OPPOSITION No B 2 788 233

Inmobil Ibiza 6000, S.L., Pasaje Sa Font den Lluna, 2, 07840 Santa Eulalia del Río (Ibiza-Baleares), Spain (opponent), represented by Clarke, Modet y Cía. S.L., Rambla de Méndez Núñez, Nº 21-23, 5º A-B, 03002 Alicante, Spain (professional representative)

a g a i n s t

Sav-Iol, Routes des Falaises 74, 2000 Neuchatel, Switzerland (applicant), represented by Paul Cosmovici, Cosmovici Intellectual Property, Eschersheimer Landstraße 42, 60322 Frankfurt am Main, Germany (professional representative).

On 19/10/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 788 233 is partially upheld, namely for the following contested goods:

Class 9: Optical apparatus and instruments; spectacles; sunglasses; parts and fittings for all the aforesaid goods; lenses; frames, cords, chains and cases all for spectacles; optical lenses; ophthalmic lenses; eyeglass lenses; objectives [lenses] optics.

2.        European Union trade mark application No 15 442 643 is rejected for all the above goods. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 442 643 for the word mark ‘EDEN’. The opposition is based on 1) European Union trade mark registration No 1 262 476 , 2) European Union trade mark registration No 4 673 431, 3) Spanish trade mark registration No 2 843 416, 4) Spanish trade mark registration No 2 225 948, 5) Spanish trade mark registration No 2 225 949, 6) Spanish trade mark registration No 2 225 950, 7) Spanish trade mark registration No 2 678 082 and 8) Spanish  trade mark registration No 2 678 083. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR in connection with all the earlier marks.

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. All the references in this decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

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 and services

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

1. European Union trade mark No 1 262 476   

Class 9: Recording discs, audio-video compact discs, magnetic discs, exposed films and other magnetic data carriers.

Class 25: Ready-made clothing for women, men and children; footwear (except orthopaedic) and headgear.

Class 41: Discothèque services; education and entertainment, sporting and cultural activities.

Class 42: Public houses, cafeterias and restaurants; restaurant services (food); temporary accommodation.

2. European Union trade mark No 4 673 431

Class 9: Spectacles (optics), spectacle cases, lenses and frames.

Class 35: Commercial retailing and retailing via global computer networks of recording discs, audio-video compact discs, magnetic discs, exposed film and other magnetic data carriers, spectacles (optical goods), spectacle cases, crystals and spectacle frames; business management assistance in relation to franchising.

3. Spanish trade mark registration No 2 843 416  

Class 41: Services of organization of parties and celebrations; services of discotheque, music-hall, variety shows; representation and production of shows and parties, entertaining and animation.

4. Spanish trade mark registration No 2 225 948 

Class 25: Ready-made clothing for women, men and children; footwear (except orthopaedic); headgear.

5. Spanish trade mark registration No 2 225 949

Class 41: Discotheque services; education and entertaining services; education and cultural activities.

6. Spanish trade mark registration No 2 225 950

Class 42: Bar, cafeteria and restaurant services; services for providing food and drinks; temporary accommodation.

7. Spanish trade mark registration No 2 678 082

Class 43: Music pub services; bar, cafeteria and restaurant services; services for providing food and drinks; temporary accommodation.

8. Spanish  trade mark registration No 2 678 083 for the figurative mark  .

Class 43: Music pub services; bar, cafeteria and restaurant services; services for providing food and drinks; temporary accommodation.

The contested goods and services are the following:

Class 9: Optical apparatus and instruments; spectacles; sunglasses; parts and fittings for all the aforesaid goods; lenses; frames, cords, chains and cases all for spectacles; optical lenses; ophthalmic lenses; eyeglass lenses; objectives [lenses] optics.

Class 10: Intra-ocular lenses; intraocular lenses for surgical implantation; prostheses (intraocular lenses) for surgical implantation; lenses (intraocular prosthesis) for surgical implantation; lenses (intraocular prostheses) for surgical implantation; intraocular prostheses (lenses) for surgical implantation; artificial lenses for implantation in the eye; ocular implants; intra-ocular implants; ocular implants made from artificial materials.

Class 35: Advertising, marketing and promotional services; commercial trading and consumer information services; business assistance, management and administrative services, business analysis, business assistance, management and administrative services, business analysis, all for optical services.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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

The contested spectacles; lenses; frames, cases all for spectacles are identically contained in both lists of goods (including synonyms) (earlier mark 2).

The contested optical apparatus and instruments include, as a broader category, the opponent’s spectacles (optics) (earlier mark 2). Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested sunglasses are included in the broad category of, or overlap with, the opponent’s spectacles (optics) (earlier mark 2). Therefore, they are identical.

The contested parts and fittings for all the aforesaid goods (spectacles; sunglasses); cords, chains all for spectacles are similar to the opponent’s spectacles (optics) (earlier mark 2). These goods are complementary, they are distributed through the same distribution channels and target the same relevant public.

The contested optical lenses; ophthalmic lenses; eyeglass lenses; objectives [lenses] optics are similar to the opponent’s spectacles (optics) (earlier mark 2). These goods have the same nature, they originate from the same companies, are distributed through the same distribution channels and target the same relevant public.

Contested goods in Class 10

The contested intra-ocular lenses; intraocular lenses for surgical implantation; prostheses (intraocular lenses) for surgical implantation; lenses (intraocular prosthesis) for surgical implantation; lenses (intraocular prostheses) for surgical implantation; intraocular prostheses (lenses) for surgical implantation; artificial lenses for implantation in the eye; ocular implants; intra-ocular implants; ocular implants made from artificial materials are all intra-ocular lenses or ocular implants used in surgery. These goods have clearly a different nature compared with the opponent’s eyewear goods in Class 9 (earlier mark 2) and a different method of use. Even if the purpose of those goods might to some extent overlap, the purpose of the contested goods goes usually much further than a simple correction of the eye sight, it is most often a surgical solution for a medical eye-problem. These goods are not complementary and not in direct competition with each other. Furthermore, they originate from different companies, they are distributed through different sales channels and target a different relevant public (professional public versus public at large). Therefore, these goods are dissimilar to the opponent’s goods in Class 9 (earlier mark 2).

These goods are also dissimilar to the opponent’s remaining goods and services protected by the remaining earlier marks in Classes 9 (discs, films, magnetic data carriers), 25 (clothing, footwear, headgear), 35 (retailing services), 41 (education, entertainment, sport and cultural activities), 42 and 43 (provision of food and drink, temporary accommodation). These goods and services have a different nature, different purpose and different method of use. They are not complementary nor in competition with each other. Furthermore, they do not originate from the same companies, they are not provided through different channels and target a different relevant public.

As far as the opponent’s services in Class 35 are concerned, it can be noted that the opponent’s commercial retailing and retailing via global computer networks of recording discs, audio-video compact discs, magnetic discs, exposed film and other magnetic data carriers, spectacles (optical goods), spectacle cases, crystals and spectacle frames; business management assistance in relation to franchising and the contested goods in Class 10 are not similar.

Apart from being different in nature, since services are intangible, whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

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 present case, since the goods at issue are not identical.

Contested services in Class 35

The contested advertising, marketing and promotional services; commercial trading and consumer information services; business assistance, management and administrative services, business analysis, business assistance, management and administrative services, business analysis, all for optical services are dissimilar to all the opponent’s goods and services (all earlier marks) in Classes 9 (discs, films, magnetic data carriers, spectacles, frames, lenses and cases), 25 (clothing, footwear, headgear), 35 (retailing services), 41 (education, entertainment, sport and cultural activities), 42 and 43 (provision of food and drink, temporary accommodation). These goods and services have a different nature, different purpose and different method of use. They are not complementary nor in competition with each other. Furthermore, they do not originate from the same companies, are provided through different channels and target a different relevant public.

Conclusion

According to Article 8(1)(b) EUTMR similarity between the goods and services is a requirement to establish likelihood of confusion. As the contested goods and the goods and services of the opponent’s European Union trade mark registration No 1 262 476 , Spanish trade mark registration No 2 843 416, Spanish trade mark registration No 2 225 948, Spanish trade mark registration No 2 225 949, Spanish trade mark registration No 2 225 950, Spanish trade mark registration No 2 678 082 and Spanish  trade mark registration No 2 678 083 are dissimilar, no likelihood of confusion can exist and the opposition under Article 8(1)(b) has to be rejected as far as it is based on those earlier trade marks.

Since the contested goods and services are partly similar to earlier mark 2), the Opposition Division will continue the examination of the opposition on the ground of Article 8(1)(b) only in relation to earlier mark 2) as similarity between the goods and services is a requirement to establish likelihood of confusion.

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 or similar are directed at the public at large and at a professional public (opticians) with specific professional knowledge or expertise. The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

3. The signs

	EDEN
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 contested sign is a word mark ‘EDEN’. The earlier mark is a figurative mark composed of a figurative element representing a piece of fruit and underneath over three lines the slightly stylised words ‘EDEN’ in big upper case letters, ‘IBIZA’ and ‘www.edenibiza.com’ in smaller letters, all in green.

The element ‘EDEN’ present in both marks will be perceived by a significant part of the relevant public as ‘the garden of Eden, the place where Adam and Eve lived in the biblical account of the Creation, from which they were expelled for disobediently eating the fruit of the tree of the knowledge of goods and evil; a paradise’ (see Collins English Dictionary online). This word is distinctive in relation to the relevant goods in Class 9.

The word ‘IBIZA’ in the earlier mark will be perceived as ‘the most western of the Balearic Islands in Spain’ (see Collins English Dictionary online). This element might be seen as an indication of the place where the relevant goods are manufactured or sold and has, therefore, a weak distinctive character. The domain name www.edenibiza.com is also weak, since it refers to the website of the company or where the goods can be ordered from. Therefore, the word ‘EDEN’ is the most distinctive verbal element of the earlier mark.

Moreover, the word ‘IBIZA’ in the earlier mark is depicted in smaller characters and is, therefore, together with the domain name www.edenibiza.com, overshadowed by the figurative element and the word ‘EDEN’, which are co-dominant.

The figurative element in the earlier mark has no relation to the relevant goods in Class 9 and is therefore distinctive, it also reinforces the concept of ‘EDEN’. However, although this element has a normal degree of distinctiveness, it can 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).

Visually, the signs coincide in the word ‘EDEN’, which constitutes the full contested sign and the (co-)dominant and most distinctive verbal element of the earlier mark.  However, they differ in all the remaining elements of the earlier mark, which are, however, not able to take away the attention from the verbal element ‘EDEN’. As mentioned above the relevant public will rather refer to the mark by its verbal elements than by its figurative elements and will, therefore, focus less on the representation of the fruit. The differing verbal elements are non-dominant and weak.

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 sound of the distinctive word ‘EDEN’, present identically in both signs. The pronunciation differs in the sound of the word ‘IBIZA’ which is, however, non-dominant and also weak. The non-dominant domain www.edenibiza.com will most likely not be pronounced.

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. As the signs will be associated by a significant part of the relevant public with a similar meaning on account of the word ‘EDEN’, while the figurative element in the earlier mark will be perceived as a piece of fruit reinforcing the concept of ‘EDEN’ and the word ‘IBIZA’ evokes a meaning which is weak in relation to the relevant goods, which is also the case with respect to www.edenibiza.com, the signs are conceptually similar to an average 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 claimed that the earlier trade mark enjoys enhanced distinctiveness, but did not file any evidence in order to prove such a claim.

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, despite the presence of some weak elements in the mark, as stated above in section c) of this decision.

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. 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).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).

The conflicting goods and services are partly identical, partly similar and partly dissimilar.

The relevant public is the public at large and a professional public and the level of attention varies from average to high. The earlier mark has a normal degree of distinctiveness.

The signs are visually and conceptually similar to an average degree and aurally they are similar to a high degree.

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).

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/services covered are from the same or economically-linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the marks as two variations of the same mark, one being a word mark ‘EDEN’ and one being a figurative variation of this mark, illustrating the concept of ‘EDEN’ with a figurative element representing fruit and indicating that the relevant goods are manufactured or are sold in Ibiza and making reference to the website.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that many trade marks include the word ‘EDEN’. In support of its argument the applicant refers to several EUTM registrations. The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the word ‘EDEN’. Under these circumstances, the applicant’s claim must be set aside.

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 European Union trade mark registration No 4 673 431.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods and 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 goods and services cannot be successful.

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.

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR (in the version in force at the time of commencement of the adversarial part, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2)(c) EUTMIR (in the version in force at the time of commencement of the adversarial part, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that 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.

In the present case, the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.

On 19/10/2016 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired, after an extension of the cooling off period, on 25/04/2017.

The opponent did not submit any evidence concerning the reputation of the trade mark on which the opposition is based.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as this ground is concerned.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) 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 for only some 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

Chantal VAN RIEL

Saida CRABBE

Eva Inés PÉREZ SANTONJA

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.