OPPOSITION No B 2 690 884

 

Sephora S.A.S., 65 avenue Edouard Vaillant, 92100 Boulogne-Billancourt, France (opponent), represented by Cabinet Germain & Maureau, 31-33 rue de la Baume, 75008 Paris, France (professional representative)

 

a g a i n s t

 

Shri Shubham Limited, 909, Unit 9, 9/F, Block A, Hunghom Commercial Centre, 39 Ma Tau Wai Road, Hunghom, Kowloon, Special Administrative Region of Hong Kong, The People’s Republic of China (applicant), represented by Ingenias, Av. Diagonal, 421, 2º, 08008 Barcelona, Spain (professional representative).

 

On 05/05/2017, the Opposition Division takes the following

 

 

DECISION:

 

1.        Opposition No B 2 690 884 is upheld for all the contested goods.

 

2.        European Union trade mark application No 15 008 717 is rejected in its entirety.

 

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

 

 

REASONS:

 

The opponent filed an opposition against all the goods of European Union trade mark application No 15 008 717. The opposition is based on, inter alia, French trade mark registration No 154 232 601. 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 French trade mark registration No 154 232 601.

 

 

1. The goods

 

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

 

Class 14: Jewellery; precious stones; Horological and Chronometric instruments; Precious metals and their alloys; Works of art of precious metals; Jewel cases; Boxes of precious metal; Watch cases, watch straps, watch chains, watch springs or watch glasses; Key rings [trinket or fobs]; Statues or figurines (statuettes) of precious metal; Cases for watches; Medals.

 

Class 25: Clothing, footwear, headgear, shirts; clothing of leather with guards; Belts (clothing); Furs (clothing); Gloves [clothing]; Scarves; Neckties; Hosiery; Socks; Slippers; Beach shoes, skiing or sports shoes; Underwear.

 

The contested goods are the following:

 

Class 14: Gemstones, pearls and precious metals, and imitations thereof; Jewellery; Jewellery boxes and watch boxes; Time instruments; Ornaments, made of or coated with precious or semi-precious metals or stones, or imitations thereof; Jewels; Chronometric instruments; Articles of jewellery coated with precious metals; Articles of jewellery made of precious metal alloys; Articles of jewellery with ornamental stones; Imitation jewellery ornaments; Jewellery containing gold; Jewellery fashioned from non-precious metals; Jewellery fashioned of semi-precious stones; Jewellery fashioned of cultured pearls; Jewellery, including imitation jewellery and plastic jewellery; Jewellery, clocks and watches.

 

Class 25: Clothing; Footwear; Headgear.

 

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

 

The term ‘including’, used in the applicant’s list of goods, indicates that the contested imitation jewellery and plastic jewellery are only examples of items included in the category of jewellery and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

 

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

 

The contested jewellery (listed twice), precious metals, chronometric instruments are identically included in the opponent’s list of goods.

 

Moreover, the contested jewels; articles of jewellery coated with precious metals; articles of jewellery made of precious metal alloys; articles of jewellery with ornamental stones; imitation jewellery ornaments; jewellery containing gold; jewellery fashioned from non-precious metals; jewellery fashioned of semi-precious stones; jewellery fashioned of cultured pearls; jewellery, including imitation jewellery and plastic jewellery are included in the broader category of the opponent’s jewellery. Therefore, they are identical.

 

The contested gemstones are included in the broader category of the opponent’s precious stones. Therefore, they are identical.

 

The contested watch boxes and the opponent’s watch cases are synonyms and, consequently, identical. In addition, the contested jewellery boxes could be made of precious metals and the opponent’s boxes of precious metal could be jewellery boxes. Therefore, these two sets of goods overlap and are considered identical.

 

The contested clocks and watches are included in the broad category of horological and chronometric instruments covered by the earlier mark and are, consequently, identical.

 

The broad category of the contested time instruments, moreover, includes the opponent’s horological and chronometric instruments. As the Office cannot dissect ex officio the broad category of the contested time instruments, they are considered identical.

 

The contested ornaments made of or coated with precious or semi-precious metals or stones, or imitations thereof overlap with the broad categories of the opponent’s jewellery and works of art of precious metal; therefore, they are identical.

 

The contested pearls cannot be described as precious stones. However, they are highly similar to the opponent’s precious stones since both of them are used in the jewellery industry as components or semi-processed materials for making jewellery. They have the same purpose and target the same public. Furthermore, they are in competition.

 

It is also considered that, since the contested imitations of gemstones, pearls and precious metals, on the one hand, and the opponent’s precious stones; precious metal, on the other hand, are all used in the jewellery industry as components or semi-processed materials for making jewellery, have the same purpose, target the same public and are furthermore in competition, they are highly similar.

 

 

Contested goods in Class 25

 

Clothing; footwear; headgear are identically included 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 in Class 25 found to be identical are directed at the public at large and the degree of attention will be average (08/02/2007, T-88/05, EU:T:2007:45, NARS, § 53).

 

On the other hand, the goods found to be identical or highly similar in Class 14 are directed at the public at large as well as at professionals in the jewellery sector. The professionals will display a heightened degree of attentiveness (see 12/01/2006, T-147/03, QUANTUM, EU:T:2006:10, § 62) and the degree of attention of the public at large may vary from average to high, depending on the sophistication of the goods, the frequency of purchase and their price (see in that regard, 12/01/2006, T-147/03, QUANTUM, EU:T:2006:10, § 63 confirmed by 15/03/2017, C-171/06 P, QUANTUM, EU:C:2007:171; and 12/02/2015, T-76/13, QUARTODIMIGLIO QM, EU:T:2015:94, § 34).

 

 

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 mark is a figurative mark consisting of the verbal element ‘SEPHORA’, written in standard black upper case letters, on the right side of which a figurative device consisting of four short lines is depicted. The contested sign is also a figurative mark consisting of a single verbal element, namely ‘SELASFORA’, written in standard black title case letters.

 

Neither of the verbal elements included in the marks has any meaning for the relevant public; therefore, the verbal elements are distinctive. Both typefaces are quite banal and the earlier mark’s figurative device will be perceived as having a decorative purpose. Therefore, the verbal element is the most distinctive element of the marks. Neither of the marks has any element that could be considered clearly more dominant (visually eye-catching) than other elements.

 

Visually, the signs coincide in their initial and final letters, ‘SE*ORA’, which are placed in the same order in both marks. However, they differ in their middle letters, ‘PH’ in the earlier mark and ‘LASF’ in the contested sign, as well as in the figurative element of the earlier mark, which is merely decorative as stated above.

 

Although the contested sign contains two more letters than the earlier mark, the fact remains that they give the impression of being the same length. Bearing in mind that the marks’ verbal elements are not particularly stylised and they have the same beginnings and endings, the signs are considered visually similar to an average degree.

 

Aurally, the pronunciation of the signs coincides in the first syllable, /se/ (‘SE’), and, since in French the letter combination ‘PH’ produces the same sound as the letter ‘F’, they also coincide in the last syllables, /fɔ-ʁa/ (‘PHORA’/‘FORA’).

 

The pronunciation differs, however, in the syllable /las/ (‘LAS’) of the contested sign, which has no counterpart in the earlier mark.

 

Taking into account the identity between the first and two last syllables and the position of the differing syllable ‘LAS’, which is placed in the middle of the contested sign, the signs are aurally similar to an average 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.

 

As the signs have been found similar in at least one aspect of the comparison, the examination of the 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 but merely claimed that, since the earlier mark’s single word element, ‘SEPHORA’, does not have any meaning in relation to the goods in question, it has a higher than average degree of distinctiveness. However, it did not present any evidence to substantiate this claim.

 

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).

 

In the present case, the earlier mark has an average degree of distinctiveness.

 

The goods are identical and highly similar, the signs were found to be visually and aurally similar to an average degree and the conceptual comparison is not possible. Taking into account the fact that average consumers rarely have the chance to make a direct comparison between the different marks, but must trust in their imperfect recollection of them, the Opposition Division considers it likely that they may overlook the differing letters in the middle of the signs and, consequently, confuse the marks. This holds true even for that part of the public with a higher degree of attention.

 

Considering all the above, there is a likelihood of confusion on the part of the French public.

 

Therefore, the opposition is well founded on the basis of the opponent’s French trade mark registration No 154 232 601. It follows that the contested trade mark must be rejected for all the contested goods.

 

As earlier French trade mark registration No 154 232 601 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).

 

 

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

 

 

Carmen SÁNCHEZ PALOMARES

Marine DARTEYRE

Zuzanna STOJKOWICZ

 

 

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.