CHI | Decision 2801473
Date Published: Sep 22, 2017
OPPOSITION No B 2 801 473
Valcambi S.A., 6828 Balerna, Switzerland (opponent), represented by Fiammenghi – Fiammenghi, Via delle Quattro Fontane, 31, 00184 Roma, Italy (professional representative)
a g a i n s t
Qi Yong, Wesoła 54/54c, 05-552 Wólka Kosowska, Poland (applicant), represented by Kancelaria Prawno-Patentowa Anna Bełz, Północna 6/24, 20-064 Lublin, Poland (professional representative).
On 11/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 801 473 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 15 464 993 The opposition is based on European Union trade mark registration No 5 115 985. The opponent invoked Article 8(1) (b) EUTMR.
Earlier trade mark | Contested sign |
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 the following:
Class 14: Watch straps of gold, silver, precious metals, clock cases of gold, silver, precious metals, coins and medals of gold, silver, precious metals, ingots of gold, silver, precious metals, granulates of gold, silver, precious metals.
The contested goods are the following:
Class 18: Casual bags; Briefcases [leather goods]; Bags made of imitation leather; Canvas bags; Holdalls; Wheeled bags; Sport bags; Backpacks; Beach bags; Carriers for suits, shirts and dresses; Portmanteaus; Briefbags; Pocket wallets and other carriers; Briefcases [leather goods]; Credit card and business card cases; Document wallets; Straps made of imitation leather; Umbrellas and parasols.
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.
The opponent’s goods in Class 14 include watch straps, clock cases, coins and ingots, all made of precious metals, together with precious metals in a granulated form.They are dissimilar to the opponent’s goods in class 18, which include bags, cases, wallets, carriers, straps of imitation leather, parasols and umbrellas. They have an entirely different nature, a different primary purpose and they do not share the same distribution channels. They are neither complementary nor are they in competition. Although some bags and wallets may serve as a type of adornment (like watch straps made of precious metals), the main function of these goods, and of straps, is to carry things or to facilitate the carrying of things. Although some fashion designers nowadays sell accessories such as jewellery watches and travel accessories under their marks, this is not the rule; it tends to apply only to (commercially) successful designers.
Parasols and umbrellas are used to protect the bearer from the elements. Again, they have nothing in common with watch straps and clock cases made of precious metals, or indeed commodities such as coins or ingots or precious metals in granulated form, all of which can be used for further processing or used as currency.
Therefore, and contrary to the opponent’s arguments, the Opposition Division finds that the contested goods in class 14 are considered to be dissimilar to the opponent’s goods in Class 18. None of these goods coincide in any relevant points of contact with those of the earlier right. These goods have a different nature and purpose, and usually have different producers or manufacturers. They do not target the same relevant public, neither do they use the same distribution channels. Furthermore, they do not share a complementary nature nor are they in competition with one another. This clearly includes watch straps which are made of precious metals. Such exclusive items do not share common points with straps for goods in class 18 which are made of imitation leather.
- Conclusion
According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled and the opposition must be rejected.
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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Jessica LEWIS | Keeva DOHERTY | Julie GOUTARD |
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.