OPPOSITION No B 2 526 674
Thierry Mugler S.A.S., 49, avenue de l'Opéra, 75002 Paris, France (opponent), represented by T Mark Conseils, 9 avenue Percier, 75008 Paris, France (professional representative)
a g a i n s t
MUKLER 1920, C/ARDEMANS 81, 28028 Madrid, Spain (applicant), represented by Javier Ungría López, Avda. Ramón y Cajal, 78, 28043 Madrid, Spain (professional representative).
On 24/08/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 526 674 is upheld for all the contested goods.
2. European Union trade mark application No 13 756 465 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 13 756 465. The opposition is based on, inter alia, international trade mark registration No 1 086 906 designating the European Union. The opponent invoked Article 8(1)(b) and 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 International trade mark registration No 1 086 906 designating the European Union.
- The goods
The goods on which the opposition is based are, inter alia, the following:
Class 9: Apparatus and instruments for recording, reproducing and/or transmitting sounds and/or virtual information or recordings; sound and/or visual recordings; interactive sound and/or visual recordings; audio and/or visual recording media; publications (downloadable) provided online via a computer database, the Internet or any other communications network, including via wireless means, cable or satellite; compact disks; DVDs; digital music (downloadable) provided via MP3 web sites on the Internet; telephone ringtones; glasses (optics); optical goods; cases for glasses.
Class 14: Jewelry; jewelry items, precious stones; timepieces and chronometric instruments; precious metals and their alloys; jewelry cases; boxes of precious metal; novelty key rings, cases, bracelets, chains; cases or presentation cases for timepieces.
Class 25: Men's and women's clothing, footwear, headgear.
The contested goods are the following:
Class 9: Eyewear.
Class 14: Watches.
Class 25: Clothing.
Contested goods in Class 9
The contested eyewear is a broad category which the Opposition Division cannot dissect ex officio. As a result, it includes and are, therefore, identical to the opponent’s glasses (optics).
Contested goods in Class 14
The contested watches are contained in the opponent’s broad category of timepieces. These goods are, therefore, identical.
Contested goods in Class 25
The contested clothing is a broad category that encompasses the opponent’s men's and women's clothing. These goods are, therefore, identical.
- 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.
The degree of attention may vary from average (for most of the goods) to higher than average (for some, more expensive models of the goods in Class 14).
- The signs
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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 earlier mark is a figurative mark composed of the slightly stylized letter sequence ‘MUGLER’ with no meaning in the relevant territory. Therefore, it is distinctive in relation to the goods concerned.
The contested sign consists of the word element ‘MUKLER’ with the initial ‘M’ slightly stylized. It equally lacks any meaning and is, thus, also distinctive. Although the applicant argues that the stylization of the initial ‘M’ is “extremely original”, it merely consists of a line connecting the two parts of the said letter. In fact, it is hardly noticeable from a distance and in any event consumers would still see and read the said element as a letter ‘M’.
Visually, both signs are composed of six letters and coincide in five of them, in the same position. They differ in their third letters ‘G’ / ‘K’ and the slight stylization thereof. These, minor, differences are unable to counteract the impact produced by the coinciding letter sequence and the consequent, very similar visual impression that the signs make. Overall, 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 letters M-U-[ ]-LER. The consequent, highly similar pronunciation is only influenced to a limited extent by the signs’ differing third letter, in particular as it is likely to be blurred or even lost in speech, given the somewhat resembling sound of the letters ‘G’ vs ‘K’. Overall, the signs are aurally highly similar.
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.
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 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
The signs are highly similar visually and aurally and they lack any concept which could help the public set the signs apart. The goods are identical. The overall impact of these factors cannot be counteracted by the slight stylization of the signs including the contested sign’s initial letter which, contrary to the applicant’s claim, the consumers would see as mere decoration in any event.
Considering all the above, there is a likelihood of confusion on the part of the public, even in relation to the more expensive goods where consumers may exercise higher than average attention at the time of purchasing.
Therefore, the opposition is well founded on the basis of the opponent’s International trade mark registration No 1 086 906. It follows that the contested trade mark must be rejected for all the contested goods.
As the earlier international trade mark registration 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 right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268). It is also it is unnecessary to examine the evidence of use filed by the opponent in relation to this mark.
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
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Marianna KONDÁS
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Ferenc GAZDA |
Ioana MOISESCU
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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.