David Webb | Decision 2544784
Date Published: Sep 25, 2017
OPPOSITION No B 2 544 784
Alishan Capital Incorporated, Mossfon Bldg., East 54th Street, Panama City, Panama (holder), represented by Inlex IP Expertise, Plaza San Cristobal, 14, 03002 Alicante, Spain (professional representative).
a g a i n s t
David Webb LLC, 942 Madison Avenue, New York, NY 10021, United States of America (opponent), represented by Boyes Turner LLP, Abbots House, Abbey Street, Reading RG1 3BD, United Kingdom (professional representative)
On 12/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 544 784 is partially upheld, namely for the following contested goods:
Class 14: Watches made of precious and semi-precious metals, stones and gems.
2. International registration No 1 228 966 is refused protection in respect of the European Union for all of the above goods. It may proceed for the remaining goods.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against all the goods of international registration designating the European Union No 1 228 966. The opposition is based on European Union trade mark registration No 13 123 013. 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.
- The goods
After a partial rejection of the earlier mark in opposition proceedings No B 2 446 352, the goods on which the opposition is now based are the following:
Class 14: Alloys of precious metal; casings, springs or glasses for watches; cases for watches.
The contested goods are the following:
Class 14: Jewelry, watches, and works of art made of precious and semi-precious metals, stones and gems.
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 contested watches made of precious and semi-precious metals, stones and gems are similar to the opponent’s cases for watches in Class 14, as they can coincide in producer, end user and distribution channels. Furthermore, they are complementary.
The contested jewelry, works of art made of precious and semi-precious metals, stones and gems are considered dissimilar to the opponent’s goods. Indeed the Opposition Division concurs with the holder’s assertions that the earlier mark’s goods, namely alloys of precious metal are the raw materials of which, inter alia, the holder’s goods in Class 14 are made of. However, the mere fact that one good is used for the manufacture of another is not sufficient in itself to make the goods similar, as their nature, purpose and customers may be quite distinct. Raw materials are intended for use in industry rather than for direct purchase by the final consumer. The producers are normally different and the goods are sold through different channels. Furthermore, the opponent’s goods target industrial operators, whereas the holder’s goods are merely intended for end users. As regards the remaining earlier goods in Class 14, namely casings, springs or glasses for watches; cases for watches, these have different natures, purposes and methods of use from those of the contested jewelry, works of art made of precious and semi-precious metals, stones and gems. Furthermore, they have different origins and target different consumers. It follows that these goods are dissimilar.
- 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 and depending on the price, degree of sophistication, and intended purpose of the purchased goods and services.
In the present case, the goods found to be similar (watches, cases for watches) are directed at the public at large. It should be borne in mind that the Board, in its decision of 09/12/2010, R 900/2010-1, Leo Marco, § 22, held that consumers generally put a certain amount of thought into the selection of these goods, as in many cases these goods will be luxury items, can have a relatively high price or will be intended as gifts. Therefore, a relatively high degree of attention on the part of the consumer may be assumed.
- The signs
DAVID WEBB | David Webb |
Earlier trade mark | Contested sign |
The signs are identical. As both signs are word marks it is irrelevant whether they are written in lower-case or upper-case letters or a combination of both (31/01/2013, T-66/11, ‘Babilu’, EU:T:2013:48, § 57).
- 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.
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
The signs were found to be identical and some of the contested goods, namely watches made of precious and semi-precious metals, stones and gems, were found to be similar to those covered by the earlier trade mark.
Given the identity of the signs, the Opposition Division finds that there is a likelihood of confusion on the part of the public within the meaning of Article 8(1)(b) EUTMR and the opposition is upheld insofar as it is directed against these similar goods.
The remaining contested goods have been found to be dissimilar to the opponent’s goods.
As the similarity of goods and services is a necessary condition for the application of 8(1)(a) and (b) EUTMR, the opposition based on this article and directed at these goods cannot be successful.
For the sake of completeness, the Opposition Division would like to draw the holder’s attention to the fact that both the abundant evidence furnished and the arguments put forward in relation to the opposition proceedings No B 2 446 352 have been disregarded, as they are not the subject of the present case.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.
Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
Chantal VAN RIEL | Klaudia MISZTAL | Saida CRABBE |
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.