OPPOSITION No B 2 173 139
Carmen Lizarriturri Ouijano, C/ Fernández de la Hoz, 78, 28003 Madrid, Spain (opponent), represented by Elisa Arsuaga Santos, Paseo Sauces 14, nº 22 Urb. Montepríncipe, 28660 Boadilla del Monte (Madrid), Spain (professional representative)
a g a i n s t
Italiantouch S.R.L., Corso Umberto I°, 171, 62012 Civitanova Marche (MC), Italy (applicant), represented by Jacobacci & Partners S.P.A., Corso Emilia, 8, 10152 Torino, Italy (professional representative)
On 29/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 173 139 is upheld for all the contested services.
2. European Union trade mark application No 11 428 042 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
REASONS:
The opponent filed an opposition against all the services of European Union trade mark application No 11 428 042. The opposition is based on, inter alia, European Union trade mark registration No 8 388 597
The opponent invoked Article 8(1)(a), 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 8 388 597 .
- The services
The services on which the opposition is based are, inter alia, the following:
Class 35: Commercial retailing or selling via global computer networks of bracelets and necklaces of silver and precious metals, bracelets and necklaces with precious or semi-precious stones or jewellery, trinkets and charms or figurines for bracelets and necklaces, amulets, cuff links and tie pins, jewellery or silver ornaments for hats and shoes, medals and medallions and key rings (trinkets or fobs).
The contested services are the following:
Class 35: Online sales of perfumery and cosmetics, clothing, footwear and headgear and accessories therefor, including spectacles and leatherware, clocks and watches and jewellery.
An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.
The term ‘including’, used in the applicant’s list of services, indicates that the specific services are only examples of items included in the category preceding it, 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 services in Class 35
The contested services Online sales of accessories therefor, including spectacles and leatherware, clocks and watches and jewellery include the opponent’s selling via global computer networks of jewellery. Even if ‘accessories’ itself is a broad and vague term, in this particular case, it is followed by ‘including’ which as mentioned above, gives an example of the goods. Given that jewellery is identical in both cases and bearing in mind that the broad term cannot be dissected ex-officio the services are therefore considered identical.
The rest of the contested services, namely Online sales of perfumery and cosmetics, clothing, footwear and headgear are similar to the opponent´s services of selling via global computer networks of bracelets and necklaces of silver and precious metals, bracelets and necklaces with precious or semi-precious stones or jewellery, trinkets and charms or figurines for bracelets and necklaces, amulets, cuff links and tie pins, jewellery or silver ornaments for hats and shoes, medals and medallions and key rings (trinkets or fobs) in Class 35 of EUTM No 8 388 597.
The services at issue have the same nature since both are online sales services, they also have the same purpose of allowing consumers to conveniently satisfy different shopping needs, and the same method of use. Furthermore, they coincide in relevant public and distribution channels.
- 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 services found to be identical or similar are directed at the public at large. The degree of attention paid is deemed to vary from average to higher than average, since part of the services are offered in relation to goods that can be expensive, and are not frequently purchased (e.g. jewellery)
- The signs
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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 view of the meaning of ‘Charms’ the Opposition Division finds it more appropriate to focus the comparison on the English-speaking part of the public.
The element “charms” is an English word used to refer to ornaments that are fixed to a piece of jewellery, such as a bracelet or necklace. “Charms” is also the English noun used (in singular form, i.e. “charm”) to refer to the quality of pleasing, fascinating, or attracting people (Collins English Dictionary).
The term “charms” is descriptive of the characteristics of part of the opponent´s services, namely those that are offered in relation to goods consisting of or containing charms. For these services the term “charms” is non-distinctive.
The word “charms” is of low distinctive character for the opponent´s services offered in relation to goods for which the term “charms” is perceived in the second meaning referred to before, since they are used to enhance the outer appearance, for instance tie pins.
The figurative element of the earlier mark (i.e. a charm in the form of a hand bag) is either non-distinctive or of lower than average distinctive character in relation to the services involved, for being descriptive or allusive of the characteristics of the goods in relation to which the services are offered.
The term “by” is commonly used in trade marks throughout the European Union to refer to or introduce the name of the designer or company responsible for the creation of a certain product or collection. Therefore, consumers are accustomed to seeing this element in trade marks, in relation to many kinds of goods and services, and it is not useful for distinguishing trade marks from different undertakings. According to the above, “by” is non-distinctive for the relevant public, for the relevant services.
The word “LUXENTER” is an invented term of average distinctive character for the services in question. As such it is the most distinctive element in the earlier mark, the rest of the elements in the mark are either non-distinctive or of lower than average distinctive character.
The word “CHARMS” is the dominant element in the earlier mark, given its big size in comparison to the other elements. However, the dominant term “CHARMS” constitutes a non-distinctive or lowly distinctive element, as explained above. Therefore, consumers will tend to focus their attention on the most distinctive part of the mark (i.e. “LUXENTER”), despite its smaller size, in order to differentiate it from other trade marks.
The contested sign is perceived as formed by the invented term “LUXER”, with no concept, and by the definite article “THE”, which is used in English to introduce the noun following it. Even if both are of average distinctive character for the services involved, ‘THE’ is secondary given its aforementioned function.
The contested mark has no element more distinctive or dominant (visually eye-catching) than others. Even if the verbal constituent in the contested mark is white on a grenade background it cannot be described as being dominant.
The applicant argues that that the beginnings “LUX” / “LUXE” constitute the word “LUXE”, which alludes to the concept of “luxury”. It explains that most of the consumers will be able to understand it, and gives several reasons for this. It adds that it “is not directly descriptive of the goods/services at stake, but is clearly inherently weak in relation to the above, being commonly and widely used to recall the idea of luxury products/services” and submits evidence in this regard. However, this is not likely to be the case since “LUX” or “LUXE” form part of longer invented terms, with no concept for the English-speaking part of the public, and as such there is no reason for them to artificially dissect those terms.
Visually, the signs coincide in the sequence of letters “L-U-X-E” and ending “R”, which form part of the distinctive elements “LUXENTER” and “LUXER” which, in addition, are written in a highly similar font type. The words “LUXENTER” and “LUXER” share identical beginnings and endings. The differences in the middle part of a word that is not short (e.g. “LUXENTER”) are of less visual impact than the common beginnings, and can be more easily overlooked by consumers when perceiving the mark visually.
The signs differ in “N-T-E” of “LUXENTER”, and in the rest of the elements described above (i.e. “CHARMS”, “by” and charm device) considered to be either non-distinctive or of low distinctive character. They also differ in “THE” of the contested mark, in colour and typeface and in the background of the contested mark.
In the present case, the coincidences are in distinctive elements forming the marks, and the differences in elements that are either non-distinctive or of low distinctive character, or serve to merely introduce the term where the coincidences are found (i.e. “THE”). This, together with the highly similar typeface of the coinciding elements “LUXENTER” and “LUXER”, it is considered that the marks are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters
“l-u-x-e” at the beginning of the words “luxenter” and “luxer”, and in the ending “-r” of those same terms.
The marks differ in the sound of “charms”, “by” and in the sound of letters “nte” of the word “luxenter”. Once again, the coincidences are in distinctive elements forming the marks, and the main differences in elements that are either non-distinctive or of low distinctive character, or serve to merely introduce the term where the coincidences are found.
It is likely that the pronunciation of the non-distinctive or lowly distinctive parts of the marks is omitted by consumers when referring to them aurally. In such case, the marks will be referred to as “luxenter” and “the luxer/luxer”
Therefore, the signs are aurally similar to an average degree.
Conceptually, although the public in the relevant territory will perceive a concept in the earlier mark, as explained above, the contested mark has no concept. The concept of the word “THE” depends completely on the noun it precedes. In this case, the noun following it is meaningless and, as a consequence, the mark as a whole has no concept.
Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence within the relevant time-frame in order to prove such a claim.
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 services 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 and elements of lower than average distinctive character in the mark as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
The services compared have been considered to be partly identical and partly similar.
The signs are, for the part of the public on which the decision is focused, visually and aurally similar to an average degree, and not conceptually similar.
The main differences between the marks have been found in elements that have been considered to be either non-distinctive or of lower than average distinctive character. The coincidences are found in the distinctive parts of the marks.
It is on the distinctive parts of the marks that consumers focus their attention, with the purpose of identifying them and differentiating them from the marks of a different undertaking.
As explained above, the level of attention paid during the purchase of the services involved is deemed to vary from average to higher than average.
The average consumer of the category of services concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. However, and according to the principle of imperfect recollection, the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind.
Based on the principle of imperfect recollection, the consumers might believe that the conflicting services come from the same or economically-linked undertakings. Also having regard to the principle of interdependence, it is considered that the coincidences between the signs are enough to outweigh their dissimilarities and, together with the identity and similarity of the services involved, may induce at least part of the public to believe that the conflicting services come from the same or economically-liked undertakings.
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).
In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that there are many trade marks that include “LUXE”. In support of its argument the applicant refers to some trade mark registrations in the European Union.
The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include “LUXE”. Under these circumstances, the applicant’s claims must be set aside.
Both parties refer to previous decisions of the Office to support their 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 parties are not relevant to the present proceedings, since they refer to different scenarios (i.e. different signs and/or different number of elements forming the marks and/or different goods and services).
Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. 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.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 8 388 597. It follows that the contested trade mark must be rejected for all the contested services.
As the earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the services 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 grounds of the opposition, namely Article 8(1)(a) and 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
| Vanessa PAGE | María del Carmen SUCH SANCHEZ | Richard BIANCHI |
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.