WATSONS | Decision 2212903 - MIP METRO Group Intellectual Property GmbH & Co. KG v. A.S. Watson TM Limited
Date Published: Sep 28, 2017
OPPOSITION No B 2 212 903
Mip Metro Group Intellectual Property GmbH & Co. KG, Metro-Str. 1, 40235 Düsseldorf, Germany, (opponent), represented by Eileen Hudson, Metro-Str. 1, 40235 Düsseldorf, Germany (employee representative)
a g a i n s t
A.S. Watson TM Limited, P.O. Box 957, Offshore Incorporations Centre Road Town, Tortola, Great Britain Virgin Islands (applicant), represented by A.A. Thornton & Co., 10 Old Bailey, London EC4M 7NG, United Kingdom (professional representative).
On 29/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 212 903 is partially upheld, namely for the following contested goods and services:
Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; book binding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); disposable napkins of paper for removing make-up; paper napkins; absorbent paper tissue products; cosmetics removing tissues; tissue paper; toilet tissue; towel rolls of tissue paper; wipes made of tissue [other than impregnated or for medical use]; facial tissue made principally of paper; facial tissues of paper; disposable napkins made of paper for removing make-up; paper napkins; absorbent paper tissue products; cosmetics removing tissues; tissue paper; toilet tissue; towel rolls of tissue paper; wipes made of tissue [other than impregnated or for medical use]; diaper bags (disposable) made of paper or plastic; wipes made of cellulose (other than impregnated or for medical use); paper handkerchiefs.
Class 35: Retail services relating to audio and/or visual equipment and peripheral devices, calculators, computers, computer software, computer hardware, cameras, negatives, data processing equipment, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, video tapes, cassette tapes, recording discs, pre-recorded tapes and discs, paper, cardboard and goods made from these materials, printed matter, books, magazines, posters, newspapers.
2. European Union trade mark application No 11 525 623 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 11 525 623 namely against all the goods and services in Classes 16, 21 and 35. The opposition is based on, inter alia, international trade mark registration No 1 038 047 designating among other territories, the United Kingdom and on German registration No 30 201 2017 443. 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.
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 1 038 047 designating, among other, the United Kingdom, and German trade mark registration No 30 201 2017 443.
- The goods and services
The goods and services on which the opposition is based are the following:
1) Earlier international trade mark registration No 1 038 047 designating the United Kingdom, for all the contested good and services
Class 9: Storage cases for image, sound and data carriers as far as included in this class.
Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; paper and synthetic adhesive tags; labels (paper goods).
Class 20: Furniture, in particular furniture for consumer electronics; storage devices for image, sound and data carriers as far as included in this class.
2) Earlier German registration No 30 201 2017 443, for the contested services in class 35
Class 9: Electronic apparatus and instruments included in Class 9; electrical and electronic equipment and appliances for analogue, digital or optical reception; or the analog; digital or optical manipulation; reproduction; distribution or control of optical or acoustic image signals; associated with this audiovisual equipment, TV sets, radio receivers, amplifiers, speakers, tape, disk or CD recorders or players, to record carriers for stored signals, apparatus and instruments, playing, viewing, encoding, decoding, transmitting, receiving, storing and processing data or sound and / or video signals and /, televisions, radios, video players recording devices / cameras and video cameras, decoders for television signals, CD and DVD players and recorders, record players, computers and peripherals, communications equipment and instruments, telephones also cordless, navigation systems, blank and prerecorded tapes, discs and other recording media, headphones, recorded and unrecorded audio and video tapes and cassettes, loudspeakers, microphones, Turner, cameras, film cameras, amateur radio, transmitting and receiving devices, capacitors, transistors, clock radio , DVD players and recorders, MP3 players, and parts and fittings for all aforesaid goods, batteries.
Class 11: Bulbs
The contested goods and services are the following:
Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; book binding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks; disposable napkins of paper for removing make-up; paper napkins; absorbent paper tissue products; cosmetics removing tissues; tissue paper; toilet tissue; towel rolls of tissue paper; wipes made of tissue [other than impregnated or for medical use]; facial tissue made principally of paper; facial tissues of paper; disposable napkins made of paper for removing make-up; paper napkins; absorbent paper tissue products; cosmetics removing tissues; tissue paper; toilet tissue; towel rolls of tissue paper; wipes made of tissue [other than impregnated or for medical use]; diaper bags (disposable) made of paper or plastic; wipes made of cellulose (other than impregnated or for medical use); paper handkerchiefs.
Class 21: Household or kitchen utensils and containers (not of precious metal or coated therewith); combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steel wool; un-worked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes; abrasive substances [floss] for dental use; dental floss; toothbrush; electric toothbrushes; holders for toothbrushes [other than of precious metal]; non-electric toothbrushes; toothbrush cases; toothbrush containers; toothbrush jugs, not of precious metal; toothpaste holders [other than of precious metal]; bath brush; abrasive sponges for scrubbing the skin; scrubbing pads; applicators for applying eye make-up; applicators for cosmetics; applicators in the nature of sponges [other than for medical use]; powder puffs, foundation puffs, sponges and sponge applicators for applying eye make-up, all being cosmetic sponges; brush; cosmetic brushes; spray bottles [vaporizers] for toilet preparations, other than of precious metal; comb; hair brushes; cosmetic bags [fitted]; storage jars [other than of precious metal]; pill boxes [other than of precious metal]; containers for household use incorporating a pump [other than of precious metal]; dispensers incorporating pumps [other than of precious metal]; puffs for cosmetic use.
Class 35: Advertising; business management; business administration; office functions; retail chemists services; retail pharmacy services; retail services relating to healthcare products, pharmaceuticals, perfumery beauty products and toiletries, cleansing preparations for personal use, cosmetics, skin care preparations, pharmaceuticals and sanitary preparations, first-aid kits, dentifrices, healthcare preparations for personal care, key chains, locks, shavers, electronic shavers, razors, toothbrushes, electronic toothbrushes, combs, sponges, picture frames, mirrors, household utensils and containers, glassware, porcelain, crystals and earthenware, cutlery and tableware, audio and/or visual equipment and peripheral devices, calculators, computers, computer software, computer hardware, cameras, negatives, data processing equipment, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, video tapes, cassette tapes, recording discs, pre-recorded tapes and discs, jewellery, horological and chronometric instruments, paper, cardboard and goods made from these materials, printed matter, books, magazines, posters, newspapers, stationery, writing instruments, playing cards, goods made of leather and imitation of leather, trunks and travelling bags, luggages, umbrellas, walking sticks, sacks and bags, textile goods, clothing, headgear and footwear, games and playthings, gymnastic and sporting articles, food and beverages, preserved food, snack food, confectionery, alcoholic and/or non-alcoholic drinks, beer; information and advisory services relating to all the aforesaid services.
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 16
The only invoked earlier trade mark is 1).
The contested paper, cardboard and goods made from these materials, not included in other classes; printed matter are identically contained in the list of the contested trade mark and earlier trade mark 1).
The contested photographs; artists’ materials, disposable napkins of paper for removing make-up; paper napkins; absorbent paper tissue products; cosmetics removing tissues; tissue paper; toilet tissue; towel rolls of tissue paper; wipes made of tissue [other than impregnated or for medical use]; facial tissue made principally of paper; facial tissues of paper; disposable napkins made of paper for removing make-up; paper napkins; absorbent paper tissue products; cosmetics removing tissues; tissue paper; toilet tissue; towel rolls of tissue paper; wipes made of tissue [other than impregnated or for medical use]; diaper bags (disposable) made of paper; wipes made of cellulose (other than impregnated or for medical use); paper handkerchiefs are paper goods covered by the earlier goods made from these materials [paper]. They are, therefore, identical.
The contested stationery includes as a broad category the opponent’s goods paper and synthetic adhesives tags. It is impossible for the Opposition Division to filter these goods from the abovementioned category. Since the Opposition Division cannot dissect ex officio the broad category of the holder’s goods, they are considered identical.
The contested adhesives for stationery or household purposes include goods such as adhesives stripes or tags, and overlap with the opponent’s goods paper and synthetic adhesives tags. They are deemed identical.
The contested instructional and teaching material (except apparatus) is composed of printed matter and is, therefore, identical to the earlier printed matters.
The contested book binding material is similar to the earlier paper, cardboard, as both are none finished products and book binding material is usually composed of cardboard and other materials. They have a strict complementary relationship (bookbinding material has no reason to exist without paper/cardboard to bind together) and they may come from the same undertaking (e.g. providing ‘raw materials’ for publishing houses or stationery companies).
The contested plastic materials for packaging (not included in other classes) are similar to the earlier paper, cardboard, as they are raw material in competition that can be used for the same purpose and they have the same distribution channels and the same end users.
The contested diaper bags (disposable) made of plastic are similar to the earlier goods made from these materials [paper] as they are finished products in competition that can be used for the same purpose and they have the same distribution channels and the same end users.
The contested paint brushes, typewriters and office requisites (except furniture); printers’ type; printing blocks are dissimilar to all earlier goods and services included in Classes 9, 16 and 20 of earlier trade mark 1), as they do not have anything in common, do not have the same nature and purpose and are not complementary nor in competition.
Contested goods in Class 21
The only invoked earlier trade mark is 1).
The contested goods in Class 21 cover various kinds of household and kitchen utensils and containers, cleaning articles, as well as toilet/bathroom utensils, tableware, glassware and porcelain ornaments and articles.
However, earlier trade mark 1) covers goods in Classes 9, 16 and 20. The opponent’s goods in Class 9 are mainly related to electronics, computers and telecommunications. The opponent’s goods in Class 16 are essentially printed matter, office requisites and stationery articles. The opponent’s goods in class 20 are essentially furniture.
Therefore, the contested goods in Classes 21 do not have anything in common with the opponent’s goods. The nature, purpose and method of use of the contested goods are clearly different from those of the opponent’s goods. They are usually produced by different companies and sold through different distribution channels. They do not target the same relevant public and are not in competition or complementary. Consequently, they are dissimilar.
Contested services in Class 35
Both earlier trade marks 1) and 2) are used against these contested services.
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 retail services relating to audio and/or visual equipment and peripheral devices, calculators, computers, computer software, computer hardware, cameras, negatives, data processing equipment, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, video tapes, cassette tapes, recording discs, pre-recorded tapes and discs are similar to a low degree to the opponent’s goods in class 9 (earlier trade mark 2) either because they are identically contained in both lists (including synonyms) or because the opponent’s goods are included in or overlap with the contested goods/services or vice versa.
Similarly, the contested retail services relating to paper, cardboard and goods made from these materials, printed matter, books, magazines, posters, newspapers are similar to a low degree to the opponent’s paper, cardboard and goods made from these materials, not included in other classes; printed matter in class 16 (earlier trade mark 1) either because they are identically contained in both lists (including synonyms) or because the opponent’s goods are included in or overlap with the contested goods/services or vice versa.
The contested advertising; business management; business administration; office functions; retail chemists services; retail pharmacy services; retail services relating to healthcare products, pharmaceuticals, perfumery beauty products and toiletries, cleansing preparations for personal use, cosmetics, skin care preparations, pharmaceuticals and sanitary preparations, first-aid kits, dentifrices, healthcare preparations for personal care, key chains, locks, shavers, electronic shavers, razors, toothbrushes, electronic toothbrushes, combs, sponges, picture frames, mirrors, household utensils and containers, glassware, porcelain, crystals and earthenware, cutlery and tableware, jewellery, horological and chronometric instruments, stationery, writing instruments; playing cards, goods made of leather and imitation of leather, trunks and travelling bags, luggages, umbrellas, walking sticks, sacks and bags, textile goods, clothing, headgear and footwear, games and playthings, gymnastic and sporting articles, food and beverages, preserved food, snack food, confectionery, alcoholic and/or non-alcoholic drinks, beer; information and advisory services relating to all the aforesaid services are dissimilar to all the opponent’s goods in classes 9, 11, 16 and 20. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.
- 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 or similar are directed both at the public at large and the professional public (for example raw material in class 16). The degree of attention varies from average to higher, as it can be expected that the level of attentiveness paid by professionals may range from average to high, depending on the price and the technical nature of the goods. As regards the latter public, it must be recalled that business professionals are likely to have specific knowledge of the relevant goods and/or to display, in that regard, a higher level of attentiveness than the public at large.
- The signs
WATSON | WATSONS |
Earlier trade marks | Contested sign |
The relevant territory is the United Kingdom and Germany.
Both marks are distinctive and since both are word marks, in addition exclusively composed of one element, there are no dominant elements.
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).
Visually, the signs are highly similar to the extent that they coincide in the letters ‘WATSON’. On the other hand, they differ in the final ‘S’ at the end of the contested sign.
Aurally, the pronunciation of the marks coincides in the sound of the letters ‛WATSON’, present identically in both signs, and to that extent the marks are aurally highly similar. The pronunciation differs in the final ‘S’ of the contested sign, which does not affect the intonation or rhythm. They are highly similar.
Conceptually, both marks will be perceived as variations of a common English surname and, consequently, the signs are highly conceptually similar.
Taking into account the abovementioned visual, aural and conceptual coincidences, it is considered that the signs under comparison are similar to a high degree.
- 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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
The goods and services were found to be partly identical, partly similar to varying degrees and partly dissimilar. The marks were found to be highly similar in that they share their first six letters and are almost identical, the only difference being the final ‘S’ in the contested sign. In other words, the earlier trade mark is fully reproduced in the contested sign.
The earlier trade mark has an average degree of distinctiveness. The fact that it is a common English surname does not affect its distinctive character in relation to the relevant goods and services in Classes 16 and 35.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public, including professional with a higher level of attention and therefore the opposition is partially well founded on the basis of the opponent’s international registration designating the United Kingdom and German trade mark (in class 9).
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 those of the earlier trade marks, even for those that are similar only to a low degree. The opposition is not successful insofar as the remaining, dissimilar, goods and services are concerned.
The applicant refers to case law in order to justify that some goods and services and dissimilar or that the marks are weak because composed of a common surname. The applicant’s reference to a few decisions of the Opposition Division where a different assessment was made with regard to the comparison of some of the goods and services in question is not relevant as the Office is not bound by previous decisions.
The opponent has also based its opposition on the following earlier trade marks:
- Directed against all the contested goods and services in classes 16, 21 and 35:
- German trade mark registration WATSON No 3 020 09 037 891 for the word mark WATSON in classes 16 and 20.
- International trade mark registration WATSON No 1 038 047 designating Denmark, Greece, Austria, Bulgaria, Benelux, Czech Republic, Croatia, France, Hungary, Italy, Poland, Portugal, Romania, Spain and Slovakia for goods in Classes 9, 16 and 20.
- Directed against all the contested services in class 35:
- EUTMR No 3 446 259
in classes 9 and 11.
- German registration No 1 000 003 German trade mark registration WATSON No 1 000 003 in classes 9 and 11.
- International registration No 638 817 WATSON designating Benelux, Bulgaria, Czech Republic, Spain, Hungary, ,Croatia Poland, Portugal and Romania in classes 9 and 11.
- Greek trade mark registration No 121 905 WATSON in classes 9 and 11
Since these marks cover the same or a narrower scope of goods, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.
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
Lena FRANKENBERG GLANTZ | Jessica LEWIS | Julie GOUTARD |
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.