STORM | Decision 2615584
Date Published: Sep 22, 2017
OPPOSITION No B 2 615 584
Sun 99 Limited, 37-39 Conway Street, London W1P 6ST, United Kingdom (opponent), represented by Paresh Jasani, PO Box 168, Wembley, London HA9 8YP, United Kingdom (professional representative)
a g a i n s t
FMTM Distribution Ltd, 3A and 3B Isle of Man Freeport, Ballasalla IM9 2AP, Isle of Man (applicant), represented by Ingenias, Av. Diagonal 421, 2º, 08008 Barcelona, Spain (professional representative).
On 11/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 615 584 is partially upheld, namely for the following contested goods:
Class 3: Perfumes; Toilet water; Eau de toilette; Perfumery; Toiletries; Air fragrancing preparations; Potpourris [fragrances]; Soap; Lotions for cosmetic purposes; After-shave lotions; Shampoos; Shower gel; Hair conditioner; Skin conditioners; Cosmetics; Cosmetic kits; Flower perfumes (bases for -); Essential oils; Oils for perfumes and scents; Scents; Cosmetic oils.
Class 14: Precious metals; Precious metal alloys; Horological instruments; watches; chronometric instruments; chronographs (watches); chronometers; apparatus for sports timing (stopwatches); clocks; movements for watches and clocks; straps for wristwatches; watch bracelets; components for watches and clocks; buckles for watchstraps; watch crowns; watch cases (components); watch springs; dials (clock- and watchmaking); hands for clocks and watches; watch glasses; Parts and fittings for timepieces; Cases for watches and clocks; Cases for the display of timepieces (presentation); Watch boxes; Clock boxes; Precious stones; semi-precious stones; diamonds; Imitation precious stones; jewellery; semi-precious articles of bijouterie; jewellery ornaments; fashion jewellery; jewellery cases [caskets]; boxes for Jewellery; jewel cases of precious metal; tie pins; cuff links; key fobs; Boxes for cufflinks; Boxes for tie-pins; Boxes for key fobs [caskets]; Cases for the display of jewellery, cufflinks, and tie pins; presentation boxes and cases adapted to contain and transport timepieces; presentation cases and cases adapted to contain and transport jewellery; presentation cases and cases adapted to contain and transport cufflinks, tie pins and key fobs.
Class 18: Leather; leather (imitation -).
2. European Union trade mark application No 14 414 023 is rejected for all 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 European Union trade mark application No 14 414 023 in Classes 3, 14 and 18. The opposition is based on European Union trade mark registrations No 11 847 969 and No 7 512 163, and United Kingdom trade mark registrations No 2 116 673 and No 2 185 263. The opponent invoked Article 8(1)(a) and (b) and 8(5) EUTMR.
SUBSTANTIATION
According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.
It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.
According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.
According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.
In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.
In the present case the notice of opposition was not accompanied by any evidence as regards earlier United Kingdom trade mark registrations No 2 116 673 and No 2 185 263 on which the opposition is based.
On 08/12/2015 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 20/04/2016.
The opponent did not submit any evidence concerning the substantiation of earlier United Kingdom trade mark registrations No 2 116 673 and No 2 185 263.
According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.
The opposition must therefore be rejected as unfounded as far as it is based on United Kingdom trade mark registrations No 2 116 673 and No 2 185 263.
PROOF OF USE
In accordance with Article 42(2) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.
The same provision states that, in the absence of such proof, the opposition will be rejected.
The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based.
The request was filed in due time and is admissible as earlier European Union trade mark registration No 7 512 163 was registered more than five years prior to the relevant date mentioned above.
The request is not admissible regarding earlier European Union trade mark registration No 11 847 969 as it was not registered for more than five years prior to the relevant date mentioned above.
On 23/08/2016, the opponent was given two months to file the requested proof of use.
The opponent did not furnish any evidence concerning the use of the earlier trade mark on which the opposition is based. It did not argue that there were proper reasons for non-use either.
According to Rule 22(2) EUTMIR, if the opposing party does not provide such proof before the time limit expires, the Office will reject the opposition.
Therefore, the opposition must be rejected pursuant to Article 42(2) EUTMR and Rule 22(2) EUTMIR as far as it is based on earlier European Union trade mark registration No 7 512 163.
The examination of the opposition continues in relation to the opponent’s European Union trade mark registration No 11 847 969.
DOUBLE IDENTITY – ARTICLE 8(1)(a) EUTMR – AND LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR
Pursuant to Article 8(1)(a) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for will not be registered if it is identical to the earlier trade mark and the goods or services for which registration is applied for are identical to the goods or services for which the earlier trade mark is protected.
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 3: Soaps; Perfumery, essential oils, cosmetics, hair lotions; Dentifrices.
Class 9: Spectacles; sunglasses; spectacle frames; lens; contact lenses; cameras.
Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; Jewellery, precious stones; Horological and chronometric instruments.
Class 18: Leather and imitations of leather.
The contested goods are the following:
Class 3: Perfumes; Toilet water; Eau de toilette; Perfumery; Toiletries; Air fragrancing preparations; Potpourris [fragrances]; Soap; Lotions for cosmetic purposes; After-shave lotions; Shampoos; Shower gel; Hair conditioner; Skin conditioners; Cosmetics; Cosmetic kits; Flower perfumes (bases for -); Essential oils; Oils for perfumes and scents; Scents; Cosmetic oils.
Class 14: Precious metals; Precious metal alloys; Horological instruments; watches; chronometric instruments; chronographs (watches); chronometers; apparatus for sports timing (stopwatches); clocks; movements for watches and clocks; straps for wristwatches; watch bracelets; components for watches and clocks; buckles for watchstraps; watch crowns; watch cases (components); watch springs; dials (clock- and watchmaking); hands for clocks and watches; watch glasses; Parts and fittings for timepieces; Cases for watches and clocks; Cases for the display of timepieces (presentation); Watch boxes; Clock boxes; Precious stones; semi-precious stones; diamonds; Imitation precious stones; jewellery; semi-precious articles of bijouterie; jewellery ornaments; fashion jewellery; jewellery cases [caskets]; boxes for Jewellery; jewel cases of precious metal; tie pins; cuff links; key fobs; Boxes for cufflinks; Boxes for tie-pins; Boxes for key fobs [caskets]; Cases for the display of jewellery, cufflinks, and tie pins; presentation boxes and cases adapted to contain and transport timepieces; presentation cases and cases adapted to contain and transport jewellery; presentation cases and cases adapted to contain and transport cufflinks, tie pins and key fobs.
Class 18: Leather; leather (imitation -); leather straps; leather shoulder belts; pocket wallets; notecases; key cases; credit card cases; travelling sets (leather ware); travelling sets; luggage; travelling trunks; travelling bags; garment bags for travel; envelopes, of leather, for packaging; furniture (leather trimmings for -); trimmings of leather for furniture; umbrellas; parasols; Purses; Leather cases; Attaché cases; Briefcases; suitcases; vanity cases (not fitted); make-up cases; credit card holders; bags made of leather; handbags; shopping bags; make-up bags; beach bags; Sports bags; luggage tags; furniture coverings of leather; bags; pouches; Leather or leather-board boxes; Cases, of leather or leatherboard.
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 3
Perfumery, soap(s), cosmetics, essential oils are identically contained in both lists of goods.
The contested perfumes, toilet water; eau de toilette, air fragrancing preparations, potpourris [fragrances], scents are included in the broad category of the opponent’s perfumery. Therefore, they are identical.
The applicant’s lotions for cosmetic purposes, after-shave lotions, shampoos, shower gel, hair conditioner, skin conditioners, cosmetic kits, cosmetic oils are included in the broad category of the opponent’s cosmetics. Therefore, they are identical.
The contested oils for perfumes and scents are included in the broad category of the opponent’s essential oils and therefore they are identical.
The contested toiletries include, as a broader category, the opponent’s perfumery. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
The applicant’s flower perfumes (bases for -) are one of the main ingredients of the opponent’s perfumery, as many perfumes and colognes are made using fragrance bases or simply bases. In the present case, the bases are specifically used for making flower perfumes. The contested goods have the same purpose as the opponent’s perfumery, that is, to fragrance a body or a room. They have similar natures, as they are both most commonly found in liquid form. They may be produced by the same large fragrance factories and have the same distribution channels. Furthermore, they can target the same consumers, as it is very common to find specialised perfume shops where one can create one’s own perfume by choosing and mixing different bases for perfumes. Consequently, these goods are highly similar.
Contested goods in Class 14
The contested precious metals, precious metal alloys are identical to the opponent’s precious metals and their alloys.
Horological instruments, chronometric instruments, precious stones, jewellery are identically contained in both lists of goods.
The applicant’s watches, chronographs (watches), chronometers, apparatus for sports timing (stopwatches), clocks are included in the broad category of the opponent’s horological and chronometric instruments. Therefore, they are identical.
The contested diamonds are included in the broad category of the opponent’s precious stones and therefore they are identical.
The applicant’s semi-precious articles of bijouterie, jewellery ornaments, fashion jewellery, tie pins, cuff links, key fobs are included in the broad category of the opponent’s jewellery. These goods are identical.
The contested semi-precious stones, imitation precious stones are highly similar to the opponent’s precious stones, as all these stones are used as gems in jewellery and very often only an expert can differentiate one from another. They have similar natures and purposes and they are distributed through the same sales channels. Finally, they target the same consumers.
The contested movements for watches and clocks, straps for wristwatches, watch bracelets, components for watches and clocks, buckles for watchstraps, watch crowns, watch cases (components), watch springs, dials (clock- and watchmaking), hands for clocks and watches, watch glasses, parts and fittings for timepieces, cases for watches and clocks; cases for the display of timepieces (presentation), watch boxes, clock boxes, presentation boxes and cases adapted to contain and transport timepieces are either accessories for or spare parts of the opponent’s horological and chronometric instruments. These goods can have the same producers, as the companies that produce watches and clocks also produce spare parts and accessories, including presentation boxes and boxes for storing and transporting timepieces. They target the same consumers and have the same distribution channels, as consumers buying watches would expect to buy straps or cases – for example a consumer purchasing a large clock would also purchase the case for its transportation – and even certain components in the same shops that sell horological and chronometric instruments. Therefore, these goods are similar.
The contested jewellery cases [caskets]; boxes for jewellery, jewel cases of precious metal, boxes for cufflinks, boxes for tie-pins, boxes for key fobs [caskets], cases for the display of jewellery, cufflinks, and tie pins; presentation cases and cases adapted to contain and transport jewellery; presentation cases and cases adapted to contain and transport cufflinks, tie pins and key fobs are similar to the opponent’s jewellery, as these goods are complementary. They can be produced by the same jewellery manufacturers and have the same distribution channels, that is, jewellery shops and sections in large department stores. Furthermore, they target the same consumers; for example, when buying a ring or cufflinks, the buyer very often would also buy a small box or case to store or transport the ring or the cufflinks. Consequently, these goods are similar.
Contested goods in Class 18
Leather; leather (imitation -) are identically contained in both lists of goods.
The contested leather straps, leather shoulder belts, pocket wallets, notecases, key cases, credit card cases, travelling sets (leather ware), travelling sets, luggage, travelling trunks, travelling bags, garment bags for travel, envelopes, of leather, for packaging, furniture (leather trimmings for -), trimmings of leather for furniture, umbrellas, parasols, purses, leather cases, attaché cases, briefcases, suitcases, vanity cases (not fitted), make-up cases, credit card holders, bags made of leather, handbags, shopping bags, make-up bags, beach bags, sports bags, luggage tags, furniture coverings of leather, bags, pouches, leather or leather-board boxes, cases, of leather or leatherboard are dissimilar to the opponent’s leather and imitations of leather. The opponent’s goods are raw materials or semi-finished products, or in any event goods that are to be used for manufacturing or packaging other products. However, the fact that one product is used for manufacturing another (for example, leather straps, pocket wallets or bags made of leather) is not sufficient in itself for concluding that the goods are similar, as their nature, purpose, relevant public and distribution channels may be quite distinct (03/05/2012, T-270/10, Karra, EU:T:2012:212, § 53). The abovementioned contested goods in Class 18 are intended for the end user, while the opponent’s raw or semi-finished materials are intended for use in industry rather than for direct purchase by the final consumer (09/04/2014, T-88/12, Zytel, EU:T:2014:196, § 39-43). They are sold in different outlets, are of a different nature and serve a different purpose from the opponent’s goods. Furthermore, these goods have nothing in common with the other goods covered by the earlier mark in Classes 3, 9 and 14, and therefore 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.
In the present case, the goods found to be identical or similar to varying degrees are directed at the public at large. The degree of attention will vary from average to high, depending on the nature, price and frequency of purchase of the relevant goods (e.g. the degree of attention is likely to be average in relation to essential oils or cosmetics, but will be high in relation to precious stones or diamonds).
- The signs
STORM | STORM |
Earlier trade mark | Contested sign |
The signs are identical.
- Global assessment, other arguments and conclusion
The signs are identical and some of the contested goods, namely perfumes, toilet water, eau de toilette, perfumery, toiletries, air fragrancing preparations, potpourris [fragrances], soap, lotions for cosmetic purposes, after-shave lotions, shampoos, shower gel, hair conditioner, skin conditioners, cosmetics, cosmetic kits, essential oils, oils for perfumes and scents, scents, cosmetic oils in Class 3, precious metals, precious metal alloys, horological instruments, watches, chronometric instruments, chronographs (watches), chronometers, apparatus for sports timing (stopwatches), clocks, diamonds, semi-precious articles of bijouterie, jewellery ornaments fashion jewellery, tie pins, cuff links, key fobs in Class 14 and leather, leather (imitation -) in Class 18 are identical to some of the opponent’s goods. Therefore, the opposition must be upheld under Article 8(1)(a) EUTMR for these goods.
Furthermore, the remaining contested goods in Classes 3 and 14 are similar to varying degrees to some of the opponent’s goods.
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).
The identity between the signs is clearly sufficient to offset the varying degrees of similarity between the goods. The Opposition Division finds that there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition is upheld also insofar as it is directed against the goods found to be highly similar or similar.
The remaining goods in Class 18 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 cannot be successful.
REPUTATION – ARTICLE 8(5) EUTMR
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.
According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.
It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.
According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.
According to Rule 19(2)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that 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.
In the present case the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.
On 08/12/2015 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 20/04/2016.
The opponent did not submit any evidence concerning the reputation of the trade mark on which the opposition is based.
Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.
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
Gueorgui IVANOV | Ieva SMILGAINE | Sandra KASPERIŪNAITÉ |
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.