General Court: watches and jewellery are not similar to sunglasses and clothing

European Union

In Compagnie des Montres Longines, Francillon SA v Office for Harmonisation in the Internal Market (OHIM) (Case T-505/12, February 12 2015), the General Court has upheld a decision of the Fifth Board of Appeal of OHIM dismissing an opposition filed by Swiss company Compagnie des Montres Longines, Francillon SA.

Longines had filed an opposition based on its international figurative trademark (depicted below) for goods in Class 14 (clocks, watches, jewellery and related products) against a Community trademark application for a figurative trademark (depicted below) filed by Hungarian resident Xiuxiu Cheng for goods in Classes 9 ("optical sunglasses") and 25 ("clothing and footwear") of the Nice Classification.

   Longines' trademark               Trademark applied for

Longines put forward two pleas in law in support of its action before the General Court. The first plea alleged infringement of Article 8(1)(b) of the Community Trademark Regulation (207/2009) (similarity of the goods). The second plea alleged infringement of Article 8(5) of that regulation (prestige of the earlier trademark).

The General Court first held that the relevant public for both marks was almost the same and that its level of attention was average.

With regard to the comparison of the goods, the court found that, despite the existence of a slight similarity between the goods, these were not generally similar. It also concluded that the reputation of the earlier mark had not been sufficiently proved and, even though there was evidence that Longines' goods were very popular and had been on the relevant market for well over a century, those goods were generally not, or rarely ever, designated by the sign at issue on its own. On the contrary, the mark which was affixed to them consisted of a combination of the figurative mark on which the opposition was based and the stylised word ‘Longines’.

The following conclusion with regard to the comparison of the goods should be highlighted:

[B]y analogy with what the court held in the context of an assessment relating to Article 8(5) of Regulation 207/2009 in the case which gave rise to the judgment of September 27 2012 in El Corte Inglés v OHIM - Pucci International (Emidio Tucci) (T-373/09, ... Paragraph 66), that, even though those categories of goods are different, each of them includes goods which are often sold as luxury goods under the famous trademarks of renowned designers and manufacturers. That fact shows that there is a certain proximity between the goods at issue, in particular in the luxury goods sector”. (Paragraph 47)

The court noted that it had been held in Emidio Tucci that:

even if it were established that the disputed goods related to beauty, personal hygiene, physical appearance or personal image, it would be insufficient for the goods to be regarded as similar if they were markedly different in the light of all the other relevant factors characterising their relationship”. (Paragraph 64)

In the court’s view, the goods should be related in a consistent way. Although the issue of a certain unity of style between clothing and footwear on the one hand, and clothing accessories, jewellery and watches on the other, may be raised by certain consumers who are more concerned with fashion, the court considered that, in the case at hand, this did not amount to a sufficient connection between the goods analysed.

The court concluded that the Board of Appeal was correct to find that there was no likelihood of confusion between the marks or no damage to the prestige of the earlier trademark.

The decision raises an interesting issue in the field of trademarks: the relevance of demonstrating that the goods are connected in an objective way. It is an issue that is closely connected to the importance of proof and evidence in all General Court judgments.

The General Court referred to the Emidio Tucci case in relation to this issue. This case provided a definition of 'complementary goods or services': ie, those which are closely connected in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that the same undertaking is responsible for manufacturing those goods or for providing those services. This decision held that “goods intended for different publics cannot be complementary”. This is a difficult point to assess because the Emidio Tucci case states that “an aesthetic complementarity is subjective and is determined by the habits and preferences of consumers, to which producers’ marketing strategies or even simple fashion trends may give rise”.

In the present case, the court considered that Longines should have proved that the majority of the relevant consumers always match their watches and their sunglasses with their outfits on the basis of the activities they intend to engage in (Paragraph 68). However, providing such evidence may be a difficult task.

The decision highlights a trend whereby the court tends to base its analysis on the evidence produced by the parties. The problem is that, in some cases, such evidence is very subjective and sensitive. In this specific case, there were other issues - especially the prestige of the earlier trademark - that were relevant to the conclusion of the court. However, when the analysis turns only on this type of proof and evidence, the challenge can be great for trademark owners.

Manuel Lopes Rocha and Juliana Marcondes, PLMJ - Sociedade de Advogados, Lisbon

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