contracts in this field, advertising and marketing via the Internet, updating of advertising material, dissemination of advertising matter, shop-window dressing - included in this class, procurement services for others, buying gold, silver and diamond jewellery, watches and individual components thereof.

Class 40: Metal plating, galvanisation, metal casting, brazing, gilding, plating, engraving, silver-plating, welding, processing and treatment of metal, production of gold, silver and diamond jewellery, watches and individual components thereof.

The contested goods and services are the following:

Class 14: Precious metals and their alloys; Jewellery being articles of precious metals; Jewellery; Precious jewellery; Pearls [jewellery]; Decorative pins [jewellery]; Decorative brooches [jewellery]; Gold plated brooches [jewellery]; Jewellery made of precious metals; Jewellery fashioned of semi-precious stones; Jewellery made of precious stones; Jewellery made of plastics; Articles of jewellery coated with precious metals; Jewellery fashioned from non-precious metals; Jewellery coated with precious metal alloys; Fitted jewelry pouches; Jewellery made of semi-precious materials; Jewellery fashioned of cultured pearls; Decorative articles [trinkets or jewellery] for personal use; Brooches [jewellery]; Pins [jewellery]; Shoe jewellery; Presentation boxes for jewellery; Jewel cases; Jewellery made of crystal; Jewellery, including imitation jewellery and plastic jewellery; Jewellery made of crystal coated with precious metals; Cabochons; Precious and semi-precious gems; Cuff links made of precious metals with precious stones; Unwrought and semi-wrought precious stones and their imitations; Clocks and watches; Jewellery boxes and watch boxes; Cuff links; Boxes for cufflinks; Cuff links and tie clips; Cuff links made of precious metals with semi-precious stones; Ornamental pins; Clips of silver [jewellery]; Tie clips; Decorative pins of precious metal; Lapel pins of precious metals [jewellery]; Paste jewellery; Imitation jewellery ornaments; Hat jewellery; Medals; Commemorative medals; Coins; Commemorative coins.

Class 35: Auctioneering of property; Presentation of goods on communication media, for retail purposes; Promotion [advertising] of business; Organization of exhibitions for commercial or advertising purposes; Demonstration of goods; Procurement of contracts for others relating to the sale of goods; Mediation and conclusion of commercial transactions for others; Advertising via electronic media and specifically the internet; Advertising through all public communication means; Dissemination of advertising matter; Shop window dressing; Window dressing and display arrangement services; Wholesale services in relation to jewellery; Retail services in relation to jewellery.

Class 40: Galvanization; Metal casting; Soldering; Gold plating; Engraving; Silver plating; Welding services; Metal fabrication and finishing services; Metal treating.

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 14

The contested precious metals and their alloys; jewellery being articles of precious metals; jewellery; precious jewellery; pearls [jewellery]; decorative pins [jewellery]; decorative brooches [jewellery]; gold plated brooches [jewellery]; jewellery made of precious metals; jewellery fashioned of semi-precious stones; jewellery made of precious stones; jewellery made of plastics; articles of jewellery coated with precious metals; jewellery fashioned from non-precious metals; jewellery coated with precious metal alloys; jewellery made of semi-precious materials; jewellery fashioned of cultured pearls; decorative articles [trinkets or jewellery] for personal use; brooches [jewellery]; pins [jewellery]; shoe jewellery; jewellery made of crystal; jewellery, including imitation jewellery and plastic jewellery; jewellery made of crystal coated with precious metals; cabochons; precious and semi-precious gems; cuff links made of precious metals with precious stones; unwrought and semi-wrought precious stones and their imitations; clocks and watches; cuff links; cuff links and tie clips; cuff links made of precious metals with semi-precious stones; ornamental pins; clips of silver [jewellery]; tie clips; decorative pins of precious metal; lapel pins of precious metals [jewellery]; paste jewellery; hat jewellery; medals; commemorative medals; coins; commemorative coins are identical to the opponent’s precious metals and their alloys, jewellery, precious stones, clocks and watches, cuff links, ornamental tie pins, tie clips, jewellery of metal, semi-precious stones and imitations thereof, hat ornaments of precious metal, medals, coins, paste jewellery, brooches - all included in this class, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include or overlap with the contested goods.

As the contested imitation jewellery ornaments can be made of metal, these goods overlap with the opponent’s jewellery of metal, and are therefore identical.

The contested fitted jewelry pouches; presentation boxes for jewellery; jewellery boxes and watch boxes; boxes for cufflinks are similar to the opponent´s jewellery, watches, cuff links, as these goods usually coincide in their distribution channels, target the same public and often come from the same producers.

Contested services in Class 35

The contested auctioneering of property; presentation of goods on communication media, for retail purposes; promotion [advertising] of business; organization of exhibitions for commercial or advertising purposes; demonstration of goods; procurement of contracts for others relating to the sale of goods; mediation and conclusion of commercial transactions for others; advertising via electronic media and specifically the internet; advertising through all public communication means; dissemination of advertising matter; shop window dressing; window dressing and display arrangement services are identical to the opponent’s auctioneering, presentation of goods on communication media, for retail purposes, sales promotion, organisation of exhibitions for commercial or advertising purposes, demonstration of goods, advertising, arranging and concluding commercial transactions and contracts in this field, advertising and marketing via the internet, updating of advertising material, dissemination of advertising matter, shop-window dressing - included in this class, procurement services for others, either because they are identically contained in both lists (including synonyms) or because the opponent’s services include or overlap with the contested services.

Retail and wholesale services concerning the sale of specific goods are similar to an average degree to these specific goods. Although the nature, purpose and method of use of these goods and services are not the same, they are similar because they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested wholesale services in relation to jewellery; retail services in relation to jewellery are similar to the opponent’s jewellery.

Contested services in Class 40

The contested galvanization; metal casting; soldering; gold plating; engraving; silver plating; welding services; metal fabrication and finishing services; metal treating are identical to the opponent’s metal plating, galvanisation, metal casting, brazing, gilding, plating, engraving, silver-plating, welding, processing and treatment of metal, production of gold, silver and diamond jewellery, watches and individual components thereof, either because they are identically contained in both lists (including synonyms) or because the opponent’s services include, are included in, or overlap with, the contested services.

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 and services found to be identical or similar are directed at the public at large, or at business customers with specific professional knowledge or expertise.

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 jewellery, watches, precious stones and metals. In many cases these 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 for these goods.

The public’s degree of attentiveness may vary from average to high, depending on the price, sophistication or terms and conditions of the goods and services purchased.

c) The signs

	Cutie
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 word 'cutie', constituting the verbal element of the earlier mark and constituting the contested sign, is meaningful for the English-speaking part of the public, as it refers to an attractive or endearing person or animal (information extracted from Oxford English Dictionary on 02/10/2020 at https://premium.oxforddictionaries.com/definition/english/cutie). Consequently, and in order to take into account the semantic content conveyed by the signs which contributes to their overall similarity, it is appropriate to focus the comparison of the signs on the English-speaking public in the EU.

The common element ‘cutie’ is allusive for some of the goods at issue, such as jewellery, as it may be perceived as indicating that these goods, which are for personal adornment, may help in be(com)ing an attractive or endearing person although it is not completely descriptive. Even if the degree of distinctiveness of the common element ‘cutie’ is somewhat low for the relevant public for some of the goods at issue, it is still on an equal footing as it appears in both marks and has no impact on the comparison as the consumer will perceive this element in both signs as having the same meaning. As it has no allusive meaning for the relevant public for the remaining goods, such as coins and for all of the services at issue, its distinctiveness is considered to be normal for these goods and services.

The earlier mark is a figurative mark consisting of the word ‘cutie’ written in white letters, with each letter included in a separate sphere of a different colour: a blue sphere including the letter ‘c’ is followed by a purple sphere including the letter ‘u’, then a red sphere including the letter ‘t’, a yellow sphere including the letter ‘i’, and finally a green sphere including the letter ‘e’. All five spheres form a multicoloured horizontal line. As the letters are the same size and appear in the spheres, there is, contrary to the applicant´s argument that the earlier mark´s figurative element is dominant, no element which is more eye-catching than other elements.

The contested sign as a word mark cannot have any element that could be considered clearly more dominant than other elements.

As the signs fully coincide in their sole verbal element, and only differ in the earlier mark´s figurative element, which has no counterpart in the contested sign, the signs are visually similar to an average degree.

Aurally, the signs are identical.

The signs are conceptually also identical as both their verbal elements convey the same meaning, and this meaning is not altered by the earlier mark´s figurative element.

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.

Considering what has been stated above, the distinctiveness of the earlier mark must be seen as somewhat low for some of the goods at issue, whereas they have a normal degree of distinctiveness for the remaining goods and the services at issue.

e) Global assessment, other arguments and conclusion

The contested goods and services are identical or similar to the opponent’s goods and services. They target the general public and professionals whose degree of attention may range from average to high. The signs are visually similar at least to an average degree, and aurally and conceptually identical. The distinctiveness of the earlier mark ranges from somewhat low to average, even so it is on an equal footing in the earlier mark and the contested sign, and has little if no impact on the comparison because this is the element to which the consumers will pay most attention to in the earlier mark and it is the only element of the contested sign.

Account is 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). Admittedly, the inherent degree of distinctiveness of the earlier mark is somewhat low for some of the goods at issue. However, their low degree of distinctiveness cannot prevent the opposition from succeeding as it is on an equal footing with the contested mark. It is established case-law that, even in a case involving an earlier mark with a weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (16/03/2005, T‑112/03, Flexi Air, EU:T:2005:102). Even if the differences between the signs reside in the figurative aspects of the earlier mark which are distinctive, the signs contain the same verbal element as their unique verbal element. Therefore, the similarities between the signs outweigh the differences as consumers pay more attention to the verbal element and will refer to the signs by this element. The consumers may believe that the contested sign is a sub-brand of the earlier mark to distinguish a new product line.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. 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 registration No 10 027 837. It follows that the contested trade mark must be rejected for all the contested goods and services.

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)(a) 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

Nicole CLARKE

Christophe DU JARDIN

Ferenc GAZDA

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.