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
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.
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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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.
- The goods and services
The goods and services on which the opposition is based are the following:
- 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.
- 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.
- 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.
- Spanish trade mark registration No 2 225 948
Class 25: Ready-made clothing for women, men and children; footwear (except orthopaedic); headgear.
- Spanish trade mark registration No 2 225 949