OPPOSITION No B 2 632 092

Eyewear From Barcelona, S.L., Ciutat de Granada, 48, 08005 Barcelona, Spain (opponent), represented by J.D. Nuñez Patentes y Marcas, S.L., Rambla de Cataluña, 120, 08008 Barcelona, Spain (professional representative)

a g a i n s t

FGX International Inc., 500 George Washington Highway, Smithfield, Rhode Island 02917, United States of America (applicant), represented by Chapman+Co, 18 Staple Gardens, Winchester, Hampshire SO23 8SR, United Kingdom (professional representative).

On 10/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 632 092 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 558 167. The opposition is based on European Union trade mark registration No 12 641 643. 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.

1. The goods

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

Class 9:         Spectacles [optics]; Spectacle cases, chains and cords for spectacles, goggles for sports, sports goggles, protective goggles, safety spectacles, sunglasses, reading glasses, lenses for spectacles, spectacle frames, instruments for spectacles.

The contested goods are the following:

Class 9:         Eyewear; spectacles; eyeglasses; reading glasses; sunglasses; contact lenses; eyeglass lenses; eyewear frames and accessories; eyewear cases; eyewear chains; eyewear cords; eyewear lanyards.

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.

Eyewear; spectacles; eyeglasses; reading glasses; sunglasses; eyeglass lenses; eyewear frames and accessories; eyewear cases; eyewear chains; eyewear cords; eyewear lanyards are identically contained in both lists of goods (albeit using slightly different wordings and including synonyms).

The contested contact lenses are similar to a high degree to the opponent’s spectacles [optics], since they have the same purpose (to improve eyesight). They can have the same producers, end users and distribution channels. Furthermore, they are in competition.

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 to a high degree are directed at the public at large. The degree of attention may vary from average (e.g. for eyewear cases, eyewear chains, eyewear cords and eyewear lanyards) to higher than average (e.g. for spectacles, reading glasses and contact lenses), as in the case of some 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.

3. The signs

BEREADER	REDI-READERS
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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The element ‘READER’ is understood in part of the EU, namely by the English-speaking part of the public, as referring to ‘a person who reads or who is fond of reading’ (information extracted from Oxford Dictionaries on 30/03/2017 at www.oxforddictionaries.com), and therefore is allusive for this part of the public in relation to the relevant goods, all of which are optical goods and accessories therefor, used, inter alia, for reading.

However, for the other part of the public, the non-English-speaking part, this has no meaning and is distinctive.

The Opposition Division will first examine the opposition in relation to the part of the public for which ‘READER’ has no meaning and has a normal degree of distinctiveness.

The earlier mark, ‘BEREADER’, and the first element, ‘REDI’, of the contested sign have no meaning for the relevant public and are, therefore, also distinctive.

The opponent argues that ‘READER’ is the dominant element in both signs. However, being word marks, neither of the marks has any elements that could be considered clearly more dominant than other elements. In addition, the earlier mark consists of a single verbal element, ‘BEREADER’, in which ‘READER’ does not play an independent distinctive role.

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 and aurally, the signs coincide in the string of letters and sounds ‘*READER*’. However, they differ in the first two letters of the earlier mark, ‘BE’, in the first element of the contested sign, ‘REDI’, and in the final letter, ‘S’, of the contested sign. The signs further differ in the hyphen placed between the two elements that form the contested sign.

Therefore, since the signs have different structures (one verbal element versus two), different numbers of letters (eight versus 11) and different beginnings (‘BE’ versus the element ‘REDI’) and there is an additional letter ‘S’ at the end of the contested sign, they are visually and aurally similar to a low 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.

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 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 Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (judgment of 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

The goods are partly identical and partly similar to a high degree. They target the public at large, whose degree of attention varies from average to high. The earlier mark has a normal degree of distinctiveness.

The signs are visually and aurally similar to a low degree, since they coincide only in the string of letters ‘*READER*’, whereas the signs differ in their structures, their beginnings, the number of letters, the additional letter ‘S’ at the end of the contested sign and the hyphen between the two components of the contested sign.

Both parties argue that the goods at issue, being optical products, are normally arranged on shelves in optical stores or specific departments. Generally in these stores, customers can themselves either choose the eyewear they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of eyewear is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly, the visual aspect plays a greater role in the global assessment of the likelihood of confusion (06/10/2004, T-117/03 – T-119/03 & T-171/03, NL, EU:T:2004:293, § 50). Therefore, the considerable visual differences between the signs caused by the additional different verbal elements are particularly relevant when assessing the likelihood of confusion between them.

The opponent refers to a previous decision of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

The previous case referred to by the opponent is the decision of 30/09/2015 on opposition proceedings No B 2 428 939, involving the earlier European Union trade mark  and the contested application . The conflict between the signs in that case is not comparable, since the signs therein are both figurative marks, as can be seen above. In particular, the signs were considered visually similar to the extent that they contain the sequence of letters ‘CROP’ and the letters ‘O’ and ‘R’ are also present in the first part of the verbal elements of both signs, despite being in different orders. Aurally, the signs have the same number of syllables, coinciding in the last one and having the same vowel sound sequence. In addition, from the conceptual aspect, the element ‘PRO’ is meaningful for the relevant public, and both signs will be associated with a plant. None of these circumstances are found in the present case, as explained above, and, therefore, the decision referred to by the opponent is not relevant to the present proceedings.

The opponent also refers to the principle of imperfect recollection, according to which average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them. However, in the present case, an imperfect recollection of the signs can lead only to even less similarity between the signs, mainly because of the different beginnings of the signs.

Considering all the above, notwithstanding the identity and high degree of similarity between the goods in question, the Opposition Division finds that the differences between the signs are sufficient to exclude any likelihood of confusion on the part of the public, including the risk that the consumers believe that the goods come from the same undertaking or from economically linked undertakings. Therefore, the opposition must be rejected.

This absence of a likelihood of confusion equally applies to the part of the public for which the element ‘READER’ is allusive. This is because, as a result of the allusive character of that element, that part of the public will perceive the signs as being even less similar.

COSTS

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Alexandra APOSTOLAKIS

Marta GARCÍA COLLADO

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.

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.