OPPOSITION No B 2 708 462

Safilo-Societa’ Azionaria Fabbrica Italiana Lavorazione Occhiali – S.p.A., VII Strada, 15 Zona Industriale, 35129 Padova, Italy (opponent), represented by Cantaluppi & Partners S.r.L., Piazzetta Cappellato Pedrocchi 18, 35122 Padova, Italy (professional representative)

a g a i n s t

Elasto form KG, Franz-Sollfrank-Str. 6, 92237 Sulzbach-Rosenberg, Germany (applicant).

On 07/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 708 462 is partially upheld, namely for the following contested goods:

Class 9: Magnifying glasses; Telescopes; Spectacle cases; Spectacle holders; Eyewear cases; Spectacle frames made of plastic; Frames for spectacles and sunglasses; Cases for spectacles and sunglasses; Lens hoods; Sunglasses; Cases for sunglasses; Refractors.

2.        European Union trade mark application No 14 874 788 is rejected for all the above goods. It may proceed for the remaining 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 14 874 788, namely some of the goods and services in Classes 9 and 35. The opposition is based on, inter alia, European Union trade mark registration No 111 401. 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 111 401.

1. The goods and services

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

Class 9: Optical apparatus and instruments, spectacles, sunglasses, frames, lenses, hinges and cases for spectacles and sunglasses, their parts and accessories.

The contested goods and services are the following:

Class 9: Magnifying glasses; Telescopes; Spectacle cases; Spectacle holders; Eyewear cases; Spectacle frames made of plastic; Frames for spectacles and sunglasses; Cases for spectacles and sunglasses; Lens hoods; Sunglasses; Cases for sunglasses; Refractors.

Class 35: Publicity and sales promotion services; Advertising and marketing; Business promotion; Advertising for others; Consultations relating to business advertising.

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

Sunglasses are identically contained in both lists of goods.

The contested magnifying glasses; telescopes; lens hoods; refractors are included in the broader category of the opponent’s optical apparatus and instruments. Therefore, they are identical.

The contested spectacle frames made of plastic and frames for spectacles and sunglasses are included in the broader category of the opponent’s frames. Therefore, they are identical.

The contested spectacle cases; spectacle holders; eyewear cases; cases for spectacles and sunglasses and cases for sunglasses are included in the broader category of the opponent’s cases for spectacles and sunglasses. Therefore, they are identical.

Contested services in Class 35

Preliminary remark:

The opponent argues that the applicant has adopted a general list of services without specifying any sector and that the opposition is exclusively directed against services that may interfere with the opponent’s optical goods. Furthermore, it adds that the goods should be considered similar, in view of their complementarity.

It must be recalled, in this regard, that the comparison of the goods and services must be based on the wording indicated in the lists of goods/services. Any actual or intended use not stipulated in the lists of goods/services is not relevant for the comparison, since this comparison is part of the assessment of likelihood of confusion in relation to the goods/services on which the opposition is based and against which it is directed; it is not an assessment of actual confusion or infringement (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71).

The contested services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc.

The contested services are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. It is true that some of the opponent’s goods may be the subject of some of the contested services but as well as being different in nature (services are intangible and goods are tangible), they serve different needs and have different purposes. They do not have the same producers/providers, relevant publics or distribution channels. Furthermore, they are neither in competition nor complementary. Therefore, these services are dissimilar to the goods being advertised.

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 and at business consumers with specific knowledge and expertise. The degree of attention is considered average to higher than average, as some of the goods are not bought on a daily basis and can be expensive (telescopes, refractors).

3. The signs

ELASTA
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 public.

The earlier sign is a word mark consisting of the single element ‘ELASTA’. As the earlier mark consists of just one element, it has no element that could be considered clearly more distinctive or dominant (visually eye-catching) than other elements.

The contested sign is a figurative mark containing the verbal element ‘elasto’, depicted in a stylised blue typeface, and a circular figurative element in various colours containing a white letter ‘e’. Beneath this, the words ‘PROMOTION FOR LIFE’ appear in much smaller pink upper case letters.

The elements ‘ELASTO’ and ‘elasta’ per se have no dictionary meaning for the relevant public and are therefore distinctive for the relevant goods. Both words might be perceived by part of the relevant public as an allusion to elasticity and flexibility. Regardless of how it is understood, elasticity is not a characteristic that consumers would expect from the goods in question and, therefore, both words are still distinctive.

The figurative element of the contested sign has no meaning in relation to the goods and, therefore, has a normal degree of distinctiveness in relation to them.

The slogan ‘PROMOTION FOR LIFE’ is a laudatory slogan whose function is to give information or motivational indications vis-à-vis the goods for which registration is sought and to which the public will not pay as much attention as the other elements of the contested sign. In fact, due to their size and positions, the word ‘ELASTA’ and the circular figurative device are the co-dominant elements of the contested sign.

Visually, the signs coincide in their first letters, ‘ELAST*’, placed identically in both signs. However, they differ in their final letters, ‘A’ of the earlier mark versus ‘o’ of the contested sign. The coinciding letters are placed at the beginnings of the signs, which enhances the impact of the commonality. The public tends to focus on the beginning of a sign when it encounters a trade mark. This is because the public reads from left to right, which means the part placed at the left of the sign (the initial part) is the first one to attract the attention of the reader. Therefore, the fact that most of the sole element of the earlier sign is also most of the first verbal element of the contested sign is of material importance when assessing the likelihood of confusion for the relevant public.

Moreover, the marks differ in the remaining parts of the contested sign, namely the words ‘PROMOTION FOR LIFE’ and the circular figurative element. Nevertheless, with regard to the figurative device, it has to 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).

Considering all the above, the signs are visually similar to at least an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘ELAST*’ and differs in the sound of their sixth letters, namely ‘A’ in the earlier mark and ‘o’ in the contested sign. The pronunciation also differs in the sound of the word elements ‘PROMOTION FOR LIFE’ of the contested sign, which are not dominant or distinctive and have no counterparts in the earlier sign.

Even if consumers perceive an ‘e’ in the figurative element of the contested mark, it is unlikely that they will pronounce it, so it is not subject to a phonetic assessment.

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

Conceptually, as well as containing the fanciful word ‘elasto’, the contested sign also includes the expression ‘PROMOTION FOR LIFE’ that will be understood by the relevant public as a laudatory, non-distinctive slogan. Moreover, the part of the public that will perceive an ‘e’ in the figurative element of the contested sign will merely perceive the concept of the letter ‘E’.

In any case, as the earlier mark will not be associated with any meaning, the signs are not conceptually similar.

For the part of the public for which ‘ELASTA’ and ‘elasto’ may suggest flexibility and elasticity, the signs are conceptually similar to a high 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 goods are identical whereas the services are dissimilar. The degree of attention is considered to vary from average to higher than average and the relevant public includes both general consumers and professionals. The earlier mark has a normal degree of distinctiveness.

The signs are either not conceptually similar or similar to a high degree for those who link both signs with the concept of elasticity. Visually and aurally, the signs are similar to at least an average degree on account of having in common the string of letters ‘ELAST*’, which constitutes almost the entirety of the earlier mark and is entirely included as the majority of the first, and therefore most conspicuous, verbal element of the contested sign. The earlier mark and the first verbal element of the contested sign differ in their final letters, ‘A’ versus ‘o’, respectively.

Moreover, the contested sign has a verbal element – namely a laudatory expression, as explained in section c) – that will be visually less perceptible than the other elements of the sign due to its position at the bottom of the sign and its smaller size. The differences between the signs are therefore confined to secondary elements or elements that are not significant enough (the figurative element in the contested sign) to outweigh the obvious similarities between the marks. As a result, the attention of the relevant public will focus on the distinctive element, ‘ELAST*’, present in both signs, which constitutes the first five letters out of a total of six in the earlier mark and in the first verbal element of the contested sign.

Bearing in mind all of the above, the Opposition Division finds that the differences between the marks are not sufficient to safely exclude a likelihood of confusion because of the significant similarities between the marks. Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the relevant 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 partially well founded on the basis of the opponent’s European Union trade mark registration No 111 401.

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

The opposition is not successful insofar as the services that are dissimilar are concerned. 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 cannot be successful.

The opponent has also based its opposition on Italian trade mark registration No 1 462 194 for the word mark ‘ELASTA’.

Since this mark is identical to the one which has been compared and covers a narrower scope of goods, the outcome cannot be different with respect to services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those services.

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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Ric WASLEY

Alexandra APOSTOLAKIS

Richard BIANCHI

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.