T | Decision 2544982 - TISSOT SA v. The Golf Fashion Company GmbH

Date Published: Sep 28, 2017

OPPOSITION No B 2 544 982

Tissot SA, 17 Chemin des Tourelles, 2400 Le Locle, Switzerland (opponent), represented by Despacho González-Bueno, S.L.P., Calle Velázquez 19, 2º dcha. 28001 Madrid, Spain (professional representative)

a g a i n s t

The Golf Fashion Company GmbH, Brühlstrasse 20, 72827 Wannweil, Germany (applicant), represented by Gowling Wlg (Uk) LLP, Prinzregentenstr. 11a, 80538 München, Germany (professional representative).

On 22/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 544 982 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 13 535 885 namely against all the goods in Class 14. The opposition is based on European Union Trade mark application No 13 180 757, international trade mark registration No 749 521 designating the European Union and international trade mark registration No 547 677 designating Spain, Portugal, Austria, Romania, Bulgaria, Italy, Hungary, Benelux, Croatia, Germany, France and Slovenia. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s international trade mark registration No 547 677 designating Spain, Portugal, Austria, Romania, Bulgaria, Italy, Hungary, Benelux, Croatia, Germany, France and Slovenia.

PROOF OF USE

In accordance with Article 42(2) and (3) 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, among them international trade mark registration No 547 677  designating Spain, Portugal, Austria, Romania, Bulgaria, Italy, Hungary, Benelux, Croatia, Germany, France and Slovenia.

The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The contested application was published on 07/04/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Spain, Portugal, Austria, Romania, Bulgaria, Italy, Hungary, Benelux, Croatia, Germany, France and Slovenia from 07/04/2010 to 06/04/2015 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 14:        Cases for watches, jewellery made of precious metals.

According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 12/08/2016 and 18/08/2016, within the time limit given by the Office according to Rule 22(2) EUTMIR, the opponent submitted evidence of use.

The opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties. Therefore, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

The evidence to be taken into account is the following:

• Extract from the catalogues of the opponent for the years 2012 to 2015, displaying watches, mainly from the ‘TISSOT TOUCH COLLECTION’.

• Summary table prepared by the opponent showing the use of the mark on the back or front side of different watch models, such as ‘BELLFLOWER’:

• ‘CALIENTE’:
• ‘SCULPTURE’:

• ‘HERITAGE’

• Catalogues showing mainly ‘T-TOUCH’ watch models for the years 2012, 2013, 2014 and 2015, but also the ‘TISSOT HERITAGE’ model depicting the mark:  

     

• Several invoices for France and Germany from the years 2010 to 2014, showing significant number of sales of watches, inter alia, the ‘TISSOT HERITAGE’, ‘CALIENTE’, ‘SCULPTURE’ models.  

• Advertisements within the relevant period published in German, French and English-language magazines, such as ‘Der Spiegel’, ‘GQ Germany’, ‘Info-pilote’, ‘Grandes reportages’, ‘Le Point’, or online for Tissot and Tissot ‘T-Touch’ watches.

• Print-outs from the website www.t-touch.com, showing watches.

The invoices and the magazines show that the place of use is France and Germany. This can be inferred from the French and German language of the documents and the delivery addresses in France and Germany. Therefore, the evidence relates to the relevant territory, at least as far as France and Germany are concerned.

All the evidence is dated within the relevant period.

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

The catalogues and the summary table provided by the opponent show use of the mark as registered.

However, the catalogues, the invoices and the advertisements only show that the mark has been used for watches. These goods do not fall within any of the categories for which the earlier mark is registered, i.e. cases for watches, jewellery made of precious metals.

Cases for watches can be interpreted to refer to (1) a protective case for a watch or (2) the outside metal covering of a watch. It is true that upon purchase of watches, especially expensive ones, protective cases may also be furnished by the vendor. However, this possibility is not sufficient to prove that a mark has been used to market the cases themselves. There is no evidence, in the invoices or elsewhere, of the opponent selling watch cases to consumers as independent items. The evidence does not contain images of protective cases, and especially not representations of cases bearing the trade mark at hand.

It is true that the mark can be identified in the evidence on the back of the outside metal covering of some watch models which are indeed marketed by the opponent based on the invoices. However, from the evidence it is only apparent that the opponent sells complete watches. There is no proof of the opponent marketing metal coverings separately, for example for use by watch makers.

Moreover, evidence of use for watches does not prove use of the earlier mark for jewellery either, which is a distinct subcategory of goods in Class 14. Therefore, the opponent has not shown use for the goods for which the mark is registered, but for other goods for which it has no protection.

An overall assessment of the evidence does not allow the conclusion, without resorting to probabilities and presumptions, that the mark was genuinely used for the relevant goods (15/09/2011, T 427/09, Centrotherm, EU:T:2011:480, § 43).

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

Given that use of the mark cannot be established for the goods for which the mark is registered, the Opposition Division concludes that the evidence furnished by the opponent is insufficient to prove that the earlier trade mark was genuinely used.

The Opponent refers to a previous decision of the Spanish Patent and Trademark Office which rejected a trade mark application in an opposition case based on the opponent’s mark.

However, it must be noted that decisions of national courts and national offices regarding conflicts between identical or similar trade marks on the national level do not have a binding effect on the Office since the European Union trade mark regime is an autonomous system which applies independently of any national system (13/09/2010, T-292/08, Often, EU:T:2010:399).

Even though previous national decisions are not binding, their reasoning and outcome should be duly considered, particularly when the decision has been taken in the Member State that is relevant to the proceedings.

However, the opponent only submitted a summary stating that the Court acknowledged that “there is identity as to the name and coverage with IR no. H547677 ‘T’ and coincidence of the letter ‘T’ with the family of the opposing trademarks in the name of Tissot, whose well-known character in the claimed sector is recognised”.

It is unclear from this paragraph whether the circumstances of the case cited by the opponent are comparable to the case at hand. As such, the relevance of this case cannot be established in the present proceedings, especially since the signs did not have to be compared on account of the proof of use being insufficient.

Therefore, the opposition must be rejected pursuant to Article 42(2) and (3) EUTMR and Rule 22(2) EUTMIR in so far as it is based on international trade mark registration No 547 677 designating Spain, Portugal, Austria, Romania, Bulgaria, Italy, Hungary, Benelux, Croatia, Germany, France and Slovenia.

The examination of the opposition will nevertheless proceed with the two other earlier trade marks, European Union trade mark application No 13 180 757 and international trade mark registration No 749 521 designating the European Union.

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

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

EUTM application No 13 180 757

Class 14: Precious metals and their alloys and goods in precious metals or coated therewith included in this class, namely figurines, trophies; Jewellery, namely rings, earrings, cuff-links, bracelets, charms, brooches, chains, necklaces, tie pins, tie clips, jewellery caskets, jewellery cases, jewellery boxes; Precious stones, semi-precious stones; Horological and chronometric instruments, namely stopwatches, chronographs, clocks, watches, wristwatches, alarm clocks and parts and fittings for the aforesaid goods, namely hands, anchors, pendulums, barrels, watch casings, watch straps, watch dials, clockworks, watch chains, movements for clocks and watches, watch springs, watch crystals, presentation cases for watches, cases for clocks and watches.

IR No 749 521

Class 14: Watches of all types and parts thereof; movements for clocks and watches and parts thereof.

The contested goods are the following:

Class 14: Gemstones, pearls and precious metals, and imitations thereof; Jewellery; Time instruments; Other goods of precious metal and precious stones, and imitations thereof, namely statues and figurines made from or coated with precious metals or semi-precious metals or stones or imitations thereof, ornaments, coins and tokens made from or coated with precious metals or semi-precious metals or stones or imitations thereof, works of art of precious metal, key rings (trinkets or fobs); Jewellery boxes and watch boxes; Parts and accessories for all the aforesaid goods, included in this class.

Some of the contested goods are identical to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier marks.

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 presumed to be identical, e.g. gemstones, pearls, precious metals, jewellery and watches are directed at the public at large and at professionals in the field of jewellery and watchmaking.

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 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, even the general public, may be assumed.

3. The signs

(1) EUTM No 13 180 757

(2) IR 749 521
Earlier trade marks	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 signs all consist of the letter ‘T’, either as a single letter, for the earlier sign (1) and the contested sign, or together with the element ‘TOUCH’ which refers to the act of making contact with something in English, in the earlier sign (2).  

None of the signs have a meaning in relation to the goods at hand and therefore their distinctiveness is normal. Moreover, none of the signs have an element that would be dominant compared to other elements.

Visually, the signs coincide in so far as they all depict the letter ‘T’. However, aside from the letter’s shaft equally consisting of a straight line, there are numerous differences in the marks’ representations. In the earlier sign (1) the letter is written in standard upper case white font, consisting of two sharp edge lines, within a black rectangle, and in the earlier sign (2) the letter ‘T’ is written in two white lines with round edges, within a grey circle, followed by the word ‘Touch’ written in standard upper case font, its first ‘T’ letter repeating the style of the ‘T’ within the circle.

In the contested sign, the letter ‘T’ is placed within a black rounded triangular outline, and it is written in a fanciful black font, its shaft being placed on a separate, wider base, and its top line being represented by two separate triangles, one of their sides narrowing and spiking towards the letter’s base.  

Given that the visual representation of the coinciding letter is quite different in the conflicting marks, it is concluded that the signs are visually similar to a very low degree.

Aurally and conceptually, as far as the earlier sign (1) is concerned, the signs are identical given that both consist of the same single letter. To the extent that the letter ‘T’ is also present in the earlier mark (2) with an independent distinctive role, there is a certain degree of aural and conceptual similarity between these conflicting 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 marks

The distinctiveness of the earlier marks is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent the earlier trade marks have a reputation in the European Union. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

The Court has given some guidance in respect of the evaluation of distinctiveness acquired through use of the earlier mark and provided a non-exhaustive list of factors:

“In making that assessment, account should be taken, in particular, of the inherent characteristics of the mark, including the fact that it does or does not contain an element descriptive of the goods or services for which it has been registered; the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations.” (Judgment of 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 23)

The opponent submitted the following evidence:

• Screenshot from the opponent’s website explaining that the ‘Tissot’ brand has been existing since 1853 and has a presence in 160 countries, offering an exclusive selection of watches.

• Images of people who are, according to the opponent, famous ambassadors of ‘TISSOT’ watches. At the bottom of the pages, the following mark is displayed:

At the background of one of the photos taken the following image is displayed:

• Images from the opponents website, taken at sports events, displaying the following:

               

 

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade marks acquired a high degree of distinctiveness through their use.

Most of the evidence submitted to prove reputation of the earlier marks is from the opponent’s website. The evidence shows no precise information on the geographic scope or intensity, although this may even be established to a certain degree given that the invoices, catalogues and advertisements examined above as proof of use contain some information in this regard. However, there is no indication on the market share held by the marks in any Member State of the European Union.

More importantly, there is no information as regards the proportion of the relevant section of the public which, because of the mark, identifies the goods as originating from a particular undertaking.

The evidence filed by the opponent and the arguments of long-standing use and reputation mainly refer to the company and the mark ‘TISSOT’. Sometimes this term is depicted in conjunction with the earlier European Union trade mark application , for example in the following way:  

However, there is no evidence presented even as regards the public’s recognition of the mark ‘TISSOT’, or  , and especially not in relation to the earlier marks the opposition is based on:  and

The opponent could have demonstrated, for instance by conducting a survey, the percentage of the relevant consumers concerned who are able to identify the goods on the basis of the trade marks.

In the absence of information on the market share and the public’s recognition, however, the opponent did not succeed in clearly establishing all the facts necessary to safely conclude that the marks are known by a significant part of the public.

It must be recalled that, as follows from Article 76(1) EUTMR, in inter partes proceedings the Office is restricted in its examination to the acts, evidence and arguments submitted by the parties. Therefore, in assessing whether the earlier mark enjoys reputation, the Office may neither take into account facts known to it as a result of its own private knowledge of the market, nor conduct an ex officio investigation, but should base its findings exclusively on the information and evidence submitted by the opponent. The evidence must be clear, convincing and ultimately reveal facts necessary to safely conclude that the mark is known by a significant part of the public (decision of the Boards of Appeal of 06/11/2014, R 0437/2014-1, SALSA/SA SALSA (fig. mark) et al.).

The materials submitted do not support, without resorting to probabilities and assumptions, a conclusion that the earlier marks were known by a significant part of the relevant consumers for the goods concerned. Under these circumstances, the Opposition Division concludes that the opponent has failed to prove that the earlier marks the opposition is based on have a reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks have 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 marks must be seen as normal.

5. Global assessment, other arguments and conclusion

In cases of conflicting signs consisting of or containing the same single letter, the visual comparison is normally of decisive importance, these signs usually being phonetically and conceptually identical, or at least similar to the extent that they coincide in that element.

Goods such as jewellery, watches, precious stones and metals are not as a rule bought over the telephone. Nor are they ordered orally in a crowded bar against a background of noise. The people who buy these goods are likely to see them first and perceive the marks visually. This enhances the significance of the strong visual differences between them. (09/12/2010, R 900/2010-1, Leo Marco, § 22)

The letter ‘T’ is depicted with significant differences in the signs. In the case of the contested sign, its unusual, spiky design is an effective distinguishing feature from the earlier marks’ minimalist design. Given the differences in typeface and styling, the overall representations of the ‘T’ letters compared have very little in common. The additional ‘TOUCH’ element in the earlier international mark sets the signs aurally and conceptually even further apart.

Even in the case of presumed identity of the goods, for a highly attentive relevant public the fact that the signs consist of or contain the same letter, however in substantially different representations, would not be sufficient to establish a likelihood of confusion.

Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected as far as it is based on European Union trade mark application No 13 180 757 and international registration No 749 521 designating the European Union.

Given that the opposition is not well founded under Article 8(1) EUTMR as far as these earlier trade marks are concerned, it is unnecessary to examine the evidence of use filed by the opponent as far as international registration No 749 521 is concerned.

The examination of the opposition will therefore continue in relation to these two earlier trade marks on the basis of Article 8(5) EUTMR.

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.

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).

1. The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

2. Reputation of the earlier trade marks

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade marks has already been examined above under the grounds of Article 8(1)(b) EUTMR. It was concluded that that the opponent has failed to prove that the earlier marks have a reputation. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

3. Conclusion

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade marks have a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected as far as it is based on this ground as well.

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

Cynthia DEN DEKKER

Marianna KONDAS

Zuzanna STOJKOWICZ

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.