OPPOSITION No B 2 724 360

Rolex, S.A., 3, 5, 7, rue François-Dussaud, 1211 Genève 26, Switzerland (opponent), represented by Garrigues IP, S.L.P., C/Hermosilla 3, 28001 Madrid, Spain (professional representative)

a g a i n s t

Daniel Egstedt, Centro Comercial Diana II núm. 27, urb. Nueva Atalaya, 29680 Estepona, Spain (applicant).

On 26/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 724 360 is rejected in its entirety.

2.        The opponent bears the costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 232 663. The opposition is based on European Union trade mark registrations No 1 456 201 and No 1 455 757. The opponent invoked Article 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

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

(1) EUTM No 1 456 201 (2) EUTM No 1 455 757
Earlier trade marks	Contested sign

The relevant territory is the European Union.

Visually, the signs are similar to the extent that they coincide in the figurative device of a crown. However, they differ in the colour of the figurative device, as well as in the small dots depicted in the bottom part of the crown in the contested mark. The signs also differ in the additional words ‘ROLEX’ of earlier mark (2) and ‘CORONA DENTAL LABORATORIO DENTAL’ of the contested mark.

Therefore the signs are visually similar to a low degree.

Aurally, earlier sign (2) is pronounced as ‘RO-LEX’ and the contested sign as ‘CO-RO-NA-DEN-TAL-LA-BO-RA-TO-RIO-DEN-TAL’. As the signs do not coincide aurally in any element, it is concluded that the signs are not aurally similar.

As earlier sign (1) is purely figurative, it is not possible to compare it aurally.

Conceptually, the public in the relevant territory will perceive the figurative element of the signs as ‘a circular ornament, usually made of gold and jewels, which a king or queen wears on their head at official ceremonies’ (information extracted on 14/07/2017 from Collins Dictionary at https://www.collinsdictionary.com/dictionary/english/crown). The element ‘CORONA’ of the contested mark will be associated with the same concept by the Spanish-speaking part of the public, as this word is the equivalent of ‘crown’ in English. The element ‘DENTAL’, presented twice in the contested mark, is used ‘to describe things that relate to teeth or to the care and treatment of teeth’ (information extracted on 14/07/2017 from Collins Dictionary at https://www.collinsdictionary.com/dictionary/english/dental). The element ‘LABORATORIO’ of the contested mark will be perceived by the Spanish- or Italian-speaking public as ‘a building or a room where scientific experiments, analyses and research are carried out’ (information extracted on 14/07/2017 from Diccionario de Real Academia Espanola at http://dle.rae.es/?id=MjESnb2). This element will be associated with the same concept by other parts of the relevant public, for example the English-, French- or Romanian-speaking parts, because the equivalents in their languages are similar, namely ‘laboratory’, ‘laboratoire’ or ‘laborator’. The element ‘ROLEX’ of earlier mark (2) is meaningless. As all the signs will be associated with the same concept of a crown, the signs are conceptually similar.

Taking into account the abovementioned visual and conceptual coincidences, the signs under comparison are similar to a certain degree.

2. Reputation of the earlier trade marks

According to the opponent, earlier European Union trade mark registrations No 1 456 201 and No 1 455 757 have 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 17/03/2016. Therefore, the opponent was required to prove that the trade marks 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 and services for which the opponent has claimed reputation, namely:

(1) EUTM No 1 456 201

Class 9: Electronic and electric apparatus, instruments, devices and equipment, components and accessories for the detection, measure and control of physical phenomena and physical values and for the storage, display and processing of information; electric and electronic components, electric frequency switchboard, frequency dividers, resonators and integrated circuits; electromechanic transductors; time recorder apparatus and their components; time switches except watch time switches, switches for time switches; measurement and control apparatus and instruments for scuba-diving; measurement and control apparatus and instruments (supervision), all including a clock mechanism or a kepper-time; control apparatus for the working and vibration and shock resistance of clocks, watches and their mechanisms; control apparatus for waterproofing of clock and watch cases; optic-electronic displays; magnifiers watch maker and repairers; calculators and wrist calculators; stop watches; electric batteries; barometers and their parts.

Class 14: Agates, alarm clocks, alloys of precious metal, amulets (jewellery), anchors (clock and watch-making), ashtrays of precious metal for smokers, atomic clocks, badges of precious metal, barrels (clock and watch-making), baskets of precious metal for household purposes, boxes of precious metal, boxes of precious metal for needles, boxes of precious metal for sweetmeats, bracelets (jewellery), brooches (jewellery), buckles of precious metal, busts of precious metal, cabarets (trays) of precious metal, candelabra (candlesticks) of precious metal, candle extinguishers of precious metal, candle rings of precious metal, candlesticks of precious metal, cases for clock and watch-making, cases for watches (presentation), chain mesh purses of precious metal, chains (jewellery), charms (jewellery), chronographs (watches), chronometers, chronometrical instruments, chronoscopes, cigar boxes of precious metal, cigar cases of precious metal, cigar holders of precious metal, cigarette cases of precious metal, cigarette holders of precious metal, clock cases, clock hands (clock and watch-making), clocks, clocks and watches electric, clockworks, coffee services of precious metal, coffee-pots non-electric of precious metal, cruets of precious metal, cuff links, cups of precious metal, dials (clock and watch-making), diamonds, dishes of precious metal, earrings, egg cups of precious metal, epergnes of precious metal, figurines (statuettes) of precious metal, flasks of precious metal, goblets of precious metal, coins, control clocks (master clocks), copper tokens, cruet stands of precious metal for oil and vinegar, objects of imitation gold, gold and silver ware other than cutlery, forks and spoons, gold thread (jewellery), gold, unwrought or beaten, harness fittings of precious metal, hat ornaments (of precious metal), household containers of precious metal, household utensils of precious metal, ingots of precious metals, iridium, ivory (jewellery), jet unwrought or semi-wrought, jewel cases of precious metal, jewellery, jewellery of yellow amber, jugs of precious metal, key rings (trinkets or fobs), kitchen containers of precious metal, kitchen utensils of precious metal, match boxes of precious metal, match holders of precious metal, medallions (jewellery), medals, movements for clocks and watches, napkin holders of precious metal, napkin rings of precious metal, necklaces (jewellery), needle cases of precious metal, needles of precious metal, nutcrackers of precious metal, oil cruets of precious metal, olivine (gems), ormolu ware, ornamental pins, ornaments (jewellery), ornaments of jet, osmium, palladium, paste jewellery (costume), pearls (jewellery), pearls made of ambroid (pressed amber), pendulums (clock and watch-making), pepper pots of precious metal, pins (jewellery), plated articles (precious metal plating), platinum (metal), powder compacts of precious metal, precious metals unwrought or semi-wrought, precious stones, purses of precious metal, rhodium, rings (jewellery), ruthenium, sacred vessels of precious metal, salad bowls of precious metal, salt cellars of precious metal, salt shakers of precious metal, saucers of precious metal, semi-precious stones, services (tableware) of precious metal, shoe ornaments (of precious metal), silver ornaments, silver plate (plates, dishes), silver thread, snuff boxes of precious metal, soup bowls of precious metal, spinel (precious stones), spun silver (silver wire), statues of precious metal, statuettes of precious metal, strainers of precious metal, straps for wrist watches, sugar bowls of precious metal, sundials, table plates of precious metal, tankards of precious metal, tea caddies of precious metal, tea infusers of precious metal, tea services of precious metal, teapots of precious metal, teastrainers of precious metal, threads of precious metal (jewellery), tie clips, tie pins, tobacco jars of precious metal, toothpick holders of precious metal, towel holder of precious metal, trays of precious metal for household purposes, trinkets (jewellery), urns of precious metal, vases of precious metal, watch bands, watch cases, watch chains, watch crystals, watch glasses, watch springs, watch straps, watches, wire of precious metal (jewellery), works of art of precious metal, wrist watches.

Class 37: Repair and maintenance of clocks, chronometers, electronic and electric apparatus and their parts, and repair and maintenance of jewels.

(2) EUTM No 1 455 757

Class 9: Electronic and electric apparatus, instruments, devices and equipment, components and accessories for the detection, measure and control of physical phenomena and physical values and for the storage, display and processing of information; electric and electronic components, electric frequency switchboard, frequency dividers, resonators and integrated circuits; electromechanic transductors; time recorder apparatus and their components; time switches except watch time switches, switches for time switches; measurement and control apparatus and instruments for scuba-diving; measurement and control apparatus and instruments (supervision), all including a clock mechanism or a kepper-time; control apparatus for the working and vibration and shock resistance of clocks, watches and their mechanisms; control apparatus for waterproofing of clock and watch cases; optic-electronic displays; magnifiers watch maker and repairers; calculators and wrist calculators; stop watches; electric batteries; barometers and their parts.

Class 14: Agates, alarm clocks, alloys of precious metal, amulets (jewellery), anchors (clock and watch-making), ashtrays of precious metal for smokers, atomic clocks, badges of precious metal, barrels (clock and watch-making), baskets of precious metal for household purposes, boxes of precious metal, boxes of precious metal for needles, boxes of precious metal for sweetmeats, bracelets (jewellery), brooches (jewellery), buckles of precious metal, busts of precious metal, cabarets (trays) of precious metal, candelabra (candlesticks) of precious metal, candle extinguishers of precious metal, candle rings of precious metal, candlesticks of precious metal, cases for clock and watch-making, cases for watches (presentation), chain mesh purses of precious metal, chains (jewellery), charms (jewellery), chronographs (watches), chronometers, chronometrical instruments, chronoscopes, cigar boxes of precious metal, cigar cases of precious metal, cigar holders of precious metal, cigarette cases of precious metal, cigarette holders of precious metal, clock cases, clock hands (clock and watch-making), clocks, clocks and watches electric, clockworks, coffee services of precious metal, coffee-pots non-electric of precious metal, cruets of precious metal, cuff links, cups of precious metal, dials (clock and watch-making), diamonds, dishes of precious metal, earrings, egg cups of precious metal, epergnes of precious metal, figurines (statuettes) of precious metal, flasks of precious metal, goblets of precious metal, coins, control clocks (master clocks), copper tokens, cruet stands of precious metal for oil and vinegar, objects of imitation gold, gold and silver ware other than cutlery, forks and spoons, gold thread (jewellery), gold, unwrought or beaten, harness fittings of precious metal, hat ornaments (of precious metal), household containers of precious metal, household utensils of precious metal, ingots of precious metals, iridium, ivory (jewellery), jet unwrought or semi-wrought, jewel cases of precious metal, jewellery, jewellery of yellow amber, jugs of precious metal, key rings (trinkets or fobs), kitchen containers of precious metal, kitchen utensils of precious metal, match boxes of precious metal, match holders of precious metal, medallions (jewellery), medals, movements for clocks and watches, napkin holders of precious metal, napkin rings of precious metal, necklaces (jewellery), needle cases of precious metal, needles of precious metal, nutcrackers of precious metal, oil cruets of precious metal, olivine (gems), ormolu ware, ornamental pins, ornaments (jewellery), ornaments of jet, osmium, palladium, paste jewellery (costume), pearls (jewellery), pearls made of ambroid (pressed amber), pendulums (clock and watch-making), pepper pots of precious metal, pins (jewellery), plated articles (precious metals plating), platinum (metal), powder compacts of precious metal, precious metals unwrought or semi-wrought, precious stones, purses of precious metal, rhodium, rings (jewellery), ruthenium, sacred vessels of precious metal, salad bowls of precious metal, salt cellars of precious metal, salt shakers of precious metal, saucers of precious metal, semi-precious stones, services (tableware) of precious metal, shoe ornaments (of precious metal), silver ornaments, silver plate (plates, dishes), silver thread, snuff boxes of precious metal, soup bowls of precious metal, spinel (precious stones), spun silver (silver wire), statues of precious metal, statuettes of precious metal, strainers of precious metal, straps for wrist watches, sugar bowls of precious metal, sundials, table plates of precious metal, tankards of precious metal, tea caddies of precious metal, tea infusers of precious metal, tea services of precious metal, teapots of precious metal, teastrainers of precious metal, threads of precious metal (jewellery), tie clips, tie pins, tobacco jars of precious metal, toothpick holders of precious metal, towel holder of precious metal, trays of precious metal for household purposes, trinkets (jewellery), urns of precious metal, vases of precious metal, watch bands, watch cases, watch chains, watch crystals, watch glasses, watch springs, watch straps, watches, wire of precious metal (jewellery), works of art of precious metal, wrist watches.

Class 37: Repair and maintenance of clocks, chronometers, electronic and electric apparatus and their parts, and repair and maintenance of jewels.

However, for reasons of procedural economy, the evidence filed by the opponent to prove its claim will not be assessed and the Opposition Division will continue on the assumption that the earlier marks do have a reputation for all the goods and services on which the opposition is based.

3. The ‘link’ between the signs

As seen above, the earlier marks were assumed to have a reputation 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.

The establishment of such a link, while triggered by similarity (or identity) between the signs, requires that the relevant sections of the public for each of the goods and services covered by the trade marks in dispute are the same or overlap to some extent.

According to the Court of Justice of the European Union,

It is therefore conceivable that the relevant section of the public as regards the goods or services for which the earlier mark was registered is completely distinct from the relevant section of the public as regards the goods or services for which the later mark was registered and that the earlier mark, although it has a reputation, is not known to the public targeted by the later mark. In such a case, the public targeted by each of the two marks may never be confronted with the other mark, so that it will not establish any link between those marks.

(27/11/2008, C-252/07, Intel, EU:C:2008:655, § 48.)

The Court of Justice has also noted,

… that certain marks may have acquired such a reputation that it goes beyond the relevant public as regards the goods or services for which those marks were registered. In such a case, it is possible that the relevant section of the public as regards the goods or services for which the later mark is registered will make a connection between the conflicting marks, even though that public is wholly distinct from the relevant section of the public as regards goods or services for which the earlier mark was registered.

(27/11/2008, C-252/07, Intel, EU:C:2008:655, § 51 and 52.)

It is appropriate to recall that the opposition is directed against the following goods:

Class 10: Surgical apparatus and instruments for dental use; dental moulding devices.

Class 44: Dentistry.

The reputation was assumed for all the opponent’s goods and services, as listed in the previous section.

These goods or services are so different that the later mark is unlikely to bring the earlier marks to the mind of the relevant public.

The contested goods and services are so specific that they have nothing in common with the goods and services of the earlier marks, as can be construed from the wording itself. These goods are very far removed from the contested goods and services and it is unlikely that consumers would perceive the contested mark, when used in relation to these goods and services, as in any way related to the earlier marks with reputation. None of these goods and services coincides in any of the relevant criteria with the opponent’s goods and services: their natures and purposes differ. They belong to different sectors and different levels of the manufacturing chain and target a very specialised professional public. Furthermore, they do not have complementary natures, nor are they in competition with one another. To conclude, no link can be found between these goods and services and those for which the earlier marks have a reputation. Although some of the contested goods, such as surgical apparatus and instruments for dental use or dental moulding devices, may contain some of the opponent’s goods, such as optic-electronic displays, electronic components or integrated circuits, this is not enough to find a link between them, as nowadays many instruments and apparatus have an electronic or optical component or display.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them.

Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

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

The Opposition Division

Cristina CRESPO MOLTO

Francesca DRAGOSTIN

Janja FELC

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.