OPPOSITION No B 2 776 642

Rosefield Watches B.V., Kerkstraat 310, 1017HC Amsterdam, The Netherlands (opponent), represented by Chiever BV, Barbara Strozzilaan 201, 1083 HN Amsterdam, The Netherlands (professional representative)

a g a i n s t

Shenzhen Bili Advertisement Co., Ltd., Rm.16D, Unit 2, Bldg. 3, Danzhutou Yingjun Nianhua, Nanwan St., Longgang Dist., Shenzhen, People’s Republic of China (applicant), represented by Al & Partners S.R.L., Via C. Colombo ang. Via Appiani (Corte del Cotone), 20831 Seregno (MB), Italy (professional representative).

On 19/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 776 642 is upheld for all the contested goods.

2.        European Union trade mark application No 15 556 665 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 556 665, namely against all the goods in Class 14. The opposition is based on Benelux trade mark registration No 970 739. 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

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

Class 14:         Jewellery, precious stones, horological and chronometric instruments, watches.

The contested goods are the following:

Class 14:         Precious metals, unwrought or semi-wrought; jewelry boxes; bracelets [jewellery, jewelry (Am.)]; chains [jewellery, jewelry (Am.)]; necklaces [jewellery, jewelry (Am.)]; wristwatches; brooches [jewellery, jewelry (Am.)]; clocks; watch straps; precious stones.

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 stones are identically contained in both lists of goods.

The contested bracelets [jewellery, jewelry (Am.)]; chains [jewellery, jewelry (Am.)]; necklaces [jewellery, jewelry (Am.)]; brooches [jewellery, jewelry (Am.)] are included in the broad category of the opponent’s jewellery. Therefore, they are identical.

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

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

The contested precious metals, unwrought or semi-wrought are similar to the opponent’s precious stones. This is because they can have the same purpose and end users. Furthermore, they are complementary.

The contested jewelry boxes are similar to the opponent’s jewellery, as they can have the same producers, end users and distribution channels. Furthermore, they are complementary.

The contested watch straps are similar to the opponent’s watches, as they can have the same producers, end users and distribution channels. 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 or similar are directed at the public at large and at professionals.

The relevant public’s degree of attention may vary between average and high, depending on the price, sophistication, or terms and conditions of the purchased goods (for example, in relation to precious stones, 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).

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Benelux.

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 Benelux trade mark means that an earlier Benelux trade mark has identical protection in the relevant territories. Earlier Benelux trade marks may therefore be relied upon to challenge any subsequent application for a trade mark that would prejudice their protection, even if this is only in relation to the perception of consumers in part of the Benelux (07/09/2006, C-108/05, Europolis, EU:C:2006:530).

In the present case, ‘ROSEFIELD’ is meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public that understands English, such as the public in the Netherlands, where, as the Court has already confirmed, the general public has at least a basic understanding of the English language (26/11/2008, T-435/07, New Look, EU:T:2008:534, § 23).

The coinciding conjoined element ‘ROSEFIELD’ will be understood as ‘a field of roses’ by the relevant public. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.

The element ‘AMS’ of the earlier mark will be understood by the relevant public as a reference to Amsterdam, the capital and most populous city of the Netherlands. The element ‘NYC’ of the earlier mark is the most common abbreviation for New York City (as the Board confirmed in its decision of 03/05/2007, R 1191/2006-1, NYC LTD, § 7). Bearing in mind that the relevant goods are watches and jewellery-related goods, and that Amsterdam has been famous for its diamond industry for more than 400 years, while New York is often considered one of the top fashion capitals of the world, these verbal elements will be perceived as referring to the place of origin of the relevant goods. Therefore, both of these elements are non-distinctive. Furthermore, the vertical line between the verbal elements ‘AMS’ and ‘NYC’ serves only as a visual division and it will be attributed little or no trade mark significance.

The element ‘ROSEFIELD’ in the earlier sign is the dominant element as it is 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, and from top to bottom, which makes the part placed at the top of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in the distinctive element ‘ROSEFIELD’, which is also the dominant element of the earlier sign. The signs differ in the stylisation of the coinciding element, and in the additional elements of the earlier sign, namely ‘AMS’, ‘NYC’ and the vertical line between them. These differences are, however, of secondary importance. This is because the coinciding element is depicted in both signs in a nearly standard sans serif typeface; the main differences in stylisation are the letter spacing and letter width. Furthermore, the additional elements of the earlier sign are non-distinctive, substantially smaller and in a secondary position.

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the syllables ‘ROSE-FIELD’, present identically in both signs, forming their only distinctive elements. The additional elements of the earlier sign, as non-distinctive abbreviations, are unlikely to be pronounced. Even if these elements were pronounced, as non-distinctive elements their impact on consumers’ perception of the mark would be insignificant.

Therefore, the signs are aurally at least highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with similar meanings, 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.

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 some non-distinctive elements in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

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).

In the present case, the goods are partly identical and partly similar, and the signs are visually and conceptually highly similar and aurally at least highly similar.

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). In the present case, the degree of attention of the relevant public may vary between average and high; however, even highly attentive consumers need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

The differences between the signs are confined either to non-distinctive elements that refer to the geographical origin of the goods in a manner that is quite common in the fashion industry, including in the marketing of jewellery and watches, or to secondary aspects, such as the small differences in stylisation. Considering that there are no elements that would enable the consumers to effectively differentiate between the signs and that the relevant goods are identical or similar to an average degree, it is very likely that highly attentive consumers would assume that the goods in question came from the same undertaking or economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the relevant public that understands English. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of Benelux is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s Benelux trade mark registration No 970 739. It follows that the contested trade mark must be rejected for all the contested goods.

---

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

Denitza STOYANOVA-VALCHANOVA

Martin EBERL

Sigrid DICKMANNS

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.