OPPOSITION No B 2 708 025

Suárez H, S.A., Gran Via, 40 Bis – 3º, 48009 Bilbao (Vizcaya), Spain (opponent), represented by S. Orlando Asesores Legales y en Propiedad Industrial, S.L., C/  Castelló, 20, 4ºD, 28001 Madrid, Spain (professional representative)

a g a i n s t

Elmar Grandy, Weidenweg 7, 85764 Oberschleißheim Germany (applicant), represented by Christoph Friedrich, Jahn Rothenburg 41, 48143 Münster, Germany (professional representative).

On 07/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 708 025 is upheld for all the contested goods.

2.        European Union trade mark application No 15 129 364 is rejected for all the contested goods. It may proceed for the remaining goods and services.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 129 364, namely against all the goods in Class 14. The opposition is based on, inter alia, European Union trade mark registration No 9 105 768. The opponent invoked Article 8(1)(b) and Article 8(5) 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 European Union trade mark registration No 9 105 768.

1. The goods

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

Class 14:        Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, costume jewellery, precious stones; horological and chronomatic instruments.

The contested goods are the following:

Class 14:        Jewellery; precious metals.

Jewellery; precious metals are identically contained in both lists of goods.

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 found to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price. 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 may be assumed.

3. The signs

ARISTOCRAZY
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.

The Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public.

The earlier mark is a word mark composed of the word ‘ARISTOCRAZY’, and will be perceived by the relevant public as a misspelling of the Spanish word ‘ARISTOCRACIA’, which is the equivalent of ‘ARISTOCRACY’, and therefore will be perceived as meaning a class of people in some countries who have a high social rank and special titles (information extracted from Collins Dictionary on 04/04/2017  at https://www.collinsdictionary.com/dictionary/english/aristocracy). As a word mark, it has no elements that could be considered clearly more eye-catching (dominant) than other elements, and since it has no connection with the relevant goods it has no more distinctive elements either.

The contested mark is a figurative mark composed of the words ‘ARISTO’ and ‘CARD’, with between them the upper case letters ‘AC’ in black and white. The word ‘ARISTO’ will be perceived by the relevant public as the informal way to refer to an aristocrat (information extracted from Collins Dictionary on 04/04/2017  at https://www.collinsdictionary.com/dictionary/english/aristo ) and ‘CARD’ will not be associated with any meaning. The letters ‘AC’ will be associated with the initial letters of the words ‘ARISTO CARD’. As the words are not descriptive, allusive or otherwise weak for the relevant goods, they are considered distinctive. Moreover, there are no dominant elements.

Visually, the signs coincide in the sequence of letters ‘ARISTO’ and in the letters ‘C’ and ‘A’. The signs differ in the letters at or near their ends, namely ‘R*ZY’ in the earlier mark and ‘RD’ in the contested sign, in addition to the element ‘AC’ and the figurative aspect of the contested mark. The figurative element is not particularly elaborate or sophisticated and therefore will not have much of an impact on the consumer. In any event, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

In addition, the beginnings of the conflicting marks are identical and consumers generally tend to focus on the beginning of a sign when being confronted with a trade mark. This is justified by the fact that 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.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘ARISTO’, present identically in both signs, and in the letters ‘C’ and ‘A’, also present in both signs. The pronunciation differs in sound of the letters ‛R*ZY’ of the earlier sign and in the sound of the letters ‘RD’ of the contested mark. As regards the additional letters ‘AC’ of the contested mark, the Opposition Division considers that the public will not pronounce them at all, because, as stated above, they are the initial letters of the words ‘ARISTO’ and ‘CARD’ respectively.

Therefore, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs contain a reference to aristocracy but differ in the remaining meaningful elements, the signs are conceptually 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 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.

According to the opponent, the earlier trade mark has a reputation as result of its long-standing and intensive use in Spain in connection with the goods in Class 14 for which it is registered, namely precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, costume jewellery, precious stones; horological and chronomatic instruments. 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 opponent submitted evidence to support this claim. The evidence consists of the following documents:

• A witness statement by Don Clemente Hernández, General Director of the opponent’s company, dated 09/02/2016, stating when the trade mark was invented and the number of points of sale in which one can find the products under the mark: 62 in Spain and 18 abroad. Moreover, there is a reference to events with a reputation in which the company has participated to publicise its products. In addition, sales figures (EUR 45 million) and advertising expenditures (EUR 5 million) are shown, as well as the number of appearances in offline media.

• A certificate issued by ANDEMA, National Association for the Defence of Trademarks, dated 19/05/2016, which states the well-known character of the mark ‘ARISTOCRAZY’ in relation to the jewellery sector. This document, as well as recognising the well-known character of the mark, makes specific reference to the period between 2010 and 2014; the number of points of sale that the company has in Spain, which is over 54; the value of worldwide retail sales of the products under the mark, EUR 48 million; advertising expenditure, reaching over EUR 5 million; the number of times goods sold under the mark have been advertised in offline media, 2 239, and the associated advertising expenditure, EUR 13 005 015; and the number of print media in which the products have been advertised, 234. In addition, there is an indication of the number of times that goods sold under the mark have been advertised in many relevant women’s magazines such as ¡Hola!, Elle and Vogue. The document also indicates the numbers of followers that the company has on Facebook (63 548), Twitter (25 100) and Instagram (57 160).

• Press documents have also been annexed. However, as regards this piece of evidence, the opponent has requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, so the Opposition Division will describe the evidence only in the most general terms without divulging any such data:

• a huge number of magazine articles dated from 2013 to 2016 referring to the huge success of the mark and its products since its launch, the participation of the company and its products in important fashion events, its relationship with important society people etc.

Having examined the material listed above, the Opposition Division concludes that the earlier trade mark has acquired a high degree of distinctiveness through its use on the market in Spain.

Taking into account all the pieces of evidence in combination with one another, it cannot be denied that the opponent has used its mark extensively and continuously in Spain. The huge number of extracts from very popular magazines in which the mark appears, together with the decision of ANDEMA, which is very important due to the relevant information that it contains and the source of the decision, leave no doubt at all that the mark has achieved a consolidated position in the market. Under these circumstances, the Opposition Division finds that, taken as a whole, the evidence indicates that the earlier trade mark enjoys a certain degree of recognition among the relevant public, which leads to the conclusion that the earlier trade mark enjoys some degree of reputation in relation to precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, costume jewellery, precious stones; horological and chronomatic instruments.

Therefore, the opponent has proved that its earlier sign has acquired a high degree of distinctiveness through its use on the market in Spain in relation to precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, costume jewellery, precious stones; horological and chronomatic instruments in Class 14.

e)        Global assessment, other arguments and conclusion

The signs are visually and aurally similar to an average degree and conceptually similar to an average degree.

Moreover, the goods are identical and directed mainly at the public at large, whose degree of attention may vary from average to high depending on the luxury character of the goods.

The signs coincide in their first six letters, ‘ARISTO’, which play a distinctive role in the contested mark, and in the letters ‘C’ and ‘A’, and differ in their remaining elements. Nevertheless, as mentioned above, the earlier sign enjoys some degree of reputation in relation to the relevant goods a result of its use on the market in Spain. In this regard, the Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

Therefore, taking into account all the relevant circumstances of the case, and in particular the acquired high degree of distinctiveness of the earlier mark in relation to the relevant goods, as well as the fact that the these goods are identical to the contested goods, and that the signs have identical beginnings, it is concluded that, although the signs differ in several aspects, there remains a likelihood of confusing the signs.

As regards the identity between the goods, it is important to remember that 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).

In view of the acquired high degree of distinctiveness of the earlier mark, the commonalities between the signs and the identity between the goods, the Opposition Division is of the opinion that the relevant consumers, when encountering the conflicting marks on identical goods, although they will not directly confuse the marks, might believe that the goods come from the same undertaking or, as the case may be, from economically-linked undertakings, even for goods for which the relevant public will display a higher degree of attention.

Considering all the above, there is a likelihood of confusion on the part of the Spanish-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 9 105 768. It follows that the contested trade mark must be rejected for all the contested goods.

As earlier European Union trade mark registration No 9 105 768 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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, it 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

Francesca DINU

Cristina CRESPO MOLTO

Loreto URRACA LUQUE

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.