Are watches and clothing dissimilar goods? Yes, says the GC

 Are watches and clothing dissimilar goods? Yes, says the GC 

The question of similarity among some of the goods included in classes 25 and 14 is often challenged when opposing trade mark applications. The issue has come several times before EU authorities, most recently before the General Court in relation to watches and clothing, footwear and headgear in a judgment rendered yesterday (T-726/21).

Background

PWT obtained the international registration for the figurative trademark No. 1263679, inter alia in relation to class 25 goods “clothing, footwear headgear” designating the European Union:

Rolex filed an opposition based on two of its earlier trade marks both covering inter alia “watches” in class 14:

 

The opposition was based on Article 8(1)(b) and Article 8(5) of Regulation No 207/2009.

The Opposition Division upheld the opposition (B 2 712 977). PWT appealed the decision. The Board of Appeal upheld the appeal (R 2389/2020-4).

While the Opposition Division’s decision had become final in respect to goods and product for classes 3, 9, 18 and 35, the Board examined the appeal in relation to goods in class 25 “Clothing, footwear, headgear”. The Board considered “watches” in class 14 dissimilar to “clothing, footwear, headgear” in class 25, being the goods different in nature and intended purpose. Goods in class 14 have to be intended as being used for personal adornment , while products in class 25 are simply intended to dress the human body.  Therefore, there would be no likelihood of confusion. Moreover, the reputation of the earlier figurative trade mark had not established, while the reputation of the earlier composite trade mark had been established for wrist watches. The Board concluded that the relevant public would not establish any link between those marks with – as a result – no risk for the reputation of the earlier composite mark.

Rolex appealed the decision to the GC.

The General Court’s decision

Rolex argued that the Board of Appeal had incorrectly found that there would be no similarities between the goods as well as no likelihood of confusion and no risk for the reputation of the earlier trade marks.

 The General Court disagreed by upholding the Board’s decision and ruling that:

 “... jewellery and watches, even precious stones, one the one hand, and items of clothing, on the other, could not be regarded as similar” (para 25).

“... it must be pointed out that the fact that the goods at issue may be sold in the same commercial establishments, such as department stores, is not particularly significant, since very different kinds of goods may be found in such shops, without consumers automatically believing that they have the same origin” (para 31).

“... In order to benefit from the protection introduced by the provisions of Article 8(5) of Regulation No 207/2009, the proprietor of the earlier mark must, first of all, adduce proof, either that the use of the mark applied for would take unfair advantage of the distinctive character or the repute of the earlier mark, or that it would be detrimental to that distinctive character or that repute. […] In that regard, although the proprietor of the earlier trade mark is not required to demonstrate actual and present injury to its mark for the purposes of Article 8(5) of Regulation No 207/2009, it must, however, prove that there is a serious risk that such an injury will occur in the future […]”. (para. 42- 43).

Comment

The well-known practice in the fashion industry to market clothing and then include a wide range of accessories (or vice versa), the latter being understood in the broadest sense of the term so as to include other products belonging to different classes (jewellery and its imitation, watches, sunglasses, umbrellas etc.) come to mind. All these products are deemed necessary to complete the so-called “total look”, even if different in nature and intended purpose to those belonging to class 25. It looks to this Kat that this practice is still not fully considered by courts, possibly unduly so (in the past see decisions T‑44/17 and T‑505/12).

Photo courtesy of Luisa Callini.