OPPOSITION DIVISION
OPPOSITION No B 2 502 790
Tissot SA, 17 chemin des Tourelles, 2400 Le Locle, 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
Philippe Barro, 38 rue du Bouquet de Soleils, 25000 Besançon, France (applicant).
On 19/10/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 502 790 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark
application No 13 527 676 . The opposition is based on, inter alia, European
Union trade mark application No 13 180 757 . The opponent invoked
Article 8(1)(b) and 8(5) EUTMR in connection with all the earlier marks.
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
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 application No 13 180 757.
Decision on Opposition No B 2 502 790 page: 2 of 9
a) The goods and services
The goods and services on which the opposition is based are the following:
Class 14: Precious metals and their alloys and goods in precious metals or coated
therewith included in this class, namely figurines, trophies; jewellery, namely rings,
earrings, cuff-links, bracelets, charms, brooches, chains, necklaces, tie pins, tie clips,
jewellery caskets, jewellery cases, jewellery boxes; precious stones, semi-precious
stones; horological and chronometric instruments, namely stopwatches,
chronographs, clocks, watches, wristwatches, alarm clocks and parts and fittings for
the aforesaid goods, namely hands, anchors, pendulums, barrels, watch casings,
watch straps, watch dials, clockworks, watch chains, movements for clocks and
watches, watch springs, watch crystals, presentation cases for watches, cases for
clocks and watches.
Class 35: Retailing and wholesaling in shops and via global computer networks, by
catalogue, by mail, by telephone, by radio and television and via other electronic
means, of horological goods and jewellery; presentation of horological goods and
jewellery on all kinds of communications media for retail purposes; marketing,
advertising and public relations services; advertising for the purchase and sale of
horological goods and jewellery; business management; business administration;
office functions; business management and organisation consultancy in the field of
horological goods and jewellery.
The contested goods, after a limitation filed by the applicant on 06/05/2015, are the
following:
Class 14: Gemstones, pearls and precious metals, and imitations thereof; jewellery;
jewellery boxes and watch boxes; time instruments; statues and figurines, made of or
coated with precious or semi-precious metals or stones, or imitations thereof;
ornaments, made of or coated with precious or semi-precious metals or stones, or
imitations thereof.
An interpretation of the wording of the list of goods is required to determine the scope
of protection of these goods. The term ‘namely’, used in the opponent’s list of goods
to show the relationship of individual goods and services with a broader category, is
exclusive and restricts the scope of protection only to the specifically listed goods.
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.
Gemstones; precious metals; jewellery boxes and watch boxes; statues and
figurines, made of or coated with precious metals are identically contained in both
lists of goods (including synonyms).
The contested jewellery includes, as a broader category, the opponent’s jewellery,
namely rings, earrings, cuff-links, bracelets, charms, brooches, chains, necklaces, tie
pins, tie clips. Since the Opposition Division cannot dissect ex officio the broad
category of the contested goods, they are considered identical to the opponent’s
goods.
Decision on Opposition No B 2 502 790 page: 3 of 9
The contested time instruments include, as a broader category, the opponent’s
horological and chronometric instruments, namely stopwatches, chronographs,
clocks, watches, wristwatches, alarm clocks. Since the Opposition Division cannot
dissect ex officio the broad category of the contested goods, they are considered
identical to the opponent’s goods.
The contested ornaments, made of or coated with precious or semi-precious metals
or stones, or imitations thereof include, as a broader category, the opponent’s
jewellery, namely brooches. Since the Opposition Division cannot dissect ex officio
the broad category of the contested goods, they are considered identical to the
opponent’s goods.
The contested pearls are highly similar to the opponent’s precious stones,
semiprecious stones, since they are both used in the jewellery industry as
components or semi-processed materials for making jewellery. They have the same
purpose and target the same public. Furthermore, they are in competition.
The contested imitations thereof (of gemstones, pearls and precious metals) and the
opponent’s precious metals and their alloys, precious stones, semi-precious stones
are similar. While they clearly have different natures, they serve the same purpose
and have the same method of use and distribution channels. They are also in
competition.
The contested statues and figurines, made of or coated with semi-precious metals or
stones, or imitations thereof (of precious or semi-precious metals or stones) and the
opponent’s goods in precious metals or coated therewith included in this class,
namely figurines, trophies are similar. While they have different natures, they serve
the same purpose and have the same method of use. They are also in competition.
b) 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 well as 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. Indeed, 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 the goods at issue. In
many cases the goods will be luxury items or will be intended as gifts. A high degree
of attention on the part of the consumer may be assumed for the goods at issue.
Decision on Opposition No B 2 502 790 page: 4 of 9
c) 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 earlier mark is a figurative mark. It consists of a white upper case letter ‘T’
depicted against a black square background. The contested sign is also a figurative
mark. It depicts an upright and an inverted letter ‘T’ against a grey square
background. Contrary to the opponent’s arguments, the Opposition Division
considers that the inverted letter ‘T’ will be perceived in the contested sign as such
and not as an ornamental element.
The public in the relevant territory will perceive the upright and inverted letters ‘T’ in
the signs as a letter of the Latin alphabet. The distinctiveness of this letter is deemed
to be normal, since it does not refer to any characteristic of the relevant goods.
The letters ‘T’ (upright and inverted) are the most distinctive elements in the marks,
given that the square backgrounds are simple geometric shapes and are of a
decorative nature.
Neither of the marks has any element that could be considered clearly more
dominant than other elements.
Visually, the signs are similar to the extent that they both contain an upper case
letter ‘T’ depicted in white within a square. However, the contested sign also contains
an inverted letter ‘T’. The colours of the backgrounds differ slightly.
The length of the signs may influence the effect of the differences between them. The
shorter a sign, the more easily the public is able to perceive all of its single elements.
Therefore, in short signs small differences may frequently lead to a different overall
impression. In contrast, the public is less aware of differences between long signs.
Therefore, the signs are visually similar to a low degree.
Aurally, for the part of the public that does not pronounce the inverted letter, the
signs coincide in the sound of the letter ‘T’, present identically in both signs.
Therefore, for this part of the public, the signs are aurally identical.
If the inverted letter in the contested mark is pronounced, the pronunciation will differ
in the sound of the additional letter ‘T’ of the contested sign. Consequently, for the
Decision on Opposition No B 2 502 790 page: 5 of 9
part of the public that pronounces the inverted letter ‘T’ in the contested sign, the
signs are aurally similar to an average degree.
Conceptually, the letter ‘T’ will be perceived as a letter of the Latin alphabet, as
explained above; the geometric backgrounds in the signs have the semantic content
of a square. The contested mark has the additional concept of a second letter ‘T’.
Therefore, the signs are conceptually similar, at most, 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.
d) 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.
According to the opponent, the earlier trade mark has a reputation in the European
Union in connection with all the goods and services for which it is registered. This
claim must be properly considered given that the distinctiveness of the earlier trade
mark must be taken into account in the assessment of likelihood of confusion.
Indeed, the more distinctive the earlier mark, the greater will be the likelihood of
confusion, and therefore marks with a highly distinctive character because of the
recognition they possess on the market, enjoy broader protection than marks with a
less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).
The opponent submitted the following evidence:
Images of watches and watch cases, undated and without contextual
information.
Extracts from the opponent’s official website, www.tissot.ch, printed on
13/04/2015, with the following content:
o information on the history of the brand ‘TISSOT’;
o photographs of famous people sponsored by the opponent wearing Tissot
watches (on which the mark cannot be seen);
o photographs of sporting events sponsored by Tissot. The following can be
seen on panels around the sports ground or behind athletes being
photographed after the event: . The
document contains several photographs of watches bearing only the mark
‘TISSOT’ or sometimes also the words ‘T-Race’, ‘T-RaceTouch’ or ‘Racing
Touch’.
The evidence that the opponent submitted consists only of images of its watches and
extracts from its websites providing information on the history of the brand,
information on the personalities who are ambassadors for Tissot watches and
information on Tissot’s participation as timekeeper in various sporting events.
Firstly, enhanced distinctiveness of the earlier trade mark, if claimed, should exist at
the time of filing of the contested EUTM application (or at the date of priority), namely
22/08/2014. In the present case, most of the evidence relates to a period after the
date of priority of the contested trade mark. Although such evidence cannot be
completely ignored, it does not demonstrate that a reputation existed at that date.
Decision on Opposition No B 2 502 790 page: 6 of 9
Secondly, in the images submitted by the opponent, the letter ‘T’ is used in
conjunction with the trade mark ‘TISSOT’ and/or the Swiss flag. Even if on parts of
the watches the letter ‘T’ is embossed, the word ‘TISSOT’ is nonetheless present.
The relevant public will not view the letter ‘T’ as an element distinct from the word
‘TISSOT’. In addition, it is very unlikely that the relevant public will inspect the watch
thoroughly to view the letter ‘T’ or the side of the watch face or the strap (21/07/2016,
R 2073/2015-1, MT (Fig.) / T (Fig.), § 23).
Furthermore, the opponent submitted no evidence on the market share held by the
earlier mark; no evidence on how intensive and geographically widespread the use of
the mark has been in the European Union or on the amount it may have invested in
promoting the mark; and no evidence on the proportion of the relevant section of the
public in any of the Member States that, because of the mark, identifies the goods as
originating from the opponent. The opponent could have submitted statements from
relevant chambers of commerce and industry or other trade and professional
associations, but it did not do so.
Having examined the material listed above, the Opposition Division concludes that
the evidence submitted by the opponent does not demonstrate that the earlier trade
mark acquired a high degree of distinctiveness through its use.
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.
e) Global assessment, other arguments and conclusion
The signs coincide merely to the extent that each features the letter ‘T’ set against a
geometric background.
Given that the earlier mark does not enjoy enhanced distinctiveness and the fact that
both signs are very short, it is considered that the fact that they differ in the additional
inverted letter ‘T’ of the contested sign is a relevant factor to be taken into account
when evaluating the likelihood of confusion between the conflicting signs. The signs
are not sufficiently similar to lead to a likelihood of confusion, in spite of the identity or
similarity (to differing degrees) between the goods.
Given that the actual depictions of the signs differ in significant ways, there is no risk
that the relevant consumers will be misled, taking into account also that the degree of
attention will be high.
The opponent refers to previous national decisions to support its arguments.
However, it must be noted that decisions of national courts and national offices
regarding conflicts between identical or similar trade marks at national level do not
have a binding effect on the Office since the European Union trade mark regime is an
autonomous system, which applies independently of any national system
(13/09/2010, T-292/08, Often, EU:T:2010:399).
Even though previous national decisions are not binding, their reasoning and
outcome should be duly considered, particularly when the decision has been taken in
the Member State that is relevant to the proceedings.
Decision on Opposition No B 2 502 790 page: 7 of 9
In the present case, the previous case referred to by the opponent is not relevant to
the present proceedings because the decision of the Spanish Office took into
account a family of marks and recognised the well-known character of those marks,
which is not the case in the present decision.
The applicant argues that his EUTM is more distinctive than average and the
opponent counters that its distinctiveness is quite limited. However, account must be
taken of the fact that the (potential) enhanced distinctiveness of the contested sign is
irrelevant because likelihood of confusion requires a consideration of the scope of
protection of the earlier mark rather than that of the mark applied for (03/09/2009,
C-498/07 P, La Española, EU:C:2013:302, § 84).
Considering all the above, even taking into account that the goods are identical or
similar to differing degrees, there is no likelihood of confusion on the part of the
public. Therefore, the opposition must be rejected.
The opponent has also based its opposition on the following earlier trade marks:
– international trade mark registration No 547 677 for the figurative mark
designating Spain, Portugal, Austria, Romania, Bulgaria, Italy,
Hungary, Benelux, Croatia, Germany, France and Slovenia for goods in
Class 14;
– international trade mark registration No 749 521 for the figurative mark
designating the European Union
for goods in Class 14.
These other earlier rights invoked by the opponent are less similar to the contested
mark. This is because international registration No 749 521 contains an additional
word, namely ‘TOUCH’, which is not present in the contested trade mark and
includes a circular background instead of a square background, and because
international registration No 547 677 uses a different typeface and combination of
colours. Moreover, the signs cover a narrower scope of goods. Therefore, the
outcome cannot be different with respect to goods for which the opposition has
already been rejected; no likelihood of confusion exists with respect to those goods.
Furthermore, the enhanced distinctiveness of these marks is not proven, for the
same reasons as those indicated above.
It is, therefore, necessary to examine the opposition on the basis of the ground of
Article 8(5) EUTMR, as invoked by the opponent.
REPUTATION – ARTICLE 8(5) EUTMR
According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered
earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade
mark will not be registered where it is identical with, or similar to, an earlier trade
Decision on Opposition No B 2 502 790 page: 8 of 9
mark, irrespective of whether the goods or services for which it is applied are
identical with, similar to or not similar to those for which the earlier trade mark is
registered, where, in the case of an earlier European Union trade mark, the trade
mark has a reputation in the Union or, in the case of an earlier national trade mark,
the trade mark has a reputation in the Member State concerned and where the use
without due cause of the contested trade mark would take unfair advantage of, or be
detrimental to, the distinctive character or the repute of the earlier trade mark.
Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the
following conditions are met.
The signs must be either identical or similar.
The opponent’s trade mark must have a reputation. The reputation must also
be prior to the filing of the contested trade mark; it must exist in the territory
concerned and for the goods and/or services on which the opposition is
based.
Risk of injury: the use of the contested trade mark would take unfair
advantage of, or be detrimental to, the distinctive character or repute of the
earlier trade mark.
The abovementioned requirements are cumulative and, therefore, the absence of
any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR
(16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41).
However, the fulfilment of all the abovementioned conditions may not be sufficient.
The opposition may still fail if the applicant establishes due cause for the use of the
contested trade mark.
a) Reputation of the earlier trade marks
The evidence submitted by the opponent to prove the reputation and highly
distinctive character of the earlier trade marks has already been examined above
under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings,
which are equally valid for Article 8(5) EUTMR; that is, the highly distinctive
character, let alone the reputation, of the earlier mark has not been established.
Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the
opposition must be rejected as unfounded insofar as these grounds are concerned.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party.
Since the opponent is the losing party, it must bear the costs incurred by the
applicant in the course of these proceedings.
According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3)
and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the
applicant are the costs of representation, which are to be fixed on the basis of the
maximum rate set therein.
Decision on Opposition No B 2 502 790 page: 9 of 9
Although the winning party is no longer represented by a professional representative
at the time of rendering this decision, it was represented by a professional
representative within the meaning of Article 120 EUTMR in the course of the
opposition proceedings. Therefore, the winning party incurred representation costs
which it is entitled to recover, in accordance with Article 18(1)(c) EUTMIR (former
Rule 94(7)(d) EUTMIR, in force before 01/10/2017).
The Opposition Division
Carlos MATEO PÉREZ Richard BIANCHI Eva Inés PÉREZ
SANTONJA
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100
(Annex I A(33) EUTMR) has been paid.