OPPOSITION No B 2 548 843

Cecilia Saglio Rossini, Apartado de Correos 713, 07840 Santa Eulalia Del Rio (Islas Baleares), Spain (opponent), represented by Clarke, Modet y Cía. S.L., Rambla de Méndez Núñez, 12 – 1º Puerta 2 bis, 03002 Alicante, Spain (professional representative)

a g a i n s t

Made In I Productions S.L., Calle Antonio Palau 1, 07800 Ibiza (Baleares), Spain (applicant), represented by Ing. Dallaglio S.R.L., Via Mazzini 2, 43121 Parma, Italy (professional representative).

On 16/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 548 843 is partially upheld, namely for the following contested goods.

Class 14:        Gemstones, pearls and precious metals, and imitations thereof; Semi-wrought precious stones and their imitations; Unwrought and semi-wrought precious stones and their imitations; Jewellery; Time instruments; Jewellery boxes; Jewelry findings; Rings [jewellery] made of non-precious metal; Rings [jewellery, jewelry (Am.)]; Decorative articles [trinkets or jewellery] for personal use; Costume jewellery; Jewellery made of precious metals; Chains [jewellery, jewelry (Am.)]; Charms of semi-precious metals; Pendants; Charms [jewellery] of common metals; Decorative pins of precious metal; Jewelry pins for use on hats; Paste jewellery [costume jewelry [Am.]]; Earrings; Imitation jewellery ornaments; Medallions; Enamelled jewellery; Tie pins; Cufflinks; Cuff links and tie clips; Cuff links of precious metal; Women's jewelry; Jewellery, including imitation jewellery and plastic jewellery; Time instruments; Jewellery boxes; Watch clasps; Non-leather watch straps; Watchbands that communicate data to smartphones; Watchstraps made of leather; Watch straps of synthetic material; Apparatus for sports timing [stopwatches]; Buckles for watchstraps; Jewellery, clocks and watches; Clocks and watches; Digital clocks; Watches; Women's watches; Table watches; Digital clocks being electronically controlled; Watches made of gold; Quartz watches; Mechanical watches with automatic winding; Mechanical watches with manual winding; Sports watches; Alarm clocks; Electronic alarm clocks.

Class 18:        Luggage; Travel luggage; Trunks and travelling bags; Travelling handbags; Travelling bags made of imitation leather; Travel garment covers; Luggage tags [leatherware]; Music cases; Hat boxes of leather; Straps for handbags; Baggage; Pullmans; Baggage.

2.        European Union trade mark application No 13 893 136 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 all the goods of European Union trade mark application No 13 893 136. The opposition is based on European Union trade mark registration No 8 884 413. The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods

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

Class 14:        Jewellery accessories, necklaces, bracelets, jewellery, ornaments, earrings, chains, charms, ankle bracelets, key rings (trinkets or fobs), all the aforesaid of metal, precious and semi-precious stones.

Class 18:        Handbags, belts, materials of leather.

Class 25:        Clothing, footwear (except orthopaedic) and headgear, excluding clothing, footwear and headgear for children and babies, maternity clothing for adults, waterproof clothing for adults, waterproof footwear for adults, waterproof headgear for adults, baby carriers (namely harnesses, belts and slings) and baby changing bags.

The contested goods are the following:

Class 9:        Lens; Sunglasses; Eyewear pouches; Cases for sunglasses; Frames for spectacles and sunglasses; Spectacle frames made of metal and of synthetic material; Spectacle frames made of metal or of a combination of metal and plastic; Chains for sunglasses; Frames for sunglasses; Lenses for sunglasses; Corrective eyewear; Eyewear; Bars for spectacles; Containers for contact lenses; Pince-nez chains; Pince-nez cords; Contact lenses; Spectacles [optics]; Spectacle holders.

Class 14:        Gemstones, pearls and precious metals, and imitations thereof; Semi-wrought precious stones and their imitations; Unwrought and semi-wrought precious stones and their imitations; Jewellery; Time instruments; Jewellery boxes and watch boxes; Jewelry findings; Rings [jewellery] made of non-precious metal; Rings [jewellery, jewelry (Am.)]; Decorative articles [trinkets or jewellery] for personal use; Costume jewellery; Jewellery made of precious metals; Chains [jewellery, jewelry (Am.)]; Charms of semi-precious metals; Pendants; Charms [jewellery] of common metals; Decorative pins of precious metal; Jewelry pins for use on hats; Paste jewellery [costume jewelry [Am.]]; Earrings; Imitation jewellery ornaments; Medallions; Enamelled jewellery; Tie pins; Cufflinks; Cuff links and tie clips; Cuff links of precious metal; Women's jewelry; Jewellery, including imitation jewellery and plastic jewellery; Time instruments; Jewellery boxes and watch boxes; Watch clasps; Non-leather watch straps; Watchbands that communicate data to smartphones; Watchstraps made of leather; Watch straps of synthetic material; Cases for watches and clocks; Apparatus for sports timing [stopwatches]; Buckles for watchstraps; Jewellery, clocks and watches; Clocks and watches; Digital clocks; Watches; Women's watches; Table watches; Digital clocks being electronically controlled; Watches made of gold; Quartz watches; Mechanical watches with automatic winding; Mechanical watches with manual winding; Sports watches; Parts for clocks; Housings for clocks and watches; Boxes for timepieces; Alarm clocks; Electronic alarm clocks.

Class 18:        Umbrellas and parasols; Luggage; Walking sticks; Umbrellas; Parasols; Umbrella covers; Travel luggage; Trunks and travelling bags; Travelling handbags; Travelling bags made of imitation leather; Travel garment covers; Luggage tags [leatherware]; Music cases; Hat boxes of leather; Straps for handbags; Baggage; Pullmans; Baggage.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 9

The contested eyewear pouches; cases for sunglasses and spectacle holders and the opponent’s handbags in Class 18 are all containers used to hold items, and they can be made of the same materials. Therefore, they have the same nature and purpose. They can be manufactured by the same producers and have the same distribution channels. Therefore, it is considered that these goods are similar.  

The contested containers for contact lenses, on the other hand, although they are containers, too, have a different nature from bags and from the opponent’s handbags, in particular. They are not manufactured by the same producers and have different distribution channels than the opponent’s goods in Class 18. They also have no points of contact under the abovementioned criteria with the remaining of the opponent’s goods in Classes 14, 18 and 25.

The contested chains for sunglasses; pince-nez chains and pince-nez cords and the opponent’s goods in Class 14, such as necklaces, bracelets and chains, have different intended purposes. Moreover, their producers, end users and distribution channels are usually distinct. Furthermore, they are neither complementary nor in competition. Therefore, they are dissimilar. They are also clearly dissimilar to the remaining goods of the opponent in Classes 14, 18 and 25.

The contested lens, sunglasses; frames for spectacles and sunglasses; spectacle frames made of metal and of synthetic material; spectacle frames made of metal or of a combination of metal and plastic; frames for sunglasses; lenses for sunglasses; corrective eyewear; eyewear; bars for spectacles; contact lenses; spectacles [optics] are considered dissimilar to the opponent’s goods in Class 25. Their nature and main purpose are different. The main purpose of clothing is to dress the human body. The intended purpose of glasses, sunglasses, lenses, contact lenses, corrective eyewear and eyewear are to improve eyesight. The remaining contested goods are parts of those eyesight improving goods. The goods do not have the same distribution channels and are neither in competition, nor complementary. Therefore, the goods are dissimilar. They are also dissimilar to the remaining goods of the opponent in Classes 14 and 18 as they normally have different producers and different distribution channels. Furthermore, they are not complementary or in competition.

Contested goods in Class 14

The contested pearls; Jewellery; Jewelry findings; Rings [jewellery] made of non-precious metal; Rings [jewellery, jewelry (Am.)]; Decorative articles [trinkets or jewellery] for personal use; Costume jewellery; Jewellery made of precious metals; Chains [jewellery, jewelry (Am.)]; Charms of semi-precious metals; Pendants; Charms [jewellery] of common metals; Decorative pins of precious metal; Jewelry pins for use on hats; Paste jewellery [costume jewelry [Am.]]; Earrings; Imitation jewellery ornaments; Medallions; Enamelled jewellery; Charms of semi-precious metals; Pendants; Charms [jewellery] of common metals; Decorative pins of precious metal; Jewelry pins for use on hats; Paste jewellery [costume jewelry [Am.]]; Earrings; Imitation jewellery ornaments; Medallions; Enamelled jewellery; Tie pins; Cufflinks; Cuff links and tie clips; Cuff links of precious metal; Women's jewelry; Jewellery, including imitation jewellery and plastic jewellery either overlap with, include or are included in the opponent’s jewellery of metal, precious and semi-precious stones. Therefore, they are identical.

The contested jewellery boxes overlap with the opponent’s jewellery accessories of metal, precious and semi-precious stones. Therefore, these goods are identical.

The contested Time instruments; Women's watches; Watches made of gold; Quartz watches; Mechanical watches with automatic winding; Mechanical watches with manual winding; Sports watches; clocks, table watches, alarm clocks are all timekeeping instruments which have the same nature as the opponent’s jewellery of metal, precious and semi-precious stones, as they can all be luxury items. Furthermore, they can coincide in producer, end user and distribution channels. Therefore, they are considered to be highly similar.

The contested gemstones and imitations thereof; semi-wrought precious stones and their imitations; unwrought and semi-wrought precious stones and their imitations and the opponent’s jewellery of metal, precious and semi-precious stones can have the same producers, end users and distribution channels. Therefore, these goods are considered similar.

The contested precious metals and imitations thereof, on the other hand, are raw materials which need to be processed to be turned into jewellery. Raw materials subject to a transformation process are essentially different from the finished products that incorporate, or are covered by, those raw materials, in terms of nature, aim and intended purpose (03/05/2012, T-270/10, Karra, EU:T:2012:212, § 53). Furthermore, they are not complementary, since one is manufactured with the other, and raw material is in general intended for use in industry rather than for direct purchase by the final consumer (09/04/2014, T-288/12, Zytel, EU:T:2014:196, § 39-43). Therefore, these goods are dissimilar to the opponent’s goods in Class 14, which cover items of jewellery and jewellery accessories. They are also clearly dissimilar to the opponent’s goods in Classes 18 and 25, as they have no relevant points of contact with these goods under the abovementioned criteria.

The contested apparatus for sports timing [stopwatches]; digital clocks, digital clocks being electronically controlled, electronic alarm clocks are timekeeping instruments which are not intended for personal adornment or made of precious metals. Therefore, they differ in nature and purpose from the opponent’s goods in Class 14, which cover items of jewellery and jewellery accessories. Furthermore, they normally do not coincide in manufacturer and distribution channels and are not complementary or in competition with each other. The goods are dissimilar.They are also dissimilar to the remaining goods of the opponent in Classes 18 and 25, since they have no relevant points of contact whatsoever with these goods.

The contested Watch clasps; Non-leather watch straps; Watchstraps made of leather; Watch straps of synthetic material; Buckles for watchstraps and the opponent’s jewellery of metal, precious and semi-precious stones can coincide in producer, end user and distribution channels. Therefore, they are similar to a low degree.

The contested Watchbands that communicate data to smartphones are dissimilar to the opponent’s jewellery, as those particular watchbands do not have the same producers, end users and distribution channels as jewellery. Furthermore, they differ in their nature from the opponent’s remaining goods in Classes 14, 18 and 25 as they normally differ in manufacturers and distribution channels and are not complementary or in competition with each other.

The contested boxes for timepieces, watch boxes; cases for watches and clocks, Parts for clocks; Housings for clocks and watches differ in their nature from the opponent’s jewellery and remaining goods in Classes 14, 18 and 25. Moreover, they normally differ in manufacturers and distribution channels and are not complementary or in competition with each other. Therefore, they are dissimilar.

Contested goods in Class 18

The contested Travelling handbags are included in the broader category handbags of the earlier mark. Therefore, they are identical.

The contested Straps for handbags are complementary to the earlier mark’s Handbags and coincide in manufacturer, end user and distribution channel. Therefore, they are similar.

The contested Luggage; Travel luggage; Trunks and travelling bags;   Travelling bags made of imitation leather; Travel garment covers; music cases; hat boxes of leather; Baggage; Pullmans; are similar to the opponent’s Handbags, since all those goods are designed for storing, transporting and carrying items, so they have the same purpose, and they can coincide in the producers and the distribution channels.

The contested luggage tags [leatherware] can have the same producers and distribution channels as the opponent’s handbags. Therefore, these goods are similar to a low degree.

The remaining contested goods in this class, i.e. Umbrellas and parasols; Umbrellas; Parasols; Umbrella covers, Walking sticks are devices, and their accessories, for protection against the rain and sun and used as walking aid, whereas the opponent’s goods mainly serve to adorn, transport belongings and dress the human body. The competing goods are also not interchangeable or imperative for the use of the other and, therefore, not complementary, nor are they in competition. Furthermore, they do not usually share the same retail outlets and they are usually not made by the same manufacturers. Therefore, these goods are considered dissimilar.

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 or similar (to various degrees) are directed at both the public at large and at business customers with specific professional knowledge or expertise (for instance, watch repairers). The degree of attention may vary from average to high as the goods may cover very expensive goods such as jewels and luxury wristwatches.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the relevant public.

The earlier mark is a figurative mark composed of the verbal elements ‘HIPPY CHICK’ depicted in a black, easily legible, stylised, handwritten-like font. There is a heart placed above the ‘I’ in ‘CHICK’. A sketched flower is placed between the two words and a looped line finishing with a sketched butterfly is placed below the verbal elements.

The contested sign is a figurative mark composed of the verbal elements ‘HIPPIE CHIC’ in a black, bold, roundish font, arranged as a wavy line. Both ‘HIPPY’ (earlier sign) and ‘HIPPIE’ (contested sign) are adopted English terms. Consequently, they will be understood by the relevant public as referring to ‘bohemian, free spirit’. Taking into account that the goods in question are jewelry and instruments for measuring time, suitcases, bags and other carriers, both ‘HIPPY’ (earlier sign) and ‘HIPPIE’ (contested sign) are considered weak in relation to these products, since they merely refer to a particular style.

The verbal element ‘CHICK’ of the earlier sign is meaningless for the Spanish-speaking public.

The verbal element ‘CHIC’ of the contested sign is a term of French origin and commonly used by the Spanish-speaking public to refer to something ‘very elegant or fashionable’. Taking into account the nature of the goods in question, ‘CHIC’ is non-distinctive for all the goods at issue.

The Spanish-speaking part of the public will either perceive the meanings of the verbal elements in the contested sign individually as described above, or as one expression, referring to a particular, bohemian style.

The signs have no elements that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs differ in the letters ‘Y’ (earlier mark) and ‘IE’ (contested sign) as well as in the additional letter ‘K’ of the earlier mark. The signs also differ in their typography and insofar as the additional figurative elements of the earlier mark have no counterparts in the contested sign. However, the signs coincide in the letters ‘HIPP**’ ‘CHIC*’. Furthermore, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37). Considering all the above, the signs are visually highly similar.

Aurally, in spite of the spelling differences, the public will pronounce the signs ‘HIPPY CHICK’ and ‘HIPPIE CHIC’ identically. The additional ‘K’ of the earlier sign does not influence the pronunciation of the signs. Consequently, signs are aurally identical.

Conceptually, the relevant public will perceive the contested sign as referring to something fashionable and bohemian, or to a particular, bohemian style, while the earlier mark will be perceived as referring to a bohemian style, too, in the given context. The earlier mark’s figurative elements will be perceived as a flower, a heart and a butterfly, that merely reinforce the concept of ‘HIPPY’. Therefore, considering that these concepts are weak in relation to the goods at issue, the signs are similar to an average degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier mark as a whole does not have a meaning in relation to any of the goods in question from the perspective of the relevant public. Therefore, the distinctive character of the sign must be seen as average, despite the presence of weak element in the mark, as described in section (c).

5. Global assessment, other arguments and conclusion

The contested goods are identical, similar (to various degrees), and dissimilar, to the opponent’s goods. They target the public at large and professionals with specific knowledge. The degree of attention of the relevant consumer is likely to be at least above average.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

With respect to the signs in question, their similarity arises from their visual, aural and conceptual coincidences in the verbal elements ‘HIPPY CHICK’ of the earlier sign and ‘HIPPIE CHIC’ of the contested sign. Although the elements ‘HIPPY’/’HIPPIE’ and ’CHIC’ as such are weak, the differences between the signs in form of different spelling, fonts and the figurative elements of the earlier sign are not sufficient to exclude a likelihood of confusion between the marks for the relevant Spanish-speaking part of the public.

It should also be borne in mind that even the end users who pay a high degree of attention need to rely on their imperfect recollection of marks as the relevant public rarely has the chance to make a direct comparison between different marks. Therefore, due to at least an average degree of visual and conceptual similarity, combined with aural identity, the Opposition Division considers that the relevant public with an average level of attention, and even those with a high level of attention, can confuse both brands in relation to the goods found to be identical or similar.

Due to the high visual similarity and aural identity between the conflicting signs there is also a likelihood of confusion on the part of the relevant public in relation to the goods found to be similar to a low degree.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking part of the public in relation to some the contested goods, and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark application must be rejected for the goods found to be identical and similar, including those found similar to a low degree, to those of the earlier mark.

The rest of the contested goods are dissimilar. As 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.

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 shall 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

Natascha GALPERIN

André Gerd Günther BOSSE

Plamen IVANOV

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.