OPPOSITION No B 2 720 863

Otto (GmbH & Co KG), Werner-Otto-Straße 1-7, 22179 Hamburg, Germany (opponent), represented by Nicola Franzky, c/o Otto (GmbH & Co KG), Werner-Otto-Straße 1-7, 22179 Hamburg, Germany (employee representative)

a g a i n s t

B&W Investment Company Limited, Unit B 8/F, Van Fat Factory Bldg., Nos. 20-22A Ng Fong St., San Po Kong, Kowloon, Hong Kong, Special Administrative Regions of the People's Republic of China (applicant), represented by Aomb Polska Sp. z o.o., Emilii Plater 53, 28th floor, 00-113 Warsaw, Poland (professional representative).

On 25/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 720 863 is partially upheld, namely for the following contested goods:

Class 9:        Correcting lenses [optics]; spectacles [optics]; spectacles lenses; pince-nez mountings; pince-nez; eyeglasses; contact lenses; sunglasses; 3D spectacles.  

2.        European Union trade mark application No 15 107 295 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 some of the goods and services of European Union trade mark application No 15 107 295, namely against some of the goods in Class 9. The opposition is based on European Union trade mark registration No 10 619 393. The opponent invoked Article 8(1)(a) EUTMR.

PRELIMINARY REMARK

In the notice of opposition the opponent only mentioned Article 8(1)(a) EUTMR as a ground of the opposition at hand. However, Article 8(1)(a) and (b) EUTMR are not to be interpreted as being two different relative grounds for refusal. Subparagraph (a) states that a EUTM application will be rejected in those cases where the signs are identical and the goods and/or services are also identical. Subparagraph (b) relates to those cases where the signs and the goods and/or services are either identical or similar. In such cases the comparison of the signs and goods and/or services only is not enough, and there must be an assessment of whether a likelihood of confusion exists.

In the present case, in spite of the fact that the opponent invokes identity between the signs and the goods and services, it is obvious that it also considers that there is a likelihood of confusion.

Consequently, the Opposition Division will examine Article 8(1) EUTMR as being only one ground for refusal taking into account all the relevant factors, i.e. identity between the signs and goods and services, similarity between the signs and goods and services, and whether a likelihood of confusion exists.

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:

Class 25:        Clothing, footwear, headgear.  

Class 35:        Wholesale and retail services in relation to optical instruments.  

The contested goods are, after the applicant´s limitation of 25/04/2016, the following:

Class 9:        Correcting lenses [optics]; spectacles [optics]; spectacles lenses; spectacle frames; pince-nez mountings; eyeglass frames; pince-nez; eyeglasses; contact lenses; sunglasses; 3D spectacles.  

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.

The opponent’s optical instruments that are under wholesale and retail are instruments used for magnification of distant images, for magnifying very tiny images, for correcting defective vision or to aid vision. It follows from the above definition that the contested correcting lenses [optics]; spectacles [optics]; spectacles lenses; pince-nez mountings; pince-nez; eyeglasses; contact lenses; sunglasses; 3D spectacles are all considered to be optical instruments.

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. Therefore, the contested correcting lenses [optics]; spectacles [optics]; spectacles lenses; pince-nez mountings; pince-nez; eyeglasses; contact lenses; sunglasses; 3D spectacles are similar to a low degree to the opponent’s retail services in relation to optical instruments in Class 35. This is because the applicant’s goods are considered identical to the optical instruments which are at retail.

The contested spectacle frames and eyeglass frames are dissimilar to the opponent’s services in Class 35. Apart from being different in nature, since services are intangible, whereas goods are tangible, they serve different needs. Wholesale is the sale of goods or commodities in large quantities, usually for resale. Retail services consist in bringing together, and offering for sale, a wide variety of different products (in the present case – optical instruments), thus allowing consumers to conveniently satisfy 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. Since the contested spectacle frames and eyeglass frames do not fall under the broad category of optical instruments, they cannot be considered as similar to the wholesale and retail services of the latter.

Furthermore, the contested spectacle frames and eyeglass frames are dissimilar to the opponent’s clothing, footwear and headgear. The nature and the main purpose of these goods are different. The main function of clothing, footwear and headgear is to dress the human body, whilst the main purpose of spectacle frames and eyeglass frames is to improve eyesight. They do not have the same distribution channels, and they are neither in competition nor complementary (30/05/2011, R 0106/2007-4, OPSEVEN2 / SEVEN, § 14; 12/09/2008, R 0274/2008-1, Penalty / PENALTY, § 20; 05/10/2011, R 0227/2011-2, OCTOPUSSY OCTOPUSSY ET AL, § 23-26). Even though, couturiers nowadays also sell glasses, this is not the general rule, and rather applies only to (economically) successful designers.

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 similar to a low degree are directed at the public at large and to a more professional public in the optical field. The degree of attention is higher than average, as in the case of the relevant goods, for which an intermediary, such as an optician, is generally necessary to establish the exact strength of lens required to correct an individual’s vision, so these goods are chosen with care. Furthermore, some of these goods, for example eyeglasses, can also be quite expensive and are infrequent purchases.

3. The signs

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 relevant public.

It should be mentioned that the contested sign might be perceived by a part of the relevant public as a purely figurative one or a fanciful representation of a pince-nez, the latter being weak in relation to the goods at stake. Nonetheless, the remaining part of the relevant public will see it as a fanciful representation of the term ‘OTTO’. The examination will proceed on that part of the public that would perceive the contested sign as being the word ‘OTTO’, since this part is more prone to confusion.

The word ‘OTTO’, present in both signs, is meaningless for the relevant part of the public and, therefore, it is distinctive.

Visually, the signs coincide in the element ‘OTTO’ which is the only element of the marks. The signs differ in the colouring and stylization of the mentioned word. These differences cannot offset similarity between the marks arising from the common term. Therefore, the signs are similar to, at least, an average degree.

Aurally, the pronunciation of the marks coincides in the sound of the word /O-TTO/, present identically in both signs. Therefore, the signs are, phonetically, identical.

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.

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 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 (eighth recital of the EUTMR). 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 (see, to that effect, ‘Lloyd Schuhfabrik’, § 20; ‘Sabèl’, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).

As it has been concluded, the goods and services at stake are partly similar to a low degree and partly dissimilar. The earlier mark has a normal degree of distinctiveness. The relevant public is the public at large and a professional public with a rather high level of attention.

The signs are visually similar to at least an average degree and aurally identical, whereas the conceptual comparison remains neutral.

Account should also be taken of the fact that average consumers only rarely have the chance to make a direct comparison between the different marks but must trust in their imperfect recollection of them (Lloyd Schuhfabrik, § 26). Having said that, it is stressed that 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).

In view of all the relevant factors in the present case and the principle of interdependence between them, i.e. the principle that a lesser degree of similarity between the goods and services may be offset by a greater degree of similarity between the marks, in the case at hand, the similarity of the marks offsets the low degree of similarity between part of the goods in Class 9.

Therefore, the Opposition Division considers that the signs are sufficiently similar to lead to a likelihood of confusion, even taking into account the higher degree of attention and even though part of the goods were found to be similar to a low degree only.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the relevant public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 10 619 393. 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.

It follows from the above that the contested trade mark must be rejected for all the contested goods which have been found to be similar to a low degree to the earlier mark’s services.

The rest of the contested goods 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 cannot be successful.

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 shall 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

Chantal VAN RIEL

Klaudia MISZTAL

Saida CRABBE

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.