OPPOSITION No B 2 646 787

Gerhard D. Wempe KG, Steinstr. 23, 20095 Hamburg, Germany (opponent), represented by Meissner Bolte Patentanwälte Rechtsanwälte Partnerschaft Mbb, Beselerstr. 6, 22607 Hamburg, Germany (professional representative)

a g a i n s t

Kim Mee Hye Sprl, rue Saint-Géry 14, 1000 Brussel, Belgium (holder), represented by De Bock & Baluwé, Eedstraat 29, 9810 Eke, Belgium (professional representative).

On 28/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 646 787 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods and services of international registration designating the European Union No 1 252 726. The opposition is based on European Union trade mark registration No 3 281 748. The opponent invoked Article 8(1)(b) EUTMR.

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

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

1. The goods and services

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

Class 14: Precious metals and their alloys; goods in precious metals and/or their alloys or coated therewith (included in class 14), in particular works of arts and ornaments; precious stones; jewellery, in particular necklaces, bracelets, bangles, ear-clips, ear hoops, earrings, pendants for necklaces, lapel pins, brooches, chokers, wrist-watches and pocket watches, cigar and cigarette cases and holders, money clips, tie pins, cufflinks, key chains and fobs, pill boxes, all the aforesaid goods, in particular of gold, silver and/or platinum, including set with precious stones; clocks, in particular table, wall and ships' clocks and other horological instruments.

Class 20: Picture frames.

The contested goods and services are the following:

Class 14: Precious metals and their alloys; jewelry, precious stones, earrings, bracelets, rings, watches and timepieces.

Class 35: Advertising, business management; business administration; office functions; wholesale and retail of jewelry.

Class 42: Design of jewels and jewelry.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The terms ‘in particular’ and ‘including’ used in the opponent’s list of goods, indicate that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

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

Precious metals and their alloys; jewelry, precious stones are identically contained in both lists of goods (including synonyms).

The contested watches and timepieces are included in the broad category of the opponent’s horological instruments. Therefore, they are identical.

The contested earrings, bracelets, rings are included in the broad category of the opponent’s jewellery. Therefore, they are identical.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested wholesale and retail of jewelry are similar to a low degree to the opponent’s jewellery.

The contested advertising; business management; business administration; office functions are dissimilar to the opponent’s goods in Classes 14 and 20. Advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Business management services are intended to help companies manage their business by setting out the strategy and/or direction of the company. They involve activities associated with running a company, such as controlling, leading, monitoring, organising, and planning. They are usually rendered by companies specialised in this specific field such as business consultants. Business administration services are intended to help companies with the performance of business operations and, therefore, the interpretation and implementation of the policy set by an organisation’s board of directors. These services consist of organising people and resources efficiently so as to direct activities toward common goals and objectives. Office functions are the internal day-to-day operations of an organisation including the administration and the support services in the ‘back office’. They mainly cover activities that assist in the working of a commercial enterprise. The contested services, of which a more detailed explanation has been given above, are dissimilar to the opponent’s goods in Classes 14 and 20. Apart from being different in nature, given that services are intangible whereas goods are tangible, they serve different needs. Furthermore, the method of use of those goods and services is different. They are neither in competition with nor necessarily complementary to each other.

Contested services in Class 42

There is a low degree of similarity between jewellery and design of jewels and jewelry since they share the same relevant public and might coincide in the same usual origin (producer/provider). Producers of jewellery frequently provide design services for jewellery.

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 to various degrees are directed at the public at large and at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price of the purchased goods and services. As far the precious metals and precious stones, or even jewelry, as it was concluded 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. In many cases the goods will be luxury items or will be intended as gifts. A relatively high degree of attention on the part of the consumer may be assumed.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The opponent argues that the common element ‘KIM’ of both signs will be perceived as a Korean name and it is not common for Europe. The Opposition Division does not exclude the possibility that the element ‘KIM’ to be perceived as a Korean name, but, at the same time, it is very likely that this element to be perceived as a nickname for Kimberly, Kimball, Joakim, and to be commonly known in the relevant territory as a first name.

As regards the earlier mark, it must be noted that it is a frequent practice nowadays to use the combination of ‘by + name/surname/company name’ to inform consumers of the person designing the product or of the manufacturing company. Therefore, the earlier mark will be perceived as a person, KIM, which is producing certain goods.

Due to the preposition ‘by’ which introduces the name of the producer of certain goods and it is, therefore, non-distinctive, the element ‘KIM’ is the most distinctive element of the earlier mark.

The elements ‘MEE’ and ‘HYI’ of the contested mark will be perceived as surnames (of an oriental origin). It should be noted that surnames have, in principle, a higher intrinsic value as indicators of the origin of goods or services than first names. This is because common experience shows that the same first names may belong to a great number of people who do not have anything in common, whereas the presence of the same surname could imply the existence of some link between them (identity of the persons or a family link). Therefore, family names generally have a higher degree of distinctiveness. The contested sign ‘KIM MEE HYI’ as such is likely to be perceived as a first name and a surname by the public in the relevant territory, and, therefore, the elements ‘MEE HYI’ are thus considered more distinctive than the remaining verbal element in the sign.

The marks under comparison have no elements which could be considered clearly more dominant (visually eye-catching) than other elements.

The marks have different beginnings. 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 coincide in the element ‘KIM’. However, they differ in the element ‘BY’, first element of the earlier mark and in the elements ‘MEE HYI’ of the contested mark. The stylisation of the signs is not so relevant, as the earlier mark is written in bold upper case, and the contested mark is written in upper case only.

Therefore, the signs are visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the syllables /KIM/, present identically in both signs. The pronunciation differs in the syllable /BY/ of the earlier sign and the pronunciation of the additional elements ‘MEE HYI’ of the contested mark, which have no counterparts in the earlier sign. The marks have different structures and rhythms, the earlier mark being composed of two words and the contested mark being composed of three words, the common element being placed in different positions in the signs, namely second position in the earlier mark and first position in the contested mark.  

Therefore, 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. As the element ‘KIM’ of both signs will be associated with a similar meaning, the signs are similar to an average degree.

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

4. Distinctiveness of the earlier mark

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

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

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier 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, despite the presence of a non-distinctive element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The goods have been found to be identical and the services have been found to be partly similar to various degrees and partly dissimilar. The public’s degree of attentiveness may vary from average to high, depending on the price of the purchased goods and services.

The signs are visually, aurally and conceptually similar, inasmuch as they have the verbal element ‘KIM’ in common. The signs differ in the additional elements ‘BY’ of the earlier mark and ‘MEE HYI’ of the contested mark. The marks have different structures and rhythms, the earlier mark being composed of two words and the contested mark being composed of three words, the common element being placed in different positions in the signs, namely second position in the earlier mark and first position in the contested mark.

The earlier sign is likely to be perceived, by the public in the relevant territory, as a nickname of a first name, whereas the contested sign is likely to be perceived as composed of the nickname of a first name and a surname. As mentioned above, surnames have a higher intrinsic value than first names as indicators of the origin of goods or services. Therefore, surnames generally have a higher degree of distinctiveness. As the contested sign ‘KIM MEE HYI’ is likely to be perceived as a combination of a first name and a surname, the second elements, ‘MEE HYI’, are considered more distinctive and will have therefore more importance. There are so many people having an identical first name that the mere coincidence in a first name will in general not lead to a relevant likelihood of confusion (10/12/1999, R 95/2000-2, ‘LAURA/LAURA MERCIER’).

The additional elements are clearly perceivable and sufficient to exclude any likelihood of confusion between the marks.

Against this background, it is considered that the similarities between the marks are not strong enough to give rise to a likelihood of confusion and that the differences between them can differentiate the signs, so that even the public with an average degree of attention will not think that the goods and services in question, despite being identical or similar to various degrees, come from the same or economically linked undertakings.

Considering all the above, the Opposition Division finds that there is no likelihood of confusion on the relevant public. Therefore, the opposition must be rejected.

COSTS

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

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

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the holder are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Cristina CRESPO MOLTO

Francesca DINU

Janja FELC

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

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 will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.