OPPOSITION No B 2 778 606

Precisis Aktiengesellschaft, Hauptstraße 73, 69117 Heidelberg, Germany (opponent), represented by Dr. Flügler & Partner Rechtsanwälte, Günterstalstr. 72, 79100 Freiburg i. Br., Germany (professional representative)

a g a i n s t

Easee B.V., Geuzenstraat 21H, 1056 JZ Amsterdam, Netherlands (applicant), represented by Taylor Wessing N.V. Kennedyplein 201, 5611 ZT Eindhoven, Netherlands (professional representative).

On 24/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 778 606 is partially upheld, namely for the following contested goods and services:

Class 9: Software only in respect of online eye scans.

Class 42: Design, development, programming and implementation of computer software only in the field of online eye scans.

2. European Union trade mark application No 15 514 706 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 514 706, ‘EASEE’ (word mark). The opposition is based on international trade mark registration designating the European Union, No 1 266 000 ‘EASEE’ (word mark). The opponent invoked Article 8(1)(a) and (b)EUTMR.

DOUBLE IDENTITY AND LIKELIHOOD OF CONFUSION — ARTICLE 8(1) 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 9: Computer software for use in medical decision support systems.

Class 10: Surgical instruments and apparatus; surgical implants made of artificial materials; electrodes for use with medical apparatus; electronic apparatus for medical purposes; implants consisting of artificial materials; medical apparatus and instruments; medical implants.

Class 42: Software development, programming and implementation.

The contested goods and services, following a limitation made by the applicant, are the following:

Class 9: Software only in respect of online eye scans; eyewear; eye protection; contact lenses; contact lens cases; spectacles; sunglasses; cases for spectacles and sunglasses; frames for spectacles.

Class 35: Retail and wholesale services relating to eyewear, contact lenses, sunglasses, cases for spectacles and sunglasses, frames for spectacles, contact lens cases, contact lenses solutions, disinfectants and cleaning preparations for contact lenses, software only in respect of online eye scans.

Class 42: Design, development, programming and implementation of computer software only in the field of online eye scans.

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 contested software only in respect of online eye scans is highly similar to the opponent’s computer software for use in medical decision support systems. They coincide in their nature and purpose. They have the same providers and channels of distribution and might target the same public (specialists in the medical field).

The contested eyewear; eye protection; contact lenses; contact lens cases; spectacles; sunglasses; cases for spectacles and sunglasses; frames for spectacles are dissimilar to all the opponent’s goods and services. The opponent’s goods are broadly software and surgical devices and its services are in the field of software design. They have different providers, purposes and channels of distribution to the eyewear goods of the applicant, they are neither complementary nor in competition.

Contested services in Class 35

The contested retail and wholesale services relating to eyewear, contact lenses, sunglasses, cases for spectacles and sunglasses, frames for spectacles, contact lens cases, contact lenses solutions, disinfectants and cleaning preparations for contact lenses; software only in respect of online eye scans are dissimilar to all the opponent’s goods and services. The opponent’s goods are broadly software and surgical devices and its services are in the field of software development and implementation. Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled, since the goods at issue are highly similar or dissimilar. Furthermore, the contested retail and wholesale services are also dissimilar to the opponent’s services in Class 42 which are software development and implementation services, they have different purposes, providers and distribution channels and they target a different public.

Contested services in Class 42

The contested design, development, programming and implementation of computer software only in the field of online eye scans are included in the broad category of the opponent’s software development, programming and implementation. Therefore, they are identical.

2. The signs

EASEE	EASEE
Earlier trade mark	Contested sign

The signs are identical.

3. 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 that can be made with the registered mark, and the degree of similarity between the marks and between the goods or services identified (recital 11 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).

The contested goods are partly highly similar and partly dissimilar, and the contested services are partly identical and partly dissimilar.

The signs are identical.

The signs were found to be identical and some of the contested services, as established above in section a) of this decision, are identical. Therefore, the opposition must be upheld according to Article 8(1)(a) EUTMR for these services.

Furthermore, some contested goods, as established above in section a) of this decision, were found to be highly similar to those covered by the earlier trade mark. Given the identity of the signs, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition is upheld also insofar as it is directed against these goods. This finding holds true irrespective of the degree of attention and the sophistication of the relevant public. Therefore, the opposition is partly well founded on the basis of the opponent’s international trade mark registration No 1 266 000.

In its observations the applicant argues that the further facts and arguments submitted by the opponent on 14/12/2018 in support of the opposition were in German, which is not the language of the proceedings, and the subsequent English translation of the document reached the Office only on 04/01/2019 which is outside the relevant time limit. Therefore, the applicant claims that the opposition should not be substantiated since the language of the proceedings is English. However, the Opposition Division notes that extracts in English concerning the earlier mark (taken from Madrid Monitor and TMView databases) were indeed included in the opponent’s submission of 14/12/2018 so they were filed within the prescribed deadline. Therefore, this argument of the applicant must be rejected as unfounded.

It follows from the above that the contested trade mark must be rejected for the goods found to be highly similar and the services found to be identical to those of the earlier trade mark.

The rest of the contested goods and services are dissimilar. As the 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 and services cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Riccardo RAPONI

Aurelia PEREZ BARBER

Michele M. BENDETTI-ALOISI

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.