DECISION

of the Fourth Board of Appeal
of 1 July 2015

In Case R 1664/2014-4

Optiswiss AG
Lyon-Strasse 26 CH-4053 Basel Switzerland	Opponent / Appellant

represented by ELZABURU, S.L.P., Miguel Angel, 21, E-28010 Madrid, Spain

v

Trivision Point S.R.L.
Piazza San Leonardo, 26 IT-31100 Treviso Italy	Applicant / Respondent

represented by Dr. Modiano & Associati S.p.A., Via Meravigli, 16, I-20123 Milano, Italy

APPEAL relating to Opposition Proceedings No B 2 222 951 (Community trade mark application No 1 1546 801)

The Fourth Board of Appeal

composed of D. Schennen (Chairperson), C. Bartos (Rapporteur) and E. Fink (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 5 February 2013, the respondent sought to register

as a Community trade mark for among others, the following contested goods and services, which are relevant for the current proceedings:

Class 1 − Preparations for preventing the tarnishing of lenses; fluorescein; chemical preparations for treating optical and ophthalmic lenses; chemicals used in photography;

Class 3 − Wipes and cloths impregnated with cleaning substances; eye sprays, not for medical purposes;

Class 5 − Solutions for contact lenses; contact lens cleaning preparations; preparations for cleaning and maintaining ophthalmic lenses and sun lenses; tissues impregnated with pharmaceutical lotions; solutions and preparations for maintaining contact lenses; eye drops; preparations for eye irrigation; eye-washes; ophthalmic gauze; eye sprays for medical use; tear supplements and substitutes for medical use; chemical-pharmaceutical preparations for treating optical and ophthalmic lenses; artificial tears; contact lens disinfectants; solutions for sterilising contact lenses;

Class 9 − Spectacles, sunglasses, anti-glare glasses, sports goggles, goggles for swimming, cases for spectacles and sunglasses, lenses for spectacles and sunglasses, frames for spectacles and sunglasses, chains for spectacles and sunglasses, cords for spectacles and sunglasses, pince-nez, pince-nez cases, pince-nez chains, pince-nez cords; pince-nez mountings, correcting lenses (optics); containers for contact lenses, contact lenses, lens hoods, optical lenses, optical and ophthalmic lenses; apertometers (optics); optical goods; optical lamps; furniture especially made for laboratories; frames for spectacles provided with electronic devices; liquid crystal ophthalmic lenses; spectacles for eye tests; lenses for eye tests and containers for lenses for eye tests; diagnostic lenses; crossed cylinders (optics); skiascopy racks (optics); autorefractometers (optics); keratometers (optics); aberrometers; tonometers (optics); cones for tonometers (optics); retinal cameras (optics); lensmeters (optics); slit lamps for optical use; fluorangiography cameras (optics); eye chart projectors; eye charts (optics); interpupillary distance meters (optics); pachymeters (optics); synoptophores (optics); phoropters (optics); ophthalmoscopes (optics); skiascopes (optics); retinoscopes (optics); campimeters (optics); ophthalmodynamometers (optics); microscopes; binoculars; telescopes; telescopes; instruments for videocentering of lenses; electronic apparatus and software for remote shaping and edging of ophthalmic lenses; small pieces of equipment for optical laboratories; micrometer screws for optical instruments; laboratory equipment and instruments; optical apparatus and instruments; encoded magnetic cards; apparatus and instruments for metering; identification labels (magnetic); identification labels (encoded); scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; data processing equipment and computers; computer software;

Class 16 – Photographs;

Class 35 − Retailing and wholesaling, including online, of preparations for preventing the staining of lenses, fluorescein, chemical preparations for treating optical and ophthalmic lenses, wipes and cloths impregnated with cleaning substances, eye sprays, tear supplements and substitutes, solutions for use with contact lenses, contact lens cleaning preparations, preparations for cleaning and maintaining ophthalmic lenses and sun lenses, wipes impregnated with pharmaceutical lotions, solutions and preparations for maintaining contact lenses, eye drops, preparations for eye irrigation, preparations for washing the eyes, eye baths, ophthalmic gauze, fluorescein strips, chemical-pharmaceutical preparations for treating optical and ophthalmic lenses, portable filled medicine cases, disinfectant wipes, spectacles, spectacle cases, contact lenses, spectacle frames, chains for spectacles, cords for spectacles, correcting lenses, cases for contact lenses, contact lenses, lens hoods, optical lenses, ophthalmic lenses, apertometers, optical articles, optical lamps, micrometer screws for optical instruments, furniture, containers for lenses, diagnostic lenses, crossed cylinders, skiascopy racks, autorefractometers , keratometers, aberrometers, tonometers, cones for tonometers, retinal cameras, lensmeters, slit lamps, fluorangiography cameras, eye chart projectors, eye charts, interpupillary distance meters (optics), pachymeters (optics), synoptophores (optics), phoropters (optics), ophthalmoscopes (optics), skiascopes (optics), retinoscopes (optics), campimeters (optics), ophthalmodynamometers (optics), microscopes, binoculars, telescopes, instruments for videocentering of lenses, electronic apparatus and software for remote shaping and edging of ophthalmic lenses, small pieces of equipment for optical laboratories, micrometer screws, laboratory apparatus and instruments, optical apparatus and instruments, photographs, , scientific, optical, measuring apparatus and instruments, computer software artificial tears, solutions for sterilising contact lenses, diagnostic ophthalmological equipment, diagnostic medical equipment for medical use, apparatus for carrying out diagnostic tests for medical use, optical imaging for medical diagnostic use, apparatus for measuring arterial blood flow in the eye, fixed and portable lamps for medical and surgical use, specialist furniture for optical and ophthalmic use, ophthalmic units, Wood’s lamps for medical use, laser surgery apparatus, slit lamps for ophthalmic use, medical apparatus and instruments;

Class 37 − Repair, maintenance and assembly of spectacles; repair or maintenance of optical machines and instruments.

2. On 23 July 2013, the appellant filed a notice of opposition based on Article 8(1)(b) CTMR, directed against part of the goods and services applied for, namely the goods and services listed in paragraph 1 above, and based on all of the goods covered by International Registration No 853 678 for the figurative mark

(the ‘earlier trade mark’) with effect in Denmark, Germany, Spain, France, Italy, Portugal, Austria, Finland, Slovenia, the United Kingdom and the Benelux countries and registered on 29 March 2005 for the following goods:

Class 9 − Optical glass, spectacle lenses, contact lenses, frames for spectacles, sunglasses; cases for contact lenses, sunglasses and spectacles; optical utensils, apparatus and instruments;

Class 10 − Ophthalmologic utensils, apparatus and instruments.

3. By decision of 28 April 2014 (the ‘contested decision’), the Opposition Division rejected the opposition in its entirety and ordered the appellant to bear the costs. Its reasoning can be summarised as follows:

− The conflicting goods and services were found to be, variously, dissimilar, similar to a low degree, similar or identical.

− Visually the signs are similar to the extent that they depict a cross, but differ in that the contested sign appears to be a figurative representation of a rounded three-dimensional object whereas the earlier sign is merely a plain, two-dimensional depiction of a cross within a circle.

− No aural comparison is possible since neither sign will be pronounced. Conceptually, the signs coincide in the concept of a cross but in the context of the goods and services this will not carry any clear meaning.

− The marks under comparison have no dominant or distinctive elements, and the distinctive character of the earlier mark is normal.

− The relevant public, composed of the general public as well as health professionals, will have an average to high level of attention, depending on the specific goods or services at hand.

− Overall, the signs are quite different to one another, and the differences will not go unnoticed by the relevant public. These differences result in a strikingly different overall impression. In light of this, there will be no likelihood of confusion, even for identical goods and services.

Submissions and arguments of the parties

4. The appellant filed a notice of appeal followed by a statement of grounds. It requests that the Board set aside the contested decision, uphold the opposition in its entirety and reject the CTM applied for in respect of the contested goods and services. It also requests that the respondent be ordered to bear the costs of both the opposition and the appeal proceedings.

5. The arguments of the appellant can be summarised as essentially the following:

− The conflicting signs are visually similar and conceptually quasi-identical. They share the predominant element of a cross, which is the element most likely to be recalled by the relevant public.

− The earlier mark has an average to high degree of distinctive character in relation to ophthalmic goods and services.

− The relevant public seldom has the chance to compare marks side-by-side but instead retain, in their mind’s eye, the more prominent elements thereof.

− The contested goods in Class 9 are in part identical and in part similar. All the other goods and services are similar to the goods of the earlier mark because they all belong to the ophthalmologic field or to similar or directly related sectors such as photography.

− In this case, the identity and high similarity of the conflicting goods and services is also sufficient to offset a lesser degree of similarity between the signs. There is a likelihood of confusion.

6. The respondent did not file any observations.

Reasons

7. The appeal is admissible, and it is partially successful to the extent that the conflicting goods and services are at least similar to an average degree.

Article 8(1)(b) CTMR

8. In accordance with Article 8(1)(b) CTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark. The risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

9. The goods and services in question are directed both at professionals and at the public at large. The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 17ss). Since the appellant invoked its earlier trade mark which is an International Registration, the relevant territory consists of the European Union countries thereby designated, namely Austria, the Benelux countries, Denmark, Finland, France, Germany, Italy, Portugal, Slovenia, Spain and the United Kingdom.

Comparison of the goods and services

10. According to settled case-law, in assessing the similarity of the goods or services concerned, all the relevant factors relating to those goods or services should be taken into account. Those factors include, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned.

11. Regarding the contested goods in Class 1, namely ‘preparations for preventing the tarnishing of lenses; fluorescein; chemical preparations for treating optical and ophthalmic lenses; chemicals used in photography’, the Board does not find any similarity with the earlier goods. Their method of use differs and their nature is different. The appellant itself relied upon a decision of the Second Board of Appeal (31.03.2011, Case R 899/2010-2), which however concerned different goods. In the case at stake, the goods applied for are raw chemicals used in the production process, which are opposed by finished products. No reasoned argument has been made by the appellant nor is there any reason to think that these respective products share the same distribution channels nor that they are complementary to the use of the end products for which the earlier trade mark enjoys protection.

12. With regard to the contested goods in Class 3, unlike the previous Board decision cited by the appellant (see the paragraph above), in the case at hand the comparison does not consist of wipes or spectacle cleaners against general cleaning preparations, but instead concerns the contested ‘wipes and cloths impregnated with cleaning substances; eye sprays, not for medical purposes’ against the earlier goods in Classes 9 and 10. The method of use of the conflicting goods differs and their nature is different; however, there is (at most) a low similarity in light of the complementary nature between ‘wipes and cloths impregnated with cleaning substances’ and the earlier goods (for example, ‘spectacle lenses’, ‘sunglasses’ and ‘optical instruments’ in Class 9), since cleaning wipes and cloths are commonly bought to remove daily smears from lenses. This is not true for ‘eye sprays, not for medical purposes’ which are dissimilar to the earlier goods in light of their different nature, different method of use and lack of any close degree of complementarity. To be complementary, it is not sufficient that the consumer may use both types of products at the same time; complementarity exists only if the use of one of the products is indispensable or important for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking (11/05/2011, T‑74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T‑558/11, Artis, EU:T:2012:615, § 25, and of 04/02/2013, T‑504/11, Dignitude, EU:T:2013:57, § 44).

13. In Class 5, for the same reasons explained in the paragraph above, the contested ‘eye drops; preparations for eye irrigation; eye-washes; ophthalmic gauze; eye sprays for medical use; tear supplements and substitutes for medical use; artificial tears’ are dissimilar to the earlier goods. By contrast, ‘solutions for contact lenses; contact lens cleaning preparations; preparations for cleaning and maintaining ophthalmic lenses and sun lenses; tissues impregnated with pharmaceutical lotions; solutions and preparations for maintaining contact lenses; chemical-pharmaceutical preparations for treating optical and ophthalmic lenses; contact lens disinfectants; solutions for sterilising contact lenses’, regardless of their different natures and methods of use, are similar to a low degree to earlier goods (for example, ‘spectacle lenses’, ‘sunglasses’ and ‘optical instruments’ in Class 9) in light of their complementary nature, namely they are products for post-sale care and maintenance of these goods.

14. In Class 9, the contested ‘furniture especially made for laboratories; encoded magnetic cards; apparatus and instruments for metering; identification labels (magnetic); identification labels (encoded); scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments’ are all dissimilar to the earlier goods. Their respective natures and methods of use are different. Moreover, the appellant has presented no coherent argument to support its bare assertion that all the goods are similar because they are complementary, belong to the same sector, move in the same channels of trade and could be intended for the same customers, other than to cite a previous decision of the Office which is not analogous to this case (see paragraph 11 above), nor can the Board see any convincing basis for the assertion.

15. With regard to ‘data processing equipment and computers’ and ‘computer software’, the established case-law makes it clear that to acknowledge any similarity between such extremely broad Class 9 goods and the specific goods for which the earlier trade mark has been registered which make no mention of software, computers or data processors clearly exceeds the scope of the protection granted by the legislature to the proprietor of a trade mark (see by direct analogy 27/10/2005, T‑336/03, Mobilix, EU:T:2005:379, § 69). The earlier mark covers none of these goods, and the fact that ‘optical utensils, apparatus and instruments’ in the same Class 9 may require or incorporate the use of computers, data processing equipment or software, have a similar method of use and/or the same end users is not enough in itself for a finding of similarity. On one hand, the assumption of the Opposition Division with regard to a possible overlap in the producers for the respective goods is not a well-known fact and has not been proven or even coherently argued by the appellant, and thus cannot be accepted. On the other hand, the mere overlap between end users and method of use is insufficient to prove similarity in the case of the goods at hand, since a huge variety of industries, sectors and circles of trade rely on data processers, computers and software without the result that all goods and services of this kind are necessarily similar. The goods are dissimilar.

16. In the same class, ‘chains for spectacles and sunglasses, cords for spectacles and sunglasses, pince-nez cases, pince-nez chains, pince-nez cords’ have a different nature and method of use to the goods for which the earlier trade mark is registered. However, in light of their complementarity with, for example the earlier trade mark’s ‘frames for spectacles, sunglasses’ in Class 9, it cannot be denied that there is a certain degree of similarity. Overall, the Board finds that there is an average degree of similarity, given that these ancillary products would not be used for anything but the appellant’s goods.

17. With regards to the remaining contested goods in Class 9, namely ‘spectacles, sunglasses, anti-glare glasses, sports goggles, goggles for swimming, cases for spectacles and sunglasses, lenses for spectacles and sunglasses, frames for spectacles and sunglasses, pince-nez,; pince-nez mountings, correcting lenses (optics); containers for contact lenses, contact lenses, lens hoods, optical lenses, optical and ophthalmic lenses; apertometers (optics); optical goods; optical lamps; frames for spectacles provided with electronic devices; liquid crystal ophthalmic lenses; spectacles for eye tests; lenses for eye tests and containers for lenses for eye tests; diagnostic lenses; crossed cylinders (optics); skiascopy racks (optics); autorefractometers (optics); keratometers (optics); aberrometers; tonometers (optics); cones for tonometers (optics); retinal cameras (optics); lensmeters (optics); slit lamps for optical use; fluorangiography cameras (optics); eye chart projectors; eye charts (optics); interpupillary distance meters (optics); pachymeters (optics); synoptophores (optics); phoropters (optics); ophthalmoscopes (optics); skiascopes (optics); retinoscopes (optics); campimeters (optics); ophthalmodynamometers (optics); microscopes; binoculars; telescopes; telescopes; instruments for videocentering of lenses; electronic apparatus and software for remote shaping and edging of ophthalmic lenses; small pieces of equipment for optical laboratories; micrometer screws for optical instruments; laboratory equipment and instruments; optical apparatus and instruments’, the Board finds that these are all identical to the goods for which the earlier trade mark is registered, since they are all included in the broad categories of ‘optical glass, spectacle lenses, contact lenses, frames for spectacles, sunglasses; cases for contact lenses, sunglasses and spectacles; optical utensils, apparatus and instruments’ (all in Class 9) or ‘ophthalmologic utensils, apparatus and instruments’ in Class 10, respectively.

18. Contrary to the bare assertion of the appellant, the contested ‘photographs’ in Class 16 are dissimilar to all the earlier goods. The respective natures and methods of use are different. They serve fundamentally different purposes and are distributed through different sales outlets, catering to very different needs of the consumer.

19. The services of ‘retailing and wholesaling, including online, of preparations for preventing the staining of lenses, fluorescein, chemical preparations for treating optical and ophthalmic lenses, wipes and cloths impregnated with cleaning substances, eye sprays, tear supplements and substitutes, solutions for use with contact lenses, contact lens cleaning preparations, preparations for cleaning and maintaining ophthalmic lenses and sun lenses, wipes impregnated with pharmaceutical lotions, solutions and preparations for maintaining contact lenses, eye drops, preparations for eye irrigation, preparations for washing the eyes, eye baths, ophthalmic gauze, fluorescein strips, chemical-pharmaceutical preparations for treating optical and ophthalmic lenses, portable filled medicine cases, disinfectant wipes, chains for spectacles, cords for spectacles, furniture, photographs, computer software, artificial tears, solutions for sterilising contact lenses, specialist furniture for optical and ophthalmic use’ in Class 35 are dissimilar to the goods protected under the earlier trade mark, since similarity between retail services of specific goods on the one hand and other goods on the other can only be found where the respective goods are identical. This is not the case here.

20. The remaining services in Class 35, namely those relating to the retail and wholesale of ‘spectacles, spectacle cases, contact lenses, spectacle frames, correcting lenses, cases for contact lenses, contact lenses, lens hoods, optical lenses, ophthalmic lenses, apertometers, optical articles, optical lamps, micrometer screws for optical instruments, containers for lenses, diagnostic lenses, crossed cylinders, skiascopy racks, autorefractometers, keratometers, aberrometers, tonometers, cones for tonometers, retinal cameras, lensmeters, slit lamps, fluorangiography cameras, eye chart projectors, eye charts, interpupillary distance meters (optics), pachymeters (optics), synoptophores (optics), phoropters (optics), ophthalmoscopes (optics), skiascopes (optics), retinoscopes (optics), campimeters (optics), ophthalmodynamometers (optics), microscopes, binoculars, telescopes, instruments for videocentering of lenses, electronic apparatus and software for remote shaping and edging of ophthalmic lenses, small pieces of equipment for optical laboratories, micrometer screws, laboratory apparatus and instruments, optical apparatus and instruments, scientific, optical, measuring apparatus and instruments, diagnostic ophthalmological equipment, diagnostic medical equipment for medical use, apparatus for carrying out diagnostic tests for medical use, optical imaging for medical diagnostic use, apparatus for measuring arterial blood flow in the eye, fixed and portable lamps for medical and surgical use, ophthalmic units, Woods lamps for medical use, laser surgery apparatus, slit lamps for ophthalmic use, medical apparatus and instruments’, are, owing to the identity with the earlier trade mark’s goods in Class 9 and Class 10, similar to an average degree. Both the goods and the services are directed to the same target public, indeed they concern goods (which are to be sold) and the services consisting in such sale of the very same goods. While the nature of a service and that of a product are different, the clearly intertwined nature of selling these goods to the relevant public results in an average degree of similarity in this case.

21. Finally, the ‘repair, maintenance and assembly of spectacles; repair or maintenance of optical machines and instruments’ in Class 37 are similar to the earlier goods ‘optical utensils, apparatus and instruments’ in Class 9. The Board adds that the services are also similar to an average degree with the earlier goods ‘spectacle lenses’ and ‘frames for spectacles’ in Class 9, since the services also concern spectacles. These services are similar to an average degree with the earlier goods.

Comparison of the signs

22. The assessment of the visual, phonetic or conceptual similarities between 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. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23; 06/10/2005, C-120/04, Thomson Life, EU:C:2005:594, § 28).

23. A complex sign cannot be regarded as being similar to another sign which is identical or similar to one of the components of the complex sign, unless that component forms the dominant element within the overall impression created by the complex sign. That is the case where that component is likely to dominate, by itself, the image of that sign which the relevant public keeps in mind, with the result that all the other components of the sign are negligible within the overall impression created by it (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 33).

24. It should be made clear that that approach does not amount to taking into consideration only one component of a complex sign and comparing it with another sign. On the contrary, such a comparison must be made by examining the signs in question, each considered as a whole. However, that does not mean that the overall impression created in the minds of the relevant public by a complex sign may not, in certain circumstances, be dominated by one or more of its components. With regard to the assessment of the dominant character of one or more given components of a complex sign, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the complex sign (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 34, 35).

25. The earlier sign consists of the black outline of a circle on a very pale grey background. Within this outline there is the figure of a cross with equal arms, the end of each arm linking directly with the outer circumference of the circle.

26. The contested sign consists of a figurative depiction of a slightly angled view of a three-dimensional round button or pill, as indicated by the two white linear curved side ‘reflection’ contours and the white ‘point of light’ reflection on the right side of the pill. The pill itself is black and it bears a white equal-armed square cross, with the upper arm of the cross connecting directly to the outer circular border.

27. Visually, the most eye-catching component in each sign is the central figure of a four-armed cross, with more or less the same proportions, placed on a circular backdrop. The signs differ to the extent that the contested sign appears to depict a black three-dimensional circular object, viewed from a slightly angled perspective which has the effect of showing the white cross slightly off-centre, to the left and higher than the centre. The ends of three bars of the cross are square, whereas the top arm appears to extend around the top of the ‘pill’ and thus the end of this arm is not visible. By contrast, the earlier sign depicts a four-armed cross with arms of roughly the same length and proportion as that of the contested sign, with the slight visual difference that the end of each arm consists of the circumference of the circular outline. Overall, the signs are visually similar to an average degree.

28. Neither sign has any word element so there is no reason to believe that the relevant public would pronounce them, accordingly a phonetic comparison is not possible.

29. Conceptually, both signs are figurative devices consisting of a similar cross depicted on a circular backdrop. The appellant argues that this represents the same ‘concept’ but provides no indication as to what such a concept could be. The Board finds that it does not represent a concept in itself and therefore no conceptual comparison is possible.

Global assessment of likelihood of confusion

30. A likelihood of confusion on the part of the public must be assessed globally. That global assessment implies some interdependence between the factors taken into account and in particular similarity between the trade marks and between the goods or services covered. Accordingly, a lesser degree of similarity between these goods or services may be offset by a greater degree of similarity between the marks, and vice versa (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 17; 22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19).

31. The more distinctive the earlier trade mark, the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 18).

32. For the purposes of the global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17-26). It should, however, be recalled that the average consumer’s level of attention is likely to vary according to the category of goods or services in question and that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

33. In the case at hand, the relevant public will have a high level of attention for those goods which are particularly technically complex or expensive, which are normally purchased infrequently or which are purchased in order to address serious health concerns (for example expensive optical or ophthalmic apparatus and instruments for a laboratory in Classes 9 or 10). By contrast, the level of attention will be only average for frequently purchased, mass-consumption goods (such as preparations for daily contact lens care in Class 5).

34. The distinctive character of the earlier trade mark must be seen as average since on the one hand there is no conceptual meaning in relation to the protected goods in any of the relevant territories, while on the other the appellant did not explicitly claim enhanced distinctiveness of its mark by virtue of intensive use or reputation.

35. The Board does not agree with the assessment in the contested decision that there is nothing particularly visually eye-catching in the visual impression made by each sign. In reality, the depiction of a broadly similar four-armed cross on a circular backdrop is, in each case, the dominant and distinctive feature of each sign. The most eye-catching aspect of both signs is the central motif of a similar cross placed on a circular backdrop, despite the fact that one depiction is of a basic two-dimensional illustration and the other is in a style which alludes to a three-dimensional figure.

36. Accordingly, although some visual differences exist between the conflicting signs, the Board finds that in each case the imperfect image which will be retained in the memory of the relevant consumer will be that of a four-armed cross on a circular background. The differences between the signs will be noticed upon a side-by-side comparison, but the established case-law makes it clear that this is seldom the case, and is not the correct test to apply in assessing the likelihood of confusion.

37. The overall impression of each sign, seen as a whole, is thus sufficiently close as to give rise of a likelihood of confusion for those goods and services which have been found to be identical or of at least an average degree of similarity, even where the relevant public display a high degree of attention. The sign applied for can be seen as the modernized version of the earlier sign, so that consumers might believe that both trade marks come from the same undertaking. By contrast, for the goods and services which are similar to merely a low degree, the signs are not sufficiently similar as to result in a likelihood of confusion, taking into account the difference between the signs in light of the interdependence principle cited above.

38. The contested decision must be annulled insofar as it rejected the opposition for the following goods and services:

Class 9 − Spectacles, sunglasses, anti-glare glasses, sports goggles, goggles for swimming, cases for spectacles and sunglasses, lenses for spectacles and sunglasses, frames for spectacles and sunglasses, chains for spectacles and sunglasses, cords for spectacles and sunglasses, pince-nez, pince-nez cases, pince-nez chains, pince-nez cords; pince-nez mountings; correcting lenses (optics); containers for contact lenses, contact lenses, lens hoods, optical lenses, optical and ophthalmic lenses; apertometers (optics); optical goods; optical lamps; frames for spectacles provided with electronic devices; liquid crystal ophthalmic lenses; spectacles for eye tests; lenses for eye tests and containers for lenses for eye tests; diagnostic lenses; crossed cylinders (optics); skiascopy racks (optics); autorefractometers (optics); keratometers (optics); aberrometers; tonometers (optics); cones for tonometers (optics); retinal cameras (optics); lensmeters (optics); slit lamps for optical use; fluorangiography cameras (optics); eye chart projectors; eye charts (optics); interpupillary distance meters (optics); pachymeters (optics); synoptophores (optics); phoropters (optics); ophthalmoscopes (optics); skiascopes (optics); retinoscopes (optics); campimeters (optics); ophthalmodynamometers (optics); microscopes; binoculars; telescopes; telescopes; instruments for videocentering of lenses; electronic apparatus and software for remote shaping and edging of ophthalmic lenses; small pieces of equipment for optical laboratories; micrometer screws for optical instruments; laboratory equipment and instruments; optical apparatus and instruments;

Class 35 − Retailing and wholesaling, including online, of spectacles, spectacle cases, contact lenses, spectacle frames, correcting lenses, cases for contact lenses, contact lenses, lens hoods, optical lenses, ophthalmic lenses, apertometers, optical articles, optical lamps, micrometer screws for optical instruments, containers for lenses, diagnostic lenses, crossed cylinders, skiascopy racks, autorefractometers ,keratometers, aberrometers, tonometers, cones for tonometers, retinal cameras, lensmeters, slit lamps, fluorangiography cameras, eye chart projectors, eye charts, interpupillary distance meters (optics), pachymeters (optics), synoptophores (optics), phoropters (optics), ophthalmoscopes (optics), skiascopes (optics), retinoscopes (optics), campimeters (optics), ophthalmodynamometers (optics), microscopes, binoculars, telescopes, instruments for videocentering of lenses, electronic apparatus and software for remote shaping and edging of ophthalmic lenses, small pieces of equipment for optical laboratories, micrometer screws, laboratory apparatus and instruments, optical apparatus and instruments, scientific, optical, measuring apparatus and instruments, diagnostic ophthalmological equipment, diagnostic medical equipment for medical use, apparatus for carrying out diagnostic tests for medical use, optical imaging for medical diagnostic use, apparatus for measuring arterial blood flow in the eye, fixed and portable lamps for medical and surgical use, ophthalmic units, Woods lamps for medical use, laser surgery apparatus, slit lamps for ophthalmic use, medical apparatus and instruments;

Class 37 − Repair, maintenance and assembly of spectacles; repair or maintenance of optical machines and instruments.

39. The CTM applied for must be rejected for these goods and services.

40. There is no likelihood of confusion for the goods in Classes 3 and 5, which are at the best lowly similar, namely

Class 3 ─ Wipes and cloths impregnated with cleaning substances;

Class 5 ─ Solutions for contact lenses; contact lens cleaning preparations; preparations for cleaning and maintaining ophthalmic lenses and sun lenses; tissues impregnated with pharmaceutical lotions; solutions and preparations for maintaining contact lenses; chemical-pharmaceutical preparations for treating optical and ophthalmic lenses; contact lens disinfectants; solutions for sterilising contact lenses.

41. Finally, for the following goods and services found to be dissimilar there can be no likelihood of confusion since one precondition for the application of Article 8(1)(b) CTMR is missing:

Class 1 − Preparations for preventing the tarnishing of lenses; fluorescein; chemical preparations for treating optical and ophthalmic lenses; chemicals used in photography;

Class 3 − Eye sprays, not for medical purposes;

Class 5 − Eye drops; preparations for eye irrigation; eye-washes; ophthalmic gauze; eye sprays for medical use; tear supplements and substitutes for medical use; artificial tears;

Class 9 − Furniture especially made for laboratories; encoded magnetic cards; apparatus and instruments for metering; identification labels (magnetic); identification labels (encoded); scientific, nautical, surveying, photographic, cinematographic, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; data processing equipment and computers; computer software;

Class 16 – Photographs;

Class 35 − Retailing and wholesaling, including online, of preparations for preventing the staining of lenses, fluorescein, chemical preparations for treating optical and ophthalmic lenses, wipes and cloths impregnated with cleaning substances, eye sprays, tear supplements and substitutes, solutions for use with contact lenses, contact lens cleaning preparations, preparations for cleaning and maintaining ophthalmic lenses and sun lenses, wipes impregnated with pharmaceutical lotions, solutions and preparations for maintaining contact lenses, eye drops, preparations for eye irrigation, preparations for washing the eyes, eye baths, ophthalmic gauze, fluorescein strips, chemical-pharmaceutical preparations for treating optical and ophthalmic lenses, portable filled medicine cases, disinfectant wipes, chains for spectacles, cords for spectacles, furniture, photographs, computer software, artificial tears, solutions for sterilising contact lenses, specialist furniture for optical and ophthalmic use.

42. The CTM applied for may proceed to registration for these goods and services.

Costs

43. Since both parties succeed on some fronts and fail on others, each party shall bear its own costs in the opposition and appeal proceedings, as provided for in Article 85(2) CTMR.

Order

On those grounds,

THE BOARD

hereby:

1. Annuls the contested decision with respect to:

Class 9 − Spectacles, sunglasses, anti-glare glasses, sports goggles, goggles for swimming, cases for spectacles and sunglasses, lenses for spectacles and sunglasses, frames for spectacles and sunglasses, chains for spectacles and sunglasses, cords for spectacles and sunglasses, pince-nez, pince-nez cases, pince-nez chains, pince-nez cords; pince-nez mountings; correcting lenses (optics); containers for contact lenses, contact lenses, lens hoods, optical lenses, optical and ophthalmic lenses; apertometers (optics); optical goods; optical lamps; frames for spectacles provided with electronic devices; liquid crystal ophthalmic lenses; spectacles for eye tests; lenses for eye tests and containers for lenses for eye tests; diagnostic lenses; crossed cylinders (optics); skiascopy racks (optics); autorefractometers (optics); keratometers (optics); aberrometers; tonometers (optics); cones for tonometers (optics); retinal cameras (optics); lensmeters (optics); slit lamps for optical use; fluorangiography cameras (optics); eye chart projectors; eye charts (optics); interpupillary distance meters (optics); pachymeters (optics); synoptophores (optics); phoropters (optics); ophthalmoscopes (optics); skiascopes (optics); retinoscopes (optics); campimeters (optics); ophthalmodynamometers (optics); microscopes; binoculars; telescopes; telescopes; instruments for videocentering of lenses; electronic apparatus and software for remote shaping and edging of ophthalmic lenses; small pieces of equipment for optical laboratories; micrometer screws for optical instruments; laboratory equipment and instruments; optical apparatus and instruments;

Class 35 − Retailing and wholesaling, including online, of spectacles, spectacle cases, contact lenses, spectacle frames, correcting lenses, cases for contact lenses, contact lenses, lens hoods, optical lenses, ophthalmic lenses, apertometers, optical articles, optical lamps, micrometer screws for optical instruments, containers for lenses, diagnostic lenses, crossed cylinders, skiascopy racks, autorefractometers , keratometers, aberrometers, tonometers, cones for tonometers, retinal cameras, lensmeters, slit lamps, fluorangiography cameras, eye chart projectors, eye charts, interpupillary distance meters (optics), pachymeters (optics), synoptophores (optics), phoropters (optics), ophthalmoscopes (optics), skiascopes (optics), retinoscopes (optics), campimeters (optics), ophthalmodynamometers (optics), microscopes, binoculars, telescopes, instruments for videocentering of lenses, electronic apparatus and software for remote shaping and edging of ophthalmic lenses, small pieces of equipment for optical laboratories, micrometer screws, laboratory apparatus and instruments, optical apparatus and instruments, scientific, optical, measuring apparatus and instruments, diagnostic ophthalmological equipment, diagnostic medical equipment for medical use, apparatus for carrying out diagnostic tests for medical use, optical imaging for medical diagnostic use, apparatus for measuring arterial blood flow in the eye, fixed and portable lamps for medical use, ophthalmic units, Woods lamps for medical use, laser surgery apparatus, slit lamps for ophthalmic use, medical apparatus and instruments;

Class 37 − Repair, maintenance and assembly of spectacles; repair or maintenance of optical machines and instruments;

2. Rejects the CTM applied for for these goods and services;

3. Dismisses the appeal for the remainder;

4. Orders each party to bear its own costs in the opposition and appeal proceedings.

Signed D. Schennen

Signed C. Bartos

Signed E. Fink

Registrar: Signed H.Dijkema