SILIFLEX | Decision 2606468
Date Published: May 17, 2018
OPPOSITION No B 2 606 468
Wöhlk Contact-Linsen GmbH, Bürgermeister Schade Str. 16, 24232 Schönkirchen, Germany (opponent), represented by Boehmert & Boehmert Anwaltspartnerschaft mbB - Patentanwälte Rechtsanwälte, Martin Landolf Lobemeier, Holtenauer Str. 57, 24105 Kiel, Germany (professional representative)
a g a i n s t
Alberto Paulet Vazquez, C.Rio Manzanares, 14, 28660 Madrid-Boadilla Del Monte, Spain (applicant), represented by Falcon Abogados, C/ Goya, 23 - 3º izda., 28001 Madrid, Spain (professional representative).
On 20/01/2017, the Opposition Division takes the following
1. Opposition No B 2 606 468 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 613 236, namely against all the goods in Class 9. The opposition is based on Community trade mark registration No 5 033 659. The opponent invoked Article 8(1)(b) EUTMR.
Earlier trade mark
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
The goods on which the opposition is based are the following:
Class 3: Cleaning preparations, namely preparations for cleaning contact lenses; scouring preparations for the treatment of contact lenses.
Class 5: Liquids for cleaning contact lenses.
Class 9: Contact lenses; silicon rubber contact lenses; cases for contact lenses; contact lens cases, containers and holders; containers for contact lenses; carrying cases and containers for contact lenses; storage cases, holders and insertion and removal devices for contact lenses.
The contested goods are the following:
Class 9: Frames for sunglasses; frames for spectacles and sunglasses; unmounted spectacle frames; spectacle frames; frames for sunglasses; spectacle frames made of metal; spectacle frames made of plastic; spectacle frames made of a combination of metal and plastics; spectacle frames made of metal and of synthetic material; spectacle frames made of metal or of a combination of metal and plastic.
An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.
The term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.
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
The opponent’s goods are contact lenses and other goods used in combination with such lenses. While these goods and the contested ones are sold in the same outlets, such circumstance is not enough to establish their similarity. Indeed, the public does not attribute the same commercial origin to the goods in conflict, not only because, in general, even when produced by the same companies they are sold under different trademarks, but also, and more particularly, because they are goods of a totally different nature, purpose and method of use. Furthermore, the contested goods being merely frames for glasses, and not corrective glasses as such, the goods in conflict are neither complementary nor in competition. Therefore, they are dissimilar.
According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.
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
Begoña URIARTE VALIENTE
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.