OPPOSITION No B 2 524 224

International Gemmological Institute besloten vennootschap met beperkte aansprakelijkheid, Schupstraat 1-7, 2018 Antwerpen, Belgium (opponent), represented by Gevers, Brussels Airport Business Park, Holidaystraat, 5, 1831 Diegem, Belgium (professional representative)

a g a i n s t

I.G.L. International Ltd, Makor Haim 27, Jerusalem, Israel (applicant), represented by Lane IP Limited, 2 Throgmorton Avenue, London EC2N 2DG, United Kingdom (professional representative).

On 29/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 524 224 is partially upheld, namely for the following contested goods and services:

Class 16: Certificates; printed matter; publications, journal, newsletters, magazines and books in the field of diamonds, gems, jewellery (including precious stones and metals) and valuables; included in class 16.

Class 36: Diagnosis, evaluation/appraisal and examination of diamonds, gems, jewellery (including precious stones and metals) and valuables; all included in class 36.

Class 42: Laboratory and certification services for the examination and/or authentication of diamonds, gems, jewellery (including precious stones and metals) and valuables; Certification services relating to diamonds, gems, jewellery (including precious stones and metals) and valuables; included in class 42.

2.        European Union trade mark application No 13 689 641 is rejected for all the above goods and services. It may proceed for the remaining goods, namely:

Class 16: Paper, cardboard; bookbinding materials; photographs; stationary; wrapping papers, in the field of diamonds, gems, jewellery (including precious stones and metals) and valuables; included in class 16.

3.        Each party bears its own costs.

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REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 689 641. The opposition is based on Benelux trade mark registrations No 811 360 and No 810 415 and European Union trade mark registrations No 5 597 513 and No 5 597 281. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

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 the trade marks on which the opposition is based.

The request was submitted in due time and is admissible as the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

The contested application was published on 11/03/2015. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in Benelux, in the case of the Benelux marks, and the European Union, in the case of the EUTMs, from 11/03/2010 to 10/03/2015 inclusive.

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

Benelux registrations No 811 360 ‘IGI’ and No 810 415

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, diamonds.

Class 36: Valuation of jewellery, diamonds, precious gemstones and semi-precious stones, and the issuing of certificates and the drawing up of reports in this field.

Class 41: Providing of training; courses; electronic and non-electronic publishing; education; training workshops and seminars.

Class 42: Materials research, provide expert reports by laboratory technicians and gemmologist.

EUTM registration No  5 597 513

Class 36: Appraisal of jewellery, diamonds, precious stones and semi-precious stones, and issuing certificates and producing reports thereon.

Class 41: Providing of training; courses; electronic and non-electronic publishing; education; seminars; provision of workshops; all these services relating to precious stones, jewellery and gemmology.

Class 42: Material research; drawing up of expert reports by laboratory technicians and gemmologists; all these services relating to precious stones, jewellery and gemmology.

EUTM registration No 5 597 281 ‘IGI’

Class 36: Valuation of jewellery, diamonds, precious gemstones and semi-precious stones, and the issuing of certificates and the drawing up of reports in this field.

Class 41: Providing of training; courses; electronic and non-electronic publishing; education; training workshops and seminars; all these services relating to precious stones, jewellery and gemology.

Class 42: Study of materials; drawing up of reports by laboratory technicians and experts in gemology; all these services relating to precious stones, jewellery and gemology.

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 04/05/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 04/07/2016 to submit evidence of use of the earlier trade marks. On 04/07/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

Documents submitted on 21/12/2015 to substantiate the reputation of the earlier marks:

• Enclosure 1: extracts from the opponent’s website.
• Enclosure 2: photographs of the opponent’s building in Antwerp.
• Enclosure 3: extracts from leading national and international media outlets.
• Enclosure 4: photographs of jewellery stores in which the opponent’s certificates are visible.
• Enclosure 5: an undated catalogue of training courses offered by the opponent.
• Enclosures 6-9: correspondence relating to training given to international clients.
• Enclosures 10-13: registration certificates for the earlier marks on which the present opposition is based.
• Enclosure 14: an overview of the opponent’s international trade mark registrations.
• Enclosure 15: an undated list of reputable players in the diamond and gemstones sector.
• Enclosure 16: extracts from the applicant’s website.
• Enclosure 17: photographs of the applicant’s building in Antwerp.
• Enclosures 18 and 19: correspondence between the parties in the present case.
• Enclosure 20: a decision of the Court of Brussels, dated 23/07/2015, in Dutch, with some paragraphs partly translated into the language of the proceedings.
• Enclosure 21: an undated email from a representative of Bain & Company, a market consultancy company, regarding the results of their market research.
• Enclosures 22-25: advertisements by the opponent in specialist diamond magazines.
• Enclosure 26: a report by French/West/Vaughan, the opponent’s marketing agency, dated 10/11/2015, on its promotional activities in September and October 2015.
• Enclosure 27: an extract from the opponent’s Facebook page, dated 10/11/2015, with more than 135,000 ‘likes’.
• Enclosure 28: an overview of the Facebook profiles of other leading dealers in the diamond and gemstones sector, dated 13/11/2015.
• Enclosures 29-39: evidence of diamond certifications issued by the opponent to diamond dealers and multinational businesses.
• Enclosure 40: a press cutting from the wedding magazine Brides, edition of December 2015/January 2016.

Documents submitted on 04/07/2016 to prove the use of the earlier marks:

• Twenty-three invoices dated between 08/01/2010 and 22/06/2015, issued by the opponent to clients in Europe for labour on polishing diamonds and issuing certifications. Four of the invoices are dated outside the relevant period.

• Seventeen invoices dated between 20/01/2010 and 04/12/2015, issued by the opponent to clients in Europe for courses such as ‘Polished diamond’, ‘Colored stones’ and ‘Rough diamond’. Seven of the invoices are dated outside the relevant period.

• Seven invoices dated between 23/12/2009 and 25/03/2015, sent to the opponent by providers in Europe for renting exhibition spaces at trade fairs. Three of the invoices are dated outside the relevant period.

• Six invoices dated between 15/03/2011 and 27/05/2016, sent to the opponent by providers in Europe for advertising. One of the invoices is dated after the relevant period.

The applicant argues that the opponent did not submit translations of some of the evidence of use 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 invoices, and their self-explanatory character, the Opposition Division considers that there is no need to request a translation.

Furthermore, the applicant argues that not all the items of evidence indicate genuine use in terms of time and extent of the goods and services for which the earlier marks are registered.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

It is true that some of the documents are dated outside the relevant period and that others are irrelevant to proving the use of the earlier registrations, such as Enclosures 10-14, which refer to the opponent’s registrations worldwide, or Enclosures 16-19, which relate to the applicant and the present opposition proceedings, but, taken together, the documents provide sufficient evidence of genuine use.

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).

The invoices show that the place of use is Europe. This can be inferred from the currency mentioned (euros) and the addresses in Europe. Therefore, the evidence relates to the relevant territory.

Most of them are dated within the relevant period.

All the invoices together provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. Use of the mark need not be quantitatively significant for it to be deemed genuine.

Although the invoices indicate a somewhat low commercial volume of use, they still demonstrate use of the EUTM in several Member States, namely France, the Czech Republic, Spain, the Netherlands, Austria, Cyprus, Denmark, Finland, etc.

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

The figurative trade mark registrations appear on each invoice from the opponent and the word marks appear on some of the invoices sent to the opponent. Therefore, the evidence shows that the marks have been used as registered.

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade marks during the relevant period in the relevant territories.

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

The invoices relate exclusively to polishing diamonds, issuing certifications and providing courses. Of the evidence submitted on 21/12/2015 to substantiate the marks’ reputation, none of the documents refers to the production of precious metals, jewellery, precious stones, horological and chronometric instruments, or diamonds. Nor is there any document demonstrating that the marks have been used in relation to the issuing of certificates other than for diamonds, or in relation to electronic or non-electronic publishing. Therefore, the opponent has not provided sufficient indications concerning the use of the earlier marks in the course of trade for all the relevant goods and services.

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.

In the present case, the evidence shows genuine use of the trade marks for the following services (depending on the registration in question, a synonymous wording may be used):

Class 36: Valuation of diamonds and the issuing of certificates and the drawing up of reports in this field.

Class 41: Providing of training; courses; education; training workshops and seminars; all these services relating to precious stones and gemology.

Class 42: Materials research, provide expert reports by laboratory technicians and gemmologist; all these services relating to precious stones and gemology.

Therefore, the Opposition Division will only consider the abovementioned services in its further examination of the opposition.

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 Benelux registration No 810 415.

1. The goods and services

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

Class 36: Valuation of diamonds and the issuing of certificates and the drawing up of reports in this field.

Class 41: Providing of training; courses; education; training workshops and seminars; all these services relating to precious stones and gemology.

Class 42: Materials research, provide expert reports by laboratory technicians and gemmologist; all these services relating to precious stones and gemology.

The contested goods and services are the following:

Class 16: Certificates; paper, cardboard; printed matter; bookbinding materials; photographs; stationary; publications, journal, newsletters, wrapping papers, magazines and books in the field of diamonds, gems, jewellery (including precious stones and metals) and valuables; included in class 16.

Class 36: Diagnosis, evaluation/appraisal and examination of diamonds, gems, jewellery (including precious stones and metals) and valuables; all included in class 36.

Class 42: Laboratory and certification services for the examination and/or authentication of diamonds, gems, jewellery (including precious stones and metals) and valuables; Certification services relating to diamonds, gems, jewellery (including precious stones and metals) and valuables; included in class 42.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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 16

The contested certificates are official documents attesting to facts, for example confirming that someone has reached a certain level of achievement in a course of study or training or attesting that an item fulfils certain legal requirements (Oxford English Dictionary). The opponent’s issuing of diamonds certificates in Class 36 consist in delivering documents stating the value of diamonds. As precious stones, diamonds can have a high value and thus it is in the opponent’s interest to produce its own certificates in order to avoid fakes. Therefore, the contested certificates and the opponent’s issuing of diamonds certificates are similar, as they can have the same producers and they have the same purpose, end users and distribution channels. Furthermore, they are complementary.

Similarly, people attending the opponent’s courses on precious stones and gemology in Class 41 are provided with a certificate. Therefore, the contested certificates and the opponent’s providing of training; courses; education; training workshops and seminars; all these services relating to precious stones and gemology are similar, as they can have the same producers and they have the same purpose, end users and distribution channels. Furthermore, they are complementary.

The contested printed matter could include teaching materials essential to the opponent’s providing of training; courses; education; training workshops and seminars; all these services relating to precious stones and gemology. Therefore, these goods and services are complementary. This is because in order to supply educational services it is both helpful and usual to use educational textbooks, teaching manuals, etc. Service providers offering any kind of course often hand out these goods to participants as learning supports. Given the close link between the goods and services in question as regards their relevant public, common origin, distribution channels, and the fact that the goods complement the services, these goods and services are considered similar.

The contested publications, journal, newsletters, magazines and books in the field of diamonds, gems, jewellery (including precious stones and metals) and valuables; included in class 16 can have the same producers, end users and distribution channels as the opponent’s providing of training; courses; education; training workshops and seminars; all these services relating to precious stones and gemology, since ‘undertakings offering any kind of course often hand out those products to pupils as support learning materials’ (23/10/2002, T-388/00, ELS, EU:T:2002:260, § 55). Therefore, they are similar.

The contested paper, cardboard; bookbinding materials; photographs; stationary; wrapping papers include paper and cardboard, goods made from those materials and office requisites. These goods are used for writing, drawing or printing on, or as wrapping material. The opponent’s services consist of certifying the value of diamonds (Class 36), teaching (Class 41) and reporting on precious stones and gemology (Class 42). These contested goods have nothing relevant in common with any of the opponent’s services. They differ in nature, purpose and method of use. They do not have the same producers, providers or distribution channels and are neither in competition nor complementary. Therefore, they are dissimilar.

The opponent refers to 19/06/2014, T-382/12, Nobel, EU:T:2014:563, in which the Office decided that gemological services were similar to goods in Class 16. However, the previous case to which the opponent refers does not relate to the same goods or services as the present case. In 19/06/2014, T-382/12, Nobel, EU:T:2014:563, the goods in question were in Classes 10, 20 and 24.

Contested services in Class 36

Diagnosis, evaluation/appraisal and examination of diamonds; all included in class 36 are identically contained in both lists of services (including synonyms).

The contested diagnosis, evaluation/appraisal and examination of gems, jewellery (including precious stones and metals) and valuables; all included in class 36 include, as a broader category, or overlap with, the opponent’s valuation of diamonds and the issuing of certificates and the drawing up of reports in this field. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

Contested services in Class 42

Laboratory and certification services for the examination and/or authentication of diamonds; certification services relating to diamonds; included in class 42 are identically contained in both lists of services (including synonyms).

The contested laboratory and certification services for the examination and/or authentication of gems, jewellery (including precious stones and metals) and valuables; certification services relating to gems, jewellery (including precious stones and metals) and valuables; included in class 42 include, as broader categories, or overlap with, the opponent’s provide expert reports by laboratory technicians and gemmologist relating to precious stones and gemology. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

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 and services found to be identical or similar are directed at the public at large as well as at business customers with specific professional knowledge or expertise in precious stones, such as diamond dealers and jewellers.

The degree of attention is assumed to be high on the part of the relevant public as both groups of consumers generally put a certain amount of thought into the selection of diamonds and precious stones, and the services relating to them. (09/12/2010, R 900/2010-1, Leo Marco, § 22).

Given that the general public is more prone to confusion, the examination will proceed on this basis.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Benelux. The official languages in this territory are French, Dutch and German.

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

The earlier mark is figurative and consists of a depiction of three concentric geometrical forms resembling a diamond, the letters ‘IGI’ in a stylised typeface suspended from its vertex and the phrase ‘INTERNATIONAL GEMOLOGICAL INSTITUTE’ in a standard black upper case typeface, arranged over three lines to the right of the figurative element.

The contested sign is figurative and consists of a depiction of two concentric circles, the outer circle formed of short strokes and the inner circle of the phrase ‘International Gemological Laboratories’. Inside the circles, there is coat of arms depicting a ring, which, due to its small size, is not noticeable at first sight and is likely to be disregarded by the relevant public. The letters ‘IGL’ are written in a standard black upper case typeface in a large font to the right of the figurative element, and underneath these elements is the phrase ‘INTERNATIONAL GEMOLOGICAL LABORATORIES’, also in a standard black upper case typeface, but in a smaller font.

The English words ‘INSTITUTE’, ‘LABORATORIES’, ‘INTERNATIONAL’ and ‘GEMOLOGICAL’ would be understood by the public in the relevant territory as, respectively, ‘an organisation with a scientific, educational or specific professional purpose’, ‘a room or building equipped for scientific experiments, research or teaching’, ‘existing, occurring or carried on between nations’ and ‘related to precious stones’, by virtue of their identity with or resemblance to the corresponding French, Dutch or German words.

The figurative element and the phrase ‘INTERNATIONAL GEMOLOGICAL INSTITUTE’ of the earlier mark will be associated with ‘an organisation specialising in precious stones and operating in different countries’. Bearing in mind that the relevant services are the evaluation and certification of diamonds, and teaching with these precious stones as its subject matter, these elements are, at best, weak for these services.

The phrase ‘INTERNATIONAL GEMOLOGICAL LABORATORIES’ of the contested sign will be associated with ‘spaces where scientific experiments, research or teaching relating to precious stones are carried out, operating in different countries’. Bearing in mind that the relevant goods and services are the evaluation and certification of diamonds, and publications having these precious stones as their subject matter, these elements are, at best, weak for these goods and services.

The earlier mark has no elements that could be considered clearly more dominant than other elements.

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).

Therefore, in the earlier mark the elements with the most impact are the phrase ‘INTERNATIONAL GEMOLOGICAL INSTITUTE’ and the stylised letters ‘IGI’.

The letters ‘IGL’ in the contested sign are the dominant element as they are the most eye-catching.

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, the signs have a similar structure. They both have a figurative element on the left, with a verbal element below it, and a three-word phrase to the right. Both signs’ verbal elements are made up of a three-letter acronym followed by the complete phrase. The figurative and verbal elements in both signs are entirely in black.

The signs have in common the sequence of letters ‘IG*’ in the acronyms, and the words ‘INTERNATIONAL’ and ‘GEMOLOGICAL’, in the same order, notwithstanding the stylised font used for the letters ‘IGI’ of the earlier mark and the different typefaces and sizes of the marks’ verbal elements generally. However, they differ in the third letter of the acronyms, ‘I’ in the earlier mark and ‘L’ in the contested sign, and in the last word in each phrase, ‘INSTITUTE’ in the earlier mark and ‘LABORATORIES’ in the contested sign.

Taking into account the limited impact of the signs’ figurative elements, the coincidence in the beginnings of their verbal elements, despite their weak character, and bearing in mind that the stylised letters ‘IGI’ in the earlier mark coincide in two out of three letters with the dominant element of the contested mark, the signs are visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the signs have the same length and almost the same vowel sequence. Therefore, the rhythms and intonations of the signs are very similar.

The pronunciation of the signs coincides in the sound of the letters ‘IG’, present identically in the acronyms in both signs, and in the sound of the words ‘INTERNATIONAL’ and ‘GEMOLOGICAL’, which are, at best, weak. The pronunciation differs in the sound of the last letters of the acronyms and in the last words of the phrases, as specified in the visual comparison.

Considering what has been stated above about their similarities in length, vowel sequence, rhythm and intonation, and bearing in mind the weak character of the coinciding words, the signs are aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The figurative elements of the signs will be understood by the relevant public as such.

Both signs will be perceived as relating to ‘precious stones on an international level’ and, to that extent, they are conceptually identical. The only conceptual difference between the signs relates to the kind of entity referred to. Although the word ‘institute’ is not exactly synonymous with ‘laboratory’, both entities can be developed by the same companies and it is common for them to overlap.

Therefore, as the signs will be associated with very similar kinds of undertakings dealing with identical subject matter, the signs are conceptually highly similar.

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.

According to the opponent, the earlier trade mark has a reputation in Benelux in connection with all the services 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 is listed above in the section on proof of use. Having examined the material listed above, 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.

There is no concrete information regarding the market share held by the trade mark. There is no information about the awareness of the trade mark, the intensity of use or the size of the investment made by the undertaking in promoting the mark. All these factors have to be taken into account in order to determine whether or not the mark concerned enjoys a reputation among the consumers targeted by the opponent. The opponent could have filed more supporting documentation, for example declarations made by independent parties attesting to the reputation of the mark, verified or verifiable data on the market share held, opinion polls and market surveys, certifications and awards, audits and inspections, etc. However, since the opponent did not submit any such documentation, it cannot be assumed that the mark has a higher than normal degree of distinctiveness.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all of the services in question.

However, it has to be considered to have at least a minimum degree of inherent distinctiveness. Earlier marks, whether EUTMs or national marks, enjoy a ‘presumption of validity’. The Court made it clear, in its judgment of 24/05/2012, C-196/11, F1-Live, EU:C:2012:314, § 40-41, that ‘in proceedings opposing the registration of a European Union trade mark, the validity of national trade marks may not be called into question’. The Court added that ‘it should be noted that the characterisation of a sign as descriptive or generic is equivalent to denying its distinctive character’.

5. Global assessment, other arguments and conclusion

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

The contested goods and services are partly identical or similar and partly dissimilar to the opponent’s services and they target the public at large and professionals, whose degree of attention is high. Therefore, the examination will be based on the general public, as it is more prone to confusion.

The earlier mark is considered to have at least a minimum degree of inherent distinctiveness. However, the finding of a weak distinctive character for the earlier trade mark does not prevent a finding that there is a likelihood of confusion in the present case. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, as in the present case, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (13/12/2007, T-134/06, Pagesjaunes.com, EU:T:2007:387, § 70).

The signs under comparison are visually and aurally similar to a low degree but conceptually highly similar. Two of the letters making up the acronyms, ‘IG’, are the same and the third letters in the acronyms, ‘I’ and ‘L’, are visually very similar. Two entire verbal elements of the earlier mark, ‘INTERNATIONAL’ and ‘GEMOLOGICAL’, are wholly included in the contested sign as independent elements; these are long words and, therefore, clearly recognisable elements. Although these two words are not inherently distinctive, they appear at the beginning of the signs’ three-word phrases, the part that first catches the public’s attention.

Although the coincidences in the signs are not striking, a likelihood of confusion still exists, as the conceptual similarity is overwhelming.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54).

The fact that the signs will be associated with strong similar meanings by the relevant public is pivotal to this case. As the General Court has stated, it can happen that conceptual similarities may be such as to compensate to a large extent for the visual and aural differences between marks. For this to happen, at least one of the marks at issue must have, from the point of view of the relevant public, a clear and specific meaning so that the public is capable of grasping it immediately, and the other trade mark must not have such a meaning or mean something completely different (22/06/2004, T-185/02, Picaro, EU:T:2004:189, § 56 and the case-law cited therein).

In the present case, the consumers will grasp the meanings of both marks immediately because both evoke a strong concept. These highly similar meanings will have a significant impact on the likelihood of confusion in the minds of consumers, who will not be able to clearly distinguish between the signs on a conceptual level and, consequently, could mistakenly believe that the goods and services had the same origin.

This is because likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, dedicated to laboratory examinations (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

The public will make a connection between the conflicting marks and assume that the goods and services in question come from the same undertaking or economically-linked undertakings This risk of association constitutes a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 16-18; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 30).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Benelux trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to those of the earlier trade 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.

The opposition will now be examined on the ground of Article 8(5) EUTMR in respect of the goods found to be dissimilar, namely:

Class 16: Paper, cardboard; bookbinding materials; photographs; stationary; wrapping papers.

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.

In view of the cumulative nature of this provision and for the sake of procedural economy, the Opposition Division will proceed directly to the second point, the reputation of the earlier mark.

1. Reputation of the earlier trade mark

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade mark has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

As stated above, the Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a reputation.

Despite demonstrating some use of the trade mark, the evidence dated within the relevant period provides little information on the extent of that use. The evidence does not provide any indication of the degree of recognition of the trade mark by the relevant public. Furthermore, the evidence does not indicate the sales volumes, the market share of the trade mark or the extent to which the trade mark has been promoted. As a result, the evidence does not demonstrate that the trade mark is known by a significant part of the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

The opponent has also based its opposition on the following earlier trade marks:

Benelux trade mark registration No 811 360 for the word mark ‘IGI’;

EUTM registration No  5 597 513 for the figurative mark ;

EUTM registration No 5 597 281 for the word mark ‘IGI’.

Since the use of these marks was to be proven for the same scope of services and the opponent has also failed to prove their enhanced distinctiveness, the outcome cannot be different with respect to goods for which the opposition has already been 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. 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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Fabian GARCIA QUINTO

Loreto URRACA LUQUE

Gueorgui 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.