YESS The Brand | Decision 2689258 - REKLAMA YES Spólka z o.o. v. Attila Zachár
Date Published: Sep 28, 2017
OPPOSITION No B 2 689 258
Reklama Yes Spólka Z.O.O., Świerzawska 1, 60-321 Poznań, Poland (opponent), represented by Patpol Sp Z.O.O., Nowoursynowska 162 J, 02-776 Warsaw, Poland (professional representative)
a g a i n s t
Attila Zachár, Ladánybene, Gödörállás dűlő 66, 6045, Hungary (applicant), represented by Kun Emese Ügyvédi Iroda, Budapest, Szent István körút 2. V/30, 1137, Hungary (professional representative).
On 15/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 689 258 is upheld for all the contested goods, namely:
Class 14: Gemstones, pearls and precious metals, and imitations thereof; time instruments; jewellery; jewellery boxes and watch boxes; ornaments, made of or coated with precious or semi-precious metals or stones, or imitations thereof; statues and figurines, made of or coated with precious or semi-precious metals or stones, or imitations thereof; trinkets of bronze; identification bracelets [jewelry]; boxes of precious metal; objet d’art made of precious stones; decorative articles [trinkets or jewellery] for personal use; commemorative shields; commemorative coins; silver objets d’art; silver alloys; charms of semi-precious metals; metal tokens used for mass transit; monetary coin sets for collecting purposes; collectible coins; iridium alloys; split rings of precious metal for keys; key rings [trinkets or fobs]; key rings and key chains; leather key fobs; metal key fobs; key fobs of common metal; key fobs of imitation leather; coins; non-monetary coins; key fobs, not of metal; key fobs of precious metals; charms of precious metals; key rings [trinkets or fobs] of precious metal; trophies made of precious metals; trophies made of precious metal alloys; trophies coated with precious metal alloys; identity plates of precious metal; decorative boxes made of precious metal; fancy keyrings of precious metals; works of art of precious metal; prize cups of precious metals; commemorative statuary cups made of precious metal; trinkets coated with precious metal; key charms coated with precious metals; key fobs [rings] coated with precious metal; trophies coated with precious metals; osmium alloys; palladium alloys; ruthenium alloys; copper tokens; rhodium alloys; gold bullion coins; objet d’art of enamelled gold; objet d’art of enamelled silver.
2. European Union trade mark application No 14 872 923 is rejected for all the contested goods. It may proceed for the remaining goods.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against some the goods of European Union trade mark application No 14 872 923, namely against all the goods in Class 14. The opposition is based on European Union trade mark registration No 13 928 072. 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 goods
The goods on which the opposition is based are, inter alia, the following:
Class 14: Jewellery goods; precious metals and their alloys; jewellery; semi-precious and precious stones; clocks, watches; horological and chronometric instruments.
The contested goods are the following:
Class 14: Gemstones, pearls and precious metals, and imitations thereof; time instruments; jewellery; jewellery boxes and watch boxes; ornaments, made of or coated with precious or semi-precious metals or stones, or imitations thereof; statues and figurines, made of or coated with precious or semi-precious metals or stones, or imitations thereof; trinkets of bronze; identification bracelets [jewelry]; boxes of precious metal; objet d’art made of precious stones; decorative articles [trinkets or jewellery] for personal use; commemorative shields; commemorative coins; silver objets d’art; silver alloys; charms of semi-precious metals; metal tokens used for mass transit; monetary coin sets for collecting purposes; collectible coins; iridium alloys; split rings of precious metal for keys; key rings [trinkets or fobs]; key rings and key chains; leather key fobs; metal key fobs; key fobs of common metal; key fobs of imitation leather; coins; non-monetary coins; key fobs, not of metal; key fobs of precious metals; charms of precious metals; key rings [trinkets or fobs] of precious metal; trophies made of precious metals; trophies made of precious metal alloys; trophies coated with precious metal alloys; identity plates of precious metal; decorative boxes made of precious metal; fancy keyrings of precious metals; works of art of precious metal; prize cups of precious metals; commemorative statuary cups made of precious metal; trinkets coated with precious metal; key charms coated with precious metals; key fobs [rings] coated with precious metal; trophies coated with precious metals; osmium alloys; palladium alloys; ruthenium alloys; copper tokens; rhodium alloys; gold bullion coins; objet d’art of enamelled gold; objet d’art of enamelled silver.
The relevant factors relating to the comparison of the goods include, inter alia, the nature and purpose of the goods, 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
The contested jewellery; precious metals are identically contained in both lists of goods.
The contested time instruments include, as a broader category, or overlap with, the opponent’s horological and chronometric instruments. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
Gemstones are pieces of mineral crystal, which, in cut and polished form, are used to make jewellery or other adornments, and pearls are hard objects produced within the soft tissue (specifically the mantle) of a living shelled mollusc. These goods are included in the broader category of the opponent’s semi-precious and precious stones (Class 14). The goods are identical.
The contested silver alloys; iridium alloys; osmium alloys; palladium alloys; ruthenium alloys; rhodium alloys are included in the broad category of the opponent’s alloys (of precious metals) and, therefore, they are considered identical.
The contested trinkets of bronze; identification bracelets [jewelry]; decorative articles [trinkets or jewellery] for personal use; charms of semi-precious metals; charms of precious metals; identity plates of precious metal; trinkets coated with precious metal are included in the broad category of the opponent’s jewellery. Therefore, they are identical.
The contested imitations thereof (of precious metals) are similar to the opponent’s precious metals. These goods have the same purpose and relevant public. Furthermore, they are in competition. The same reasoning can be applied to the contested imitations thereof (of gemstones, pearls), which are similar to the opponent’s precious stones (Class 14). These goods have the same purpose and relevant public. Furthermore, they are in competition.
The contested jewellery boxes; boxes of precious metal are receptacles for holding items for personal adornment, such as jewellery, and, when compared with the opponent’s jewellery, it can be seen that these sets of goods have the same origins (they are manufactured by the same undertakings), distribution channels (e.g. jewellery stores) and consumers. Therefore, they are similar.
Likewise, for the same reasons, the contested watch boxes and the opponent’s watches are similar, since these goods have the same origins, distribution channels (e.g. watch and jewellery stores) and end consumers.
The contested ornaments, made of or coated with precious or semi-precious metals or stones, or imitations thereof; statues and figurines, made of or coated with precious or semi-precious metals or stones, or imitations thereof; objet d’art made of precious stones; commemorative shields; commemorative coins; silver objets d’art; metal tokens used for mass transit; monetary coin sets for collecting purposes; collectible coins; commemorative shields; commemorative coins; silver objets d’art; metal tokens used for mass transit; monetary coin sets for collecting purposes; collectible coins; coins; non-monetary coins; trophies made of precious metals; trophies made of precious metal alloys; trophies coated with precious metal alloys; decorative boxes made of precious metal; works of art of precious metal; prize cups of precious metals; commemorative statuary cups made of precious metal; trophies coated with precious metals; copper tokens; gold bullion coins; objet d’art of enamelled gold; objet d’art of enamelled silver are valuable goods that might be used for ornamental, investment or collection purposes. Therefore, the opponent’s jewellery is similar to the contested goods to the extent that they have the same distribution channels (e.g. jewellery shops), producers and relevant public, namely purchasers of valuables.
The contested split rings of precious metal for keys; key rings [trinkets or fobs]; key rings and key chains; leather key fobs; metal key fobs; key fobs of common metal; key fobs of imitation leather; key fobs, not of metal; key fobs of precious metals; key rings [trinkets or fobs] of precious metal; fancy keyrings of precious metals; key charms coated with precious metals; key fobs [rings] coated with precious metal are related to the opponent’s jewellery. They have the same purpose (e.g. decorative items for personal use) and they target the same end consumers. Furthermore, they can be manufactured by the same producers and found at the same points of sale. Therefore, they are similar.
- 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 in question.
In the present case, the goods found to be identical or similar (to different degrees) are directed partly at the public at large (e.g. jewellery in Class 14) and partly at business customers with specific professional knowledge or expertise who wish to purchase raw materials for the manufacture of goods (e.g. precious metals and their alloys in Class 14). The relevant public’s degree of attention will vary from average to high, depending on the price and frequency of purchase of the goods at issue, as, in many cases, the goods will be expensive luxury items.
- The signs
YESS The Brand | |
Earlier trade mark | Contested sign |
The relevant territory is the European Union.
The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).
The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.
The earlier sign is a figurative mark, where the only figurative feature of the verbal element ‘YES’ (in upper case letters) is that it is depicted in a bold typescript. The contested sign is the word mark ‘YESS The Brand’.
The word ‘YES’ of the earlier mark will be understood as a ‘statement expressing willingness or agreement’ by the relevant public. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive. The sign has no elements that could be considered clearly more dominant than other elements.
The word ‘YESS’ of the contested mark will be perceived by the relevant public as a misspelling of the word ‘YES’. The difference in the additional last letter ‘S’ is not enough to prevent the consumer from perceiving the verbal element of the contested sign as having the meaning given above. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive. The expression ‘THE BRAND’ will be understood as a ‘particular product or a characteristic that serves to identify a particular product; trade name or trademark’ (definition extracted from Collins English Dictionary online on 03/05/2017 at www.collinsdictionary.com). Consequently, this verbal element is non-distinctive for all the relevant goods.
Visually, the signs coincide in the sequence of letters ‘YES’, which is the sole component of the earlier mark and the distinctive element of both marks. However, they differ in that the contested mark has an additional letter ‘S’ at the end of the element ‘YESS’, and in the element ‘The Brand’ of the contested mark, which is, as stated above, non-distinctive for the relevant goods.
Moreover, the differing expression ‘The Brand’ is at the end of the contested sign. Account must be taken on the fact that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. (15/12/2009, T-412/08, Trubion, EU:T:2009:507, § 40; 25/03/2009 T-109/07, Spa Therapy, EU:T:2009:81, § 30).
Therefore, and taking into account the lack of distinctiveness of the differing component, the signs are similar to a high degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛YES’, present identically in both signs. The pronunciation differs in the sound of the letters ‛The Brand’ of the contested mark, which has no counterpart in the earlier sign.
Given that the reasoning set out in the visual comparison above (regarding the lack of distinctiveness and the position of the differing element) applies here also, the signs are considered aurally highly similar.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.
The relevant public will perceive the elements ‘YES’ and ‘YESS’ as having the same meaning, the latter being a misspelling of the former. The expression ‘The Brand’ in the contested mark will be perceived as meaning a ‘product line or brand’. This expression expressly indicates that ‘YESS’ is a specific product line or brand, reinforcing this word and playing a secondary role, and therefore, it is not a distinctive element that could enable the consumer to identify the commercial origin of any of the goods (18/06/2015, R-1314/2014-2, BCN WORLD / BCN BRAND, § 41). In view of the foregoing, the signs are deemed to be conceptually highly similar.
Considering that the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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.
- Global assessment, other arguments and conclusion
The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
The goods covered by the trade marks in dispute are partly identical and partly similar. They are directed partly at the public at large and partly at business customers, and the degree of attention will vary from average to high for the reasons given above in section b) of the present decision.
The coinciding words of the earlier mark and the contested sign are made up of three and four letters, respectively; both are, consequently, rather short elements and they differ only in the last letter of the contested sign, ‘YESS’, which is the same as the letter before it and the last letter of the earlier sign, ‘YES’. Moreover, this difference is perceptible only visually, because, aurally, the coinciding elements are pronounced identically, and therefore the difference will go unnoticed.
In view of the foregoing, as the differences between the signs are confined to non-distinctive or secondary elements and aspects, the signs are visually similar to a high degree and aurally highly similar. Furthermore, they are conceptually highly similar, since the non-distinctive expression ‘The Brand’ plays only a reinforcing role.
Account must be 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).
Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 13 928 072. It follows that the contested trade mark must be rejected for all the contested goods.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the applicant is the losing party, he must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.
According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Andrea VALISA | José Antonio | Michele M. BENEDETTI-ALOISI |
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.