OPPOSITION No B 2 616 582

 

Swatch AG (Swatch SA) (Swatch Ltd), Jakob-Stämpfli-Str. 94, 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

 

LG Electronics Inc., 128, Yeoui-daero, Yeongdeungpo-gu, Seoul 150-721, Republic of Korea (applicant), represented by Cohausz & Florack Patent- und Rechtsanwälte Partnerschaftsgesellschaft mbB, Bleichstr. 14, 40211 Düsseldorf, Germany (professional representative).

 

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

 

 

DECISION:

 

1.        Opposition No B 2 616 582 is partially upheld, namely for the following contested goods:

 

Class 9:        Application software for smart watches; operating system programs for smart watches; computer application software for smart watches; watchbands that communicate data to personal digital assistants, smart phones, tablet computers and personal computers through internet websites and other computer and electronic communication networks.

 

2.        European Union trade mark application No 14 500 144 is rejected for all the above goods. It may proceed for the remaining goods.

 

3.        Each party bears its own costs.

 

 

REASONS:

 

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 500 144. The opposition was initially directed against some of the goods in Class 9 and all the goods in Class 14. Following a limitation requested by the applicant and accepted by the Office, the opposition is directed against some (fewer than initially) of the goods in Class 9. The opposition is based on the following earlier rights:

 

1. European Union trade mark registration No 226 019 for the word mark ‘SWATCH’;
2. European Union trade mark registration No 226 316 for the figurative mark ;
3. International trade mark registration No 1 134 259 designating the European Union for the word mark ‘SWATCH’.

 

The opponent invoked Article 8(1)(b) EUTMR in relation to the three earlier rights and Article 8(5) EUTMR in relation to earlier rights No 1 and No 2.

 

 

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 same provision states that, in the absence of such proof, the opposition will be rejected.

 

The applicant requested that the opponent submit proof of use of European Union trade mark registrations No 226 019 and No 226 316 on which the opposition is based.

 

Moreover, the applicant has requested proof of use of international registration No 614 932, which has not been claimed as basis of these opposition proceedings. Therefore, this request cannot be taken into account. For the sake of clarity, the Opposition Division also notes that the remaining earlier mark in the present opposition proceedings, namely earlier trade mark No 1 134 259, is an international registration designating the European Union. Article 160 EUTMR provides that for the purposes of applying Article 42(2) EUTMR, the date of publication pursuant to Article 152(2) EUTMR will take the place of the date of registration for the purpose of establishing the date as from which the mark which is the subject of an international registration designating the European Union must be put into genuine use in the Union. The date of publication pursuant to Article 152(2) EUTMR for the earlier trade mark at issue is 10/08/2015. Therefore, international trade mark registration No 1 134 259 designating the European Union is not subject to proof of use.

 

The request was submitted in due time and is admissible as regards earlier European Union trade mark registrations No 226 019 and No 226 316 given that these earlier trade marks were registered more than five years prior to the publication of the contested application.

 

The contested application was published on 10/09/2015. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in the European Union from 10/09/2010 to 09/09/2015 inclusive.

 

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

 

European Union trade mark No 226 019

 

Class 14:        Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments.

 

European Union trade mark No 226 316

 

Class 14:        Precious metals and their alloys and goods in precious metals or coated therewith (excluding cutlery, forks and spoons); jewellery, precious stones, horological and chronometric instruments.

 

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 05/07/2016, in accordance with Rule 22(2) EUTMIR, the Office gave the opponent until 10/09/2016 to submit evidence of use of the earlier trade marks.

 

The opponent had already submitted the following documents, on 01/12/2015, in support of its opposition:

 

• Annex 1: copies of an opposition decision and an appeal decision by the Spanish Patent and Trade Mark Office, accompanied by translations into English, stating that the mark ‘G GWATCH’ cannot co-exist with the earlier mark ‘SWATCH’, taking into account their similarities and the well-known character of the earlier mark.

 

• Annex 2: copies of advertisements in various magazines, such as Elle, Air France Magazine, Glamour, Maxim, Hola, FHM, Marie Claire, Cosmopolitan, Gala, Madame Figaro and Joyce, dated between 2005 and 2009 and between 2012 and 2014, referring to Austria, Bulgaria, Cyprus, France, Germany, Hungary, Italy, the Netherlands, Spain and the United Kingdom (which can be inferred from the languages of the publications and the indications in some of the documents of the countries concerned). They display the opponent’s mark ‘SWATCH’ in connection with watches and jewellery.

 

• Annex 3: a copy of a report in German, with a translation into English, entitled Trends & Entwicklungen in der Modebranche (Trends & developments in the fashion industry) prepared by Der Spiegel, dated April 2007 and relating to the German market. According to this study, The Swatch Group was the company that carried out the most advertising for wristwatches and jewellery in 2006, and the mark ‘SWATCH’ was the second best-known trade mark for wristwatches in 2007, with 85% of the German consumers questioned being aware of the mark.

 

• Annex 4: a copy of a report prepared by Der Spiegel, containing references to 2001, about a survey regarding a number of brands of wristwatches, including the opponent’s brand . It states that the awareness among the German population of the opponent’s brand is 89% and that 36% of consumers would be willing to purchase goods sold under this brand.

 

• Annex 5: a printout from the website http://www.rankingthebrands.com showing the results of a survey on the ranking of companies, where The Swatch Group is ranked 58th out of 100 in the global brand ranking for 2015.

 

• Annex 6: a catalogue of ‘SWATCH’ goods, entitled Swatch-Clopedia 1983 – 2008 – The ultimate Swatch guide, international version 2008, containing information (in English, French, German, Italian, Portuguese and Spanish) about various watches and some items of jewellery bearing the mark ‘SWATCH’ and showing pictures and article codes relating to the goods.

 

• Annex 7: catalogues of ‘SWATCH’ watches, dated between 2004 and 2013, and ‘SWATCH’ jewellery, dated between 2005 and 2009, which mention that there are ‘SWATCH’ stores in France, Germany, Italy, Japan, Sweden, Switzerland, Spain, the United Kingdom and the United States of America.

 

• Annex 8: an undated list of trade mark registrations in various countries for goods in, inter alia, Classes 9 and 14 for the marks ‘SWATCH’,  and for marks featuring these elements.

 

• Annex 9: copies of online media articles from, for example, BBC News, Business Insider, CNBC, El Mundo, El Economista, the Financial Times and Welt Online, dated between 10/01/2012 and 01/09/2015, and published in English, French, German, Italian and Spanish. The articles contain information about watches and smart watches produced or about to be produced and marketed by the opponent. An article dated 12/03/2015 and published on BBC News makes references to the opponent as ‘the world’s bestselling watchmaker’. An article dated 13/03/2015 and published on http://www.cnet.com mentions that ‘Swatch is the world’s best-selling watchmaker with 18 per cent of the market share’. An article dated 10/01/2012 and published on the website of the Financial Times states that The Swatch Group had sales of USD 7.4 billion in 2011 and that ‘watches and jewellery, the group’s core division, saw sales rise by more than 14 per cent to 6.31 billion Swiss Francs’.

 

• Annex 10: printouts from the opponent’s website www.swatch.com, containing some references to 2015 and to watches bearing the mark ‘SWATCH’.

 

• Annex 11: printouts from the opponent’s website showing watches bearing the mark ‘SWATCH’ or relating to ‘SWATCH’ sponsorships of athletes. These printouts also refer to several events: the ‘Swatch Free4Style’ event held annually in Switzerland; the ‘Swatch Skiers Cup’ event, held for the first time in 2011 in Chile; and the ‘Swatch Girls Pro China’ surfing event held in 2011. One of the printouts refers to an art event, ‘the 54th International Art Exhibition – la Biennale di Venezia’, and mentions collaborations between the opponent and some artists.

 

• Annex 12: a printout from the opponent’s website www.swatchgroup.com, containing information on the company’s key financial figures for 2014.

 

• Annex 13: printouts from the opponent’s website www.swatch.com, showing maps with numerous locations of the opponent’s shops in the United Kingdom, France, Italy and Germany.

 

• Annex 14: two sets of invoices:

 

• A set of invoices dated between 2005 and 2009, issued by Swatch AG (the opponent) with an address in Switzerland. Of these invoices, 14 were sent to The Swatch Group (France) SA and billed to The Swatch Group (Europa-FR), both of which have addresses in France; 10 were sent to The Swatch Group (Deutschland) GmbH, with an address in Germany, and billed to The Swatch Group (Europa-DE), with an address in Portugal; and 10 were sent to The Swatch Group (España) SA, with an address in Spain, and billed to The Swatch Group (Europa-ES), with an address in Portugal. Each invoice shows the signs  and  at the top of the first page. The goods are referred to by various names and article codes. When read together with the information and article codes in the catalogue submitted as Annex 6, it can be inferred that the invoices relate to the distribution of watches, straps, rings, necklaces, bracelets and earrings. The amounts referred to in the invoices vary from several thousand to several hundred thousand euros.

 

• A set of invoices and credit notes, dated between 2012 and 2014 (one invoice per country for the end of each year), issued by The Swatch Group Europa SA, with an address in Switzerland, to The Swatch Group (UK) Limited, The Swatch Group (France) SAS, The Swatch Group (Deutschland) GmbH and The Swatch Group (España) S.A., with addresses in the United Kingdom, France, Germany and Spain, respectively. Some of the information in these documents has been blanked out, but sales figures for watches, accessories and jewellery under the mark ‘SWATCH’ are visible and refer to several hundred thousand euros or pounds sterling, and even several million euros in some cases.

 

The opponent did not submit additional documents to prove use during the period for submitting evidence of use. Therefore, the evidence to be taken into account consists of the documents listed above.

 

In its observations of 29/06/2016, the applicant argues that the opponent did not submit translations of some of the evidence and that therefore this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Rule 22(6) EUTMIR). Taking into account the nature of the documents which have not been translated and are considered relevant for the present proceedings, namely some of the advertisements published in various media, and their self-explanatory character, the Opposition Division considers that there is no need to request a translation.

 

Time of use

 

A relevant part of the evidence – in particular some of the product catalogues submitted as Annex 7, some of the articles and advertisements (Annexes 2, 9 and 11) and some of the invoices (i.e. the set of invoices in Annex 14 dated between 2012 and 2014) – is dated within the relevant period (i.e. from 10/09/2010 to 09/09/2015 inclusive). Therefore, the opponent has provided sufficient indications concerning the time of the use of the earlier marks.

 

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.

 

The documents filed, namely the invoices, articles, advertisements and catalogues, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

 

The main information as regards the extent of the opponent’s activities comes from the invoices, which demonstrate sales during three years within the relevant period (2012-2014). Although these invoices reflect use upon importation in the relevant territories between a group of companies, the Opposition Division is, nevertheless, of the opinion that the evidence submitted, in its entirety, gives sufficient indications to conclude that the use of the earlier marks upon the importation of goods to the United Kingdom, France, Germany and Spain from another state is indeed use in the context of a commercial activity with a view to economic advantage. These documents, in combination with the catalogues referring to 2011-2013 and the advertising materials and articles referring to 2011-2015, prove the frequency of use of the mark throughout the relevant period. The invoices refer to sales of several hundred thousand euros or pounds sterling, and reach several millions of euros in some cases. They show sales amounting to a substantial value and provide sufficient information concerning the steady commercial volume of use. It is clear from the evidence that the opponent distributed goods bearing the earlier marks in several different Member States in the relevant market with a view to establishing a market for the goods. The documents submitted contain relevant indications of the nature and scale of the opponent’s activities. Such use is therefore more than just a private matter.

 

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier marks.

 

Place of use

 

The invoices, catalogues and other printed matter show that the place of use is mainly the United Kingdom, France, Germany and Spain. This can be inferred from the addresses in the invoices and the languages of the advertisements in various magazines.

 

The invoices submitted demonstrate sales of products by The Swatch Group Europa SA, with an address in Switzerland, to companies with addresses in the United Kingdom, France, Germany and Spain. The information in these documents is supported by some of the other documents, namely the catalogues, advertising materials and articles, which target end customers in various countries throughout the European Union. Therefore, the evidence relates to the relevant territory, namely the European Union.

 

Nature of use

 

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

 

According to Article 15(1), second subparagraph, point (a) EUTMR, the following will 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, earlier European Union trade mark No 226 019 is registered as the word mark ‘SWATCH’ and earlier European Union trade mark No 226 316 is registered as the figurative mark . The advertising materials and catalogues show the sign  used in relation to various watches and jewellery. The earlier figurative mark has been used as registered. The use of a slightly stylised typescript for the word ‘SWATCH’ constitutes an acceptable means of bringing the word in question to the public’s attention and consequently does not affect the distinctiveness of the earlier word mark ‘SWATCH’.

 

In view of the above, the Opposition Division considers that the evidence does show use of the signs as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR.

 

Overall assessment of the factors

 

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 marks during the relevant period in the relevant territory.

 

However, the evidence filed by the opponent does not show genuine use of the trade marks for all the goods covered by these earlier marks.

 

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 will, 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 shows genuine use of the trade marks for jewellery in Class 14, which is included in the opponent’s list of goods. The evidence also proves use for watches, which can be considered to form an objective subcategory of the opponent’s horological and chronometric instruments in Class 14. Therefore, the Opposition Division considers that the evidence shows genuine use of the trade marks only for:

 

Class 14:        Watches and jewellery.

 

The evidence submitted does not demonstrate use of any of the remaining goods for which the earlier trade marks are registered, since they are not mentioned in the documents.

 

Therefore, as regards these earlier marks, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

 

 

REPUTATION – ARTICLE 8(5) EUTMR

 

For reasons of procedural economy, the Opposition Division will first examine the opposition under Article 8(5) EUTMR in relation to earlier European Union trade mark registration No 226 019.

 

After a limitation to the specification of goods requested by the applicant on 19/02/2016 and accepted by the Office, the contested goods are the following:

 

Class 9: Application software for smart phones and smart watches; operating system programs for smart phones and smart watches; computer application software for smart phones and smart watches; watchbands that communicate data to personal digital assistants, smart phones, tablet computers and personal computers through internet websites and other computer and electronic communication networks.

 

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

 

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

 

• The signs must be either identical or similar.

 

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

 

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

 

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

 

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

 

 

1. The signs

 

 

 

SWATCH	G Watch Theme Maker
Earlier trade mark	Contested sign

 

The relevant territory is the European Union.

 

The marks are word marks. The earlier mark is composed of the verbal element ‘SWATCH’, written in upper case letters. The contested sign is composed of four verbal elements, namely the upper case letter ‘G’, the words ‘Watch’, Theme’ and ‘Maker’, written in title case letters. In the case of word marks, the word as such is protected, not its written form. Therefore, it is irrelevant whether the word mark is depicted in lower or upper case letters, or in a combination thereof.

 

The earlier mark will be perceived as meaning ‘a sample of cloth’ by the English-speaking part of the public in the relevant territory. Another part of the public will not attribute a meaning to the earlier mark. The word constituting the earlier mark is of average distinctiveness in relation to the relevant goods.

 

In the contested sign, the public in the relevant territory will perceive the letter ‘G’ as a letter of the Latin alphabet (see, for example, 08/05/2012, T-101/11, G, EU:T:2012:223, § 56); this letter is of average distinctiveness in relation to the relevant goods.

 

The English-speaking part of the public will understand the word ‘Watch’ in the contested sign as, inter alia, a noun meaning ‘a small portable timepiece, usually worn strapped to the wrist (a wristwatch) or in a waistcoat pocket’ or a verb meaning ‘to look at or observe closely or attentively’. Considering that some of the relevant goods in Class 9 are watchbands that are worn around the wrist like a watch, as well as software for smart watches, it is considered that this word is non-distinctive or weak for these goods, as it indicates or alludes to the nature of the goods. Consequently, the impact of this element is limited when assessing the similarity between the signs for some of the goods. For another part of the public (e.g. the Italian- and Spanish-speaking parts of the public), this element will not be associated with any meaning and is of average distinctiveness.

 

The word ‘Theme’ in the contested sign will be understood by the English-speaking part of the public as, inter alia, ‘an idea or topic expanded in a discourse, discussion, etc.’, ‘(in literature, music, art, etc) a unifying idea, image, or motif, repeated or developed throughout a work’. The word ‘Maker’ in that sign will be understood by the same part of the public as ‘a person who makes (something); fabricator; constructor’ (all definitions extracted from Collins English Dictionary on 26/04/2017 at http://www.collinsdictionary.com/dictionary/english). Consequently, the word combination ‘Theme Maker’ in the contested sign may be perceived as a whole as a conceptual unit and may be perceived as weak in relation to part of the relevant contested goods, namely in relation to application software for smart phones and smart watches, as it may be perceived as an indication that the goods at issue are intended for creating or designing themes (such as icon packs and wallpapers) for these goods. The word ‘Theme’ will also be understood as having the abovementioned meaning by other parts of the public, because the equivalents of this word in some of the relevant languages are similar (e.g. ‘thème’ in French and ‘Thema’ in German). Another part of the public will not associate the words ‘Theme’ and ‘Maker’ of the contested sign with any meaning. For that part of the public, these words and the word combination ‘Theme Maker’ are of average distinctiveness.

 

Visually, the signs are similar to the extent that they coincide in the sequence of letters ‘WATCH’; these letters form the second verbal element of the contested sign and are placed in the same order in the earlier mark, ‘SWATCH’. As seen above, in the case of the contested sign the elements ‘WATCH’ and ‘THEME MAKER’ may be perceived by a part of the public as indications of characteristics of (part of) the goods. Consequently, in the context of the overall impressions conveyed by the marks, they may be paid less attention by those consumers who understand their meanings.

 

The marks differ in their first letters, ‘S’ in the earlier mark and ‘G’ in the contested sign, and in the final two words, ‘THEME MAKER’, of the contested sign. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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. Consequently, the different beginnings of the signs have to be taken into account when assessing the similarity between them.

 

They also differ in their structures, as the earlier mark is composed of a single verbal element whereas the contested sign is made up of four separate elements.

 

Therefore, the signs are visually similar to a low degree, regardless of the part of the public taken into account and of its perception of the meanings and the distinctiveness of the elements ‘WATCH’ and ‘THEME MAKER’ of the contested sign.

 

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 ‘WATCH’, present identically in both signs. The pronunciation differs in the sound of the signs’ first letters, ‘S’ in the earlier mark and ‘G’ in the contested sign, as well as in the sound of the additional words ‘THEME MAKER’ in the contested sign. The signs also differ significantly in their rhythms and intonations, as the earlier trade mark has one syllable, whereas the contested sign has five or six syllables, depending on the different pronunciation rules in different parts of the relevant territory.

 

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

 

Conceptually, as seen above, the English-speaking part of the public will perceive the meanings of all of the elements of the marks. Consequently, since the signs will be associated with different meanings, they are conceptually dissimilar for that part of the public.

 

Part of the public will perceive the letter ‘G’ of the contested sign as a letter of the Latin alphabet, but will not attribute meanings to the other elements of the marks. Another part of the public, for example the German and French-speaking part of the public, will perceive the letter ‘G’ of the contested sign as a letter of the Latin alphabet and will understand the word ‘THEME’ of the contested sign as having the meaning mentioned above. These parts of the public will not attribute a meaning to the earlier mark. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar for these parts of the public.

 

As the signs have been found similar to a certain degree, the examination will proceed.

 

 

2. Reputation of the earlier trade mark

 

According to the opponent, the earlier trade mark has a reputation in the European Union.

 

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

 

In the present case the contested trade mark was filed on 24/08/2015. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation and has proven genuine use, namely:

 

Class 14:        Watches and jewellery.

 

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

 

The evidence submitted in support of the opponent’s claim has already been listed above in relation to the examination of genuine use of the earlier marks (i.e. as the documents submitted on 01/12/2015, which were received within the time limit for substantiating the opposition) and consists of 14 exhibits.

 

On the basis of the documents listed above the Opposition Division concludes that the earlier trade mark ‘SWATCH’ has acquired a reputation in the European Union for all of the abovementioned goods.

 

Although the evidence does not refer to all the countries of the European Union, the European Court of Justice has clarified that, for an earlier European Union trade mark, reputation throughout the territory of a single Member State may suffice (06/10/2009, C-301/07, PAGO, EU:C:2009:611, § 30). Therefore, the Opposition Division acknowledges that having proven reputation in at least France, Germany and Spain is sufficient for a conclusion that the earlier trade mark has a reputation in the European Union.

 

The documents demonstrate that the earlier mark ‘SWATCH’ has been subject to long-standing and intensive use in the European Union, in particular in France, Germany and Spain, in relation to watches and jewellery, and that it is generally known in the relevant market.

 

The advertisements published in various magazines (e.g. Elle, Glamour, Maxim, FHM and Marie Claire) in 2005-2009 and 2012-2014, and the documents referring to the sponsorship of the opponent’s mark of various athletes give some indirect information on the opponent’s investments and its promotional, communication and marketing strategies. The opponent’s intensive and widespread sales and promotional activities – mostly in France, Germany and Spain but also in various other countries in the European Union – are considered strong indications that the mark has earned recognition among the relevant public in relation to watches and jewellery, and that the opponent has undertaken steps to build up a brand image and enhance trade mark awareness among the public. The effects of these actions in Germany are reported in the 2007 study entitled Trends & Entwicklungen in der Modebranche (Trends & developments in the fashion industry), which shows that the opponent’s company was the company that carried out the most advertising in Germany for wristwatches and jewellery in 2006, and that the mark ‘SWATCH’ was the second best-known trade mark for wristwatches in 2007 in that territory. Although a certain amount of time elapsed between the conducting of the most recent study provided by the opponent and the relevant point in time for proving reputation, account is taken of the relevant market sector and the fact that the other documents submitted show that the opponent continued to use and advertise its mark extensively in subsequent years and, consequently, remained active on the market.

 

Consequently, the evidence submitted suggests that the trade mark ‘SWATCH’ has a consolidated position in the market and demonstrates that the opponent has made intensive and long-standing use of its mark in at least France, Germany and Spain, and that the mark ‘SWATCH’ is widely known by the public in the relevant territory for watches and jewellery.

 

Under these circumstances, the Opposition Division finds that, taken as a whole, the evidence indicates that earlier European Union trade mark registration No 226 019 ‘SWATCH’ has been subject to long-standing and intensive use and is generally known in the relevant market. The documents submitted show that the mark enjoys a high degree of recognition and reputation among the relevant public for watches and jewellery in Class 14.

 

 

3. The ‘link’ between the signs

 

As seen above, the earlier mark is reputed and the signs are similar to some extent. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

 

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 42):

 

∙        the degree of similarity between the signs;

 

∙        the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 

∙        the strength of the earlier mark’s reputation;

 

∙        the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 

∙        the existence of likelihood of confusion on the part of the public.

 

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

 

As regards the degree of similarity between the signs required under Article 8(5) EUTMR, the Court has held that it differs from that required under Article 8(1)(b) EUTMR. Whereas the implementation of the protection provided for under Article 8(1)(b) EUTMR is conditional upon a finding of a degree of similarity between the marks at issue such that there exists a likelihood of confusion between them on the part of the relevant section of the public, the existence of such a likelihood is not necessary for the implementation of the protection conferred by Article 8(5) EUTMR. Accordingly, the types of injury referred to in Article 8(5) EUTMR may result from a lesser degree of similarity between the marks in question, provided that it is sufficient for the relevant section of the public to make a connection between those marks, that is to say, to establish a link between them (23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 27, 29 and 31; 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 57, 58 and 66).

 

In the present case, the signs are similar insofar as they have five letters in common, namely the letters ‘WATCH’. The differences in the structures of the marks and in the additional words ‘THEME MAKER’ of the contested sign do not alter this finding. Moreover, for part of the public, the coinciding letters do not constitute a meaningful element or part of a meaningful element in either of the signs and, consequently, none of the elements of the marks has a higher degree of distinctive character than the others. Furthermore, the earlier mark is inherently distinctive for the goods concerned and, moreover, enjoys a high degree of recognition and reputation for the abovementioned goods.

 

It should, furthermore, be noted that the establishment of such a link, while triggered by similarity between the signs, requires that the relevant sections of the public for each of the goods covered by the trade marks in dispute are the same or overlap to some extent.

 

The goods for which the earlier mark has a reputation are the following:

 

Class 14:        Watches and jewellery.

 

After a limitation to the specification of the list of goods made by the applicant on 19/02/2016 and accepted by the Office, the contested goods are the following:

 

Class 9: Application software for smart phones and smart watches; operating system programs for smart phones and smart watches; computer application software for smart phones and smart watches; watchbands that communicate data to personal digital assistants, smart phones, tablet computers and personal computers through internet websites and other computer and electronic communication networks.

 

There is a connection between the opponent’s watches in Class 14, for which the earlier mark has a reputation, and the contested application software for smart watches; operating system programs for smart watches; computer application software for smart watches; watchbands that communicate data to personal digital assistants, smart phones, tablet computers and personal computers through internet websites and other computer and electronic communication networks in Class 9. These goods are closely related, as the contested goods are either digital electronic devices that are worn around the wrist like a watch, or software for such devices that is usually purchased by the owners of such devices to be used together with them. These goods can be produced and offered by the same companies and their relevant public may be the same. Therefore, taking into account all the relevant factors, which include the degree of similarity between the signs, the connection between the goods and the strength of the earlier mark’s reputation, it is likely that the contested sign will bring the earlier mark to the mind of the relevant public in relation to the abovementioned goods.

 

However, this is not the case for the remaining contested goods in Class 9, namely application software for smart phones; operating system programs for smart phones; computer application software for smart phones. Although it is possible that the same consumers could encounter both marks, this circumstance does not mean that a link would necessarily be established in the consumer’s mind, since these goods, which are generally software for mobile smart phones, are not sufficiently related to the opponent’s goods. For the purposes of assessing whether or not a link will be formed between the marks at issue, it is necessary to take into account the similarity between the signs and the strength of the earlier mark’s reputation. These contested goods in Class 9 and the opponent’s goods for which its mark has a reputation, namely watches and jewellery in Class 14, are of different natures and belong to different market sectors. Consequently, taking into account the abovementioned relevant factors, it cannot be concluded that the signs are sufficiently similar that the contested sign used in relation to the abovementioned goods in Class 9 would bring the earlier mark to the mind of the relevant public.

 

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that, when encountering the contested mark in relation to application software for smart watches; operating system programs for smart watches; computer application software for smart watches; watchbands that communicate data to personal digital assistants, smart phones, tablet computers and personal computers through internet websites and other computer and electronic communication networks in Class 9, the relevant consumers will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs. However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T-301/09, Citigate, EU:T:2012:473, § 96).

 

On the other hand, no such link exists in the mind of the relevant consumer when encountering the contested sign in relation to the remaining contested goods, namely application software for smart phones; operating system programs for smart phones; computer application software for smart phones in Class 9. Therefore, given that the relevant public is unlikely to make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them, in relation to these contested goods, such a link being a precondition for the application of Article 8(5) EUTMR (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 30-31), it is considered that the use of the contested trade mark will not take advantage of or be detrimental to the distinctive character or repute of the earlier trade mark as required by Article 8(5) EUTMR. Indeed, as one of the necessary requirements is not met, the opposition is rejected as not well founded insofar as it is based on Article 8(5) EUTMR and earlier European Union trade mark registration No 226 019 and directed against application software for smart phones; operating system programs for smart phones; computer application software for smart phones in Class 9.

 

 

4. Risk of injury

 

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

 

∙        it takes unfair advantage of the distinctive character or the repute of the earlier mark;

 

∙        it is detrimental to the repute of the earlier mark;

 

∙        it is detrimental to the distinctive character of the earlier mark.

 

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 53).

 

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

 

In the present case, the opponent argues that the trade mark ‘SWATCH’ has acquired a high degree of recognition and an excellent reputation among consumers, in the sense that it reflects a positive image, which influences the choice of the consumers. According to the opponent, the distinctiveness of the earlier mark will be detrimentally affected by the use of the contested mark, since it will cease to be associated with a single source of origin. It argues that the contested sign is likely to devalue the image and prestige that the trade mark ‘SWATCH’ has acquired among the public. Furthermore, it considers that the contested mark is likely to benefit from the attractiveness of the earlier mark and will free-ride on the investment of the opponent in promoting it. The opponent also argues that it would be easy to create an association between the earlier mark and the contested sign due to the strong distinctive character and reputation of the trade mark ‘SWATCH’. Consequently, it considers that taking unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events.

 

In other words, the opponent claims that use of the contested trade mark would take unfair advantage of the distinctive character or the repute of the earlier trade mark and be detrimental to the distinctive character or repute of the earlier trade mark.

 

Before examining the opponent’s claims, it is appropriate to recall that the opposition is directed against the following goods, for which a link has been established:

 

Class 9:        Application software for smart watches; operating system programs for smart watches; computer application software for smart watches; watchbands that communicate data to personal digital assistants, smart phones, tablet computers and personal computers through internet websites and other computer and electronic communication networks.

 

As seen above, the earlier trade mark was found to have a reputation for the following goods:

 

Class 14:        Watches and jewellery.

 

Unfair advantage (free-riding)

 

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free-riding on the coat-tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 48, and 22/03/2007, T-215/03, Vips, EU:T:2007:93, § 40).

 

According to the opponent, the contested mark is likely to benefit from the attractiveness of the earlier mark, thus misappropriating its attractive powers and advertising value. It considers that the applicant will free-ride on the investment of the opponent in promoting its mark. It argues that, due to the very strong distinctive character of the trade mark ‘SWATCH’, it is tempting for the applicant to try to benefit from its value and create an association between the marks. It states that the earlier mark ‘SWATCH’ has acquired not only a high degree of recognition amongst consumers, but also an excellent reputation, in the sense that it reflects an image of excellence, reliability and quality, which positively influences the choice of consumers. Consequently, it considers that the contested mark will gain an unfair advantage as a consequence of an association between the marks.

 

According to the Court of Justice of the European Union

 

… as regards injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, insofar as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, the existence of such injury must be assessed by reference to the average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect.

 

(27/11/2008, C-252/07, Intel, EU:C:2008:655, § 36.)

 

As seen above, there is a link between the signs, since the signs are similar to a certain degree and there is a clear relationship between watches in Class 14, for which the earlier mark is reputed, and the contested application software for smart watches; operating system programs for smart watches; computer application software for smart watches; watchbands that communicate data to personal digital assistants, smart phones, tablet computers and personal computers through internet websites and other computer and electronic communication networks in Class 9.

 

Considering the similarity between the signs and the relationship between the goods at issue, there is a high probability that the use of the mark applied for, for the goods mentioned above, may lead to free-riding, that is to say, it would take unfair advantage of the established reputation of the earlier trade mark and the investments undertaken by the opponent to achieve that reputation. For example, the use of the trade mark applied for could be more attractive for consumers, due to the reputation of the earlier mark and, therefore, could facilitate the marketing of the abovementioned contested goods, or the applicant might unfairly benefit from the reputation of the earlier mark. It seems inevitable that the image of the earlier mark and its reputation for quality watches, as demonstrated by the evidence submitted, will be transferred to the aforementioned contested goods if they are marketed under the contested sign. In this way, the contested sign would receive an unfair ‘boost’ as a result of its being linked with the opponent’s mark in the minds of consumers.

 

On the basis of the above, the Opposition Division concludes that the contested trade mark is likely to take unfair advantage of the distinctive character or the repute of the earlier trade mark in relation to the following goods:

 

Class 9:        Application software for smart watches; operating system programs for smart watches; computer application software for smart watches; watchbands that communicate data to personal digital assistants, smart phones, tablet computers and personal computers through internet websites and other computer and electronic communication networks.

 

Other types of injury

 

The opponent also argues that use of the contested trade mark would be detrimental to the distinctive character and repute of the earlier trade mark.

 

As seen above, the existence of a risk of injury is an essential condition for Article 8(5) EUTMR to apply. The risk of injury may be of three different types. For an opposition to be well founded in this respect it is sufficient if only one of these types is found to exist. In the present case, as seen above, the Opposition Division has already concluded that the contested trade mark would take unfair advantage of the distinctive character or repute of the earlier trade mark in relation to some of the contested goods in Class 9, for which there is a link between the marks. It follows that there is no need to examine whether other types of injury also apply for these goods.

 

 

5. Conclusion

 

Considering all the above, the opposition is well founded under Article 8(5) EUTMR insofar as it is directed against the following goods:

 

Class 9:        Application software for smart watches; operating system programs for smart watches; computer application software for smart watches; watchbands that communicate data to personal digital assistants, smart phones, tablet computers and personal computers through internet websites and other computer and electronic communication networks.

 

As seen above in section c), the relevant consumers will not establish a link between the marks in relation to the remaining contested goods in Class 9, namely application software for smart phones; operating system programs for smart phones; computer application software for smart phones. Therefore, the opposition under Article 8(5) EUTMR based on earlier European Union trade mark registration No 226 019 is not successful insofar as the remaining goods in Class 9 are concerned.

 

The opponent has also based its opposition under Article 8(5) EUTMR on earlier European Union trade mark No 226 316 for the figurative mark . This mark is less similar to the contested sign than the mark that has already been compared above, because there is additional stylisation of the verbal element not contained in the contested mark, and the opponent has proven use and reputation of the same scope of goods in Class 14. Therefore, the outcome cannot be different with respect to the remaining goods for which the opposition has already been rejected under Article 8(5) EUTMR.

 

Given that the opposition is only partially successful under Article 8(5) EUTMR, it is necessary to examine the remaining grounds and earlier rights on which the opposition is based insofar as it is directed against the goods in Class 9 for which the opposition is not successful under Article 8(5) EUTMR.

 

Consequently, the examination continues in relation to the remaining contested goods on the grounds of 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 Division finds it appropriate to first examine the opposition in relation to the opponent’s international trade mark registration No 1 134 259 designating the European Union. This earlier trade mark is not subject to the use obligation.

 

 

1. The goods

 

The goods of earlier international trade mark No 1 134 259 on which the opposition is based are the following:

 

Class 9:        Apparatus for recording, transmission and reproduction of sound or images; magnetic recording media, sound recording disks; compact disks, DVDs and other digital recording media; apparatus enabling the playing of compressed sound files (mp3); calculating machines and data processing equipment, software; games for mobile telephones, for computers and for digital personal stereos; electronic game software for mobile telephones, for computers and for digital personal stereos; computers, portable computers, digital personal stereos, mobile telephones and new-generation mobile telephones incorporating greater functionality (smartphones); apparatus for recording, transmission, reproduction of sound or images, particularly mobile telephones and new-generation mobile telephones incorporating greater functionality (smartphones); optical apparatus and instruments, particularly spectacles, sunglasses, magnifying glasses; batteries and cells for horological and chronometric instruments.

 

The remaining contested goods are the following:

 

Class 9:        Application software for smart phones; operating system programs for smart phones; computer application software for smart phones.

 

The contested application software for smart phones; operating system programs for smart phones; computer application software for smart phones are included in the broad category of the opponent’s software. Therefore, they are identical.

 

 

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 are directed at the public at large and at business customers with specific professional knowledge or expertise in the IT field. The relevant public’s degree of attention is average.

 

 

3. The signs

 

Earlier international trade mark registration No 1 134 259 designating the European Union for the word mark ‘SWATCH’ is identical to earlier European Union trade mark registration No 226 019, which has already been compared with the contested sign under the grounds of Article 8(5) EUTMR. Reference is made to those findings, which are equally valid for Article 8(1)(b) EUTMR when considering the earlier international trade mark for the relevant goods in Class 9. The word ‘SWATCH’, constituting the earlier mark, is of average distinctiveness in relation to the relevant goods in Class 9. The signs are visually and aurally similar to a low degree and they are not conceptually similar for any part of the public.

 

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.

 

Although the opponent does not invoke Article 8(5) EUTMR for earlier international trade mark registration No 1 134 259, it nevertheless refers to the enhanced distinctiveness of the ‘SWATCH’ trade marks in general. Therefore, according to the opponent the earlier trade mark enjoys a high degree of distinctiveness as a result of its long-standing and intensive use and reputation among the relevant public in the European Union in connection with the goods for which it is registered. 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 evidence submitted by the opponent to substantiate its claim has already been analysed above under Article 8(5) EUTMR in relation to the claim for reputation of earlier European Union trade mark No 226 019.

 

As seen above, enhanced distinctiveness and reputation have been proven for watches and jewellery in Class 14. The evidence submitted does not refer to any of the goods in Class 9 covered by earlier international trade mark registration No 1 134 259 designating the European Union. Consequently, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use.

 

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

 

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 goods are identical.

 

The signs are visually and aurally similar to a low degree on account of the sequence of letters, ‘WATCH’, that they have in common. However, the signs have different structures, as the earlier mark consists of a single element, ‘SWATCH’, whereas the contested sign consists of four separate elements, ‘G’, ‘WATCH’, ‘THEME’ and ‘MAKER’. The aural similarity is also limited due to the marks’ differing lengths and different numbers of syllables. Therefore, the signs differ noticeably in their overall rhythms and aural structures.

 

Furthermore, for the English-speaking part of the public, the signs have different conceptual meanings. The differences between the signs will be immediately perceived by this part of the public and are sufficient to offset the similarities between them. For the non-English-speaking part of the public, which will perceive the earlier mark as a fanciful word, the different letters at the beginnings of the signs (‘S’ versus ‘G’) and their different lengths and structures (one element versus four elements) will have a greater impact on the assessment of likelihood of confusion than the minor commonalities. In any case, the signs are not conceptually similar for that part of the public either.

 

Considering all of the above, in the overall impressions conveyed by the signs, the differences between the marks are of such a nature that the signs can be distinguished between effectively, even for identical goods.

 

The opponent refers to previous decisions of the Office and previous national decisions to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198). Furthermore, decisions of national courts and national offices regarding conflicts between identical or similar trade marks on the national level do not have a binding effect on the Office since the European Union trade mark regime is an autonomous system which applies independently of any national system (13/09/2010, T-292/08, Often, EU:T:2010:399). Moreover, the signs considered in the current opposition and those involved in these previous decisions differ. Each case must be judged on its own merits, having regard to all the relevant factors.

 

The opponent has also based its opposition under Article 8(1)(b) EUTMR on the following earlier trade marks:

 

• European Union trade mark registration No 226 019 for the word mark ‘SWATCH’;

 

• European Union trade mark registration No 226 316 for the figurative mark .

 

As seen above, the opponent has proven use of the abovementioned earlier marks for the following goods:

 

Class 14:        Watches and jewellery.

 

These earlier rights are not more similar to the contested sign than the earlier mark already compared above (in relation to which a likelihood of confusion has been excluded for identical goods), since one of these earlier marks is the same as the mark already compared and the other is simply a slightly stylised version of the mark already compared. In any case, the goods on which the opposition is based as regards these earlier marks, namely watches and jewellery in Class 14, are dissimilar to the remaining contested goods in Class 9. They have different natures, purposes and methods of use. Moreover, they are not in competition with each other and they do not usually have the same commercial origin. Therefore, they are dissimilar. Consequently, the outcome cannot be different with respect to goods for which the opposition has already been rejected, given that similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR; the opposition based on this article and directed at these goods cannot be successful.

 

This finding would still be valid even if earlier European Union trade marks No 226 019 and No 226 316 were considered to enjoy a high degree of distinctiveness, as claimed by the opponent. Given that the dissimilarity of the goods cannot be overcome by the highly distinctive character of the earlier trade marks the evidence submitted by the opponent in this respect does not alter the outcome reached above.

 

 

COSTS

 

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

 

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

 

 

 

 

The Opposition Division

 

 

Frédérique SULPICE

Boyana NAYDENOVA

Catherine MEDINA

 

 

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.