LOVEMARK DIAMOND | Decision 2771528

Date Published: Sep 25, 2017

OPPOSITION No B 2 771 528

Cartier International AG, Hinterbergstr. 22, Postfach 61, 6312 Steinhausen, Switzerland (opponent), represented by Cabinet Lavoix, 62, rue de Bonnel, 69448 Lyon Cédex 03, France (professional representative)

a g a i n s t

Merry Link (Asia) Limited, Room 6, 6/F, Chevalier House, No. 45-51 Chatham Road South, Kowloon, Hong Kong Special Administrative Region of the People’s Republic of China (applicant), represented by Guy Delhaye, 2, rue Gustave de Clausade, 81800 Rabastens, France (professional representative).

On 21/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 771 528 is upheld for all the contested goods.

2.        European Union trade mark application No 15 419 625 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 of European Union trade mark application No 15 419 625. The opposition is based on, inter alia, international trade mark registration No 1 029 142 designating the European Union. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier international trade mark registration No 1 029 142 designating the European Union, for which the opponent claimed repute in the EU.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. 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.

The coinciding element, ‘LOVE’, will be understood by the English-speaking part of the public in the relevant territory. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on this part of the public.

The word ‘LOVE’, present in both signs, refers to an intense emotion of affection, warmth, fondness and regard toward a person or thing. The fact that in the contested sign this word is conjoined to another word, ‘MARK’, does not interfere with this finding since the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58). Indeed, in addition to ‘LOVE’ having the aforesaid concept, the second element of the contested sign, ‘MARK’, may be understood as having various meanings, including the meaning ‘trade mark’, or as alluding to a hallmark, being a mark stamped on articles of gold, silver or platinum by British assay offices to certify their standard of purity.

Although some of the goods in Class 14 may be purchased for loved ones, this does not constitute a strong enough link with the word ‘LOVE’ to render it non-distinctive, and consequently this term has an average degree of distinctive character for all the goods concerned.

Furthermore, the verbal element ‘LOVE’ constitutes the entire earlier mark and the first element of the contested sign. 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.

The element ‘MARK’ in the contested sign, which will be perceived as having one of the meanings given above, has a limited degree of distinctiveness, as it merely indicates that the preceding element, ‘LOVE’, is a mark or alludes to the idea of a hallmark.

The word ‘DIAMOND’ in the contested sign will be perceived as referring to a hard, bright, precious stone used, inter alia, in jewellery. For some of the relevant goods, such as bracelets, this word is non-distinctive, as it indicates the quality of the goods, namely that they are made of or contain diamonds. For other goods, such as precious metals, this word is not directly descriptive but, nevertheless, its distinctiveness is limited, as those goods are closely related to diamonds, since they are used in making jewellery and are often used in combination with each other. Moreover, the word ‘DIAMOND’ appears at the end of the contested sign, where it will not attract the primary attention of the relevant public.

Visually, the signs are similar to the extent that they coincide in the distinctive element ‘LOVE’, which constitutes the entire earlier mark and the first element of the contested sign. However, they differ in the additional verbal elements ‘MARK’ and ‘DIAMOND’ in the contested mark, which have, however, a lesser degree of distinctiveness, as well as in the stylisation of both marks and the additional figurative element in the contested sign. In this regard, it should be noted that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

Therefore, and taking into account the distinctiveness of the contested sign’s various elements, the marks are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the distinctive element ‛LOVE’, present identically at the beginning of both signs. The pronunciation differs in the sound of the elements ‘MARK’ and ‘DIAMOND’ in the contested sign, which not only appear in a secondary position but also have a lower degree of distinctiveness than the word ‘LOVE’, as explained above.

Therefore, and taking into account the distinctiveness of the contested sign’s various elements, the marks are aurally similar to at least an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with similar meanings on account of the distinctive word ‘LOVE’, while the concepts evoked by the additional verbal elements in the contested sign have a limited degree of distinctiveness, the signs are conceptually similar to an average degree.

Taking into account the abovementioned visual, aural and conceptual coincidences, the signs under comparison are similar to an average degree.

2. Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in the European Union.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case, the contested trade mark was filed on 11/05/2016. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely:

Class 14:        Rings, bracelets.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 15/09/2016 the opponent submitted, in particular, the following evidence:

• Extracts from the websites cartier.com, cartier.fr, cartier.de, cartier.es and cartier.it on the history of the mark, stating ‘the  bracelet created in the 1970’s in New York is the symbol of genuine loving attachment, a discreet token of passionate love …. A style. A signature. Absolute Cartier icon, the Love collection …. A child of 1970s New York, the  bracelet serves to seal love that transgresses convention. The stark screws, ideal oval shape and undeniable elegance establish the piece as a timeless tribute to passionate romance. Cartier’s jewels have marked the history. Some jewels are become legendary as the famous … the Love bracelet, …all fascinating thanks to their aesthetic and refined elegance’. The mark appears as registered in relation to, inter alia, bracelets and rings.
• Extracts from various magazines, leaflets and websites, dated between 2006 and 2016, and from various countries in the European Union (France, Germany, the United Kingdom, Belgium, Italy, etc.), mentioning and/or displaying ‘Cartier’s Love collection’, the ‘Love bracelet’, etc. The earlier mark appears as registered in many of the documents. For example: extract from the website www.grazia.fr, reading, ‘In the Early 70’s, Peace and Love echoes to the plush corridors of the house CARTIER in New York City. The luxurious brand winked at hippie movement, naming one of its bracelets LOVE’; extract from www.blog.myluxury.biz, stating, ‘The launch of the bracelet began in 1970 and immediately became a resounding success’; extract from Madame Figaro, stating, ‘Symbol of unalterable and definitive bound, the famous LOVE bracelet of Cartier keeps its same significant power since its creation in years 1970’; extract from Psychologies, stating, ‘Cult jewel of the 1970’s, the LOVE bracelet is in the trend again’; extract from Valeurs actuelles, stating, ‘Love talisman, the Love bracelet has become a myth after being chosen by legendary couples such as Elizabeth Taylor and Richard Burton, Alie MacGraw and Steve McQueen’; extract from www.puretrend.com (2016), stating, ‘The Cartier Love bracelet is having a major resurgence, in part fuelled by one of the most divisive celebrities around. In 2013, the Huffington Post pointed out that Kylie Jenner – then just 16 – was wearing roughly $40,000 worth of the iconic bracelets. In 2014, MTV said that she was casually wearing the price of a college education on her arm’; extract from www.piaoliu.blogspace.be, stating, ‘Cartier Love rings collection of exquisite jewellery models with its innovative designs and modern charms’; extract from www.vogue.es, referring to ‘the mythical bracelet Love’; extract from www.fashionblog.it, stating, ‘Among the objects most required by famous woman, there is the Love bracelet of Cartier’; extract from www.styleinstitute.co.uk, stating, ‘These exquisite Love bracelets have been seen on almost every celebrity on the planet (male and female) since the 60’s and have never lost their popularity due to their unique look and exquisite style’.
• Sample material from advertising campaigns, showing bracelets belonging to the ‘LOVE’ collection and featuring the earlier mark . The opponent also mentions in its arguments (without providing any supporting evidence) that it spent EUR 2.195 million in 2007, EUR 2.575 million in 2008 and EUR 903 000 in 2009 on promoting the mark.
• Information relating to the opponent’s involvement in charitable associations. It runs the worldwide ‘LOVE Charity Day’, during which profits from the sales of ‘LOVE’ bracelets are donated to charitable associations chosen by the celebrities who support the event.
• Some EUIPO and INPI decisions confirming the reputation of the earlier mark.

On the basis of the above, the Opposition Division concludes that the earlier trade mark has a reputation in the European Union at least for bracelets in Class 14.

It is clear from the evidence that the earlier trade mark has been subject to long-standing and intensive use and is generally known in the relevant market, where it enjoys a consolidated position and has built up an image of exclusivity and luxury, as has been attested by diverse independent sources (including, for example, www.grazia.fr and www.vogue.es). The various references in the press to its success all unequivocally show that the mark enjoys a high degree of recognition among the relevant public.

The submitted material shows that the mark has been extensively used in or on French-, English-, German-, Italian- and Spanish-language advertisements, media campaigns, homepages, newspapers and leaflets promoting charity events during the period between 2006 and 2016 in relation to, inter alia, bracelets.

The evidence consisting of sample material from advertising campaigns for the ‘LOVE’ collection suggests that a considerable marketing investment has been made.

Furthermore, from the evidence it is clear the goods sold under the earlier mark are very popular with celebrities, as various articles mention this.

Therefore, the documents show that the trade mark is widely known by the relevant public.

This finding is also confirmed by the previous EUIPO and INPI decisions referred to by the opponent, and in particular by 04/11/2015, R 23/2015-1, Love Literally / Love (FIG. MARK) et al.

3. The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 42):

∙        the degree of similarity between the signs;

∙        the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

∙        the strength of the earlier mark’s reputation;

∙        the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

∙        the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

As concluded above, the earlier mark has a reputation in the European Union for bracelets. The mark has been used for over 40 years to refer to what has become a famous cult jewellery line.

The conflicting marks are visually, aurally and conceptually similar to an average degree. The verbal element ‘LOVE’ of the reputed earlier mark is the first and most distinctive element of the contested sign. The fact that the word ‘LOVE’ is combined with the word ‘MARK’ in the contested sign will only reinforce a link between the signs, since it might be perceived by a significant part of the relevant public as referring to ‘the trade mark “LOVE”’.

The earlier mark has a reputation for bracelets. The contested goods are precious metals, unwrought or semi-wrought; jade; semi-precious stones; bracelets (jewellery, jewelry); charms (jewellery, jewelry); necklaces (jewellery, jewelry); jewellery; precious stones; pearls (jewellery, jewelry); clocks; wristwatches.

Some of the contested goods are identical to the opponent’s bracelets; this is the case for bracelets (jewellery, jewelry) and jewellery, as the latter includes the opponent’s bracelets. Others among the contested goods are similar to the opponent’s bracelets; this is the case for jade; semi-precious stones; charms (jewellery, jewelry); necklaces (jewellery, jewelry); precious stones; pearls (jewellery, jewelry); wristwatches. Charms, necklaces and wristwatches are, like bracelets, types of jewellery; therefore, they have the same nature, and they can have the same producers, relevant public and distribution channels. Precious and semi-precious stones and pearls, especially in mountings, might form part of the opponent’s goods. The opponent’s goods and these contested goods can be found in the same outlets, since a jeweller’s shop will usually not only offer the finished product but also provide the customer with a range of unworked or faceted precious stones for individual creations. The colour, shape and size of a precious stone are all elements that may make jewellery individual and valuable. These goods target the same consumers and can serve the same purpose as the opponent’s goods. The contested clocks are at least similar to a low degree to the opponent’s goods, as they are often sold through the same distribution channels. The remaining contested goods, precious metals, unwrought or semi-wrought, are perhaps not similar to the opponent’s goods, but they are certainly closely related. The contested goods are used in the manufacture of the opponent’s goods and belong, therefore, to the same sector, that of jewellery.

The relevant public for the opponent’s bracelets is the public at large. Most of the contested goods also target the public at large, while some, such as precious metals, unwrought or semi-wrought; jade, might target a professional public exclusively. Nevertheless, the professional public purchasing these raw materials is also part of the general public and will definitely be aware of the reputed marks in its sector. Moreover, the professional public that sells the opponent’s goods will also purchase raw materials. Therefore, there is a clear overlap in the relevant public.

Therefore, taking into account and weighing up all the relevant factors of the present case, and in particular the similarities between the signs and the fact that the conflicting goods are all sold and used in the jewellery sector, the Opposition Division concludes that when encountering the contested mark the relevant consumers will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs. However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T-301/09, Citigate, EU:T:2012:473, § 96).

4. Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

∙        it takes unfair advantage of the distinctive character or the repute of the earlier mark;

∙        it is detrimental to the repute of the earlier mark;

∙        it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

The opponent claims that use of the contested trade mark would take unfair advantage of the repute of the earlier trade mark.

Before examining the opponent’s claim, it is appropriate to recall that the opposition is directed against the following goods:

Class 14:        Precious metals, unwrought or semi-wrought; jade; semi-precious stones; bracelets (jewellery, jewelry); charms (jewellery, jewelry); necklaces (jewellery, jewelry); jewellery; precious stones; pearls (jewellery, jewelry); clocks; wristwatches.

        

As seen above, the earlier trade mark was found to have a reputation for:

Class 14:         Bracelets.        

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free-riding on the coat-tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 48; 22/03/2007, T-215/03, Vips, EU:T:2007:93, § 40).

The opponent bases its claim on the following:

The applicant takes unfair advantage of the reputation of LOVE/, using the prestigious image of the brands to designate its own products and giving consumers a false impression of luxury. On the basis of Article 8(5) EUTMR, there is an obvious attempt due to the reputation of the earlier marks, the identity and similarity of activities and the link which will be made by the consumer.

According to the Court of Justice of the European Union

… as regards injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, insofar as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, the existence of such injury must be assessed by reference to the average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect.

(27/11/2008, C-252/07, Intel, EU:C:2008:655, § 36.)

The earlier mark has been used for over 40 years and has built up an image of exclusivity and luxury.

As the relevant public would establish a link (or form an association) between the signs, for the reasons explained above, the luxurious image of the earlier mark would inevitably be transferred to the applicant’s goods if they were marketed under the contested sign.

Consequently, the applicant’s goods would in principle be made easier to market. The fact that the contested sign includes the element ‘LOVEMARK’ for goods that are linked to those of the opponent might motivate the consumer to purchase the applicant’s goods.

In this way, the applicant would take advantage of the success of the opponent’s company. It would take a ‘free ride’ on the investment of the opponent in promoting and building up goodwill for its mark; it would exploit without paying any financial compensation the marketing effort expended by the opponent in order to create and maintain the image of that mark.

Taking into account the above, the applicant would be free-riding on the coat-tails of the earlier reputed mark and would be attempting to trade on its reputation. This would amount to taking unfair advantage of the distinctive character of and repute of the earlier mark.

On the basis of the above, the Opposition Division concludes that the contested trade mark is likely to take unfair advantage of the distinctive character or the repute of the earlier trade mark.

5. Conclusion

Considering all the above, the opposition is well founded under Article 8(5) EUTMR. Therefore, the contested trade mark must be rejected for all the contested goods.

Given that the opposition is entirely successful under Article 8(5) EUTMR it is not necessary to examine the remaining grounds and earlier rights on which the opposition was based.

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 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 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

Marta GARCÍA COLLADO

Saida CRABBE

Ric WASLEY

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.