OPPOSITION No B 2 742 743

Omega SA (Omega AG) (Omega Ltd.), Jakob-Stämpfli-Strasse 96, 2502 Biel/Bienne,

Switzerland (opponent), represented by Despacho González-Bueno, S.L.P., Calle Velázquez 19, 2º dcha., 28001 Madrid, Spain (professional representative)

a g a i n s t

Franck Pelvin, Rue du Kanves, 56410 Etel, France (applicant).

On 19/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 742 743 is rejected in its entirety.

2.        The opponent bears the costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 358 526, namely against all the goods in Class 14. The opposition is based on, inter alia, international trade mark registrations No 1 180 215 and No 1 180 545, both 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.

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 international trade mark registrations No 1 180 215 and No 1 180 545, both designating the European Union.

1. The goods

The lists of goods given in the notice of opposition for international trade mark registrations No 1 180 215 and No 1 180 545, both designating the European Union, do not correspond to the registration certificate submitted for substantiation purposes on 27/07/2016. The Opposition division will rely on the list of goods as included in the submitted extract from the WIPO Romarin database. Therefore, the goods on which the opposition is based are the following:

1. international trade mark registration No 1 180 215 designating the European Union:

Class 14:          Precious metals and their alloys and goods made of these materials or coated therewith included in this class, namely figurines, trophies; jewelry, namely rings, earrings, cufflinks, bracelets, charms, brooches, chains, necklaces, tie pins, tie clips, jewelry caskets, jewelry cases; precious stones and semi-precious stones; timepieces and chronometric instruments, namely chronometers, chronographs (watches), clocks, watches, wristwatches, wall clocks, alarm clocks, as well as parts and accessories for the aforementioned goods, namely hands (clock and watch making), anchors (clock and watch making), pendulums (clock and watch making), barrels (clock and watch making), watch cases, watch straps, watch faces, clockworks, watch chains, movements for clocks and watches, watch springs, watch glasses, presentation cases for timepieces, cases for timepieces.

2. international trade mark registration No 1 180 545 designating the European Union:

Class 14:        Precious metals and their alloys and goods made of these materials or coated therewith included in this class, namely figurines, trophies; jewelry, namely rings, earrings, cufflinks, bracelets, charms, brooches, chains, necklaces, tie pins, tie clips, jewelry caskets, jewelry cases; precious stones and semi-precious stones; timepieces and chronometric instruments, namely chronometers, chronographs (watches), clocks, watches, wristwatches, wall clocks, alarm clocks as well as parts and accessories for the aforesaid goods, namely hands (clock and watch making), anchors (clock and watch making), pendulums (clock and watch making), barrels (clock and watch making), watch cases, watch bands, watch faces, clockworks, movements for timepieces, watch springs, watch glasses.

The contested goods are the following:

Class 14:        Gemstones, pearls and precious metals, and imitations thereof; jewellery; jewellery boxes and watch boxes; time instruments; chronometric instruments; jewels.

        

Some of the contested goods are identical to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark.

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 assumed to be identical are directed at the public at large.

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

MOONWATCH DARK SIDE OF THE MOON	WALKING ON THE MOON
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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The common element ‘MOON’ will, in the English-speaking part of the territory, be understood as, inter alia, the natural satellite of the earth, anything shaped like the moon (Collins Dictionaries), or a disc, plate, or aperture exhibiting the moon’s phases in a clock or watch (Oxford English Dictionaries). Furthermore, the word ‘moonstone’ is a gem variety of orthoclase or albeit that is white and translucent with bluish reflections (Collins Dictionary). Therefore, in relation to the goods in question the coinciding element will be weak or even non-distinctive for the English-speaking part of the territory; ‘MOON’ will merely indicate, that the goods are in the shape of a moon (such as jewellery, jewels, watch boxes, pearls and precious metals and imitations thereof), that they are especially made to be used on the moon or contain a disc, plate or aperture exhibiting the moon’s phases (such as time instruments and chronometric instruments) or that they are moonstones (such as gemstones).

However, for the other part of the public, namely the non-English-speaking part of the public, it has no meaning and is distinctive.

The Opposition Division will first examine the opposition in relation to the part of the public for which ‘MOON’ has no meaning and has a normal degree of distinctiveness.

The earlier marks are word marks; earlier trade mark 1) consists of the verbal element ‘MOONWATCH’ and earlier trade mark 2) consists of the verbal elements ‘DARK’, ‘SIDE’, ‘OF’, ‘THE’ and ‘MOON’. None of the elements have a meaning in the relevant territory and they have an average degree of distinctiveness in relation to the goods in question.

The contested sign is also a word mark consisting of the verbal elements ‘WALKING’, ‘ON’, ‘THE’ and ‘MOON’, which all will be perceived as fanciful in the relevant territory and therefore with an average degree of distinctiveness in relation the goods in question.

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.

Visually and aurally (irrespective of the different pronunciation rules in different parts of the relevant territory) the earlier trade mark 1) and the contested sign coincide in (the sound of) the letters ‘MOON’ which merely constitutes the fourth element of the contested sign and the first four letters of the earlier mark. They differ in the first three (including the longest) elements of the contested sign, ‘WALKING’, ‘ON’, ‘THE’,  and the final five letters ‘WATCH’ of the earlier mark. In that regard it is noted that the fact that the contested sign’s elements ‘WALKING’ and ‘THE’ contains the letters ‘W’, ‘A’, ‘T’ and ‘H’ that are present in the earlier mark does not result in any perceptible visual similarity between the signs, in view of their clearly different positions and adjacent letters. The signs furthermore differ in structure, as the earlier mark will be perceived as consisting of one element while the contested sign is made up by four individual elements; in general, the public does not tend to dissect signs but considers them as a whole and there is nothing in the mark that suggest that the relevant consumers would perceive the letters ‘MOON’ as an individual element in earlier trade mark 1), as is the case in the contested sign.

Visually and aurally (irrespective of the different pronunciation rules in different parts of the relevant territory), the earlier trade mark 2) and the contested sign coincide in the elements ‘THE MOON’ which merely make up the last two elements of the earlier mark’s five elements and the contested sign’s four elements. They differ in the first two elements (including the longest) of the contested sign, namely ‘WALKING’ and ‘ON’ and the three first elements of the earlier mark, namely ‘DARK, ‘SIDE’ and ‘OF’. In that regard it is noted that the fact that the contested sign’s elements ‘WALKING’ and ‘ON’ contains the letters ‘A’, ‘K’, ‘I’ and ‘O’ that are present in the earlier mark does not result in any perceptible visual similarity between the signs, in view of their clearly different positions and/or adjacent letters.

Therefore, and taking into account the importance of the beginning of the signs and the fact that the coinciding letters do not constitute an individual element in earlier trade mark 1), the earlier marks 1) and 2) and the contested sign are visually and aurally similar to a low degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

For the English-speaking part of the territory all the signs convey meaningful expressions; earlier trade mark 1) will, as a whole, convey the concept of a watch especially manufactured to function on the moon and earlier trade mark 2) will, as a whole, be understood as: the side of the moon that is not illuminated by the sun. In contrast the contested sign will, as a whole, convey the concept of moonwalking. Therefore, the signs are conceptually dissimilar, despite of the coinciding concepts conveyed by the element ‘MOON’.

In this respect, it is to be noted that when the mark conveys a meaningful expression, the meaning of the expression as a whole, as long as it is understood as such by the relevant public, and not that of the individual words, is the one that is relevant for the conceptual comparison.

In these cases the conceptual similarities between the signs in comparison are negligible.

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.

According to the opponent the earlier trade marks enjoy a high degree of distinctiveness as result of their long standing and intensive use and a high degree of recognition among the relevant public in the European Union in connection with part of the goods for which it is registered, namely timepieces and chronometric instruments, namely chronometers, chronographs (watches), clocks, watches, wristwatches, wall clocks, alarm clocks as well as parts and accessories for the aforesaid goods, namely hands (clock and watch making), anchors (clock and watch making), pendulums (clock and watch making), barrels (clock and watch making), watch cases, watch bands, watch faces, clockworks, movements for timepieces, watch springs, watch glasses. 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 the following evidence:

• Print-outs from the opponent’s webpage featuring the different trade marks in relation to watches.

• An article from the magazine Watch Time about ‘Moon Watch’, in relation to watches.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade marks acquired a high degree of distinctiveness through their use.

Firstly, webpages cannot be given a high probative value as webpages can be changed from one moment to another, and is therefore only a still picture of that exact moment. Secondly, the submission of one article does not demonstrate a longstanding use sufficient to acquire an enhanced distinctiveness. Contrary to what is argued by the opponent, the fact that the opponent’s watch is the only watch that has been worn by a human on the moon is not enough to obtain enhanced distinctiveness as the consumers’ recognition cannot be concluded based on this fact.

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

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29).

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 applicant’s goods are assumed identical to the opponent’s goods and the distinctiveness of the earlier mark is normal. The attention of the relevant consumers will be relatively high.

The trade marks 1) and 2) are visually and aurally similar to a low degree to the contested sign. Although the signs coincide in some elements, the Opposition Division finds that there are sufficient differences to outweigh the similarities between them. The fact that they merely have some elements in common is insufficient to conclude that there is a likelihood of confusion between the signs, despite the assumed identity between the relevant goods. The differences will consequently allow consumers to safely distinguish between the signs. The relative high degree of attention shown by the relevant consumers when purchasing the goods has been taken into account. The opposition Division has also taken into consideration that in relation to the comparison with earlier trade mark 1), the coinciding letters do not form an independent element in this earlier mark, and as regards the comparison with earlier trade mark 2) the coinciding elements are the two last elements of rather long signs, and as stated above, consumers tend to focus on the beginning of signs.  

In view of all the foregoing, there is no risk that the public might believe that the goods in question came from the same undertaking or from economically-linked undertakings.

The opponent refers to the principle of interdependence, which implies that a lesser degree of similarity between the goods and services may be offset by a greater degree of similarity between the signs and vice versa. The Opposition Division has taken this principle into account when assessing the likelihood of confusion; the fact that the designated goods are assumed identical cannot, in the present case, compensate for the differences identified between the signs.

It remains necessary to consider the opponent’s argument that five out of six of the earlier trade marks, are characterised by the presence of the same word component ‘MOON’ and therefore constitute a ‘family of marks’ or ‘marks in a series’. In its view, such a circumstance is liable to give rise to an objective likelihood of confusion insofar as the consumer, when confronted with the contested mark which contains the same word component as the earlier marks, will be led to believe that the goods identified by that mark may also come from the opponent.

In fact, the concept of the family of marks was exhaustively analysed by the General Court in its judgment of 23/02/2006, T-194/03, Bainbridge, EU:T:2006:65.

When the opposition to a European Union trade mark is based on several earlier marks and those marks display characteristics which give grounds for regarding them as forming part of a single ‘series’ or ‘family’ a likelihood of confusion may be created by the possibility of association between the contested trade mark and the earlier marks forming part of the series. However, the likelihood of association described above may be invoked only if two conditions are cumulatively satisfied.

Firstly, the proprietor of a series of earlier registrations must furnish proof of use of all the marks belonging to the series or, at the very least, of a number of marks capable of constituting a ‘series’.

In the present case, the opponent failed to prove that it uses a family of ‘MOON’ marks, and moreover that it uses such a family in the same fields as those covered by the contested trade mark. The evidence filed by the opponent, as seen above under section d) of this decision, is not sufficient to demonstrate use of any of the marks.

As regards the opponent’s argument that there is a likelihood of confusion between the signs as the opponent’s watch is the only watch that has actually been worn on the moon, the Opposition Division notes that this is irrelevant in regards to the assessment of likelihood of confusion under Article 8(1)(b), as this assessment conducted by the Office is based on a global assessment of the visual, aural and conceptual similarities between the marks, as well as the earlier mark’s distinctive character, the degree of attention paid by the consumers, and the similarity between the goods and services. There is no legal basis for assessing the likelihood of confusion based on the fact given by the opponent.

Furthermore, the fact that the opponent mentions that it has used the expression ‘WALK ON THE MOON’ in advertising, cannot be taken into account, as this has not been included in the opposition notice as a registered or non-registered right on which the opposition is based.

Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

This absence of a likelihood of confusion equally applies to the part of the public for which the element ‘MOON’ is weak or even non-distinctive, namely the English-speaking part of the territory. This is because, as a result of the weak or even non-distinctive character of that element, that part of the public will perceive the signs as being even less similar. Also, for this part of the public, the conceptual dissimilarity between the signs, as described above under section c) of this decision, takes the signs even further apart.  

The opponent has also based its opposition on the following earlier trade marks:

• International trade mark registration No 1 147 106 designating the European Union for the word mark SPEEDMASTER SKYWALKER covering goods in Class 14.

• International trade mark registration No 1 236 742 designating the European Union for the word mark SPEEDMASTER WHITE SIDE OF THE MOON covering goods in Class 14.

• International trade mark registration No 1 241 274 designating the European Union for the word mark SPEEDMASTER FROM THE MOON TO SEDNA covering goods in Class 14.

• International trade mark registration No 1 241 273 designating the European Union for the word mark SPEEDMASTER GREY SIDE OF THE MOON covering goods in Class 14.

The other earlier rights invoked by the opponent are less similar to the contested sign. International trade mark registration No 1 147 106 designating the European Union for the word mark SPEEDMASTER SKYWALKER is less similar to the contested sign as these signs do not contain any coinciding elements and contrary to what is argued by the opponent, even for the English-speaking part of the public, there is no conceptual similarity between this mark and the mark WALKING ON THE MOON; the term SKYWALKER does not convey the concept of moonwalking and vice versa. In relation to the remaining earlier rights, they contain additional words such as ‘SPEEDMASTER’ which are not present in the contested sign. Moreover, they cover the same scope of the goods. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those 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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Birgit FILTENBORG

Cecilie Leth BOCKHOFF

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.