OPPOSITION No B 2 541 541
Ice Ip S.A., rue des Tilleuls, 3, 8832 Rombach, Luxembourg (opponent), represented by Petosevic B.V.B.A., Avenue Louise 523, 1050 Brussels, Belgium (professional representative)
a g a i n s t
Ismayil Mehmet, 167 Turners Hill, Cheshunt, Waltham Cross EN8 9BH, United Kingdom (applicant), represented by Edwin Coe LLP, 2 Stone Buildings, Lincoln’s Inn, London WC2A 3TH, United Kingdom (professional representative).
On 21/03/2017, the Opposition Division takes the following
1. Opposition No B 2 541 541 is upheld for all the contested goods.
2. European Union trade mark application No 13 285 655 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
The opponent filed an opposition against some of the goods of European Union trade mark application No 13 285 655, namely against all the goods in Class 14. The application was also the subject of another opposition as a result of which the goods specified in the application were limited to those in Class 14. The opposition will therefore proceed against all the goods of European Union trade mark application No 13 285 655, namely all the goods in Class 14. The opposition is based on, inter alia, European Union trade mark registration No 10 322 253. The opponent invoked Article 8(1)(b) EUTMR.
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.
The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 10 322 253.
- The goods
The goods on which the opposition is based are the following:
Class 14: Agates; alarm clocks; alloys of precious metal; amulets [jewellery, jewelry (Am.)]; anchors [clock and watch making]; atomic clocks; badges of precious metal; barrels [clock and watch making]; boxes of precious metal; bracelets [jewellery, jewelry (Am.)]; brooches [jewellery, jewelry (Am.)]; busts of precious metal; cases for clock- and watchmaking; cases for watches [presentation]; chains [jewellery, jewelry (Am.)]; charms [jewellery, jewelry (Am.)] / trinkets [jewellery, jewelry (Am.)]; chronographs [watches]; chronometers; chronometrical instruments; chronoscopes; clock hands [clock and watch making]; clock cases; clocks; clocks and watches, electric; clockworks; cloisonné jewellery [jewelry (Am.)]; coins; control clocks [master clocks] / master clocks; copper tokens; cuff links; dials [clock and watch making]; diamonds; earrings; figurines [statuettes] of precious metal / statuettes of precious metal; gold, unwrought or beaten; gold thread [jewellery, jewelry (Am.)]; hat ornaments of precious metal; ingots of precious metals; iridium; ivory [jewellery, jewelry (Am.)]; jet, unwrought or semi-wrought; jewellery of yellow amber / jewelry of yellow amber; jewellery / jewelry; jewellery cases [caskets] / jewelry cases [caskets]; key rings [trinkets or fobs]; medallions [jewellery, jewelry (Am.)]; medals; movements for clocks and watches; necklaces [jewellery, jewelry (Am.)]; olivine [gems]; ornamental pins; ornaments of jet; ornaments [jewellery, jewelry (Am.)]; palladium; paste jewellery [costume jewelry (Am.)] / paste jewellery / paste jewelry [costume jewelry]; pearls made of ambroid [pressed amber]; pearls [jewellery, jewelry (Am.)]; pendulums [clock and watch making]; pins [jewellery, jewelry (Am.)]; platinum [metal]; precious metals, unwrought or semi-wrought; precious stones; rhodium; rings [jewellery, jewelry (Am.)]; ruthenium; semi-precious stones; shoe ornaments of precious metal; silver thread; silver ornaments; silver, unwrought or beaten; spinel [precious stones]; spun silver [silver wire]; statues of precious metal; stopwatches; sundials / sun dials; threads of precious metal [jewellery, jewelry (Am.)] / wire of precious metal [jewellery, jewelry (Am.)]; tie clips; tie pins; watch bands / straps for wristwatches / watch straps; watch chains; watch springs; watch glasses / watch crystals; watch cases; watches; works of art of precious metal; wristwatches.
The contested goods are the following:
Class 14: Precious metals and their alloys; precious stones; all of the aforesaid limited to use in works of art and sculptures.
The contested precious metals and their alloys; all of the aforesaid limited to use in works of art and sculptures are included in the broad category of the opponent’s precious metals and their alloys, not included in other classes. Therefore, they are identical.
The contested precious stones; all of the aforesaid limited to use in works of art and sculptures are included in the broad category of the opponent’s precious stones, not included in other classes. Therefore, they are identical.
- 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, some of the goods found to be identical are directed at the public at large and some are directed at professional customers with specific knowledge or expertise. Since the goods are expensive and/or will be purchased infrequently, in particular precious stones, the degree of attention will be relatively high. In its decision of 09/12/2010, R 900/2010-1, Leo Marco, § 22, the Board held that consumers generally put a certain amount of thought into the selection of these goods. Many of the goods will be luxury items. A relatively high degree of attention on the part of the consumer may be assumed.
- The signs
Earlier trade mark
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
The elements ‘ICE’, ‘CLOCK’ and ‘ROCKS’ are meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public for which the terms have no meaning, such as the Spanish-speaking part of the public.
As regards the distinctive and dominants components of the marks, both marks are word marks, the contested mark being composed of one word and the earlier mark being composed of two words separated by a hyphen, and have no meanings for the relevant public. Consequently, they have no elements that are clearly more dominant or distinctive than other elements.
Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.
Visually, both signs are word marks composed of a total of eight letters and have their first three letters, ‘ICE’, in common, which is particularly relevant given that consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This element not only enjoys an average degree of distinctiveness in both signs, but is also readily perceptible as an individual element in the earlier sign, mainly because a hyphen separates it from the second word, ‘CLOCK’. The hyphen in itself creates a visual difference between the signs. The marks also coincide in the letters ‘OCK’, but differ in the remaining letters, ‘CL’, and the hyphen of the earlier mark and in the letters ‘R***S’ in the contested mark.
Furthermore, the identical lengths of the signs and the fact that they coincide in their first three letters are also pertinent because these factors may influence the effect of the differences between them. The longer a sign, the less aware the public is of the differences between them, a fact that holds true in the current circumstances. This offsets the differences between the signs and, on the whole, they are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the letters ‘ICE’ and, in this regard, reference is made to the previous assertions regarding the identical beginnings and lengths of the signs, as these factors are also relevant to the aural assessment. Moreover, the signs also coincide in the sound of the letters ‘OCK’. The only aural differences between the signs lie in the sounds of the letters ‘CL’ in the earlier mark and the letters ‘R***S’ in the contested mark; however, this does not greatly affect the overall rhythms and intonations of the signs. Therefore, the signs are aurally similar to an average degree.
Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- Distinctiveness of the earlier mark
The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.
The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
The goods are identical and the degree of attention will be relatively high, as the goods are expensive and/or purchased infrequently. The signs are visually and aurally similar to an average degree and the earlier mark has a normal degree of distinctive character.
The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services. Furthermore, the Court has also held that 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, § 22 and 23).
In addition, the Court has set out the essential principle that 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). This principle of interdependence is crucial to the analysis of likelihood of confusion.
Bearing the aforementioned in mind, as well as the fact that consumers rarely examine marks side by side, relying therefore on their imperfect recollection of them, the Opposition Division finds that there is a likelihood of confusion in view of the similarities between the signs and the identity between the goods. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods which it designates (see, to that effect, 23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49)
Considering all the above, there is a likelihood of confusion on the part of the Spanish-speaking part of the public and as such the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 10 322 253. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public. It follows that the contested trade mark must be rejected for all the contested goods.
In its observations, the applicant argues that the prefix ‘ICE’ of the marks in conflict has a low distinctive character given that there are many trade marks that include this element in relation to goods in Classes 18 and 25. In support of its argument the applicant refers to several trade mark registrations in the European Union.
The Opposition Division notes that the existence of several trade mark registrations with the same prefix is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the prefix ‘ICE’ in relation to the relevant goods. Under these circumstances, the applicant’s claims must be set aside.
As earlier European Union trade mark registration No 10 322 253 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.
According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Cristina CRESPO MOLTO
Loreto URRACA LUQUE
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.