OPPOSITION No B 2 443 904

Cartier International AG, Hinterbergstr. 22, Postfach 61., 6312 Steinhausen, Switzerland (opponent), represented by Cabinet Lavoix, 62, rue de Bonnel, 69448 Lyon Cédex 03, France (professional representative)

a g a i n s t

Zebra A/S, Strandgade 71 – 73, 1401 Copenhagen K, Denmark (applicant), represented by Plesner, Amerika Plads 37, 2100 Copenhagen Ø, Denmark (professional representative).

On 21/02/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 443 904 is partially upheld for the following contested services, namely:

Class 35: Retail and wholesale (also via the internet) of everyday goods (including consumer goods and specialty goods), namely retail and on-line retail store services featuring a wide variety of consumer goods of others, retail and on-line retail in convenience store services and retail and on-line retail department store services with the goods in precious metals or coated therewith, jewellery, horological and chronometric instruments, key rings, tie-pins, jewellery cases, leather and imitations of leather, trunks and travelling bags, umbrellas, collar and clothing for animals; Retail and wholesale services, also via the internet, for various goods, namely goods in precious metals or coated therewith, jewellery, horological and chronometric instruments, key rings, tie pins, jewellery cases; Retail and wholesale services, also via the internet, for various goods, namely leather and imitations of leather, and goods made of these materials and not included in other classes, trunks and travelling bags, umbrellas, collars and clothing for animals.

2. European Union trade mark application No 12 781 803 is rejected for all the above contested services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against part of the services of European Union trade mark application No 12 781 803, namely against some of the services in Class 35. The opposition is based on:

• European Union trade mark registration No 11 397 122

• International trade mark registration No 1 029 142 designating the European Union

The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods and services

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

European Union trade mark registration No 11 397 122

Class 18: Leather and imitations thereof, Articles made from the aforesaid materials and not included in other classes, Handbags, Travelling bags, Backpacks, School bags, School bags and satchels, Beach bags, Shopping bags, Garment bags for travel, Travelling sets (leatherware), Bags for sports, Wheeled shopping bags, Pocket wallets, Purses, Card holders (wallets), Briefcases, Attaché cases, Attaché cases, Key cases (leatherwear), Valet trays, Travelling trunks, Cases and boxes for holding toiletries (empty), Evening purses, Hand straps, Boxes of leather or leather board, Trunks and travelling bags, Attache cases, Umbrella, Sachets and bags (envelopes, pouches) of leather, for packaging.

International trade mark registration No 1 029 142

Class 14: Goods in precious metals and coated therewith; cuff-links, tie clips, rings, bracelets, earrings, necklaces, brooches, key rings; watches, chronometers, clocks watch straps, watch bracelets, boxes of precious metals for watches and jewellery.

The contested services are the following (reproduced as published including repetitions):

Class 35: Retail and wholesale (also via the internet) of everyday goods (including consumer goods and specialty goods), namely retail and on-line retail store services featuring a wide variety of consumer goods of others, retail and on-line retail in convenience store services and retail and on-line retail department store services with the goods precious metals and their alloys and goods in precious metals or coated therewith, jewellery, precious stones, horological and chronometric instruments, key rings, tie-pins, jewellery cases, leather and imitations of leather, animal skins, hides, trunks and travelling bags, umbrellas and parasols, walking sticks, whips, harness and saddlery, collar and clothing for animals; Retail and wholesale services, also via the internet, for various goods, namely precious metals and their alloys and goods in precious metals or coated therewith, jewellery, precious stones, horological and chronometric instruments, key rings, tie pins, jewellery cases; Retail and wholesale services, also via the internet, for various goods, namely leather and imitations of leather, and goods made of these materials and not included in other classes, animal skins, hides, trunks and travelling bags, umbrellas and parasols, walking sticks, whips, harness and saddlery, collars and clothing for animals.

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.

The contested services retail and wholesale (also via the internet) of everyday goods (including consumer goods and specialty goods), namely retail and on-line retail store services...’ has to be clarified since the use of ‘namely’ is restrictive and only refers to those services specifically referred to after.

Bearing this in mind, it should be noted that 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.

Taking into account the foregoing, it should also be considered that tie-pins, tie-clips are synonyms, as are goods made of these materials (leather and imitations of leather) and articles made from the aforesaid materials and not included in other classes. The opponent’s cuff-links, rings, bracelets, earrings, necklaces and brooches (as from the International Registration) are included in jewellery. Horological instruments include the opponent’s watches and clocks and chronometric instruments covers chronometers. The opponent’s boxes of precious metals for watches and jewellery are also simply referred to as jewellery boxes. Additionally, the opponent’s articles made from the aforesaid materials (leather and imitations of leather), include collars and clothing for animals as far as the latter are made from such materials. The findings concerning the aforementioned broad categories derive from the fact that they cannot be dissected ex-officio. Additionally, it is worth mentioning that the key rings, trunks and travelling bags, umbrellas referred to in the contested services are also goods covered by the earlier marks even if the wording differs in some cases.

Therefore, the contested retail and wholesale (also via the internet) of everyday goods (including consumer goods and specialty goods), namely retail and on-line retail store services featuring a wide variety of consumer goods of others, retail and on-line retail in convenience store services and retail and on-line retail department store services with the goods precious metals or coated therewith, jewellery, horological and chronometric instruments, key rings, tie-pins, jewellery cases, leather and imitations of leather, trunks and travelling bags, umbrellas, collar and clothing for animals; Retail services, also via the internet, for various goods, namely goods in precious metals or coated therewith, jewellery, horological and chronometric instruments, key rings, tie pins, jewellery cases; Retail services, also via the internet, for various goods, namely leather and imitations of leather, and goods made of these materials and not included in other classes, trunks and travelling bags, umbrellas, collars and clothing for animals are similar to a low degree to the opponent’s goods in precious metals and coated therewith; cuff-links, tie clips, rings, bracelets, earrings, necklaces, brooches, key rings; watches, chronometers, clocks, boxes of precious metals for watches and jewellery from the earlier International Registration and the leather and imitations of leather, Articles made from the aforesaid materials and not included in other classes, trunks, travelling bags umbrellas from the earlier EUTM.

As these findings equally apply to wholesale services, the contested, wholesale services, also via the internet, for various goods, namely goods in precious metals or coated therewith, jewellery, horological and chronometric instruments, key rings, tie pins, jewellery cases; Wholesale services, also via the internet, for various goods, namely leather and imitations of leather, and goods made of these materials and not included in other classes, trunks and travelling bags, umbrellas, collars and clothing for animals are also similar to a low degree to the same goods from the earlier rights.

However, the same services (retail or wholesale) in connection with precious metals and their alloys and precious stones, animal skins, hides, parasols, walking sticks, whips, harness and saddlery are not similar to the opponent’s goods. Indeed, none of these goods are covered by the earlier marks; the fact that some may show similarities is not sufficient bearing in mind the previous findings concerning retail (or similar) services.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods and services found to be similar to a low degree are directed at the public at large as well as professionals in wholesale.

The degree of attention may vary from average to high, indeed the sales of some items such as goods in precious metals or jewellery, generally demand a higher degree of attention as they may relate to luxury items or indeed items where consumers generally put a certain amount of thought into the selection of these goods as established in the Board of Appeal decision of 09/12/2010, R 900/2010‑1, Leo Marco, § 22.

3. The signs

	SØLØVE
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 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.

The earlier mark will be understood as ‘LOVE’ by the English-speaking part of the territory. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on this part of the public.

‘LOVE’ refers to ‘an intense emotion of affection, warmth, fondness and regards toward a person or thing’ and this same concept will be found in the contested sign since ‘Ø’ is not part of the English alphabet and will merely be seen as a ‘O’. The fact that this is conjoined to ‘SØ’ does not interfere with this finding since relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). Indeed, aside from ‘LOVE’ having the aforesaid concept, the first part of the sign will be understood as ‘SO’ for the same reason concerning the letter ‘O’ as mentioned previously. ‘So’ has many meanings but in this particular context ‘SO LOVE’ it may be understood as ‘in that style’ thus meaning an affectionate style or indeed just perceived as the combination of the two terms with no clear meaning as a whole.

Even if some of the goods such as those in Class 14 may be purchased for loved ones this does not lead to an association between ‘LOVE’ and indeed this term has an average degree of distinctive character for all the goods and services concerned. ‘SO’ bears no direct association with the relevant services and is equally distinctive. However, bearing in mind that it modifies the following term (‘LOVE’) its impact in this respect is reduced.

Visually, irrespective of the way the ‘O’ is portrayed in all cases, it will be seen as the same letter. In view of the fact that the four letters of the earlier marks are wholly included in the contested sign and the only differences reside in its first two letters, they are visually similar to at least an average degree.

Aurally, the pronunciation of the signs coincides in ‘LOVE’ and only differ in the first syllable ‘SO’ of the contested sign, thus they are similar to an average degree.

Conceptually, in view of the concepts found in the signs they are at least similar to an average degree.

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.

The opponent did not explicitly claim that its marks are particularly distinctive by virtue of intensive use or 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 as a whole 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

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 goods and service are similar to a low degree and dissimilar.

As concerns those goods and services found 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 services cannot be successful. Consequently the opposition is not successful in this regard.

With respect to the services found similar to a low degree, the signs have been found to be similar to an average degree on all three levels of assessment.

The relevant public is made up of consumers displaying both an average degree of attention as well as a high degree. In this respect, account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. In this respect, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier marks, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well founded. 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, as such there is no need to analyse the remaining part of the public.

Therefore, the opposition is partially well founded on the basis of the opponent’s trade marks. It follows that the contested trade mark must be rejected for all the contested services found similar to a low degree.

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 shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Martin MITURA

Vanessa PAGE

Lucinda CARNEY

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.