OPPOSITION No B 2 637 539

Nube, S.L., Avenida 8 de Agosto, 27, 07800 Ibiza, Spain (opponent), represented by Morgades, del Rio, Renter, S.L., Calle Rector Ubach, 37-39, bajos 2ª, 08021 Barcelona, Spain (professional representative)

a g a i n s t

Giuseppe Maiello, Via Europa, 16, 80040 Cercola, Italy (applicant).

On 15/12/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 637 539 is upheld for all the contested goods and services.

2. European Union trade mark application No 14 650 411 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 650 411. The opposition is based on, inter alia, Spanish trade mark registration No 1 980 764. The opponent invoked Article 8(1)(b) and Article 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 Spanish trade mark registration No 1 980 764.

1. The goods and services

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

Class 9: Sunglasses.

The contested goods and services are the following:

Class 9: Spectacles [optics]; anti-glare glasses; polarizing spectacles; protective eyewear; corrective eyewear; dustproof glasses; smartglasses; sunglasses; eyeglass chains; eyeglass lanyards; spectacle cases; pince-nez; spectacle lenses; spectacle frames; sports glasses; children’s eye glasses; glacier eyeglasses; eyeglass shields; reading glasses; snow goggles; scuba goggles; swim goggles; frames for spectacles and sunglasses; eyeglass cases; diving goggles; night vision goggles; side guards for eyeglasses; antireflection coated eyeglasses; cases for children’s eye glasses; chains for spectacles and for sunglasses; eyeglass cords; motorcycle goggles; spectacle frames made of plastic; spectacle frames made of metal; cases for spectacles and sunglasses; spectacle frames made of metal and of synthetic material; spectacle frames made of a combination of metal and plastics; spectacle frames made of metal or of a combination of metal and plastic; eyeglass frames; lenses for sunglasses; unmounted spectacle frames; frames for sunglasses; cases for sunglasses; clip-on sunglasses; chains for sunglasses; sunglass cords; optical lenses for use with sunglasses; safety glasses for protecting the eyes; bars for spectacles; cyclists’ glasses; optical glasses; spectacle temples; 3D spectacles; parts for spectacles; nose pads for eyewear; magnifying eyeglasses; welding goggles.

Class 21: Eyeglass cleaning cloths.

Class 37: Repair of spectacles; repair and maintenance of spectacles; repair of sunglasses; providing information relating to the repair of spectacles; providing information relating to the repair and maintenance of spectacles.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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

Sunglasses are identically contained in both lists of goods.

The contested spectacles [optics]; anti-glare glasses; polarizing spectacles; protective eyewear; corrective eyewear; dustproof glasses; smartglasses; sports glasses; children’s eye glasses; glacier eyeglasses; reading glasses; snow goggles; antireflection coated eyeglasses; motorcycle goggles; cyclists’ glasses include as broader categories, or overlap with, the opponent’s 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 pince-nez; spectacle lenses; spectacle frames; frames for spectacles and sunglasses; spectacle frames made of plastic; spectacle frames made of metal; spectacle frames made of metal and of synthetic material; spectacle frames made of a combination of metal and plastics; spectacle frames made of metal or of a combination of metal and plastic; eyeglass frames; lenses for sunglasses; unmounted spectacle frames; frames for sunglasses; optical lenses for use with sunglasses; bars for spectacles; optical glasses; spectacle temples are semi-processed goods used to make spectacles. They are basic components of the end products or constitute integral parts of them. These contested goods have the same purpose as the opponent’s sunglasses. They can have the same producers, end users and distribution channels. Therefore, they are similar to a high degree.

The contested scuba goggles; swim goggles; diving goggles; night vision goggles; safety glasses for protecting the eyes; 3D spectacles; magnifying eyeglasses; welding goggles are optical devices, as are the opponent’s sunglasses. They have the same purpose, and they can have the same producers, end users and distribution channels. Therefore, they are similar to a high degree.

The contested eyeglass chains; eyeglass lanyards; spectacle cases; eyeglass shields; eyeglass cases; side guards for eyeglasses; cases for children’s eye glasses; chains for spectacles and for sunglasses; eyeglass cords; cases for spectacles and sunglasses; cases for sunglasses; clip-on sunglasses; chains for sunglasses; sunglass cords; parts for spectacles; nose pads for eyewear are accessories with a technical or decorative purpose that are often used in close connection with the opponent’s sunglasses. Consequently, the consumer may expect the main product and the accessories to be produced under the control of the same entity, especially when they are distributed through the same channels of trade. Therefore, these contested goods are similar to the opponent’s sunglasses, as they can have the same end users and distribution channels. Furthermore, they are complementary.

Contested goods in Class 21

The contested eyeglass cleaning cloths are small pieces of fabric for cleaning spectacles. They can be considered accessories to glasses. Therefore, these contested goods are similar to the opponent’s sunglasses, as they can have the same end users and distribution channels. Furthermore, they are complementary.

Contested services in Class 37

The contested repair of spectacles; repair and maintenance of spectacles; repair of sunglasses; providing information relating to the repair of spectacles; providing information relating to the repair and maintenance of spectacles are specifically related to the opponent’s goods. In the optical devices market it is common for manufacturers of spectacles also to provide repair services. Consequently, the consumer may expect repair of spectacles to be provided by the same undertakings that produce glasses. Therefore, these contested goods are similar to the opponent’s sunglasses, as they can have the same providers/producers, end users and distribution channels.

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 and services found to be identical or similar to varying degrees are directed at the public at large. The degree of attention is considered average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Spain.

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 figurative and features the word ‘PACHA’ written in thick rounded black upper case characters with white highlights. Above this word is a figurative element, also in black, depicting two stylised cherries and their leaves.

The contested sign is figurative and features the word ‘PACHA’ written in black upper case letters. Underneath this is the word ‘SUNGLASSES’, also in upper case letters but in a much smaller size. A stylised black star or sun is depicted above the word ‘PACHA’ and the hash symbol appears to the left of the word ‘PACHA’.

The word ‘PACHA’, included in both signs, is a Spanish word meaning ‘pasha, the title of a Turkish officer of high rank’ (Information extracted from Oxford English Dictionary online on 29/11/2016 at http://english.oxforddictionaries.com). As this meaning has no connection with the relevant goods and services, the distinctiveness of this word is average.

The word ‘SUNGLASSES’ of the contested sign will be associated by the part of the relevant public with a certain command of English with tinted spectacles. Bearing in mind that the relevant goods and services are optical devices and components, accessories and repair services for optical devices, this word is weak for these goods and services. For the rest of the public, the word is meaningless and, therefore, its distinctiveness is average.

The earlier mark has no element that could be considered more dominant (visually eye-catching) than other elements.

The word ‘PACHA’ is the dominant element in the contested sign, as it is the most eye-catching.

Visually, the signs coincide in the word ‘PACHA’, notwithstanding the differing stylisation of the letters, and in that they are depicted in black. They differ in the additional verbal element, ‘SUNGLASSES’, in the contested sign. However, this element is weak and/or not dominant. The signs also differ in their figurative elements, as described above.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

The first letters of the conflicting marks are identical. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the syllables ‛PA‑CHA’, present identically in both signs. The pronunciation differs in the sound of the letters ‘SUNGLASSES’ of the contested sign, which have no counterparts in the earlier mark. However, this element is weak and/or not dominant.

Therefore, the signs are aurally highly similar.

Conceptually, the word ‘PACHA’, included in both signs, will be understood by the public in the relevant territory as ‘pasha’. Part of the relevant public will associate the word ‘SUNGLASSES’ of the contested sign with tinted spectacles, but for the rest of the public, the word is meaningless. The figurative elements of a pair of cherries in the earlier mark and a star or sun and the hash symbol in the contested sign will be understood by the relevant public as such. As the signs will be associated with the same meaning, ‘pasha’, they are conceptually similar to an average degree.

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.

According to the opponent, the earlier mark is a well known trade mark, given the high degree of knowledge of the mark among the Spanish public and its presence on the Spanish market. It 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.

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 earlier mark, the degree of similarity between the marks and between the goods or services identified (recital 8 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, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between the goods and 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).

The contested goods and services are identical or similar to various degrees to those of the earlier mark, and target the public at large, whose degree of attention is average. Furthermore, the earlier mark is considered to have a normal degree of distinctiveness.

The marks under comparison are visually and conceptually similar to an average degree. Aurally, the signs are highly similar. The signs have in common the word ‘PACHA’. The fact that the contested sign includes an additional verbal element, namely the word ‘SUNGLASSES’, does not outweigh the strong similarities deriving from the coinciding element, ‘PACHA’.

As a rule, when one of the conflicting trade marks or a part thereof is reproduced in the other mark, the signs will be found similar, which, together with other factors, may lead to a likelihood of confusion.

In the present case, it should be noted that the coinciding word, ‘PACHA’, is the most distinctive element in each sign. Moreover, ‘PACHA’ is the dominant element of the contested sign due to its central position and large size. Therefore, it is likely that the relevant public will focus its attention on this word when encountering the contested sign. It is also likely that, when referring orally to the contested sign, many consumers will pronounce only the word ‘PACHA’.

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 Spanish trade mark registration No 1 980 764. It follows that the contested trade mark must be rejected for all the contested goods and services.

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 extensive use and 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 Spanish trade mark No 1 980 764 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services 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 ground of the opposition, namely Article 8(5) EUTMR.

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 applicant is the losing party, he 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

Steve HAUSER

Loreto URRACA LUQUE

Volker MENSING

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.