Bijou de M May | Decision 2620832
Date Published: Sep 24, 2017
OPPOSITION No B 2 620 832
CSI Luxembourg S.a.r.l., Luxembourg, Schaffhausen Branch, Rhypark / Rheinweg 4
8200 Schaffhausen, Switzerland (opponent), represented by Fieldfisher LLP, Riverbank House, 2 Swan Lane, London, City of London, EC4R 3TT, United Kingdom (professional representative)
a g a i n s t
Mio Harutaka, Room 103, Odakyu Minami Aoyama Mansion, 5-12-3 Minami Aoyama
Minato-ku, Tokyo 107-0062, Japan (holder), represented by Jérôme Tassi, 47 rue de Prony, 75017 Paris, France (professional representative).
On 16/08/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 620 832 is upheld for all the contested goods.
2. International registration No 1 270 611 is entirely refused protection in respect of the European Union.
3. The holder bears the costs, fixed at EUR 650.
REASONS:
The opponent filed an opposition against all the goods of international registration designating the European Union No 1 270 611. The opposition is based on European Union trade mark registration No 11 051 919. The opponent invoked Article 8(1)(b), 8(4) and (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 goods
The goods on which the opposition is based are, among others, the following:
Class 14: Precious metals and their alloys and goods of precious metals or coated therewith not included in other classes; jewellery; clocks and watches; ornaments; figurines; ornamental models made of precious metal; badges and brooches; tie clips; tie pins; cuff links; shoe ornaments; key rings; identify tags and bracelets; lockets; rings; earrings; necklaces; toe rings; anklets; bracelets; costume jewellery; imitation jewellery; precious stones; tiaras; jewellery holders; jewellery boxes; fobs incorporating key rings; key ring holders; tiaras; key fobs made of leather incorporating key rings.
Class 16: Printed matter; printed publications; instructional and teaching materials; books; magazines and stationery; pens; pencils; crayons; photographs; calendars; posters; diaries; writing paper; calendars; cards; greetings cards; packaging and wrapping materials; gift tags; wrapping paper; artists materials; note books; pencil sharpeners; erasers; decalcomania; transfers; cheque book holders.
Class 18: Goods made of leather or imitation leather; travelling bags; brief cases; handbags; haversacks; rucksacks; satchels; articles of luggage; wallets; purses; credit card cases; umbrellas; parasols; vanity cases; clutch bags; toilet bags; beach bags; cosmetic bags; shoulder bags; tote bags.
Class 25: Clothing, headgear and footwear; swim wear; sports clothing and leisure wear; gloves; scarves; sleepwear; ballet shoes; leotards; tutus; veils; boas; dresses; capes; belts; socks and tights; fancy dress costumes; leg warmers; arm warmers; head scarves.
The contested goods are the following:
Class 14: Personal ornaments [jewellery, jewelry (Am.)].
Class 16: Stationery.
Class 18: Bags.
Class 25: Clothing; footwear, other than special footwear for sports; shoes, not for sports.
Contested goods in Class 14
The contested Personal ornaments [jewellery, jewelry (Am.)] are included in the broad category of the opponent’s jewellery. Therefore, they are identical.
Contested goods in Class 16
Stationery is identically contained in both lists of goods.
Contested goods in Class 18
The contested Bags include, as a broader category, the opponent’s travelling bags. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
Contested goods in Class 25
Clothing is identically contained in both lists of goods.
The contested footwear, other than special footwear for sports; shoes, not for sports are included in the broad category of the opponent’s footwear. Therefore, they are identical.
- 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.
The public’s degree of attentiveness may vary from average to high, depending on the price of the purchased goods. In its decision of 09/12/2010, R 900/2010-1, Leo Marco, § 22, the Board held that consumers generally put a certain amount of thought into the selection of these goods. In many cases the goods will be luxury items or will be intended as gifts. A relatively high degree of attention on the part of the consumer may be assumed in relation to the goods in Class 14. The degree of attention will be average for the remaining identical goods.
- The signs
| |
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
The elements Bijou/Bijoux are not meaningful in certain territories, for example, in some countries where French or English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Hungarian-speaking part of the public such as in Hungary. Therefore, the applicant errs when he states that the element Bijou(x) will be understood in a descriptive way throughout the European Union; the Office has to take into account the meaning of words in all official languages of the Union and Bijou(x) has no meaning in Hungarian (see judgment of 23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 32 and the case-law cited therein).
The verbal element ‘One’ is a basic English word which will be understood in all member states.
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.
Visually, the signs coincide in ‘BIJOU’. However, they differ in the stylisation of these letters in the marks, the additional letter ‘x’ as well as the basic English word ‘One’ in the earlier mark and the letters ‘de M May’ in the contested sign.
Therefore, the signs are similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛Bijou’, present identically in both signs. The pronunciation differs in the sound of the letters ‛x’ and ‘One’ of the earlier sign, which have no counterparts in the contested mark. They also differ in the sound of the letters ‘de M may’ in the contested mark.
Therefore, the signs are similar to an average degree.
Conceptually, neither of the signs as a whole has a meaning for the public in the relevant territory. Only the word ‘One’ in the earlier mark will be understood. To that regard, the signs are not conceptually similar.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.
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.
- Global assessment, other arguments and conclusion
Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.
Account 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).
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).
As the goods are identical, and the signs are visually and aurally similar to an average degree, a likelihood of confusion exists.
Although the coincidences in the signs are less obvious than the differences, a likelihood of confusion still exists, as the coinciding element plays an independent distinctive role in both signs.
Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).
Considering all the above, there is a likelihood of confusion on the part of the Hungarian-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 11 051 919. It follows that the contested trade mark must be rejected for all the contested goods.
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 grounds of the opposition, namely Article 8(4), 8(5) EUTMR.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the holder 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 Rule 94(3) and (6) and Rule 94(7)(d)(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
Tobias KLEE | Lars HELBERT | Sigrid DICKMANNS |
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.