GUCCIO GUCCI S.p.A. v. Chang Qing Qing

The opposition was directed at the goods in the application in goods in Classes 9, 14, 18 and 25. The application for the goods in Classes 18 and 25 was rejected by the decision of the OD in parallel opposition proceedings No B 1 394 560. The OD in that case, allowed the application to proceed for the goods in Class 14. That decision of the OD is final. The Board in the present case confines itself to examining the opposition directed at the application for the goods in Class 9, which were not opposed in those parallel proceedings and the goods in Class 14 for which the application was allowed to proceed. Both signs consist of five letters, begin with the syllable ‘GU and include in the central position a double consonant. In their overall impression, the marks are visually similar to a slight degree. Aurally, there is a similarity of rhythm and intonation, produced by the first syllable ‘GU, the identity of pronunciation of the letters ‘I and ‘Y at the end and by the fact that both signs are made up of two syllables. Taken as a whole, consumers are unlikely to attribute any meaning to the conflicting signs. The Board concludes that there is some similarity albeit low between the conflicting signs. Given the high degree of reputation of the earlier mark for luxury goods, there is a likelihood of confusion with respect to the goods in the application that are in the nature of luxury goods, namely, ‘horological instruments; jewellery. With respect to the contested goods for which the earlier mark enjoys no reputation, namely, ‘scientific, nautical, surveying, photographic and optical apparatus and instruments in Class 9 and ‘precious metals, precious stones in Class 14, the visual and phonetic differences between the signs are sufficient, in spite of the identity of the goods to preclude LOC. The contested decision is partly annulled.