OPPOSITION No B 2 777 699

SMB (société par actions simplifiée), ZAC Valentin, Zone d’industrie, Rue des Maurapans, 25000 Besançon, France (opponent), represented by Ipside, 29, rue de Lisbonne, 75008 Paris, France (professional representative)

a g a i n s t

Fuzhou Baitai Internet Technology Co., Ltd., 206 (2F Linker No. 16 & 18 Zhiqian Road), 2F Linker, Building 3-6, Xincheng Jiashengyuan, Cangxia Street, Taijiang District, Fuzhou, Fujian, People’s Republic of China (applicant), represented by José Izquierdo Faces, Iparraguirre, 42 – 3º izda, 48011 Bilbao (Vizcaya), Spain (professional representative).

On 30/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 777 699 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 566 433, namely against all the goods in Class 14. The opposition is based on, inter alia, European Union trade mark registration No 3 545 662. 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 European Union trade mark registration No 3 545 662.

1. The goods

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

Class 14: Timepieces, chronometric instruments, alarm clocks, clocks, bracelets for watches, chronographs (watches), all these goods being not in precious metal.

The contested goods are the following:

Class 14: Jewelry boxes; jewelry findings; bracelets [jewellery, jewelry (am)]; trinkets [jewellery, jewelry (am)]; chains [jewellery, jewelry (am)]; necklaces [jewellery, jewelry (am)]; tie clips; jewelry; ornaments [jewellery, jewelry (am)]; pearls [jewellery, jewelry (am)]; rings [jewellery, jewelry (am)]; earrings; clasps for jewelry; jewelry rolls; key chains [trinkets or fobs]; wristwatches; clocks; alarm clocks; watch cases; watch straps.

Some of the contested goods are identical to goods on which the opposition is based (e.g. the contested wristwatches; clocks; alarm clocks; watch cases; watch straps and the opponent’s timepieces, chronometric instruments, alarm clocks, clocks, bracelets for watches, chronographs (watches); not in precious metal). 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 in Class 14 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. These goods in Class 14 are various kinds of jewellery, watches and related accessories, some of which could be categorised as luxury goods.

In this regard, 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.

Accordingly, the degree of attention is deemed to be relatively high.

3. The signs

GO
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).

For part of the relevant public, the verbal element constituting the earlier word mark, ‘GO’, has no meaning and is, therefore, distinctive. However, for the English-speaking part of the public it means, inter alia, ‘to move or proceed, esp to or from a point or in a certain direction’ (information extracted from Collins English Dictionary at https://www.collinsdictionary.com/dictionary/english/go). Nevertheless, it is not descriptive, allusive or otherwise weak for the relevant goods in Class 14, and therefore it is distinctive also for this part of the relevant public in the European Union.

The verbal element ‘GoGou’ in the contested figurative sign has no meaning for the relevant public and is, therefore, distinctive in relation to the relevant goods in Class 14. The verbal element is depicted in bold shaded letters with a fairly high degree of stylisation; the letters ‘G’ are upper case and the remaining letters are lower case. Part of the English-speaking public will associate the first letters, ‘Go’ in the contested sign with the English word ‘go’, which has a normal degree of distinctiveness in relation to the goods in question.

As regards the contested sign, 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). Therefore, since the contested sign does not have any additional figurative elements apart from the fanciful stylisation of the verbal element ‘GoGou’, the verbal element will attract the consumer’s primary attention.

In principle, 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. In these circumstances, the coinciding element ‘GO’, constituting the earlier trade mark and appearing at the beginning of the contested sign, will be noted by the consumers. It is clear that the significant difference in the lengths of the signs will play an important role, as explained below, in accordance with the general principles that govern the way in which consumers generally perceive trade marks. Generally, the length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.

Visually, the signs coincide in two letters, ‘GO’, constituting the entire earlier trade mark and the first two letters of five in the contested sign, ‘GoGou’. However, they differ in the three letters ‘*Gou’ of the contested sign. Furthermore, the signs are further differentiated by the stylisation of the contested sign.

Therefore, the signs are visually similar to a low degree.

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 ‘GO’, present identically in both signs. The pronunciation differs in the sound of the syllable ‛Gou’ of the contested mark, which, although it has a very similar sound to that of the element ‘GO’, nevertheless has no counterpart in the opposing mark.

Therefore, the signs are aurally similar to a low degree.

Conceptually, neither of the signs has a meaning for the non-English-speaking 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 regards this part of the consumers within the European Union.

For the remaining, English-speaking, part of the public, the contested sign as a whole is meaningless, even though some English-speaking consumers will perceive in it the word ‘GO’; the earlier mark will be understood as having the meaning, given above, of the word ‘GO’. However, owing to the presence of the fanciful part ‘Gou’ at the end of the contested sign, the element ‘GO’ that the signs have in common cannot lead to the conceptual similarity of the signs taken as a whole. Therefore, the signs are not conceptually similar.

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

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).

In the present case, the contested goods in Class 14 are assumed to be identical to the opponent’s goods in Class 14 covered by the earlier trade mark in question. The distinctiveness of the earlier trade mark is normal. The degree of attention of the general public is deemed to be relatively high due to the kind of goods in question.

The conflicting signs are visually and aurally similar to a low degree. Depending on the consumer’s perception of the signs (which differs between the non-English-speaking and English-speaking parts of the public), the signs either cannot be conceptually compared or are considered conceptually not similar. Although the signs coincide visually and aurally in the element ‘GO’, they are differentiated not only by the stylised font of the contested sign, but also by the additional syllable ‘Gou’ of the contested sign. The element ‘GO’, which constitutes the entire earlier trade mark, is included at the beginning of the contested sign; however, the resonant sound of the additional syllable ‘Gou’ in the contested sign produces a totally different rhythm from that of the earlier mark; this additional syllable also results in the signs having different lengths. As a result, the signs create different overall impressions. This is all the more true given the higher than average degree of attention of the consumers of the relevant goods. Therefore, a likelihood of confusion can be safely excluded.

Moreover, the English-speaking public will be able to distinguish between the marks on all the three levels; the signs differ not only visually and aurally, as explained above, but also conceptually, as the earlier trade mark conveys the concept of the English word ‘GO’ (while this concept attaches to only a part of the contested sign). As regards the contested sign, the vast majority of the English-speaking part of the public will not assign to it the meaning of the word ‘GO’ or any other meaning, as consumers do not tend to analyse trade marks in detail and dissect them.

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.

The opponent has also based its opposition on the following earlier trade mark (earlier right No 869 268, the figurative mark , registered for goods in Class 14, has not been substantiated):

• French trade mark No 3 293 825 (figurative mark: ), registered for goods in Class 14.

The other earlier right invoked by the opponent is less similar to the contested mark. This is because it contains an additional element, namely the stylised font, which is different from that of the contested trade mark. Moreover, it also covers goods in Class 14. The outcome cannot be different with respect to goods in Class 14 for which the opposition has already been rejected, as they were assumed to be identical to the opponent’s goods for which earlier European Union trade mark No 3 545 662 is registered; 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.

The Opposition Division

Gregor SCHNEIDER

Birgit FILTENBORG

Francesca CANGERI SERRANO

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.