OPPOSITION No B 2 738 790

Luxottica Group S.p.A., Piazzale Luigi Cadorna, 3, 20123 Milan, Italy (opponent), represented by Bufete del Valle, S.L.P., C/ Guadalquivir 22, 28002 Madrid, Spain (professional representative)

a g a i n s t

Xianming Luo, Rm 505,Bldg 10#, Ashanti Jinyuan,Northeast of Tangjiaqiao Rd,Lvjia'an Village, Sanyang St, Ouhai Distr., Wenzhou City, Zhejiang Province, People’s Republic of China (applicant), represented by Kolster Oy Ab, Salmisaarenaukio 1, 00180 Helsinki, Finland (professional representative).

On 10/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 738 790 is upheld for all the contested goods.

2.        European Union trade mark application No 15 487 184 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 487 184. The opposition is based on European Union trade mark registration No 11 096 336 and Spanish trade mark registration No 1 986 250. The opponent invoked Article 8(1)(b) as the basis for opposition as regards European Union trade mark registration No 11 096 336 and Article  8(5) EUTMR as the basis for opposition on the earlier Spanish trade mark registration No 1 986 250.

The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 11 096 336.

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.

1. The goods

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

Class 9:        Sunglasses, spectacles, aesthetic spectacles, protective eyewear, glasses for sporting activities; frames for spectacles and masks; nose pads, lenses for sunglasses, spectacles and cosmetic glasses; arms and other spare parts, cases and holders for glasses and masks; holders and display stands for glasses; spectacle chains; contact lenses and containers for contact lenses, magnifying glasses; binoculars; optical items and instruments.

The contested goods are the following:

Class 9:        Eyeglasses; spectacle lenses; contact lenses; anti-glare glasses; sunglasses; eyeglass frames; spectacle cases; optical apparatus and instruments; eyeglass chains; correcting lenses [optics].

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.

Spectacle lenses (and their synonym lenses for spectacles); contact lenses; optical instruments are identically contained in both lists of goods.

The contested eyeglasses; anti-glare glasses; sunglasses eyeglass frames; spectacle cases; optical apparatus; eyeglass chains; correcting lenses [optics] are all included in the opponent’s broad category of optical items and instruments in Class 9. Therefore, they are identical.

The contested spectacle cases and eyeglass chains are similar to the opponent’s broad category of optical items in Class 9.

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 in question.

In the present case, the goods found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise in the optical field. The degree of attention may vary from average to high, depending on the price or sophisticated nature of the purchased goods.

Given that the general public is more prone to confusion, the examination will proceed on this basis.

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 earlier mark is a figurative mark composed of the upper case letters ‘R’ and ‘B’ in a stylised, white and black typeface, depicted in a diagonal line.

The contested sign is a figurative mark composed of the upper case letters ‘R’ and ‘B’ depicted in an almost identically stylised font (although not in a diagonal line) and in black colour, followed by the term ‘space’, depicted in a slightly smaller size.

The common string of letters ‘RB’ is not descriptive, allusive or otherwise weak for the relevant goods and thus normally distinctive. The English term ‘space’ in the contested sign will be understood by part of the relevant public (i.e. the English-speaking public and in the territories where English is commonly understood) as a reference to an area that is empty or available; nevertheless, it has no meaning for the relevant goods and will thus be normally distinctive. For the remaining part of the public it is meaningless and will be likewise of normal distinctiveness.

None of the signs at issue have elements that could be considered clearly more dominant or distinctive than other elements. Nevertheless, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component, in the present case limited to the mere stylisation of the verbal components This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37). Consequently, in the present case, the verbal components of both signs will have a stronger impact on the relevant consumers.

Visually, the signs coincide in their first, and subsequent, upper case letters ‘R’ and ‘B’, which are in addition depicted in an almost identical stylised font. The verbal element of the earlier mark is thus entirely comprised in, and forms the beginning of, the contested sign. The signs differ in the diagonal position of the letters in the earlier mark and the additional verbal element ‘space’ in the contested sign.

Furthermore, 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. Therefore, in the present case, the fact that the signs coincide in their first two letters (which moreover forms the entire verbal element of the earlier sign) is of particular relevance in the assessment of the similarity of the signs.

Consequently, the signs are visually similar to at least 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 sound of the letters ‘R’ and ‘B’ present identically in both signs. The pronunciation differs in the sound of the term ‘space’ in the contested sign that has no counterpart in the earlier mark.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. To the extent that the contested sign contains the element ‘space’ (whether this term will be understood or not), the signs are not conceptually similar.

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 the earlier mark taken into account above for the assessment of the similarity of goods and signs is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark taken into consideration 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 likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and 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).

As the goods are partly identical and partly similar, due to the visual similarity to at least an average degree and the aural similarity to an average degree and the fact that the distinctive, verbal component of the earlier mark is entirely comprised in, and forms the beginning of, the contested sign, and in addition is depicted in an almost identical font in both signs, a likelihood of confusion exists.

Account is taken 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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54).

Furthermore, likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods covered are from the same or economically linked undertakings. In the present case, it is indeed highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the general public. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part (i.e. the professional part) of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 11 096 336. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right European Union trade mark registration No 11 096 336 leads to the success of the opposition on the basis of the ground of Article 8(1)(b) EUTMR and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268), nor is there the need to further examine the other ground of the opposition, namely Article 8(5) EUTMR, nor the documents submitted to this end by the opponent.

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

María Clara IBÁNEZ FIORILLO

Edith Elisabeth VAN DEN EEDE

Francesca CANGERI SERRANO

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.