OPPOSITION No B 2 663 600

BLI-DBP, Société par actions simplifiée, 74, route des Camoins, 13011 Marseille, France (opponent), represented by Cabinet Beau de Lomenie, 232, avenue du Prado, 13008 Marseille, France (professional representative)

a g a i n s t

Boozt Fashion AB, Hyllie Boulevard 10 B, 215 32 Malmö, Sweden (applicant), represented by Setterwalls, Stortorget 23, 211 34 Malmö, Sweden (professional representative).

On 10/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 663 600 is partially upheld, namely for the following contested goods and services:

Class 9:        Spectacles (optics) and sunglasses, and accessories therefor, spectacle cases and frames, sports glasses.

Class 35:        Retailing, including mail order and internet sale, relating to spectacles (optics); Wholesaling and retailing, in particular mail order, including online, in the following fields: spectacles (optics).

2.        European Union trade mark application No 14 764 393 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 764 393, namely against some of the goods and services in Classes 9 and 35. The opposition is based on, inter alia, French trade mark registration No 10 3 720 444. The opponent invoked Article 8(1)(b) and 8(5) 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 French trade mark registration No 10 3 720 444.

1. The goods and services

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

Class 9:         Spectacles (optics); sunglasses.

The contested goods and services are the following:

Class 9:        Spectacles (optics) and sunglasses, and accessories therefor, spectacle cases and frames, sports glasses.

Class 35:        Retailing, including mail order and internet sale, relating to spectacles (optics) and accessories; Marketing services; Providing commercial information on the Internet; Wholesaling and retailing, in particular mail order, including online, in the following fields: spectacles (optics) and accessories.

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 in Class 9

Spectacles (optics) and sunglasses are identically contained in both lists of goods.

The contested sport glasses are included in the broad category of the opponent’s spectacles and overlap with the opponent’s sunglasses. Therefore, they are identical.

The contested accessories [for spectacles and sunglasses] and spectacle cases and frames are similar to the opponents spectacles, since they are complementary, share the same distribution channels (opticians), are directed at the same end users and will be usually manufactured or marketed by the same undertakings.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public. The same principles apply to wholesale services.

Therefore, the contested retailing, including mail order and internet sale, relating to spectacles (optics); wholesaling and retailing, in particular mail order, including online, in the following fields: spectacles (optics) are similar to a low degree to the opponent’s spectacles (optics).

However, similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the case of the contested retailing, including mail order and internet sale, relating to accessories [for spectacles]; wholesaling and retailing, in particular mail order, including online, in the following fields: accessories [for spectacles], which are therefore considered to be dissimilar.

As regards the remaining contested services, namely marketing services and providing commercial information on the Internet, they are clearly dissimilar to the opponent´s goods, as they are fundamentally different in nature, purpose and commercial origin and have no relevant points of contact.

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 and services found to be identical or similar to different degrees are directed at the public at large and, in the case of wholesale services, at business customers with specific professional knowledge or expertise. The public’s degree of attentiveness will generally be average, except for the services directed at business customers, for which it will be higher than average due to their professional expertise.

3. The signs

	BOOZT
Earlier trade mark	Contested sign

The relevant territory is France.

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).

As a preliminary remark, it should be noted that the earlier mark includes the registered trade mark symbol, ®. This is an informative indication that the sign is purportedly registered and is not part of the trade mark as such. Consequently, this will not be taken into consideration for the purposes of the comparison.

The word elements ‘BOZ’ and ‘eyewear’ of the earlier mark have no meaning for the relevant French-speaking public and are, therefore, equally distinctive. As regards the figurative elements of the earlier mark (typescript, flourish), it should be noted that, 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. 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).

The element ‘BOZ’ in the earlier sign is the dominant element as it is the most eye-catching, due to its larger size and bolder typescript.

Visually, the signs coincide in the letters B-O-*-Z-*. They differ in the additional letters O and T of the contested sign, as well as in the word ‘eyewear’ and the figurative elements (typescript, flourish) of the earlier mark. Taking also into account that the coincidences are found in the dominant element of the earlier mark and the lesser impact of its figurative components, it is considered that they are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘BO*Z’, present identically in both signs. They differ in the sound of the letters ‘O’ and ‘T’ of the contested sign – however the additional ‘O’ is not likely to be pronounced by the French-speaking public while the sound of the ‘T’ at the end of the word and after another consonant will hardly be perceptible. The signs also differ in the sound of the letters ‘eyewear’ of the earlier mark which, due to their smaller size, the fact that they are difficult to read because of the flourish and for reasons of economy in language are likely not to be pronounced by the relevant public. Given the strong aural similarity between the contested mark as a whole and the dominant word element of the earlier mark, it is considered that they are aurally similar to a high degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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.

According to the opponent the earlier trade mark has a reputation in France in connection with all the goods for which it is registered. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted evidence to support this claim. As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. The evidence consists of the following documents:

• Affidavit from an officer of the opponent, dated 06/07/2016, in which he states that the trade mark BOZ has been used by the opponent since 1996, and provides in an annex a table of yearly sales of spectacles and sunglasses from 2002 to 2016.

• A collection of 52 invoices to clients in France, dated between 12/04/2002 and 29/07/2013, for the sale of unspecified goods under different trade marks, of which only a few seem to correspond to goods carrying the trade mark BOZ.

• Printouts attesting the award to Boz of a design prize (Silmo d’Or) in 2005 and 2009 and its nomination for the same prize in 2007, 2008 and 2009 for the design of different glasses and accessories therefor.

• Front page and back cover of eyewear sales catalogues for the years between 2008 and 2013 featuring the trade mark.

• Press releases from the opponent, dated June 2012 and February 2014, referring to glasses.

• 6 press clippings, dated between September 2012 and November 2013, from regional editions of the Marie Claire magazine and from another magazine entitled ‘Inform’Optique’ which show the trade mark used in connection with sunglasses.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use.

The sales data provided by the opponent as an annex to its affidavit are not corroborated by the invoices submitted, which only contain a few isolated references to the mark in question (for a very small total amount) and where the goods sold are not specified (and the references that appear in the invoices cannot be traced back to other evidence such as catalogues or price lists). There is no direct evidence of the degree of knowledge of the general public (such as a survey) and little indirect evidence (a few press clippings and some awards, which in any event date from several years before the relevant point in time, which is the date of filing of the contested mark).

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 goods and services have been found to be partly identical, partly similar to different degrees and partly dissimilar. Given the average degree of visual similarity and the high degree of aural similarity between the signs, which relates to the dominant word element of the earlier mark and the only element of the contested sign, it is considered that the differences between the signs are not sufficient to counteract the similarities between them, and this even for the services that where found similar to a low degree and for which the relevant public will display a higher than average degree of attention, since in any event the consumers of these goods and services will also have to rely on their imperfect recollection of trade marks (21/11/2013, T 443/12, ancotel, EU:T:2013:605, § 54).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s French trade mark registration No 10 3 720 444.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to different degrees to those of the earlier trade mark, namely spectacles (optics) and sunglasses, and accessories therefor, spectacle cases and frames, sports glasses in class 9 and retailing, including mail order and internet sale, relating to spectacles (optics); wholesaling and retailing, in particular mail order, including online, in the following fields: spectacles (optics) in class 35.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.

The opponent has also based its opposition on the following earlier trade mark:

European Union trade mark registration No 5 000 559 for the figurative mark .

This mark covers the same goods in class 9 as French trade mark registration No 10 3 720 444, as well as some additional goods in class 25 (clothing). Given that the additional goods covered by the earlier EUTM are clearly different to the remaining contested services, since they are fundamentally different in nature  (goods versus services), purpose and commercial origin and have no relevant points of contact, the outcome as regards likelihood of confusion cannot be different: the opposition should be rejected on this ground with respect to the remaining contested services.

The Opposition Division will now examine, in respect of the remaining services, the other ground invoked by the opponent, namely Article 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. Reputation of the earlier trade mark

According to the opponent, the earlier French and EU trade mark have a reputation in France, though in the case of the earlier EU trade mark reputation has to be proven for the European Union.

The evidence submitted by the opponent to prove the reputation of the earlier French trade mark registration No 10 3 720 444 has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

As regards EU trade mark registration No 5 000 559, for which the same evidence listed above was provided by the opponent, the conclusion cannot be different, but for the sake of completeness it should also be mentioned that said evidence does not contain any reference to the earlier EU trade mark as such.

Under these circumstances, the Opposition Division concludes that in the present case the opponent has failed to prove that any of its earlier trade marks has a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that any of the earlier trade marks has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected for the remaining services to the extent it is based on this ground.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Carmen SÁNCHEZ PALOMARES

José Antonio GARRIDO OTAOLA

Ana MUÑIZ RODRÍGUEZ

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.