OPPOSITION No B 2 658 337
Tov Hazel Beheer N.V., Coolsingel 104, 3011 AG Rotterdam, The Netherlands (opponent), represented by Brandmerk! Intellectual Property, Minervahuis III, Rodezand 34, 3011 AN Rotterdam, The Netherlands (professional representative)
a g a i n s t
Eric Ku, Inc., 609 Hearst Avenue, Berkeley, California 94710, United States of America (applicant), represented by Bals & Vogel, Universitätsstr. 142, 44799 Bochum, Germany (professional representative).
On 28/03/2007, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 658 337 is partially upheld, namely for the following contested services:
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Class 35: |
On-line retail store services featuring watches and horological and chronometric instruments; retail store services featuring watches and horological and chronometric instruments; providing a website featuring commercial and sales information in the fields of watches, horology, and time pieces. |
2. European Union trade mark application No 14 343 842 is rejected for all the above services. It may proceed for the remaining services.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against all the services of European Union trade mark application No 14 343 842. The opposition is based on Benelux trade mark registration No 962 747. 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 and services
The goods and services on which the opposition is based are the following:
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Class 14: |
Horological and chronometric instruments; watches and parts and fittings therefor, including watch hands, watch faces, watch springs, watch glasses, watch cases, watch straps, watch chains and decorative boxes for watches; watch cases; watchcases made of precious metals; jewellery, bijouteries, precious stones.
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Class 35: |
Advertising; business management; business administration; office functions; marketing and public relations; business mediation in the purchase and sale of the products mentioned in Class 14; retail and wholesale services in the field of the products mentioned in Class 14; import and export services of the products mentioned in Class 14; bringing together (for others) of goods (except the transport thereof) so that consumers can easily see and buy them; the aforesaid services also provided via the Internet; retail services in the field of the products mentioned in Class 14 through online shops or mail order companies; administrative processing of purchase orders in connection with services provided by web shops or mail order companies; organization of fairs, exhibitions, fashion shows and other events for commercial and/or advertising purposes.
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Class 37: |
Repair and maintenance of the products mentioned in Class 14.
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As regards the contested services, the Opposition Division notes that, following the responses of the applicant to the Office’s Notices of requirement to amend the classification of the list of goods and services, the services in Class 35 were incorrectly adapted because of a clerical error. Instead of the correct wording, which has been accepted and confirmed previously by the Office, namely providing a website featuring commercial and sales information in the fields of watches, horology, and time pieces, the same wording as in Class 42 has been indicated in Class 35, namely providing a website featuring technical information in the fields of watches, horology, and time pieces.
This circumstance was correctly highlighted in the opponent’s further facts, evidence and arguments dated 08/09/2016.
As both parties were aware of this obvious clerical error, and the opponent explicitly directed its opposition against the correct list of services for which the applicant sought registration, and given that the applicant also had the appropriate time in which to reply to the abovementioned argument, the opposition will be dealt with using the correct list of services, as requested by the applicant and as correctly opposed by the opponent.
Taking into account the foregoing, the contested services are the following:
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Class 35: |
On-line retail store services featuring watches and horological and chronometric instruments; retail store services featuring watches and horological and chronometric instruments; providing a website featuring commercial and sales information in the fields of watches, horology, and time pieces.
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Class 41: |
On-line journals, namely, blogs featuring watches, horology, and time pieces; providing non-downloadable publications in the nature of articles and online interviews in the fields of watches, horology, and time pieces.
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Class 42: |
Providing a website featuring technical information in the fields of watches, horology, and time pieces.
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An interpretation of the wording of the list of goods and services is required to determine their scope of protection.
The term ‘including’, used in the opponent’s list of goods in Class 14, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
However, the term ‘namely’, used in the applicant’s list of services in Class 41 to show the relationship of individual services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed 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 services in Class 35
The contested on-line retail store services featuring watches and horological and chronometric instruments are included in the opponent’s retail services in the field of the products mentioned in Class 14 (horological and chronometric instruments; watches) through online shops and, therefore, they are identical.
The contested retail store services featuring watches and horological and chronometric instruments are identical to the opponent’s retail services in the field of the products mentioned in Class 14 (horological and chronometric instruments; watches), albeit with slightly different wording.
The contested services in Class 35, namely providing a website featuring commercial and sales information in the fields of watches, horology, and time pieces, are advertising and marketing services and are included in the broad category of the opponent’s advertising. Therefore, they are identical.
Contested services in Class 41
After comparing the contested services on-line journals, namely, blogs featuring watches, horology, and time pieces; providing non-downloadable publications in the nature of articles and online interviews in the fields of watches, horology, and time pieces in Class 41 with the opponent’s services, the Opposition Division finds them dissimilar. The contested services are basically publishing services in the field of watches, horology and time pieces, which are different from the opponent’s services in the fields of advertising; business management; business administration; office functions; retail and wholesale in Class 35 and repair and maintenance in Class 37, despite the fact that these services are related to watches, horology, and time pieces in Class 14, as specified in the list of goods and services for which registration is sought. They differ in nature and purpose. The contested services have different providers, channels of trade and end users from the opponent’s services. Furthermore, the services are not in competition with or complementary to each other.
The same reasoning applies when comparing the contested services on-line journals, namely, blogs featuring watches, horology, and time pieces; providing non-downloadable publications in the nature of articles and online interviews in the fields of watches, horology, and time pieces in Class 41 with the opponent’s goods in Class 14. By their nature, goods are generally dissimilar to services, because goods are articles of trade, wares or merchandise. Their sale usually entails the transfer of title of something physical, that is, movables. Services, on the other hand, consist of the provision of intangible activities. Although in some cases there is a clear connection between goods and services, which is usually due to a strong interdependent, complementary relationship between them, this does not apply in the present case. The goods and services in this case differ in nature and purpose. The manufacturers of goods in Class 14 do not typically provide the contested services, and their channels of trade and end users are typically different. Furthermore, these goods and services are not in competition with or complementary to each other. The fact that such publications refer to the opponent’s goods is too tenuous a link to find any degree of similarity. Therefore, the contested services in Class 41 are dissimilar to all the opponent’s goods in Class 14.
Contested services in Class 42
The contested providing a website featuring technical information in the fields of watches, horology, and time pieces in Class 42 consists of the design, creation, hosting and maintenance of websites for others. When comparing these contested services with the opponent’s services, the Opposition Division finds them dissimilar. The contested services are basically website development, programming and implementation services, which are different from the opponent’s services in the fields of advertising; business management; business administration; office functions; retail and wholesale in Class 35 and repair and maintenance in Class 37, although such websites may contain technical information about watches, horology and time pieces or could be used in combination with some of the opponent’s services. They differ in nature and purpose. These services have different providers, channels of trade and end users from the opponent’s services. Furthermore, the services are not in competition with or complementary to each other.
The same argument applies when comparing the contested providing a website featuring technical information in the fields of watches, horology, and time pieces with the opponent’s goods in Class 14. They differ in nature and purpose. The manufacturers of such goods do not typically provide the contested services, and their channels of trade and end users are typically different. Furthermore, these goods and services are not in competition with or complementary to each other. The fact that the website may contain technical information relating to the opponent’s goods is too tenuous a link to find any degree of similarity. Therefore, the contested services in Class 42 are dissimilar to all the opponent’s goods in Class 14.
- 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 services found to be identical are directed both at the general public and at professionals and practitioners in the field of watches and horological and chronometric instruments with specific knowledge or expertise. The degree of attention may vary from average to higher than average, to the extent that the services can also be purchased by specialists.
- The signs
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10PAST10
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10 PAST TEN
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Earlier trade mark |
Contested sign |
The relevant territory is the Benelux countries.
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 earlier mark is the word mark ‘10PAST10’. It is composed of the following linked elements: the figure ‘10’, the word ‘PAST’ and the figure ‘10’ again. Because the earlier mark is a sequence of figure, word, figure, the public in the relevant territories will dissect it into three elements.
The contested sign is the word mark ‘10 PAST TEN’. It is composed of three elements separated by space, namely the figure ‘10’, the word ‘PAST’ and the word ‘TEN’.
The concept of the figure ‘10’ in both signs is the number it identifies independently of the language.
The meaning of the word ‘PAST’, which also appears in both signs, will be associated by a part of the public with its meaning in English, namely the time before the present, and the things that have happened (information extracted from Collins Dictionary on 14/03/2017 at www.collinsdictionary.com). However, the remaining part of the public in the relevant territory will not associate any meaning with this word and will consider it a fanciful term.
The meaning of the word ‘TEN’ of the contested sign will be associated by a part of the public with its meaning in English, namely the number ten. However, the remaining part of the public in the relevant territory will not associate any meaning with this word and will consider it a fanciful term.
Bearing in mind the relevant goods and services and independently of the meaning associated with these elements by the relevant public in the different territories, all these elements are considered to have a normal degree of distinctiveness.
Conceptually, taking into account the previous assertions concerning the semantic content conveyed by the marks, both signs will be perceived as the time 10 minutes past 10 o’clock by the part of the public having some knowledge of English. Therefore, the signs are conceptually identical for this part of the public. However, although the signs as a whole do not have any meaning for the other part of the public, , the figure ‘10’ which is in both signs and appears twice in the earlier mark will be associated with the above meaning. To that extent, the signs are conceptually highly similar.
Visually, the signs coincide in the elements ‘10’ and ‘PAST’ at the beginning of the signs. The position of the coinciding elements is particularly relevant because 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 beginning) the one to attract the attention of the reader first. In the earlier mark, these elements are joined but the relevant public will perceive them as separate; in the contested sign these elements are separated by a single space. The signs differ in their endings: ‘10’ in the earlier mark and ‘TEN’ in the contested sign.
Therefore, the signs are visually highly similar.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the number ‘10’ and the letters ‛PAST’, present identically in both signs. For the part of the public with some knowledge of English, the pronunciation of the endings (‘TEN’ and ‘10’) would also coincide. For the remaining part of the public, the pronunciation would differ in the sound of the figure ‘10’ and the word ‘TEN’ in the earlier mark and contested sign, respectively.
Therefore, the signs are aurally identical for a part of the public and highly similar for the other part, as explained above.
As 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 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
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.
The signs are visually highly similar and aurally and conceptually identical for a part of the relevant public and aurally and conceptually highly similar for the other part of the public.
The contested services in Class 35 are identical and the remaining services are dissimilar. The degree of attention of the relevant public may vary from average to higher than average, depending on the services.
It should be taken into account that average consumers, even those who pay a high degree of attention (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54), 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).
The differences between the signs are limited to their endings, ‘TEN’ versus ‘10’, which, clearly, cannot outweigh the overwhelming visual, aural and conceptual similarities between them.
Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, 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, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Benelux trade mark registration.
It follows from the above that the contested trade mark must be rejected for the services found to be identical to those of the earlier trade mark.
The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.
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
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Ana MUÑIZ RODRIGUEZ |
Fabián GARCIA QUINTO |
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.