OPPOSITION No B 1 945 347

Consolidated Artists B.V., Lijnbaan 68, 3012 EP Rotterdam, The Netherlands, (opponent), represented by Cabinet Degret, 24, place du Général Catroux, 75017 Paris, France (professional representative)

a g a i n s t

Stæhr Holding A/S, Grusbakken 14-16, 2820 Gentofte, Denmark (applicant), represented by Gorrissen Federspiel Advokatpartnerselskab, Silkeborgvej 2, 8000 Aarhus C, Denmark (professional representative).

On 19/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 1 945 347 is upheld for all the contested goods.

2.        European Union trade mark application No 10 122 992 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 10 122 992 in Class 14. The opposition is based on, inter alia, European Union trade mark registration No 3 360 815. The opponent invoked Articles 8(1)(b) and 8(5) EUTMR.

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

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

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 3 360 815.

1. The goods

The goods on which the opposition is based are, inter alia, 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.

The contested goods are the following:

Class 14: Watches and chronometric instruments including watches, wall clocks and alarm clocks, and parts and accessories (not included in other classes) thereto, including watch bands and watch bracelets.

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

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

The contested watches and chronometric instruments including watches, wall clocks and alarm clocks, are identical to the opponent’s, horological and chronometric instruments either because they are identically contained in both lists or because the opponent’s goods include the contested goods.

The contested parts and accessories (not included in other classes) thereto, including watch bands and watch bracelets (of watches and chronometric instruments including watches, wall clocks and alarm clocks) are similar to horological and chronometric instruments of the earlier mark as they can coincide in producer and end user. Furthermore they are complementary.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical and similar are directed at the public at large and at business customers with specific professional knowledge or expertise, for instance, parts of the watches and chronometric instruments. The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price. In this case, parts of the watches and chronometric instruments can be expensive items, for instance.

3. The signs

        

	MangoTime
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

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

The earlier mark is a figurative mark consisting of the word ‘MANGO’ written in stylised black upper case letters, whereas the contested sign is a word mark consisting of the word ‘MangoTime’, which is, in fact, a compound word made up from the words ‘Mango’ and ‘Time’. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether they are presented in upper or lower case letters, or in a combination thereof.

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

The word ‘mango’ forming the earlier mark and placed at the beginning of the contested sign will be understood by the relevant public as the name of a tropical fruit. This term is therefore distinctive for the relevant goods in class 14.

However, the element ‘-time’ placed at the end of the contested sign is an uncountable noun used to refer to what we measure in minutes, hours, days and years and, as such, refers to the characteristics of the goods in class 14 relating to watches and chronometric instruments. This term is therefore non-distinctive.

Visually, the signs coincide in the distinctive verbal element ‘mango’, which is the first element in the contested mark and the full earlier sign. However, they differ in the second verbal element ‘time’ of the contested mark, which is however non-distinctive, and the typeface used in the earlier mark. Regarding the typeface in which the verbal element of the earlier mark is written, this stylisation must be considered not that overwhelming and it will not lead the consumer’s attention away from the word it is supposed to embellish.

The only verbal element of the earlier sign is identical to the first word of the contested mark. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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.

Therefore, and taking the limited impact of the non-distinctive element ‘time’ into account, the signs are visually similar to at least an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the word ‘mango’, present identically in both signs. The pronunciation differs in the sound of the word ‘time’’ in the contested mark, which has no counterpart in the earlier sign.

Therefore, and taking the limited impact of the non-distinctive element ‘time’ into account, the signs are aurally similar to at least an average degree.

Conceptually, the signs coincide in the meaning of ‘mango’. The contested mark also has a meaning in the element ‘time’, although not distinctive. Therefore, to the extent that the signs will be associated with the concept of ‘mango’, and taking the limited impact of the non-distinctive element ‘time’ into account, the signs are conceptually similar to at least 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (eighth recital of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 18; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).

The goods are identical and similar.

The signs are visually, aurally and conceptually similar to at least an average degree as they coincide in the word ‘mango’, which constitutes the full earlier mark and the first word of the contested sign.

Taking into account that the earlier sign is fully incorporated at the beginning of the contested mark, it is considered that even if the average consumer is capable of detecting certain visual and aural differences between the two conflicting signs, the likelihood that he might associate the signs with each other is very real, this even with respect to the goods found to be similar.

The existence of that likelihood of confusion is reinforced by the fact that the relevant public only rarely has the chance to make a direct comparison between the different marks but must place its trust in the imperfect picture of them which it has kept in its mind. While it may be true that the relevant public is more attentive when acquiring some of the contested goods, it does not mean that the purchaser has always the opportunity to compare both marks side-by-side, so there will always be some degree of imperfect recollection of the absent mark at the time of acquisition.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion and therefore the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 3 360 815.

It follows from the above that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier right, European Union trade mark registration No 3 360 815, leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Martin MITURA

Inés GARCÍA LLEDÓ

Saida CRABBE

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.