Amelia Skelding is reminded that small differences can have a big impact. B 2 686 593, Certina AG v TRB International SA, EUIPO, 30th July 2019.
B 2 686 593, Certina AG v TRB International SA, EUIPO, 30th July 2019
Certina AG (the Opponent) filed an opposition against EU application No 1257407 for a figurative turtle mark in the name of TRB International SA (the Applicant) for all goods in class 14. The opposition was based on international trade mark registration Nos 116985 (Earlier Mark 1) and 1175867 (Earlier Mark 2) designating the EU for the figurative marks. The Opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.
The goods were found to be identical, covering watches, inter alia. The public’s degree of attention was found to be average to high, given that the contested goods cover both inexpensive and luxury products.
The Opponent tried to argue that the most relevant part was the device element, since the verbal components occupied a secondary position. However, the Opposition Division (OD) disagreed, stating the verbal elements were located in prominent central positions, depicted in easily perceived black, upper-case lettering against a contrasting white background and, moreover, were superimposed over the figurative elements. Furthermore, it is known that where a sign is composed of verbal and figurative elements, the consumer is likely to focus primarily on the verbal element as a point of reference. In contrast, the contested sign was purely figurative. As there was no verbal counterpart in the contested sign, it was not possible to compare the signs aurally.
With regards to the figurative elements, although both marks contained turtles, they were held to be depicted differently: the turtle in the earlier marks being symmetrical and static, but the contested sign being more dynamic and realistic. Overall, the degree of visual similarity was found to be low and the conceptual similarity was found to be very low for Earlier Mark 1 and low for Earlier Mark 2.
The Opponent claimed that its earlier trade marks had a reputation due to long-standing use in the EU for all the registered goods. However, the evidence submitted was held to be insufficient because it only pertained to a limited subset of goods, lacked information about the source and, most importantly, predominantly showed use of the words CERTINA or DS in isolation, without the turtle design.
The OD found that the earlier marks and the contested sign were not similar enough to lead to a likelihood of confusion. Importantly, it would not go unnoticed by the relevant public that the contested sign was purely figurative, while the earlier marks included verbal elements. Overall, the differences between the signs were held to outweigh their similarities, so the Article 8(1)(b) ground failed.
The Article 8(5) ground also failed because it had not been established that the earlier trade marks had a reputation due to insufficient evidence, as examined above. Since the opposition failed on all grounds, it was rejected in its entirety.
When comparing figurative marks, the inclusion of verbal elements can have a significant impact on similarity. Furthermore, nuanced differences between figurative mark designs, such as symmetry and realism, can be enough to change the overall impression of those marks.
- Small differences can have a significant impact when comparing figurative marks
- The importance of verbal elements in figurative marks should not be overlooked
- It is important to ensure that any evidence is in order (ie dated, source identified, availability to the public, etc)
Amelia Skelding is a Trade Mark Assistant at Keltie LLP