OPPOSITION No B 2 727 959

Crimea s.a.s. di Mario Martucci, Corso Fiume n. 4, 10133 Torino, Italy (opponent), represented by Maurizio Ferro, Corso Francia n. 161, 10139 Torino, Italy (professional representative)

a g a i n s t

Suntalent International Limited, Offshore Group Chambers, P.O. Box cb-12751, Nassau, New Providence, Bahamas (applicant), represented by Horak Rechtsanwälte, Georgstr. 48, 30159 Hannover, Germany (professional representative).

On 22/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 727 959 is upheld for all the contested goods, namely:

Class 9:        eyeglasses; snow goggles; sunglasses; reading glasses; contact lenses; spectacle glasses; eyeglass frames; eyeglass cases.

2.        European Union trade mark application No 15 229 727 is rejected for all the contested goods. It may proceed for the remaining goods.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 229 727 namely against all the goods in Class 9. The opposition is based on, inter alia, European Union trade mark registration No 3 741 469. The opponent invoked Article 8(1)(b) EUTMR.

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 registration No 3 741 469.

1. The goods

The goods on which the opposition is based are the following:

Class 9:        Spectacles and parts therefor; accessories for spectacles including cases, spectacle holders, cords, chains.

The contested goods are the following:

Class 9:        eyeglasses; snow goggles; sunglasses; reading glasses; contact lenses; spectacle glasses; eyeglass frames; eyeglass cases.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘including’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

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.

Contested goods

The contested eyeglasses; snow goggles; sunglasses; reading glasses; spectacle glasses; eyeglass frames are all included in the broad category of the opponent’s spectacles and parts therefor.

Therefore, they are identical.

The contested eyeglass cases are included in the broad category of the opponent’s accessories for spectacles including cases, spectacle holders, cords, chains.

Therefore, they are identical.

The contested contact lenses have a different method of use from that of the opponent’s spectacles. However, they have the same purposes, distribution channels and producers. They are also in competition.

Therefore, they are similar to a high degree.

2. 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 are directed at the public at large. The degree of attention is average.

3. 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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

The earlier mark is a figurative mark consisting of the word element ‘CHARRO’, depicted in stylised letters, with a flower device above it, all set against a rectangular background. The word ‘CHARRO’ means ‘a skilled Mexican horseman dressed in an elaborate, traditional costume‘ (information extracted from Collins Dictionary at https://www.collinsdictionary.com/dictionary/english/).

The contested sign is a figurative mark consisting of the word element ‘CHARON’ and a figurative device resembling a flower. The word ‘CHARON’ means ‘the ferryman who brought the dead across the rivers Styx or Acheron to Hades in Greek mythology’ (information extracted from Collins Dictionary https://www.collinsdictionary.com/dictionary/english/).

None of the elements of the signs are descriptive for the contested goods. Therefore, they are distinctive.

The signs have no elements that could be considered clearly more distinctive and dominant than other elements.

Visually, the signs coincide in the initial part of the word elements of the signs, consisting of the four letters ‘CHAR’, and in the letter ‘O’, which is the last letter of the earlier mark and the fifth letter of the contested sign. In addition, the figurative device of the contested sign resembles a flower and it is similar to the flower device of the earlier mark. However, the signs differ in the fifth letter of the earlier mark, ‘R’, and in the last letter of the contested sign, ‘N’. They also differ in the rectangular background of the earlier mark.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. This is relevant here, as both signs consist of six letters and they coincide in the initial four letters.

Therefore, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sounds of the letters ‛C’, ‛H’, ‛A’, ‛R’ and ‛O’, present identically in both signs. The pronunciation differs in the sounds of the fifth letter of the earlier mark, ‛R’, and in the last letter, ‛N’, of the contested sign. However, the pronunciation of the double consonant ‘R’ of the contested sign will not differ significantly from that of the single letter ‘R’ in English.

Therefore, the signs are aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the words ‘CHARRO’ and ‘CHARON’ have different meanings, the signs have in common the concept of the stylised flower device.

Therefore, the signs are conceptually similar to a low degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

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.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

In the present case, the conflicting goods are partly identical and partly similar to a high degree. They target the public at large, with an average degree of attention. The earlier mark enjoys a normal degree of distinctiveness in relation to the relevant goods.

The signs under comparison are visually similar to an average degree and aurally similar to a high degree, as outlined in detail in section c) of this decision. This outcome results from the visual and aural coincidence in their initial four letters and in the letter ‘O’. The signs are conceptually similar to a low degree, since they have similar figurative devices.

Taking account of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26), the Opposition Division is of the opinion that the differences are not sufficient to counteract the visual and aural similarities between the signs, which together result in the signs creating similar impressions when perceived by the public as a whole.

Moreover, the Court has set out the essential principle that evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, between the previously established findings on the degree of similarity between the marks and that between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17). In the present case, the low degree of conceptual similarity between the signs is not sufficient to avoid a likelihood of confusion, as it is clearly counterbalanced by the identity and high degree of similarity between the goods and the high degree of aural similarity between the signs.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 3 741 469. It follows that the contested sign must be rejected for all the contested goods.

As the earlier right examined leads to the success of the opposition and to the rejection of the contested trade mark for all the contested goods, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Erkki MÜNTER

Bekir GÜVEN

Judit NÉMETH

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be 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 Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.