OE | Decision 2756693

Date Published: Sep 22, 2017

OPPOSITION No B 2 756 693

Coeur De Lion Schmuckdesign GmbH, Krefelder Str. 32, 70376 Stuttgart, Germany (opponent), represented by SKW Schwarz Rechtsanwälte, Kurfürstendamm 21, Neues Kranzler Eck, 10719 Berlin, Germany (professional representative)

a g a i n s t

Orient Express, 16 Avenue D’ivry, 75013 Paris, France (applicant), represented by Strato-IP, 63 boulevard de Ménilmontant, 75011 Paris, France (professional representative).

On 15/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 756 693 is partially upheld, namely for the following contested goods and services:

Class 14:         Jewelry; jewellery; precious stones; pearls; cuff links; tie clips; rings (jewellery, jewelry (am.)); bracelets; earrings; necklaces [jewellery, jewelry (am.)]; brooches (jewellery); charms; key fobs of precious metals; works of art of precious metal; jewel cases; boxes of precious metal; chorological and chronometric instruments; table clocks; watches; chronometers; movements for clocks; miniature clocks; housings for clocks; straps for watches; watch chains; key rings [trinkets or fobs]; medals; bag charms; coins.

Class 35:         Retailing of jewellery, pearls, cuff-links, tie clips, rings, bracelets, earrings, necklaces, brooches, charms (jewellery); chorological and chronometric instruments, table clocks, clocks, small clocks.

2.        European Union trade mark application No 15 078 363 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 078 363 , namely against all the goods in Class 14 and some of the services in Class 35. The opposition is based on European Union trade mark registration No 10 116 796 . The opponent invoked Article 8(1)(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.

1. The goods and services

The goods on which the opposition is based are the following:

Class 14: Jewellery, in particular necklaces, earrings, bracelets, rings, brooches; clocks.

The contested goods and services are the following:

Class 14: Jewelry; jewellery; precious stones; alloys of precious metal; pearls; cuff links; tie clips; rings (jewellery, jewelry (am.)); bracelets; earrings; necklaces [jewellery, jewelry (am.)]; brooches (jewellery); charms; key fobs of precious metals; works of art of precious metal; jewel cases; boxes of precious metal; chorological and chronometric instruments; table clocks; watches; chronometers; movements for clocks and watches, clocks; miniature clocks; housings for clocks and watches; straps for watches; watch chains, springs or glasses; key rings [trinkets or fobs]; cases for watches; medals; bag charms; coins.

Class 35: Retailing of jewellery, precious stones, precious metals and their alloys, pearls, cuff-links, tie clips, rings, bracelets, earrings, necklaces, brooches, charms (jewellery), keyrings of precious metal, works of art of precious metal, jewellery boxes, boxes of precious metal, chorological and chronometric instruments, table clocks, watches, stopwatches, movements for clocks and watches, clocks, small clocks, cases, straps for watches, chains and springs or glasses for watches, novelty keyrings, presentation cases for watches, medals, bag charms, coins.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘in particular’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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

Jewelry; jewellery is identically contained in both lists of goods and services, albeit with different spellings.

The contested rings (jewellery, jewelry (am.)); bracelets; earrings; necklaces [jewellery, jewelry (am.)]; brooches (jewellery); charms; pearls; cuff links; tie clips are included in, or overlap with, the broad category of the opponent’s jewellery. Therefore, they are identical.

As a preliminary remark, the opponent’s clocks are devices for measuring and indicating time, usually by means of hands moving over a dial; clocks, unlike watches, are not meant to be worn or carried about. On the other hand, the contested watches are small portable timepieces, usually worn strapped to the wrist (a wristwatch) or in a waistcoat pocket.

The contested table clocks; miniature clocks are included in, or overlap with, the broad category of the opponent’s clocks. Therefore, they are identical.

The contested chorological and chronometric instruments; chronometers include, as broader categories, or overlap with the opponent’s clocks. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested watches are highly similar to the opponent’s jewellery, as these goods may have the same nature and, in addition to the function of watches as time measurement instruments, they may also be worn as jewellery items, for instance designed in the form of bracelets. Furthermore, these goods may have the same distribution channels, such as large jewellery stores where they are offered as adornment; they will target the same relevant public and they have the same origin, namely producers of jewellery.

The contested precious stones are raw materials used in the manufacture of jewellery. In principle, the fact that one product is used in the manufacture of another is not sufficient to conclude that the goods concerned are similar. However, the value of jewellery is usually based on the precious stones used in its manufacturing. The contested goods are consequently essential for the opponent’s jewellery, and the former often determine the price of the latter. Moreover, the goods in question may be distributed through the same sales outlets, namely jewellery stores, which offer not only jewellery but also precious stones in a semi-processed condition. Therefore, the goods are considered similar.

As the opponent argues, the contested key fobs of precious metals; works of art of precious metal; boxes of precious metal; jewel cases; key rings [trinkets or fobs]; bag charms; coins; medals are similar to the opponent’s jewellery insofar as the contested goods are articles coated with precious metals, which may be found in jewellery and antiques shops. These goods may coincide in their relevant publics – namely the public interested in any type of jewellery accessories and ornaments – and in their producers, namely those specialised in producing articles of precious metals. Furthermore, some of the goods may be complementary to each other, for instance the contested jewel cases and the opponent’s jewellery.

The opponent’s housings for clocks; movements for clocks are similar to the opponent’s clocks, since they may coincide in their distribution channels, relevant publics and producers. Furthermore, these goods are complementary to each other.

Likewise, the contested straps for watches; watch chains are similar to a low degree to the opponent’s jewellery, since they may coincide in their distribution channels, relevant publics and producers, to the extent that the contested goods are parts of jewellery or related accessories.

The contested housings for watches; cases for watches; movements for watches, clocks; watch springs or glasses are considered dissimilar to the opponent’s jewellery and clocks. These goods have different natures, purposes and methods of use, as they are specialised products with particular applications. Furthermore, they will target different consumers and be distributed through different channels.

The contested alloys of precious metal are dissimilar to the opponent’s jewellery. The contested goods are valuable materials used in the manufacture of the opponent’s goods, but this association is not sufficient to establish a similarity between them, since metals and their alloys are not available in a raw or unworked condition in jewellery stores. The goods in question have different uses and target different consumers (for instance, the general public versus professional jewellers). Their distribution networks and their origins are also different and they are neither interchangeable nor in competition. Likewise, these contested goods are dissimilar to the opponent’s clocks.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as 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 retailing of jewellery, pearls, cuff-links, tie clips, rings, bracelets, earrings, necklaces, brooches, charms (jewellery); chorological and chronometric instruments, table clocks, clocks, small clocks is similar to a low degree to the opponent’s jewellery in Class 14.

On the other hand, the contested retailing of precious stones, precious metals and their alloys, keyrings of precious metal, works of art of precious metal, jewellery boxes, boxes of precious metal; watches, stopwatches, movements for clocks and watches, cases, straps for watches, chains and springs or glasses for watches, novelty keyrings, presentation cases for watches, medals, bag charms, coins is dissimilar to the opponent’s goods in Class 14, as this retailing service concerns only goods that are similar to various degrees or dissimilar to the opponent’s goods.

2. 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 and similar to different degrees are directed at the public at large, as well as at a professional public with expertise in the fields of jewellery and precious stones.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price. 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 particular articles made of precious stones and precious stones, jewellery and watches. 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.

3. 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 earlier mark is a figurative mark consisting of the conjoined upper case letters ‘O’ and ‘E’, where the letters share a vertical stroke. The contested sign is a figurative sign consisting of the slightly stylised upper case letters ‘O’ and ‘E’, separated by a dot, with the letter ‘O’ bearing an ornament in its centre.

None of the verbal elements in the signs has a meaning in relation to the goods and services in question or for the relevant public and they are all, therefore, distinctive.

Moreover, neither of the signs has any element that would clearly be more dominant (visually eye-catching) than any of the other elements.

Visually, the signs coincide in the upper case letters ‘O’ and ‘E’. They differ in their overall graphical depiction, namely in the fact that in the earlier mark these letters are conjoined and in the contested sign they are depicted as two single letters separated by a dot and bearing an additional ornament inside the letter ‘O’.

Both signs are two-letter signs, which are, according to Office’s practice, considered short signs. In principle, the length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.

Nevertheless, as regards the abovementioned graphical depictions, account must be taken of the fact that, when signs consist of both verbal and figurative components, 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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Therefore, bearing in mind the differences in the graphical depictions of the coinciding letters ‘OE’ in the signs, as well as their character as short signs, the signs are considered visually similar to an average degree.

Aurally, the signs are identical.

Conceptually, contrary to the applicant’s argument that the letters ‘OE’ will be perceived as the initials of ‘Orient Express’, the Opposition Division notes that neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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.

5. Global assessment, other arguments and conclusion

The likelihood of confusion must be appreciated globally, with reference to the perception which the relevant public has of the signs and of the goods or services in question, taking into account all factors relevant to the circumstances of the case, including the interdependence between the relevant factors, and in particular the similarity between the signs and the similarity between the goods or services designated (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18-19; 09/07/2003, T-162/01, Giorgio Beverly Hills, EU:T:2003:199, § 31-33).

In addition, 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).

In the present case, the goods and services in question are partly identical and similar to different degrees and partly dissimilar; the degree of attention of the relevant public will vary from average to high depending on different factors, namely those outlined above in section b).

It must be recalled that the signs in question are considered short signs, namely they are both two-letter marks. That is to say, the rule on the importance of visual comparison applies to two-letter marks accordingly. The comparison of such signs usually depends on their stylisation and, especially, on whether or not the letters are recognisable as such in the signs. Consequently, the overall visual impressions created by the signs may be different when the signs, albeit containing or consisting of the same combination of two letters, are stylised in sufficiently different ways or contain sufficiently different figurative elements, resulting in their different overall graphical depictions eclipsing their coinciding verbal element.

However, in the present case, the signs are considered visually similar to an average degree. This is because, although the earlier sign’s letters are conjoined, they are in a rather standard font and bear no additional stylisation or figurative elements; therefore, they will be easily recognised by the relevant consumers. In addition, the contested sign’s letters are clearly identifiable as separate letters, as the stylisation of this sign is plain and its ornaments are decorative rather than highly fanciful with distinctive character. Consequently, despite the differences in their graphical depictions, the signs convey similar overall impressions on a visual level. It cannot be excluded that the relevant consumers may see the contested mark as a modernised or new version of the earlier mark, or vice versa, and assume that the goods and services in question have identical or economically-linked origins.

With regards to the goods and services, 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 is evident from the comparison of the goods and services above, both parties operate in the same market of jewellery products and related accessories and, taking into account the similarity between the signs, a likelihood of confusion may be justified, even in cases where the goods and services are similar to only a low degree.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion, including a likelihood of association, on the part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to different degrees to those of the earlier trade mark.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods and services cannot be successful.

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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Volker MENSING

Manuela RUSEVA

Gueorgui IVANOV

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.