OPPOSITION No B 2 503 244

Tempus Internacional – Importação de Relojoaria, S. A., Av. Infante D. Henrique, Lote 1679, r/c dto – clj, 1950 420 Lisbon, Portugal (opponent), represented by Simões, Garcia, Corte-Real & Associados – Consultores, Lda., Rua Castilho, 167, 2º andar, 1070-050 Lisbon, Portugal (professional representative)

a g a i n s t

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

On 20/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 503 244 is partially upheld, namely for the following contested goods:

Class 14: Handcrafted objects and ornaments in precious metals and their alloys or coated therewith; Jewellery stones; Jewellery, in particular necklaces, bracelets, bangles, ear clips, ear hoops, rings, pendants for necklaces, lapel pins, brooches, necklaces, wristwatches and pocket watches, tie pins and clips, cufflinks, key chains and key rings, all the aforesaid goods in particular of gold, silver and/or platinum, including set with precious stones; Timepieces, In particular table, wall and ships' clocks; Time instruments.

2.        European Union trade mark application No 13 554 761 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 13 554 761. The opposition is based on, inter alia, Portuguese trade mark registration No 351 466. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent shall furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition shall be rejected.

The applicant requested that the opponent submit proof of use of all the trade marks on which the opposition is based, namely Portuguese trade mark registration No 351 466 and Spanish trade mark registrations Nos 2 469 023, 2 469 025, 2 437 426 and 2 437 428.

The request was submitted in due time and is admissible, as the earlier marks were registered more than five years prior to the relevant date mentioned above.

The contested application was published on 07/01/2015. The opponent was therefore required to prove that the earlier marks on which the opposition is based were put to genuine use in Portugal and Spain, respectively, from 07/01/2010 to 06/01/2015 inclusive.

Furthermore, the evidence must show use of the trade marks for the goods and services on which the opposition is based, namely the following:

PT 351 466

Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; watches, horological and chronometric instruments.

Class 39: Services for distributing precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; services for distributing horological and chronometric instruments.

ES 2 469 023 and 2 437 426

Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; watches, horological and chronometric instruments.

ES 2 469 025 and 2 437 428

Class 39: Services for distributing precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; services for distributing horological and chronometric instruments.

According to Rule 22(3) EUTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 04/04/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 09/06/2016 to submit evidence of use of the earlier trade mark. On 09/06/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• 17 invoices, dated between 22/01/2010 and 12/11/2013, issued by the opponent and by another Portuguese company (Cronometria) and addressed to clients in different Portuguese regions and in Angola. The invoices reflect sales of different pieces of jewellery (rings, necklaces, earrings with gold, diamonds, pearls, etc.) under the mark ‘Splend’Oro’ in amounts ranging from EUR 3 399 to EUR 42 232, for a total of some EUR 143 000. The invoices are in Portuguese and the descriptions of the items sold have been translated into English.

• 11 publicity brochures in Portuguese, undated, showing the mark used in connection with a series of jewellery pieces being offered for sale by a Portuguese bank to its clients. Some of the jewellery appearing on the brochures corresponds with the items described in some of the invoices. Relevant extracts of these brochures are translated into English.

• Authenticity certificate for  jewellery pieces, undated.

• Print-out from the website of a Portuguese bank, undated, offering for sale different jewellery pieces under the mark .

• Price table, dated 01/06/2015, of different ‘Splend’Oro’ jewellery items.

• Declaration from the opponent and two other companies of its group, dated 09/05/2016, as well as extracts from the official commercial registry, showing that the company Cronometria belongs to the same group as the opponent.

As noted by the applicant, none of the evidence filed by the opponent relates to the Spanish market or to exports made from Spain. Consequently, the Opposition Division concludes that the evidence is not sufficient to prove the genuine use of Spanish trade mark registrations Nos 2 469 023, 2 469 025, 2 437 426 and 2 437 428 and therefore that the opposition should be rejected insofar as it is based on these trade marks pursuant to Article 42(2) and (3) EUTMR and Rule 22(2) EUTMIR.

The examination will therefore continue only in respect of the earlier Portuguese trade mark registration No 351 466.

All the invoices that have been submitted are dated within the relevant time period.

The invoices, brochures and price list show that the place of use is Portugal, as it can be inferred from the language of the documents (Portuguese), the currency mentioned (EUR) and the addresses of the sellers and most of the customers.

As regards the fact that some of the invoices are addressed to clients in Angola, it should be mentioned that, according to Article 15(1), second subparagraph, point (b) EUTMR, the following shall also constitute use within the meaning of paragraph 1: affixing of the European Union trade mark to goods or to the packaging thereof in the Union solely for export purposes. The evidence shows that the goods were manufactured in Portugal and sold in Angola. This clearly shows that the goods were exported from the relevant territory. Consequently, and in accordance with Article 15(1), second subparagraph, point (b) EUTMR, the evidence of use filed by the opponent contains sufficient indications concerning the place of use.

The documents filed, and in particular the invoices, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. The invoices cover a period of nearly four years, are addressed to clients in different regions of Portugal and show a significant commercial volume. Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier mark.

As regards the nature of use, it is clear from the evidence provided that the mark has been used as a trade mark.

The applicant argues that some of the documents filed show that only the verbal element of the mark is affixed to the goods, and therefore claims that the mark was not used as registered.

According to Article 15(1), second subparagraph, point (a) EUTMR, the following shall also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, the Opposition Division considers that the use of the mark with the omission of the figurative element does not alter its distinctive character and shows use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR, since the omitted figurative element can be considered to be merely decorative. In any event, and regardless of how the mark has been affixed to some of the goods, it should also be noted that in all the brochures filed the mark as registered is visibly used in connection with the goods in question.

Taking into account the evidence in its entirety, and the indications it provides about the time, place, extent and nature of use of the earlier Portuguese trade mark, the Cancellation Division concludes that the evidence submitted by the opponent is sufficient to prove genuine use of this earlier mark during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods and services covered by its specification.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

According to case-law, when applying the abovementioned provision the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories.

(14/07/2005, T-126/03, Aladin, EU:T:2005:288).

In the present case, the evidence proves use only for rings, necklaces and earrings, belonging to the following broad category in the specification: jewellery. As the opponent is not required to prove all the conceivable variations of the category of goods for which the earlier mark is registered and as the goods for which use has been proved do not constitute a coherent subcategory within the broad category in the specification to which they belong, the Opposition Division considers that the evidence shows genuine use of the earlier Portuguese trade mark for jewellery in class 14.

There is no evidence showing use for precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; precious stones; watches, horological and chronometric instruments or for any of the services in class 39. Consequently, for the purposes of the present decision, the earlier Portuguese mark will be deemed to be registered only for jewellery in class 14.

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 and for which genuine use has been proved are the following:

Class 14: Jewellery.

The contested goods are the following:

Class 14: Alloys of precious metal; Handcrafted objects and ornaments in precious metals and their alloys or coated therewith; Jewellery stones; Jewellery, in particular necklaces, bracelets, bangles, ear clips, ear hoops, rings, pendants for necklaces, lapel pins, brooches, necklaces, wristwatches and pocket watches, tie pins and clips, cufflinks, key chains and key rings, all the aforesaid goods in particular of gold, silver and/or platinum, including set with precious stones; Timepieces, In particular table, wall and ships' clocks; Time instruments.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods. The term ‘in particular’, 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 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

Jewellery is identically contained in both lists of goods. Given that the applicant’s necklaces, bracelets, bangles, ear clips, ear hoops, rings, pendants for necklaces, lapel pins, brooches, necklaces, wristwatches and pocket watches, tie pins and clips, cufflinks, key chains and key rings, all the aforesaid goods in particular of gold, silver and/or platinum, including set with precious stones are considered to be only examples of items included in jewellery, they are also deemed identical to the opponent’s jewellery.

The opponent’s jewellery is similar to a high degree to the contested application’s handcrafted objects and ornaments in precious metals and their alloys or coated therewith; timepieces, In particular table, wall and ships' clocks and time instruments. They can share the same purpose (decorative, even if in the case of time pieces and instruments they have the additional purpose of measuring time), can be manufactured by the same undertakings and they coincide in end users and distribution channels (jewellery stores).

The opponent’s jewellery is similar to the contested application’s jewellery stones. Jewellery stones are usually incorporated into jewels but they can also be bought as such in jewellery stores. They are usually manufactured by the same undertakings and coincide in end users and distribution channels.

Finally, the contested application’s alloys of precious metal are not similar to the opponent’s jewellery, since alloys are a semi finished product not directed at the end consumer while jewels are a finished product. The purpose, users and distribution channels of these goods are different.

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 to varying degrees are directed at the public at large. As regards the degree of attention, 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

	SPLENDORA BY KIM
Earlier trade mark	Contested sign

The relevant territory is Portugal.

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).

Conceptually, none of the verbal or figurative elements of the earlier mark has a meaning as such in Portuguese. The word “SPLENDORA” of the contested sign has no meaning in this language, while the English expression “BY KIM” is likely to be understood by most of the public as indicating that the goods at issue have been designed by someone named Kim.

Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

The contested sign is a word mark and therefore has no more dominant elements. As regards distinctiveness, given the aforementioned meaning of ‘BY KIM’, which will be interpreted as a reference to the designer of the goods rather than to their commercial origin, this part of the sign will have less impact than the term ‘SPLENDORA’.

The earlier sign is composed of one distinctive verbal element and one less distinctive figurative element, given the decorative nature of the latter. Both elements are equally dominant.

Visually and aurally, the signs coincide in the letters ‘SPLENDOR’ and differ in the letters ‘A/O’, as well as in the words ‘BY KIM’ of the contested sign. In addition, from the visual point of view, they also differ in the apostrophe and the figurative element of the earlier mark. Given the coincidence in the first eight letters of their verbal elements and, as regards the visual comparison, the less distinctive nature of the figurative element of the earlier mark, they are considered to be visually and aurally 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 in the sign of elements of a decorative nature.

5. Global assessment, other arguments and conclusion

The signs have been found to be similar to an average degree from a visual and aural point of view. Also taking into account the fact that the similarities between the signs are found at the beginning of their respective verbal elements, which will capture first the consumer’s attention, as well as the average degree of distinctiveness of the earlier mark, it is concluded that the differences between the signs are not sufficient to counteract the similarities between them for goods deemed to be identical or similar, and this despite the relatively high degree of attention of the relevant public.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Portuguese trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or 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 shall 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

Zuzanna STOJKOWICZ

José Antonio GARRIDO OTAOLA

Vanessa PAGE

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.