OPPOSITION No B 2 764 317

The Swatch Group Management Services AG (the Swatch Group Management Services SA) (the Swatch Group Management Services Ltd.), Seevorstadt 6, 2502 Bienne, Biel, Switzerland (opponent), represented by Despacho González-Bueno, S.L.P., Calle Velázquez 19, 2º dcha., 28001 Madrid, Spain (professional representative)

a g a i n s t

Sedma, 76 Route de Thionville, 2610 Luxembourg, Luxembourg (applicant), represented by Legabrand, 13, Rue Roux de Brignoles, 13006 Marseille, France (professional representative).

On 14/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 764 317 is partially upheld, namely for the following contested goods:

Class 14: Precious stones and semi-precious stones; pearls.

2.        European Union trade mark application No 15 311 681 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 311 681 ‘SEDA’. The opposition is based on international trade mark registration No 1 173 637 ‘SEDNA’ designating the European Union. 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: Precious metals and their alloys.

The contested goods are the following:

Class 14: Jewellery, precious stones and semi-precious stones; Paste jewellery [costume jewelry (Am.)], Pearls, Rings (jewellery, jewelry (Am.)), Bracelets, Cuffs (jewellery), Necklaces [jewellery, jewelry (Am.)], Chains, Chains, Charms, Earrings, Broaches, Ornamental pins, Pendants, Medals, Medallions, Cuff links; Tie pins, keyrings, hat ornaments of precious metal, shoe ornaments of precious metal, horological and chronometric instruments, watch straps, watch chains, gold thread, silver thread, caskets, cases and boxes for jewellery, presentation cases for watches, works of art of precious metal.

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.

The contested precious stones and semi-precious stones; pearls are similar to the opponent’s alloys of precious metals. The goods have the same purpose and they coincide in their end users. Furthermore, they can be complementary to each other.

The remaining contested goods jewellery; paste jewellery [costume jewelry (Am.)], rings (jewellery, jewelry (Am.)), bracelets, cuffs (jewellery), necklaces [jewellery, jewelry (Am.)], chains, chains, charms, earrings, broaches, ornamental pins, pendants, medals, medallions, cuff links; tie pins, keyrings, hat ornaments of precious metal, shoe ornaments of precious metal, horological and chronometric instruments, watch straps, watch chains, gold thread, silver thread, caskets, cases and boxes for jewellery, presentation cases for watches, works of art of precious metal are essentially pieces of jewellery, hat and shoe ornaments, threads for embroidery, watches and parts of watches, cases and works of art of precious metals. These goods are finished products that are essentially bought by end users in jewellery shops or they are specialised goods for embroidery businesses (gold thread, silver thread which are a combination of cotton/silk and metal threads) or for the hat and shoe making industry (hat and shoe ornaments). In contrast, the opponent’s precious metals and their alloys are raw materials. Therefore, the goods under comparison are directed at different end users with different interests. The goods are of a different nature, they serve different purposes and are neither in competition with each other nor complementary to each other. They also differ in their distribution channels, sales outlets and producers. The goods are dissimilar.

The opponent cites opposition decision No B 2 308 693, in particular a paragraph which compares watches with precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes, namely precious stones. The Opposition Division points out that the term ‘namely’ is exclusive and restricts the scope of protection only to the specifically listed goods, i.e. precious stones. Thus, the decision establishes that watches and precious stones are similar. This comparison is not relevant to the case at hand, since the contested watches have to be compared to the opponent’s precious metals and their alloys.

However, in the same decision there is a paragraph that is relevant to the case at hand, namely when the Opposition Division establishes dissimilarity between watches and precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes, namely gold, silver, platinum. Consequently, the decision cited by the opponent found watches to be dissimilar to gold, silver or platinum, i.e. precious metals that are also relevant in the decision at hand.

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.

The goods at issue are specialised goods directed at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average (e.g. for semi-precious stones) to high (e.g. for precious stones, pearls and alloys of precious metals), essentially depending on the price of the product.

3. The signs

SEDNA	SEDA
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The contested sign is not meaningful in certain territories, for example, in those countries where German is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the German-speaking part of the public.

Both signs are word marks.

The contested sign has no meaning for the relevant public and is, therefore, distinctive.

In this context the applicant argues that the contested sign is ‘an oriental first name that comes from Turkey’ and it attached an extract from the database ‘first names meanings.com’. However, this database does not prove that this meaning is known by the relevant German-speaking public.

As to the earlier mark, for the majority of the German-speaking public it has no meaning and it is, therefore, distinctive.

A minority of the German-speaking public will understand the earlier mark as ‘a planetoid (i.e. minor planet) of the solar system’ (see Duden Online dictionary). As this meaning is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.

Visually, the signs coincide in the letters ‘SED*A’. However, they differ in the additional letter ‘N’ in the middle of the earlier mark.

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.

Both signs share the same initial letters ‘SED-’ and are of similar length. Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters /sed*a/’, present identically in both signs. The pronunciation differs in the sound of the additional letter /n/ in the middle of the earlier sign. Both signs consist of two syllables. 

Therefore, the signs are aurally highly similar.

Conceptually, neither of the signs has a meaning for the majority of the German-speaking public. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for the majority of the German-speaking public.

Although a small part of the German-speaking public will perceive a meaning in the earlier mark, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar for this part of the relevant public.

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.

While the opponent refers to the ‘reputed company Omega’ it did not explicitly claim that its mark ‘SEDNA’ 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.

5. 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).

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.

The goods are either similar or dissimilar. They are directed at business customers whose degree of attention varies from normal to high.

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).

The signs have a very similar structure and differ only in the additional letter ‘N’ in the middle of the earlier mark where this letter will not receive much attention. Consequently, the signs are highly similar both visually and aurally from the perspective of the German-speaking public.

The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings. In case R 1441/2012-1 BRAS/BRASA the Boards of appeal established a ‘clear conceptual dissimilarity’ for the relevant Portuguese-speaking public and the signs clearly differ in the number of syllables and also in the way the letter /s/ is pronounced in the signs. Aurally, the signs were deemed similar to a low degree. In the case at hand the signs are aurally similar to a high degree because they have the same number of syllables and only differ in the sound of the letter /n/. Furthermore, the majority of the relevant German-speaking public will not associate the signs with any meanings. In the other decisions cited by the applicant two figurative marks were compared or a word mark was compared with a sign containing a dominant figurative element. Therefore, the signs of these decisions are not comparable.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the German-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s international trade mark registration designating the European Union. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods found to be similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Julia SCHRADER

Beatrix STELTER

Swetlana BRAUN

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.