OPPOSITION No B 2 741 265

Timeless Homes GmbH, Maximilianstraße 13, 80539 München, Germany (opponent), represented by Benninger Patentanwaltskanzlei, Dr.-Leo-Ritter-Str. 5, 93049 Regensburg, Germany (professional representative)

a g a i n s t

Timeless Trends, Lda, Rua Comandante Almeida Henriques 4, 2400-089 Leiria

Portugal (applicant), represented by J. Pereira da Cruz S.A., Rua Victor Cordon 14,1249-103 Lisboa, Portugal (professional representative).

On 31/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 741 265 is upheld for all the contested goods and services.

2.        European Union trade mark application No 15 341 266 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 and services of European Union trade mark application No 15 341 266,  .The opposition is based on, inter alia, European Union trade mark registration No 12 454 781, . 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.

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 12 454 781.

1. The goods and services

The goods and services on which the opposition is based are, inter alia, the following:

Class 14:        Ornaments [jewellery, jewelry (am.)]; time instruments; timepieces.

The contested goods and services are the following:

Class 14:        Chronoscopes; clock hands [clock- and watchmaking]; dials for clock and watch making; time instruments; horological articles; cases for watches [presentation]; clocks; wristwatches; sports watches; mechanical watches; watch pouches; watch crowns; clock cases; watch straps; watches; watch glasses; clock dials; watch clasps; bracelets for watches; watch cases; jewellery, clocks and watches; watches for outdoor use; watchstraps made of leather; cases [fitted] for clocks; buckles for watchstraps; women's watches; watch hands; watch straps made of metal or leather or plastic; dress watches.

Class 42:        Designing of watches.

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

Time instruments are identically contained in both lists of goods.

The contested chronoscopes; horological articles; clocks (listed twice); wristwatches; sports watches; mechanical watches; clock cases; watches (listed twice); watches for outdoor use; women's watches; dress watches are included in the broad category of the opponent’s time instruments. Therefore, they are identical.

The contested jewellery share the same nature as goods covered by the opponent’s time instruments (since a watch can, in reality, be jewellery) and these goods target same relevant publics, are sold through same distribution channels and are produced by the same companies. Therefore, they are highly similar.

The contested clock hands [clock- and watchmaking]; dials for clock and watch making; watch crowns; watch glasses; clock dials; watch clasps; watch hands are parts or components of clocks and watches, included in the opponent’s time instruments. Therefore, the contested goods are complementary to goods covered by the opponent, as these components are necessary for the functionality of clocks and watches. Moreover, the conflicting goods are manufactured by the same companies and are sold through the same distribution channels. Therefore, they are deemed similar.

The contested watch straps; bracelets for watches; watchstraps made of leather; buckles for watchstraps; watch straps made of metal or leather or plastic are accessories necessary for the use of, for example, wristwatches. The contested goods are therefore used in combination with goods covered by the opponent’s time instruments, namely watches, and these goods are complementary. Moreover, the contested goods are produced by the same manufacturers and are sold through the same distribution channels as goods covered by the opponent’s mark. Therefore, the contested goods are similar to the opponent’s time instruments.  

The contested watch pouches; watch cases; cases [fitted] for clocks are used for storage and protection of clocks and watches. Therefore, such goods are complementary to the opponent’s time instruments, which cover all kinds of clocks and watches; the contested goods have no function if not used in combination with goods covered by the opponent’s mark.  Moreover, the conflicting goods target same relevant publics and are produced by the same manufacturers. Therefore, they are deemed similar.

The contested cases for watches [presentation] are similar to the opponent’s time instruments since these goods coincide in relevant publics, distribution channels and producers.

Contested services in Class 42

The opponent’s time instruments in Class 14 cover all kinds of watches. Therefore, the contested designing of watches may target same relevant publics as goods covered by the opponent’s mark and these goods and services are offered and provided by the same companies. Consequently, the contested services are deemed similar to a low degree to the opponent’s time instruments in Class 14.

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 various degrees are directed at the public at large and/or 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.

3. The signs

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.

The common element ‘TIMELESS’, depicted in stylised upper case black in both signs, is not meaningful in certain territories, for example, in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the public, since for this part of the public the signs are more similar overall.

As mentioned above, ‘TIMELESS’ is meaningless for the public under analysis and is a distinctive element in both signs. The contested sign is also composed of the word element ‘WATCHES’, which will not be understood by the non-English-speaking part of the public; therefore, it is distinctive. However, because of its position in the mark and its depiction in a considerably smaller font than ‘TIMELESS’, it is negligible in the contested sign. A negligible element refers to an element that due to its size and/or position is not noticeable at first sight or is part of a complex sign. Bearing this in mind, ‘WATCHES’ is likely to be disregarded by the relevant public, and will not be taken into consideration.

The conflicting signs also contain figurative elements. In the earlier mark, the two angular lines forming the figurative element are banal and, therefore, weak. The figurative element of the contested sign may be perceived as a ring by a part of the public and as meaningless (and distinctive) by the remaining part. Perceived as a ring, it is weak for the relevant goods and services, for example, for jewellery, which includes rings, but also for goods such as clocks, watches and watch straps, which can be made of or include materials used in rings (e.g. gold, silver and diamonds).

Visually, the signs coincide in the verbal element ‘TIMELESS’. They differ in their figurative elements and in their graphical representations, which are all weak elements for the part of the public that sees a ring in the contested sign. Nevertheless, even for the part of the public that perceives the figurative element of the contested sign as meaningless and distinctive, consumers generally tend to focus on the word elements of signs. Indeed, 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). Moreover, the additional verbal element ‘WATCHES’ is negligible in the sign (as described above) and is likely to be disregarded by the consumers when perceiving the contested sign. Therefore, the signs are visually highly similar.

Aurally, irrespective of the different pronunciation rules in different parts of the public under analysis, and the fact that ‘WATCHES’ will not be pronounced in the contested sign (being a negligible element ), the signs are identical, since ‘TIMELESS’ is the only verbal element to be pronounced in the signs.  

Conceptually, neither of the signs’ verbal elements have a meaning for the public under analysis. Therefore, for the part of the public that does not see any concept in the signs’ figurative elements, the conceptual aspect does not influence the assessment of the similarity of the signs. However, for the part of the public that sees a ring in the contested sign, the signs are conceptually not similar despite this concept being weak for the relevant goods and services (as explained above).

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 and 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 a weak figurative element in the mark as stated above in section c) of this decision.

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).

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 and services are partly identical and partly similar to various degrees. The signs are visually highly similar and aurally identical, while the signs will be perceived without a concept by a part of the public and as conceptually not similar by the remaining part. Therefore, the consumers that do not see any concept in either sign must rely on their visual and aural perception of the signs when comparing them, whereas for the remaining part of the public the signs differ in a weak concept (a ring), which cannot outweigh the signs’ visual and aural similarities. Bearing this in mind, and taken into account the principle of interdependence (as explained above), the similarity between the signs is such that it is likely to lead consumers to confuse the signs even in relation to the services found to be similar to a low degree. Moreover, the earlier mark is distinctive. Account is also 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).

Considering all the above, there is a likelihood of confusion on the part of the non-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 12 454 781. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and 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).

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

Pedro JURADO MONTEJANO

Christian RUUD

Benoit VLEMINCQ

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.