OPPOSITION No B 2 599 671

Etablissements Laval, Zone artisanale de Chedigny, 37310 Chedigny, France (opponent), represented by Cabinet Flechner,  22 avenue de Friedland, 75008 Paris, France (professional representative)

a g a i n s t

Giancarlo Paparo, Via Tanaro 6/c, 00040 Pomezia (RM), Italy (applicant), represented by Stefano Merico,  Via Eschilo 190 int. 7, 00125 Roma, Italy (professional representative).

On 01/06/2017 the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 599 671 is upheld for all the contested goods, namely

Class 14:        Rings (jewellery, jewelry (am.)); Amulets [jewellery, jewelry (Am.)]; Necklaces and Necklaces; Armlets and Bracelets; Paste jewellery [costume jewelry (Am.)]; Jewels; Fobs; Jewelry boxes; Broaches; Clocks.

2.        European Union trade mark application No 14 248 678 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 650.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 248 678, namely against all the goods in Class 14. The opposition is based on French trade mark registration No 3 461 646. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based.

The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The contested application was published on 21/07/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in France from 21/07/2010 to 20/07/2015 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 14:        Jewellery, jewellery products, Goldsmith’s products (excepting knifes, forks and spoons); chronometric instruments; watches and clocks; wrist-watches.

According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 12/01/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 14/03/2016 to submit evidence of use of the earlier trade mark. On 14/03/2016, upon request by the opponent, the Office extended that time limit until 14/05/2016. On 02/05/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Document A: Turnover figures for ONE MAN SHOW jewellery products from 21/07/2010 until  20/072015. According to which the total turnover for that period of time amounts to 613 563, 15 EUR. The turnover figures are broken down to 680 different products and the total sales figure in Euros for each of these products during the relevant timeframe. The 680 products are different kinds of rings, key-rings, ear-rings, pendants, necklaces, chains, cuff-links and bracelets. Each product listed in the document is assigned an individual article code and a brief description of the product in French. The turnover figures are accompanied by an English translation of the terms ‘bague’ (ring), ‘chevalière (signet-ring), ‘porte clef’ (key-ring), ‘boucles d´oreilles’ (ear-rings), ‘creoles’ (a type of ear-rings), ‘pendetif’ (pendant), ‘cordon’ (lace), ‘collier’ (necklace), ‘chaîne’ (chain) and ‘bracelet’ (bracelet). The turnover figures are confirmed  by RMA Audit, an accountant company registered in the Register of Chartered Accountants of the Pays de Loir. Language of the attestation is French.
• Document B: English translation of the attestation of the above turnover figures by RMA Audit.
• Document C: 38 invoices regarding the sale of various jewellery goods from the year 2011. The seller on all invoices is the Bijoux CN – La Coque de Nacre. The recipient of all those invoices is the opponent.
• Document D: 90 invoices regarding the sale of various jewellery goods from the year 2012. The seller on all invoices is the Bijoux CN – La Coque de Nacre. The recipient of all those invoices is the opponent.
• Document E: 84 invoices. The seller on all 84 invoices is the Bijoux CN – La Coque de Nacre. 77 out of those are regarding the sale of various jewellery goods from the year 2013 to the opponent. 7 out of those submitted 84 invoices are only partly legible and they are undated and not indicating a recipient.
• Document F: 60 invoices. The seller on all invoices is the Bijoux CN – La Coque de Nacre.  59 regarding the sale of various jewellery goods from the year 2014 to the opponent. One out of those submitted 60 invoices is only are only partly legible and they are undated and not indicating a recipient.
• Document G: 32 invoices. The seller on all invoices is the Bijoux CN – La Coque de Nacre. 15 regarding the sale of various jewellery goods within the relevant timeframe. Eight of those invoices are dated later than the 20/07/2015 and consequently fall outside the relevant timeframe. The date could not be read.
• Document H: ONE MAN SHOW catalogues of jewellery products. The catalogues do not include any prices of the shown products. The catalogues are dated from the years 2010, 2012, 2013, 2014, 2015 and 2016. The different products in the catalogues are marked with individual article codes. These individual article codes correspond to the article codes (and the brief product description) of the submitted turnover figures (Document 1A). The catalogues are in French and English. The catalogue for the year falls partly outside the relevant timeframe. The catalogue for the year 2016, in its entirety, falls outside the relevant timeframe.

The sign was shown in the above mentioned catalogues, excluding the 2016 catalogue, as followed:

In the present case, the evidence submitted demonstrates use of the signs

            

• Document I: A leaflet in French and English for ONE MAN SHOW watches, dated January 2013. The leaflet includes recommended retail prices and the price without taxes for the watches.
• Document J: 13 invoices (17 pages) of suppliers for the manufacturing of packaging products and/or advertising material for ONE MAN SHOW jewellery products. All the invoices are dated within the relevant period of time.
• Document K: 24 invoices (51 pages) of suppliers for the manufacturing of ONE MAN SHOW jewellery products. One out of those submitted 24 invoices is dated after the 20/07/2015 and is the only one which falls outside the relevant timeframe.

Place of use

All the addresses listed on the catalogues are in France. The only currency occurring in the turnover sale figures is EURO. The main language of the submitted documents is French. The use of additional languages (English), as well as French, in the catalogues does not prevent a conclusion that the evidence relates to the relevant territory. The use of English is common nowadays in trade. Often, a producer/provider does not trade within the border of only one country and at least some basic information about the product is provided in English and even in other languages to facilitate export and import trade. Furthermore, it is seen from the evidence that the opponent ordered the manufacture of ONE MAN SHOW jewellery products. On some of the orders, which are dated within the relevant timeframe (Document 10), it is explicitly stated that the ‘final destination’ of the manufactured goods is France. In any case, the address of the ordering company suggests that the goods were ordered to be shipped to France. Furthermore, the catalogues and turnover figures refer to their actual marketing in the relevant territory.

Taking into account all the above, it is considered that the evidence relates to the relevant territory.

Time of use

Most of the submitted documents, in particular the attested turnover figures and the at least the catalogues for jewellery products for the years 2012, 2013 and 2014 and the leaflet for watches from 2013 refer to the relevant period of time.

Extent of use

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

Special circumstances, for example lower sales figures during the initial marketing phase of a product, could be of relevance when assessing the genuineness of the use (08/07/2004, T-334/01, Hipoviton, EU:T:2004:223, § 53).

Furthermore, use of the mark must relate to goods or services already marketed or about to be marketed and for which preparations by the undertaking to secure customers is under way (11/03/2003, C-40/01, Minimax, EU:C:2003:145, § 37).

As stated above, the opponent placed orders for the manufacturing of ONE MAN SHOW jewellery products.

Furthermore, the turnover figures (Document 1A) are clearly linked by the article codes to the jewellery products as shown in the submitted catalogues from the years 2012, 2013 and 2014 (Document 7). On the contrary, the turnover figures do not contain any chronometric instruments, watches, clocks and wristwatches. Consequently these goods, as shown in the submitted leaflet (Document 8) are not linked to the turnover figures.

The sales figures submitted, as such, do not provide information on the amount of goods marketed or how or to what extent the mark was used in France. However, taken together with the other documents submitted, namely the purchase orders, the catalogues, are linking one to another. The turnover figures are referring to the sold products and the respective product codes which are further displayed in the catalogues showing the same products offered under the sign. Considering all the above, the submitted evidence demonstrate that the mark had been used by the opponent for goods that were marketed and sold under a continuous period of time which falls within the relevant timeframe.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier mark in regards to jewellery products.

Nature of use

Sign used as a trade mark

Nature of use requires, inter alia, that the sign is used as a trade mark, that is, for identifying origin, thus making it possible for the relevant public to distinguish between goods and/or services of different providers.

The materials submitted, when assessed as a whole, show that the earlier sign appears in the catalogues for jewellery products as an indicator for commercial origin.

The Opposition Division considers, therefore, that the evidence shows use of the signs shown above as a trade mark.

Sign used as registered

According to Article 15(1), second subparagraph, point (a) EUTMR, the following shall also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, the evidence submitted demonstrates use of the signs

   

The earlier mark is registered as . Despite the facts that the sign was used in a slightly bolder type face and that the words were stacked above each other instead of being horizontally arranged the earlier mark is clearly recognisable. constitute a change that is almost negligible. It follows that the use of the signs demonstrated by the evidence listed above constitutes use of the mark as registered or in a form essentially the same as that registered and, therefore, constitutes use of the mark under Article 15 EUTMR.

Use in relation to the registered goods

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory for some of the goods for which it is registered.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

According to case-law, when applying the abovementioned provision the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories.

(14/07/2005, T-126/03, Aladin, EU:T:2005:288).

In the present case, the evidence proves use for a number of jewellery items, namely rings, key-rings, ear-rings, pendants, laces, necklaces, chains and bracelets belonging to the following category in the specification of Class 14: Jewellery; jewellery products. As the opponent is not required to prove all the conceivable variations of the category of goods for which the earlier mark is registered and as the goods for which use has been proved do not constitute a coherent subcategory within the broad category in the specification to which they belong, the Opposition Division considers that the evidence shows genuine use of the trade mark for Jewellery; jewellery products in Class 14.

For the rest of the goods, on which the opposition is based, namely Goldsmith’s products (excepting knifes, forks and spoons); chronometric instruments; watches and clocks; wrist-watches, there is little or no information provided in the documents submitted. The submitted leaflet with watches (Document 8) alone, as the watches cannot be not linked to the turnover figures, does not suffice to demonstrate that these products were marketed under the sign in question, as there is no further information about actual commercial realisation.

Therefore, the Opposition Division will only consider Jewellery; jewellery products in Class 14 in its further examination of the opposition.

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

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

Class 14:        Jewellery; Jewellery products.

The contested goods are the following:

Class 14:        Rings (jewellery, jewelry (am.)); Amulets [jewellery, jewelry (Am.)]; Necklaces and Necklaces; Armlets and Bracelets; Paste jewellery [costume jewelry (Am.)]; Jewels; Fobs; Jewelry boxes; Broaches; Clocks.

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 14

Jewels are identically contained in both lists of goods (including synonyms).

The contested Rings (jewellery, jewelry (am.)); Amulets [jewellery, jewelry (Am.)]; Necklaces and Necklaces; Armlets and Bracelets; Paste jewellery [costume jewelry (Am.)]; Broaches, Fobs are included in the broad category of the opponent’s jewellery products. Therefore, they are identical.

The contested Clocks are highly similar to the opponent’s jewellery products. They can share the same purpose (decorative, even if in the case of time pieces and instruments they have the additional purpose of measuring time), can be manufactured by the same undertakings and they coincide in end users and distribution channels (jewellery stores).

The contested Jewelry boxes are similar to the opponent’s jewellery products as they coincide in producer, end user and distribution channels. Furthermore, they are complementary.

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 or similar are directed at the public at large. 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.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is France.

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 sign consists of the three verbal elements ‘ONE’, ‘MAN’ and ‘SHOW’. The English term ‘one-man show’ stands for, inter alia, ‘a situation dominated by or reliant on one person’ (Oxford dictionary). The term will be understood accordingly in France. The English word ‘ONE’ for the number 1, the English word ‘MAN’ for ‘an adult male human being’ and the English word ‘SHOW’ meaning a ‘performance, entertainment or play’ and the English article ‘THE’ (Collins dictionary) belong to the basic English vocabulary. They all will be identified as such and will be understood accordingly by the French consumer. The verbal elements as such and the combination thereof are normally distinctive in relation to the relevant goods.

The contested sign is a figurative mark. Its verbal element ‘THE’ is placed above the second verbal element ‘ONESHOTSHOW’, the latter being considerably bigger in font size. Both verbal elements are written on a slightly fancy yet easily legible bold white font against a black rectangular background. Above the verbal element is a sketched circus tent, to the left and the right of the verbal element ‘THE’ are two horizontal lines and below the verbal element ‘ONESHOTSHOW’ is one white horizontal line. The figurative elements, due to its ordinary character, are of limited distinctiveness, while the verbal elements as such and the combination thereof are normally distinctive in relation to the relevant goods.

The earlier mark has no element that could be considered clearly more dominant (visually eye-catching) than other elements. The verbal elements as such and the combination thereof are normally distinctive in relation to the relevant goods.

The word ‘THE’, even though it is placed in first position on top of the contested sign, is written in a much smaller typeface and the more dominant element is the verbal element ‘ONESHOTSHOW’. Even the figurative elements are due to their sizes and positioning in the mark less visually eye-catching than the verbal element ‘ONESHOTSHOW’. The English word ‘ONE’ for the number 1 and the English word ‘SHOW’ meaning a ‘performance, entertainment or play’ and the English article ‘THE’ belong to the basic English vocabulary that will be identified as those and will be understood by the French consumer. The combined English term ‘one-shot’ describing as ‘something happening, appearing, etc. only once’ (Collins dictionary) is not part of the basic English vocabulary and as such will not be understood in the relevant territory The verbal elements as such and the combination thereof are normally distinctive in relation to the relevant goods.

Visually, the earlier sign and the dominant element of the contested sign are similar as they have an identical beginning and ending, ‘ONE()SHOW’. The signs differ in the string of letters between the shared elements ‘ONE’ and ‘SHOW’, namely ‘MAN’ (earlier sign) and ‘SHOT’ (contested sign). They also differ insofar as there are spaces between the verbal elements of the earlier sign and in the verbal element ‘THE’ and the figurative elements, which are of only limited distinctiveness, of the contested sign, which have no counterparts in the earlier mark. Regarding the slightly fancy typeface in which the contested sign is written, this stylisation must be considered not that elaborate or sophisticated and it will not lead the consumer’s attention away from the elements it seems to embellish.

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

Aurally, the pronunciation of the signs coincides in the sound of the words /ONE/ and /SHOW, present identically in both signs. The pronunciation differs in the sound of the words ‘MAN’ (earlier sign) and ‘SHOT’ (contested sign) and in the word ‘THE’, a less dominant element of the contested sign, that is not shared by the earlier mark.

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

Conceptually, the French consumer will perceive the English words ‘one’ and ‘show’ as such in both marks. However, marks differ insofar as the public in the relevant territory will also perceive the concept of the term ‘ONE MAN SHOW’ as described above. Also the concept of the sketched circus tent does not have a counterpart in the earlier mark. Considering all the above, 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.

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.

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 contested goods are partly identical and partly similar to the opponent’s goods. The signs have been found to be similar to the extent that the earlier sign and the dominant element of the contested sign coincide in the string of letters ‘ONE’ and ‘SHOW’. The visual, aural and conceptual similarities originate from these shared elements. Moreover, as explained in section c) of this decision the verbal elements from which the similarity arises are distinctive to an average degree. It is taken into account that, 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 covered are from the same or economically linked undertakings.

In addition, account should also be taken of the fact that the average consumer only

rarely has the chance to make a direct comparison between the different marks and

must place his trust in the imperfect picture of them that he has kept in his mind(22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323).

Considering all the above and based on the average degree of the inherent distinctiveness of the earlier mark, the Opposition Division finds that there is a likelihood of confusion on the part of the relevant public in relation to all the goods found to be identical or similar.

Therefore, the opposition is well founded on the basis of the opponent’s French trade mark registration French trade mark registration No 3 461 646. It follows that the contested trade mark must be rejected for all 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, 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

Irina SOTIROVA

André Gerd Günther BOSSE

Plamen IVANOV

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.