OPPOSITION DIVISION
OPPOSITION No B 2 800 509
J&Joy SA, 6 Avenue Edmond Leburton, 4300 Waremme, Belgium (opponent),
represented by Koan Law Firm, Terhulpsesteenweg 166, 1170 Bruxelles, Belgium
(professional representative)
a g a i n s t
Street Light Production s.r.o., Balbínova 404/22, 12000 Praha 2, Czech Republic
(applicant), represented by Roman Fojtášek, Vinohradská 6, 120 00 Praha 2, Czech
Republic (professional representative).
On 17/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 800 509 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
PRELIMINARY REMARK
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against some of the goods and services of
European Union trade mark application No 15 675 713, , namely against all the
goods in Classes 14, 18 and 25, and some of the goods and services in Classes 16
and 35. The opposition is based on European Union trade mark registration
No 11 411 601, . 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.
Decision on Opposition No B 2 800 509 page: 2 of 12
a) The goods and services
The goods on which the opposition is based are the following:
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; agates; clock hands [clock and
watch making]; alloys of precious metal; jewelry of yellow amber; pearls
made of ambroid [pressed amber]; amulets [jewellery, jewelry (Am.)];
anchors [clock and watch making]; silver, unwrought or beaten; spun
silver [silver wire]; silver thread; works of art of precious metal; rings
[jewellery, jewelry (Am.)]; pendulums [clock and watch making]; barrels
[clock and watch making]; cloisonné jewellery [jewelry (Am.)]; clock
cases; boxes of precious metal; watch cases; earrings; cuff links;
bracelets [jewellery, jewelry (Am.)]; watch bands; charms [jewellery,
jewelry (Am.)]; brooches [jewellery, jewelry (Am.)]; busts of precious
metal; dials [clock and watch making]; sundials; clockworks; chains
[jewellery, jewelry (Am.)]; watch chains; chronographs [watches];
chronometers; stopwatches; chronometrical instruments; chronoscopes;
necklaces [jewellery, jewelry (am.)]; master clocks; diamonds; jewelry
cases [caskets]; cases for watches [presentation]; pins [jewellery, jewelry
(Am.)]; tie pins; ornamental pins; cases for clock- and watchmaking; wire
of precious metal [jewellery, jewelry (Am.)]; tie clips; clocks; atomic
clocks; clocks and watches, electric; badges of precious metal; iridium;
ivory [jewellery, jewelry (Am.)]; jet, unwrought or semi-wrought; copper
tokens; jewelry; ingots of precious metals; medals; medallions [jewellery,
jewelry (Am.)]; precious metals, unwrought or semi-wrought; coins;
watches; wristwatches; movements for clocks and watches; olivine
[gems]; gold, unwrought or beaten; gold thread [jewellery, jewelry (Am.)];
hat ornaments of precious metal; ornaments of jet; osmium; palladium;
ornaments [jewellery, jewelry (Am.)]; shoe ornaments of precious metal;
pearls [jewellery, jewelry (Am.)]; beads for making jewelry; precious
stones; semi-precious stones; platinum [metal]; key rings [trinkets or
fobs]; watch springs; alarm clocks; rhodium; ruthenium; spinel [precious
stones]; statues of precious metal; statuettes of precious metal; jewellery
(paste -); watch glasses.
Class 18: Leather and imitations of leather, and goods made of these materials and
not included in other classes; animal skins, hides; trunks and travelling
bags; umbrellas and parasols; walking sticks; whips, harness and
saddlery; alpenstocks; umbrella rings; saddle trees; fastenings for
saddles; umbrella or parasol ribs; bandoliers; gold beaters’ skin; hat
boxes of leather; boxes of leather or leather board; boxes of vulcanised
fibre; cattle skins; harness for animals; purses; chain mesh purses; gut
for making sausages; bridles [harness]; bridoons; straps for soldiers’
equipment; cases, of leather or leatherboard; walking sticks; umbrella
sticks; walking stick seats; frames for umbrellas or parasols; handbag
frames; game bags [hunting accessories]; school bags; leatherboard;
horse collars; kid; travelling trunks; vanity cases (not fitted); collars for
animals; laces (leather -); curried skins; harness straps; straps for skates;
straps of leather [saddlery]; horse blankets; coverings of skins [furs];
butts [parts of hides]; leather, unworked or semi-worked; leather twist;
pads for horse saddles; slings for carrying infants; stirrups; stirrups (parts
Decision on Opposition No B 2 800 509 page: 3 of 12
of rubber for -); stirrup leathers; key cases; horseshoes; net bags for
shopping; whips; umbrella covers; fur; casings, of leather, for springs;
trimmings of leather for furniture; harness fittings; knee-pads for horses;
clothing for pets; haversacks; covers for horse-saddles; leather leads;
leather straps; halters; trunks [luggage]; suitcases; attaché cases; cat o’
nine tails; chin straps, of leather; moleskin [imitation of leather]; bits for
animals [harness]; muzzles; nose bags [feed bags]; blinders [harness];
umbrellas; parasols; chamois leather, other than for cleaning purposes;
animal skins, hides; walking cane handles; umbrella handles; suitcase
handles; card cases [notecases]; briefcases; music cases; pocket
wallets; reins; furniture coverings of leather; tool bags of leather, empty;
sling bags for carrying infants; backpacks; handbags; shopping bags;
wheeled shopping bags; bags for climbers; bags for campers; beach
bags; bags for sports; travelling bags; pouches, of leather, for packaging;
garment bags for travel; pouch baby carriers; bands of leather; saddlery;
riding saddles; imitation leather; traces [harness]; travelling sets
[leatherware]; valises; valves of leather.
Class 25: Clothing, footwear, headgear; non-slipping devices for footwear;
motorists’ clothing; bathing caps; swimsuits; bath robes; bath sandals;
bath slippers; bandanas [neckerchiefs]; headbands [clothing]; stockings;
stockings (sweat-absorbent -); bibs, not of paper; berets; smocks; boas
[necklets]; teddies [undergarments]; hosiery; caps [headwear]; shower
caps; boots; half-boots; tips for footwear; suspenders; lace boots; collar
protectors; camisoles; pants; bathing trunks; skull caps; bodices
[lingerie]; hoods [clothing]; hat frames [skeletons]; belts [clothing]; money
belts [clothing]; shawls; footmuffs, not electrically heated; sweaters; hats;
paper hats [clothing]; headgear for wear; chasubles; socks; slippers;
footwear; football boots; beach shoes; ski boots; boots for sports; shirts;
short-sleeve shirts; tights; shoulder wraps; wet suits for water-skiing; slips
[undergarments]; combinations [clothing]; ready-made clothing; corselets;
corsets [underclothing]; suits; masquerade costumes; ear muffs
[clothing]; studs for football boots; neckties; breeches for wear; babies’
pants [clothing]; cyclists’ clothing; dress shields; outerclothing; ready-
made linings [parts of clothing]; sashes for wear; footwear uppers; shirt
yokes; esparto shoes or sandals; fur stoles; detachable collars; fittings of
metal for footwear; sock suspenders; scarfs; furs [clothing]; gabardines
[clothing]; girdles; galoshes; ski gloves; gloves [clothing]; vests; spats;
wimples; gymnastic shoes; clothing; top hats; waterproof clothing; leg
warmers; stocking suspenders; garters; jerseys [clothing]; skirts; skorts;
petticoats; ascots; layettes [clothing]; leggings [trousers]; liveries;
singlets; cuffs; muffs [clothing]; maniples; coats; mantillas; sleep masks;
mittens; miters [hats]; topcoats; trousers; parkas; dressing gowns;
pelerines; pelisses; beach clothes; shirt fronts; pockets for clothing;
pocket squares; ponchos; pullovers; pyjamas; dresses; jumper dresses;
wooden shoes; sandals; saris; sarongs; soles for footwear; inner soles;
underpants; shoes; gaiter straps; underwear; underwear (anti-sweat -);
brassieres; sports shoes; aprons [clothing]; heelpieces for footwear;
heelpieces for stockings; heels; tee-shirts; boot uppers; togas; welts for
footwear; knitwear [clothing]; turbans; uniforms; stuff jackets [clothing];
jackets [clothing]; fishing vests; clothing for gymnastics; clothing of
leather; clothing of imitations of leather; paper clothing; cap peaks; veils
[clothing].
Decision on Opposition No B 2 800 509 page: 4 of 12
The contested goods and services are the following:
Class 14: Jewellery; agates; amulets [jewellery, jewelry (Am.)]; imitation jewellery
ornaments; cut diamonds; brooches [jewelry]; diadems; diamonds;
precious jewellery; precious and semi-precious gems; horological
articles; clocks and watches; imitation precious stones; imitation gold;
imitation pearls; pins being jewelry; cuff links; medallions; necklaces
[jewellery, jewelry (Am.)]; paste jewellery [costume jewelry (Am.)];
bracelets; earrings; ornaments, made of or coated with precious or semi-
precious metals or stones, or imitations thereof; pearls [jewellery, jewelry
(Am.)]; jewellery boxes and watch boxes; rings [jewellery, jewelry (Am.)];
chains [jewelry]; alloys of precious metal; ivory jewelry; works of art of
precious metal; objet d’art made of precious stones; gemstones, pearls
and precious metals, and imitations thereof.
Class 16: Brochures; catalogues; bookmarkers; comics; conference folders;
drawing materials; modeling compounds; embroidery designs [patterns];
clothing patterns; picture books; posters; promotional publications;
advertising posters; bags made of plastics for packaging; price tags;
labels, not of textile; pictures; drawings.
Class 18: Leather and imitations of leather; umbrellas and parasols; luggage, bags,
wallets and other carriers.
Class 25: Clothing; shoes; millinery; cotton coats; bikinis; blazers; blousons; boas;
bodies [clothing]; boleros; bomber jackets; coats; knitted caps;
headbands [clothing]; bonnets; top hats; ladies’ dresses; ladies’ clothing;
women’s suits; women’s ceremonial dresses; ladies’ underwear;
children’s wear; children’s headwear; theatrical costumes; long johns;
slippers; loungewear; lounging robes; denims [clothing]; morning coats;
rubbers [footwear]; blouses; silk clothing; silk scarves; one-piece suits;
leather jackets; underpants; culotte skirts; pantsuits; trousers; hoods
[clothing]; bucket caps; hats; union suits; ready-made clothing; waist
cinchers; shirts; skirt suits; leather clothing; dresses made from skins;
furs [clothing]; neckwear; visors; balaclavas; footless tights; maternity
clothing; sweat shirts; miniskirts; fashion hats; monokinis; bowties;
snoods [scarves]; cravats; undershirts; knee-high stockings; casualwear;
leisure suits; negligees; rainproof clothing; leisurewear; belts [clothing];
jumper suits; paper clothing; waist belts; shoulder wraps [clothing];
cloaks; bathing suits; beach clothes; ball gowns; polo shirts; ponchos;
socks; stockings; work shoes; work clothes; slipovers; hosiery; pajamas
(Am.); turtleneck shirts; open-necked shirts; gloves [clothing]; muffs
[clothing]; jackets [clothing]; shawls; bandanas [neckerchiefs]; jumper
dresses; dresses; school uniforms; shorts; bottoms [clothing]; underwear;
petticoats; dress shoes; formalwear; evening wear; sportswear; sports
shoes; skirts; stoles; wedding dresses; sweaters; outerclothing;
overcoats; dance costumes; togas; tops [clothing]; tee-shirts; sports
jerseys; tunics; uniforms; uniforms for commercial use; formal evening
wear; vests; aprons [clothing]; veils [clothing]; chemisettes; robes; caps
[headwear]; baselayer bottoms; baselayer tops; suits; stocking
suspenders.
Class 35: Fashion shows for promotional purposes (Organization of -); fashion
show exhibitions for commercial purposes.
Decision on Opposition No B 2 800 509 page: 5 of 12
As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR,
goods or services are not regarded as being similar to or dissimilar from 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 14
Jewellery; agates; amulets [jewellery, jewelry (Am.)]; brooches [jewelry]; pins being
jewelry; cuff links; medallions; necklaces [jewellery, jewelry (Am.)]; bracelets;
earrings; pearls [jewellery, jewelry (Am.)]; rings [jewellery, jewelry (Am.)]; chains
[jewelry]; alloys of precious metal; ivory jewelry; works of art of precious metal are
identically contained in both lists of goods.
The contested precious jewellery; paste jewellery [costume jewelry (Am.)]; diadems;
imitation gold; imitation pearls; imitation precious stones; gemstones, pearls and
precious metals, and imitations thereof are included in the broad categories of the
opponent’s jewellery, precious stones; precious metals and their alloys. Therefore,
they are identical.
The contested cut diamonds; diamonds; precious and semi-precious gems are
included in the broad category of the opponent’s precious stones and semi-precious
stones. Therefore, they are identical.
The contested imitation jewellery ornaments; ornaments, made of or coated with
precious or semi-precious metals or stones, or imitations thereof are included in the
broad category of the opponent’s ornaments [jewellery, jewelry (Am.)]. Therefore,
they are identical.
The contested clocks and watches include, as a broader category, the opponent’s
clocks and watches, electric. Since the Opposition Division cannot dissect ex officio
the broad category of the contested goods, they are considered identical to the
opponent’s goods.
The contested jewellery boxes and watch boxes include, as a broader category, or
overlap with the opponent’s boxes of precious metal. Since the Opposition Division
cannot dissect ex officio the broad category of the contested goods, they are
considered identical to the opponent’s goods.
The contested horological articles are included in the broad category of the
opponent’s horological and chronometric instruments. Therefore, they are identical.
The contested objet d’art made of precious stones overlap with the broad category of
the opponent’s precious stones. Therefore, they are identical.
Contested goods in Class 18
Leather and imitations of leather; umbrellas and parasols are identically contained in
both lists of goods.
Decision on Opposition No B 2 800 509 page: 6 of 12
The contested luggage overlaps with the opponent’s trunks [luggage]. Therefore,
they are identical.
The contested bags are included in the broad category of the opponent’s trunks and
travelling bags. Therefore, they are identical.
The contested wallets and other carriers include, as a broader category, or overlap
with the opponent’s pocket wallets. Therefore, they are identical.
Contested goods in Class 16
The contested bags made of plastics for packaging have some points in common
with the opponent’s pouches, of leather, for packaging in Class 18, since both can be
used for storing or transporting documents. Although they are made of different
materials, it cannot be excluded that, because they can have the same purpose, they
may be sold in the same outlets and target the same consumers. Moreover, they may
be in competition with each other to a certain extent. Therefore, they are considered
similar to a low degree.
The contested brochures; catalogues; bookmarkers; comics; picture books; posters;
promotional publications; advertising posters; price tags; labels, not of textile;
pictures are all types of printed matter, serving to entertain or inform. They have
different natures, purposes and methods of use from the opponent’s goods in
Classes 14, 18 and 25; in addition, these goods meet different needs, have different
distribution channels and target different consumers. Moreover, they are not
complementary or in competition with each other. The mere fact that the contested
goods can be used to disseminate information about the opponent’s goods is not
sufficient to make them similar. Therefore, they are dissimilar.
The contested conference folders; drawing materials; modeling compounds;
embroidery designs [patterns]; clothing patterns; drawings are also considered
dissimilar to the opponent’s goods in Classes 14, 18 and 25. The companies that
produce these contested goods do not generally manufacture clothing, leather goods
or jewellery. Therefore, the relevant consumer will not think that the same company is
responsible for producing both the contested goods and the opponent’s goods.
Moreover, they have different purposes, are distributed through different channels
and are neither complementary nor in competition with each other. The mere fact that
some of these goods, for example clothing patterns or embroidery designs [patterns],
may be used in making some of the opponent’s goods is not sufficient for a finding of
similarity between them.
Contested goods in Class 25
The contested clothing; shoes; millinery; cotton coats; bikinis; blazers; blousons;
boas; bodies [clothing]; boleros; bomber jackets; coats; knitted caps; headbands
[clothing]; bonnets; top hats; ladies’ dresses; ladies’ clothing; women’s suits;
women’s ceremonial dresses; ladies’ underwear; children’s wear; children’s
headwear; theatrical costumes; long johns; slippers; loungewear; lounging robes;
denims [clothing]; morning coats; rubbers [footwear]; blouses; silk clothing; silk
scarves; one-piece suits; leather jackets; underpants; culotte skirts; pantsuits;
trousers; hoods [clothing]; bucket caps; hats; union suits; ready-made clothing; waist
cinchers; shirts; skirt suits; leather clothing; dresses made from skins; furs [clothing];
neckwear; visors; balaclavas; footless tights; maternity clothing; sweat shirts;
miniskirts; fashion hats; monokinis; bowties; snoods [scarves]; cravats; undershirts;
knee-high stockings; casualwear; leisure suits; negligees; rainproof clothing;
Decision on Opposition No B 2 800 509 page: 7 of 12
leisurewear; belts [clothing]; jumper suits; paper clothing; waist belts; shoulder wraps
[clothing]; cloaks; bathing suits; beach clothes; ball gowns; polo shirts; ponchos;
socks; stockings; work shoes; work clothes; slipovers; hosiery; pajamas (Am.);
turtleneck shirts; open-necked shirts; gloves [clothing]; muffs [clothing]; jackets
[clothing]; shawls; bandanas [neckerchiefs]; jumper dresses; dresses; school
uniforms; shorts; bottoms [clothing]; underwear; petticoats; dress shoes; formalwear;
evening wear; sportswear; sports shoes; skirts; stoles; wedding dresses; sweaters;
outerclothing; overcoats; dance costumes; togas; tops [clothing]; tee-shirts; sports
jerseys; tunics; uniforms; uniforms for commercial use; formal evening wear; vests;
aprons [clothing]; veils [clothing]; chemisettes; robes; caps [headwear]; baselayer
bottoms; baselayer tops; suits; stocking suspenders are either included in the broad
category of the opponent’s clothing, footwear, headgear or identically contained in
both lists of goods. Therefore, they are identical.
Contested services in Class 35
The contested fashion shows for promotional purposes (organization of -); fashion
show exhibitions for commercial purposes consist in providing others with assistance
in the sale of their goods by promoting their launch and/or sale, or in reinforcing the
client’s position in the market and acquiring competitive advantage through publicity.
In order to fulfil this target, many different means and products might be used. These
services are provided by specialised companies which study their client’s needs and
provide all the necessary information and advice for the marketing of their products,
and create a personalised strategy regarding the promotion of their goods through
organising fashion shows, show exhibitions, etc. The nature and purpose of these
services are fundamentally different from the manufacture of goods; they serve
different needs, differ in their methods of use and are neither in competition with nor
necessarily complementary to each other. The mere fact that the opponent’s goods
may appear in fashion shows or exhibitions is insufficient for a finding of similarity.
Therefore, these contested services are considered dissimilar to the opponent’s
goods in Classes 14, 18 and 25.
b) 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 a low degree) are
directed at the public at large, in the case of the goods in Class 25, and at the public
at large and business consumers with specific professional knowledge or expertise,
in the case of the goods in Classes 14 and 18. The degree of attention is average in
relation to the goods in Class 25 and may vary from average to higher than average
in relation to the goods in Class 18; in relation to the goods in Class 14, a relatively
high degree of attention on the part of the consumer may be assumed, since
consumers generally put a certain amount of thought into the selection of these
goods, because in many cases the goods will be luxury items or will be intended as
gifts (09/12/2010, R 900/2010-1, Leo Marco (fig.) / LEO, § 22).
Decision on Opposition No B 2 800 509 page: 8 of 12
c) 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 earlier mark is a figurative mark consisting of two diagonal curved lines, the
lower one being longer, and two dots at the upper end of each line, which may be
perceived by the relevant public as abstract geometric shapes or as a stylised
depiction of two lower case letters, ‘jj’.
The contested sign is a figurative mark consisting of two lower case letters, ‘jj’, and a
figurative element depicting a black circle with a white triangle in its centre.
Considering the abovementioned possible perceptions of the earlier mark, the
Opposition Division finds it appropriate to first examine the opposition in relation to
the part of the public that will perceive the earlier mark as portraying the stylised
lower case letters ‘jj’. This part of the relevant public would indeed be more likely to
confuse the signs, in view of the coinciding letters ‘jj’, and this scenario is therefore
the most advantageous scenario for the opponent.
The distinctiveness of the element ‘jj’ in each of the signs is normal, since this
element does not describe or allude to any characteristics of the relevant goods in a
manner that could affect its distinctiveness in a material way. Although it plays an
independent role in the overall composition of the mark, the figurative element of the
contested sign is rather weak, since it consists of quite a simple combination of two
basic geometric shapes. Therefore, its distinctiveness is low. Consequently, the
element ‘jj’ is the most distinctive element of the contested sign.
Neither the earlier mark nor the contested sign has any element that could be
considered clearly more dominant (visually eye-catching) than other elements.
Visually, the signs are similar to the extent that they both depict the lower case
letters ‘jj’. However, they differ in all other aspects. In the earlier mark, the letters ‘jj’
are depicted as two diagonal curved lines, one being shorter than the other, and are
not clearly perceptible as the letters ‘jj’ at first sight. In the contested sign, however,
the letters ‘jj’ are depicted in a clear and easily legible typeface and, in addition, the
contested sign has a stand-alone figurative element that, although not particularly
distinctive, is clearly perceptible and creates an additional visual difference from the
earlier mark.
Decision on Opposition No B 2 800 509 page: 9 of 12
The opponent refers to case-law and claims that the verbal element of the contested
sign should be considered more distinctive than the figurative element and that,
moreover, since consumers read from left to right, their attention will be focused on
the letters ‘jj’ at the beginning of the mark, instead of on the figurative element. The
Opposition Division does not fully agree with this assessment. Although it is true that
the letters ‘jj’ in the contested sign are more distinctive than the figurative element,
the signs under comparison are two-letter signs and, according to established
practice, in short signs even small differences may lead to different visual
impressions, since the public is able more easily to perceive all of their single
elements.
Consequently, even though the signs under comparison depict the lower case letters
‘jj’, the fact that they are short two-letter signs makes the differences in their graphical
depictions of particular importance. Considering the differences in the shapes of the
letters ‘jj’ and the fact that the contested sign has an additional figurative element that
plays an independent role in the overall visual composition of the mark, the graphical
depiction of the contested sign clearly differs from that of the earlier mark, and these
differences are sufficient to convey to the consumer a different visual impression.
Therefore, the signs are considered not visually similar.
Aurally, since the earlier mark and the contested sign contain the same two letters,
‘jj’, and the figurative element of the contested sign will not be referred to orally by the
relevant consumers, the signs will be pronounced identically.
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 to be identical in one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) 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.
In its observations of 19/05/2017, the opponent claims that earlier European Union
trade mark No 11 411 601 enjoys a reputation or, at the very least, enhanced
distinctiveness, as a result of its long-standing and intensive use since 2006, in
Europe and internationally, in connection with goods in the field of clothing. 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 only evidence that the opponent submitted within the time limit to substantiate
the earlier mark and to submit any further facts, evidence and arguments to support
its claim of enhanced distinctiveness (which ended on 19/05/2017) was a link to the
opponent’s website http://www.jn-joy.com. The Opposition Division considers that one
link to a website does not demonstrate that the earlier mark on which the opposition
is based has acquired a high degree of distinctiveness through its use.
Decision on Opposition No B 2 800 509 page: 10 of 12
Since the opponent did not file any other evidence in order to prove that this mark
had acquired reputation or enhanced distinctiveness through use in the European
Union for the relevant goods, 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.
e) 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).
As concluded above, the contested goods and services are partly identical, partly
similar (to a low degree) and partly dissimilar to the opponent’s goods. They target
the public at large with an average degree of attention in the case of the goods in
Class 25; the public at large and business consumers, whose degree of attention will
vary from average to higher than average, in the case of the goods in Class 18; and
the public at large and business consumers with a relatively high degree of attention
in the case of the goods in Class 14. The distinctiveness of the earlier mark is
average.
The earlier mark and the contested sign are considered visually not similar and
aurally identical, and the conceptual aspect does not influence the assessment of
similarity, since both marks are meaningless.
The earlier mark and the contested sign are similar insofar as they have the letters ‘jj’
in common, which constitute the earlier mark in its entirety and is the most distinctive
element of the contested sign. However, considering that the signs under comparison
are short marks, consisting of two letters (and an additional figurative element in the
case of the contested sign), and that both signs are figurative marks, the stylisation of
the letters (and the addition of a figurative element in the case of the contested sign)
plays an important role in assessing the likelihood of confusion. As explained in detail
in section c), the ways in which these letters are depicted in the earlier mark and the
contested sign (including the fact that the contested sign has an additional figurative
element) differ to such an extent that the signs under comparison are not visually
similar.
Furthermore, account must be taken of the fact that the relevant goods (which are
identical) are goods in Classes 14, 18 and 28, in relation to which the visual
perception of the marks in question will generally take place prior to their purchase.
Therefore, the visual differences between the marks, resulting from the differing
depictions of the letters ‘jj’ and the additional figurative element of the contested sign,
are particularly relevant in this case.
The opponent refers to 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. However, in the present case, considering the significant visual
differences between the marks under comparison and the fact that the signs lack any
conceptual link that would enable the public to associate them, it is reasonable to
assume that the relevant consumers, even taking into account the principle of
Decision on Opposition No B 2 800 509 page: 11 of 12
imperfect recollection, will not be led to believe that the goods in question come from
the same undertaking or economically linked undertakings.
Consequently, although the marks under comparison have in common the letters ‘jj’,
which makes them aurally identical, the visual differences between them are
sufficiently striking to avoid a likelihood of confusion, including a likelihood of
association, among the relevant public, even where the degree of attention of the
relevant public is average and even in relation to identical goods.
The opponent also refers to letters it has sent to the applicant requesting that it
withdraw its trade mark application for all goods and services in Classes 14, 18, 25
and 35, with the aim of finding an amicable resolution to the conflict, and to the fact
that the applicant has refused to sign a coexistence agreement proposed by the
opponent. The opponent also affirms that the applicant’s trade mark is used on the
applicant’s website to commercialise its products (including magazines and
bracelets).
The Opposition Division notes that the examination of the opposition under
Article 8(1)(b) EUTMR is, in principle, limited to the trade mark as applied for and the
earlier mark as protected, in relation to the goods and/or services for which the trade
marks are filed or registered, and that other circumstances, such as the commercial
implications, extent or manner of use cannot be taken into account. A comparison of
the goods and services is part of the assessment of likelihood of confusion, but not
an assessment of actual confusion or infringement. Therefore, in order to assess the
similarity of the goods at issue, within the meaning of Article 8(1)(b) EUTMR, the
group of goods and services protected by the marks at issue must be taken into
account, and not the goods actually marketed subject to those marks (16/06/2010,
T-487/08, Kremezin, EU:T:2010:237, § 71).
As regards the negotiations between the parties referred to by the opponent, the fact
that they have taken place, their subject and their outcome have no bearing on the
current proceedings, and they are, therefore, irrelevant.
Considering all the above, the Opposition Division finds that there is no likelihood of
confusion on the part of the public.
Therefore, the opposition must be rejected.
For the sake of completeness, the Opposition Division points out that there is no
need to compare the signs for the part of the public that does not perceive the earlier
mark as ‘jj’, since the outcome would not be different. If there is no likelihood of
confusion for those consumers who perceive the earlier mark as ‘jj’, a fortiori there is
no likelihood of confusion for those consumers who perceive it in another way, since
for these consumers the signs under comparison are even more different.
COSTS
According to Article 109(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.
Decision on Opposition No B 2 800 509 page: 12 of 12
According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3)
and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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.
The Opposition Division
Janja FELC Rasa BARAKAUSKIENE Judit NÉMETH
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100
(Annex I A(33) EUTMR) has been paid.