OPPOSITION No B 2 756 420
Strellson AG, Sonnenwiesenstr. 21, 8280 Kreuzlingen, Switzerland (opponent), represented by Leo Schmidt-Hollburg Witte & Frank Rechtsanwälte Partnerschaftgesellschaft Mbb, Neuer Wall 80, 20354 Hamburg, Germany (professional representative)
a g a i n s t
Oxibis Group, 8 rue de la Carronnée, 39400 Morbier, France (applicant), represented by Cabinet Guiu – Jurispatent, 10 rue Paul Thénard, 21000 Dijon, France (professional representative).
On 09/06/2017, the Opposition Division takes the following
1. Opposition No B 2 756 420 is upheld for all the contested goods.
2. European Union trade mark application No 15 400 039 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
The opponent filed an opposition against all the goods of European Union trade mark application No 15 400 039. The opposition is based on, inter alia, European Union trade mark registration No 13 083 852. The opponent invoked Article 8(1)(a) and (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 European Union trade mark registration No 13 083 852.
- The goods
The goods on which the opposition is based are, inter alia, the following:
Class 9: Glasses, sunglasses.
The contested goods are the following:
Class 9: Optical apparatus and instruments; spectacle frames; sunglasses; sports glasses; opticians’ goods; spectacle cases; containers for contact lenses; lenses for eyeglasses; optical glasses; contact lenses; lenses (optical-); correcting lenses [optics]; strings for spectacles; spectacles [optics]; chains (eyeglass-); eyeglass frames.
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.
Sunglasses are identically contained in both lists of goods.
The contested optical apparatus and instruments and opticians’ goods include, as broader categories, the opponent’s glasses, sunglasses. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.
The contested spectacles [optics]; sports glasses; optical glasses are included in the broad category of the opponent’s glasses. Therefore, they are identical.
The contested contact lenses are similar to a high degree to the opponent’s glasses. The goods have the same purpose and can have the same producers, end users and distribution channels. Furthermore, they are in competition.
The contested lenses (optical-); correcting lenses [optics]; lenses for eyeglasses are similar to the opponent’s glasses, sunglasses, as they have the same nature. They can have the same producers, end users and distribution channels.
The contested spectacle cases; containers for contact lenses; strings for spectacles; chains (eyeglass-) are similar to the opponent’s glasses, sunglasses, as they can have the same producers, end users and distribution channels. Furthermore, they are complementary.
The contested containers for contact lenses; strings for spectacles; chains (eyeglass) are similar to the opponent’s glasses, sunglasses, as they can have the same end users and distribution channels. Furthermore, they are complementary.
The contested spectacle frames; eyeglass frames are similar to a low degree to the opponent’s glasses, as they can have the same end users and distribution channels. Furthermore, they are complementary.
- 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 to different degrees are directed at the public at large and at business customers with specific professional knowledge or expertise, such as opticians.
The degree of attention is average or above average, as may be the case for optical apparatus, instruments that contain specialised apparatus and instruments that target a specialised public, such as opticians.
- The signs
Earlier trade mark
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 word mark composed of the single verbal element ‘JOOP’. The contested mark is a figurative mark composed of the verbal element ‘JOO’ depicted in black upper case letters and the element ‘ly’ depicted in stylised dark-red italic letters.
The contested sign will be split into ‘JOO’ and ‘ly’, due to the different sizes, colours and stylisations of the letters. The element ‘JOO’ of the contested mark dominates the visual impression and is the most dominant element of the mark.
The element ‘JOOP’ of the earlier mark has no meaning for the relevant public and is, therefore, distinctive.
The elements ‘JOO’ and ‘ly’ of the contested mark have no meaning for the relevant public and are, therefore, distinctive.
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.
Visually, the marks are similar to the extent that they coincide in their first three letters, ‘JOO-’. However, they differ in their last letters, ‘P’ in the earlier mark and ‘LY’ in the contested sign. The marks also differ in the stylisation and colours of the contested sign.
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 letters ‛JOO’, present in both signs. The pronunciation differs in the sound of the letters ‛P’ of the earlier sign and ‘LY’ of the contested mark.
Therefore, since the beginnings of the signs are more important, as explained above, the signs are aurally similar to an average 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.
- 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 mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).
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.
- Global assessment, other arguments and conclusion
The contested goods are partly identical and partly similar to various degrees to the opponent’s goods. The degree of attention is average or above average, as explained above.
The signs are similar, since they coincide in their first three letters, ‘JOO-’, out of four letters in the earlier mark and five letters in the contested sign; these letters form the dominant element of the contested sign. This similarity, which is due to the initial three letters of the marks in question, must be taken into account when assessing the likelihood of confusion between the marks; as mentioned above, consumers generally tend to focus on the first element of a sign when they encounter a trade mark.
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).
The visual and aural differences between the signs lie in the fourth letter, ‘P’, in the earlier mark and in the last two letters of the contested sign, ‘LY’, as well as in the stylisation and colours of the contested sign. However, all these differences, taking into account the fact that consumers rely on their imperfect recollection of signs, do not significantly influence the overall similarity between the signs caused by the same first three letters in the signs, which are of similar lengths (four letters in the earlier mark and five letters in the contested sign).
In conclusion, it is considered that the similarities outweigh the differences between the signs and that the overall similarity is sufficient to find a likelihood of confusion for the relevant public. This is equally valid for the goods found to be identical and for the goods found to be similar or even similar to a low degree, as the similarity between the signs is clearly sufficient to offset the lower degree of similarity between the goods in question.
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 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 public.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 13 083 852. It follows that the contested trade mark must be rejected for all the contested goods.
Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.
As earlier European Union trade mark registration No 13 083 852 leads to the success of the opposition 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 rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(1)(a) and 8(5) EUTMR.
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
José Antonio GARRIDO OTALOA
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.