OPPOSITION No B 2 411 307

Mirto Corporación Empresarial, S.L., C/ Emilio Muñoz, 57, 28037 Madrid, Spain (opponent), represented by Elzaburu, S.L.P., C/ Miguel Angel, 21, 28010 Madrid, Spain (professional representative)

a g a i n s t

Mirta Accessori Moda S.R.L., Via Don Milani, 18, 51031 Agliana – Pistoia, Italy (applicant), represented by Bugnion S.P.A., Via A. Gramsci 42, 50132 Firenze, Italy (professional representative).

On 13/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 411 307 is upheld for all the contested goods.

2.        European Union trade mark application No 12 923 959 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 12 923 959. The opposition is based on, inter alia, Spanish trade mark registration No 2 826 668. The opponent invoked Article 8(1)(b) and Article 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 Spanish trade mark registration No 2 826 668.

1. The goods

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.

The contested goods are the following:

Class 14: Gems, pearl and precious metals and imitations of precious metals; jewellery; jewellery; costume jewellery; time instruments; statuettes of precious metal; figurines coated with precious metal; model animals [ornaments] made of precious metal; model animals [ornaments] coated with precious metal; action figures (decorative -) of precious metal; jewellery boxes and watch boxes.

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

Gems, precious metals; jewellery (listed twice); time instruments are identically contained in both lists of goods (including synonyms).

The contested imitations of precious metals and the opponent's precious metals are similar. While they are clearly of a different nature, they serve the same purpose and have the same method of use. They are also in competition.

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

The opponent's precious stones are natural inorganic material, with the exception of metals, used in jewellery. Therefore, the contested pearl are included in the broad category of the opponent’s precious stones. Therefore, they are identical.

The contested statuettes of precious metal; figurines coated with precious metal; model animals [ornaments] made of precious metal; action figures (decorative -) of precious metal are included in the broad category of the opponent’s goods in precious metals. Therefore, they are identical.

The contested model animals [ornaments] coated with precious metal are included in the broad category of the opponent’s goods coated therewith [precious metals]. Therefore, they are identical.

The contested jewellery boxes are similar to jewellery as they can coincide in producer, end user and distribution channels. Furthermore they are complementary.

The contested watch boxes are similar to horological and chronometric instruments as they can coincide in producer, end user and distribution channels.

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 as well as at business customers with specific professional knowledge or expertise.

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. Indeed, in 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 some of the goods at issue. 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 for part of the goods, at least.

3. The signs

MIRTO
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 'MIRTO' will be perceived either as the name of a plant (myrtle) or as a male given name and 'MIRTA' in the contested sign will be perceived as a female given name. Neither word has a meaning in relation to the goods and is therefore distinctive. Likewise, the French word 'BIJOUX' of the contested sign has no meaning for the relevant public and is, therefore, distinctive

Neither sign has any element that could be considered clearly more dominant than other elements. Nevertheless, it should be noted that 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. Also, regarding the graphic elements of the contested sign, it must be noted that 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).

Visually, the earlier mark and the initial element of the contested sign coincide in their initial letters 'M-I-R-T' whereas they differ in their remaining letters, 'O' in the earlier mark and 'A' in the contested sign. The signs differ further in the element of the contested mark 'BIJOUX', as well as in the graphic elements of the contested sign. However, apart from the fact that these are not particularly elaborate or sophisticated, they also have a lesser impact on the consumer, as explained above.

Therefore, the signs are similar to an average degree.

Aurally, the pronunciation of the earlier mark and the initial element of the contested sign coincides in the sound of the letters 'M-I-R-T', present identically in both signs whereas they differ in their remaining letters, 'O' in the earlier mark and 'A' in the contested sign. The pronunciation differs further in the sound of the word 'BIJOUX' of the contested mark. As a consequence, the signs are similar to an average degree.

Conceptually, taking into account that, as seen above, 'MIRTO' and 'MIRTA' can be perceived as referring to the same name, albeit in their different gender versions, and that the word 'BIJOUX' has no meaning for the relevant public, the signs are similar to a high 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

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (see Canon, § 16).

According to the same line of case-law, 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). In addition, the global assessment of the risk of confusion entails certain interdependence between the factors taken into account and, in particular, between the similarity of the trademarks and the similarity of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 25).

In the present case, the goods have been found identical or similar and the signs are visually, aurally similar to an average degree and conceptually similar to a high degree in their respective word 'MIRTO' and 'MIRTA', the latter occupying the initial position with an independent distinctive role within the contested sign.

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).

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.

In the present case, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). Indeed, the contested signs could be perceived as referring to a specific line of goods stemming from the undertaking as the opponent's goods.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 2 826 668. It follows 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 extensive use/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 Spanish trade mark registration No 2 826 668 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

Sandra IBAÑEZ

Martina GALLE

Pedro JURADO MONTEJANO

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.