OPPOSITION No B 2 840 711

Multiopticas Sociedad Cooperativa, Avenida de los Reyes, s/n. Polígono Industrial La Mina, 28770, Colmenar Viejo (Madrid), Spain (opponent), represented by ARS Privilegium, S.L., Felipe IV, 10, 28014, Madrid, Spain (professional representative)

a g a i n s t

Vision Direct Group Ltd, 209 Tower Bridge Business Centre 46-48 East Smithfield E1W 1AW London, United Kingdom (applicant), represented by Reddie & Grose LLP, The White Chapel Building, 10 Whitechapel High Street, E1 8QS London, United Kingdom (professional representative).

On 31/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 840 711 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 16 143 513 for the word mark ‘EVERCLEAR’, namely against some of the goods in Classes 5 and 9. The opposition is based on European Union trade mark registration No 8 927 204 for the word mark ‘MULTICLEAR’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

Proof of use of the earlier mark was requested by the applicant. However, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T‑296/02, Lindenhof, EU:T:2005:49, § 41, 72). The examination of the opposition will proceed as if genuine use of the earlier mark had been proven for all the goods invoked, which is the best light in which the opponent’s case can be considered.

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 on which the opposition is based are the following:

Class 5: Contact lens cleaning, disinfecting and preserving preparations.

Following a restriction by the applicant of the list of goods in Class 9, the contested goods are the following:

Class 5: Contact lens solutions, contact lens cleaning, rinsing or neutralising solutions and tablets, saline solutions; preparations for cleaning spectacles and sunglasses, cloths impregnated with preparations for cleaning spectacles and sunglasses, eyewash and eye sprays, preparations for treating dry eyes, eye drops; eye moisturisers and ointments for medical use; ocular vitamins; eye patches; eye care preparations for medical use; pharmaceuticals for treatment of eye disorders; mediated preparations for the care of the eyes; vitamins for care of the eyes; skincare preparations (medicated); eye masks and eye patches impregnated with medicated preparations; face masks impregnated with medicated preparations.

Class 9: Contact lenses; containers for contact lenses, holders for contact lenses, cases adapted for contact lenses; diver masks, prescription diver masks.

The Office accepted the limitation of the above list of goods and the opponent maintained the opposition, despite the restriction. Consequently, the opposition will be examined in relation to the abovementioned goods.

Some of the contested goods are identical or similar to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods in Class 5 were identical to those of the earlier mark and as if all the contested goods in Class 9 were highly similar to those of the earlier mark. For the opponent this is the best light in which the opposition can be examined. It should be clarified, as regards the contested goods in Class 9, that, according to the Office’s practice, goods classified in different classes of the Nice Classification are not considered identical to each other; therefore, the bestcase scenario for the opponent is that these goods are highly similar to the opponent’s goods in Class 5, which is hereby assumed in this case.

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 assumed to be identical or highly similar are directed at the public at large and at the professional public in the medical sector, in particular ophthalmologists.

Some of the goods may be sold on prescription, such as the contested pharmaceuticals for treatment of eye disorders in Class 5, and some may be sold over the counter without a prescription. According to the case-law, the general public cannot be excluded from the relevant public, including for pharmaceuticals that require a doctor’s prescription prior to their sale to end users in pharmacies. Therefore, the relevant public comprises both the general public and health professionals, such as doctors and pharmacists. Consequently, even though the choice of those products is influenced or determined by intermediaries, a likelihood of confusion can also exist for the general public, since they are likely to be faced with those products, even if that takes place during separate purchasing transactions for each of those individual products at various times (09/02/2011, T‑222/09, Alpharen, EU:T:2011:36, § 42-45; 26/04/2007, C‑412/05 P, Travatan, EU:C:2007:252, § 56-63).

As regards the degree of attention, it is apparent from the case-law that, insofar as pharmaceutical preparations, whether or not issued on prescription, are concerned, the relevant public’s degree of attention is relatively high (15/12/2010, T‑331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T‑288/08, Zydus, EU:T:2012:124, § 36, and cited case-law). In particular, medical professionals have a high degree of attentiveness when prescribing medicines. Non-professionals also have a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health. Nevertheless, some goods are relatively inexpensive and are bought without much thought. Consequently, the degree of attention of the public may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

3. The signs

MULTICLEAR	EVERCLEAR
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).

Both signs are word marks. The earlier sign is composed of the single word, ‘MULTICLEAR’, and the contested sign is composed of the single word, ‘EVERCLEAR’. The applicant argues that the element ‘CLEAR’ plays a dominant role in both signs. However, it should be noted that word marks do not have elements that may be considered dominant (visually outstanding) over other elements. In the case of word marks, it is the word as such that is protected and not its written form.

The coinciding element ‘CLEAR’ is an adjective meaning, inter alia, (1) ‘easy to perceive, understand, or interpret’, (2) ‘(of a substance) transparent; unclouded’, for example ‘(of a person's skin) free from blemishes’, and (3) ‘free of any obstructions or unwanted objects’ (information extracted from Oxford Dictionary on 22/10/2018 at en.oxforddictionaries.com/definition/clear).

Considering that all the opponent’s goods and the majority of the contested goods are related to either eyes or vision, namely various eye preparations (eye drops, ocular vitamins, pharmaceuticals for treatment of eye disorders, etc.), contact lenses, holders and cases therefor, and preparations for contact lenses, spectacles and sunglasses (for cleaning, disinfecting, preserving, etc.), the English-speaking public will perceive ‘CLEAR’ as alluding to the fact that the goods will help them establish, maintain or restore good vision, that is, vision free of any obstructions or unwanted objects. The same reasoning applies to the contested diver masks, prescription diver masks in Class 9 which also may serve the same reason. When it comes to the contested skincare preparations (medicated); face masks impregnated with medicated preparations in Class 5, ‘CLEAR’ may allude to the expected effects of the goods, namely the fact that skin will become ‘free from blemishes’. Therefore, the degree of inherent distinctiveness of this element for the English-speaking public is low. However, this word is meaningless for the non-English-speaking public and, therefore, it is inherently distinctive to an average degree for that part of the public.

The element ‘MULTI’ of the earlier sign will be perceived by the English-speaking public as a prefix used to indicate ‘more than one; many’ (information extracted from Oxford Dictionary on 22/10/2018 at en.oxforddictionaries.com/definition/multi-). This meaning may also be grasped by consumers in some other parts of the relevant territory, in particular by Romance language speakers, such as the Italian- or Spanish-speaking parts of the public. For this part of the public, ‘MULTI’ could allude to the fact that the opponent’s goods (contact lens cleaning, disinfecting and preserving preparations) may be used repeatedly in order to clean, disinfect or preserve contact lenses. However, the link between this prefix and the opponent’s goods is not direct; therefore, the degree of inherent distinctiveness of this element is below average. For the remaining part of the public, ‘MULTI’ is meaningless and, thus, it is inherently distinctive to an average degree.

The element ‘EVER’ of the contested sign is an adverb meaning, inter alia, (1) ‘at any time’ and (2) ‘at all times; always’ (information extracted from Oxford Dictionary on 22/10/2018 at en.oxforddictionaries.com/definition/ever). It could be perceived by the English-speaking public as a laudatory suggestion of the long lasting effect of the contested goods. However, the link between this element and the opponent’s goods is not direct; therefore, the degree of inherent distinctiveness of this element is below average. For the non-English-speaking public, this word is meaningless and, thus, it is inherently distinctive to an average degree.

Although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words they know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57). Bearing the above in mind and in view of the abovementioned meanings of the elements of the marks, it is likely that the English-speaking part of the public will break the signs down into the two elements which are known to that public, namely ‘MULTI’ and CLEAR’ in the case of the earlier sign and ‘EVER’ and ‘CLEAR’ in the case of the contested sign.

The same does not hold true for the non-English-speaking public. For that part of the public certain elements composing the signs are meaningless. Even though a part of that public, such as the Italian- and Spanish-speaking parts, may understand the meaning of ‘MULTI’, as explained above, it does not describe any particular characteristics of the goods in a direct and obvious way; in addition, it is not separated from the remaining part of that sign visually. Consequently, in the Opposition Division’s view, there is no reason for the non-English-speaking public to break the signs down and, at the very least, a substantial part of the non-English-speaking public will perceive the signs as a whole, namely as meaningless words that are inherently distinctive to an average degree. Therefore, for this part of the public the coinciding element ‘CLEAR’ will not attract any particular attention and will not play an independent distinctive role within the signs.

Visually and aurally, the signs coincide in the letters ‘CLEAR’, placed at the end of the signs. Irrespective of the different pronunciation rules in different parts of the relevant territory, this element of the marks will produce the same sound.

The signs differ in their beginnings, namely the letters ‘MULTI’ in the earlier sign and the letters ‘EVER’ in the contested sign. It is settled case-law that 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. Therefore, the fact that the signs differ in their beginnings, which constitute around half of their lengths and are visually very different, has an important impact on the consumers’ perception of the signs. In addition, the earlier sign begins with the nasal consonant ‘M’, while the contested sign begins with the vowel ‘E’. Moreover, the signs’ differing beginnings follow different vowel sequences, ‘*U**I’ versus ‘E*E*’. Consequently, the differing letters will produce very different sounds at the beginning of the signs.

Moreover, the coinciding element ‘CLEAR’ is inherently distinctive to only a low degree from the perspective of the English-speaking public and, in any case, is less distinctive than the differing beginnings of the signs.

Therefore, the signs are visually and aurally similar to a below average degree, or, for the English-speaking public, similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

For the English-speaking part of the public the signs are similar inasmuch as the coinciding element ‘CLEAR’ evokes the same concept. However, the resulting similarity must not be overestimated due to the allusive character of this element for the relevant goods, as explained above. The signs differ in the concepts evoked by the elements ‘MULTI’ in the earlier sign and ‘EVER’ in the contested sign which, as explained above, have a higher degree of distinctiveness than the coinciding element. Overall, for this part of the public, the signs are similar to a low degree.

A substantial part of the non-English-speaking public will perceive the signs as a whole, namely as meaningless words, that are inherently distinctive to an average degree. For this part of the non-English-speaking public, a conceptual comparison is not possible and the conceptual aspect does not influence the assessment of the similarity of the signs.

For the sake of completeness it must be noted that, even if the part of the non-English-speaking public that understands the meaning of the element ‘MULTI’ of the earlier sign, such as the Italian- and Spanish-speaking parts of the public, were to single that element out from the earlier sign; this would not result in any degree of conceptual similarity between the marks, because the contested sign as a whole would remain meaningless for that part of the public. In this case, since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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 is composed of the elements ‘MULTI’ and ‘CLEAR’ which for at least a part of the public in the relevant territory, have a below average and a low degree of distinctive, respectively. However, even from the perspective of this part of the public, the earlier mark as a whole does not have any direct meaning that could be linked with the opponent’s goods. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some weak elements in the mark for a part of the relevant public, as stated above in section c) of this decision.

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 registered 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).

The contested goods in Class 5 were assumed to be identical and the contested goods in Class 9 were assumed to be highly similar to the opponent’s goods in Class 5. The signs are visually and aurally similar to a below average degree, or, for the English-speaking public, similar to a low degree. As explained above in section c) of this decision, for the English-speaking public the signs are conceptually similar to a low degree, for a part of the non-English-speaking public they are conceptually not similar, and for the remaining part of the public a conceptual comparison is not possible and the conceptual aspect does not influence the assessment of similarity. The earlier mark as a whole has a normal degree of distinctiveness for the relevant public.

The relevant public is composed of the general public and the professional public in the medical sector, in particular ophthalmologists, displaying a degree of attention varying between average and high.

The Opposition Division is of the opinion that the earlier mark and the contested sign are not similar enough to lead to a likelihood of confusion and that the differences between the signs would allow consumers to safely distinguish between them.

While it is true that the signs coincide in the letters composing their final parts, namely the element ‘CLEAR’, it should be noted that in accordance with settled case-law the public pays less attention to the endings of signs (17/03/2004, T-183/02 & T-184/02, Mundicor, EU:T:2004:79, § 81; 16/03/2005, T-112/03, Flexi Air, EU:T:2005:102, § 64-65).

At the same time, the signs differ entirely in their beginnings, namely in the letters ‘MULTI’ and ‘EVER’, and, therefore, they differ in the part of the marks on which – according to settled case-law – consumers focus most of their attention. The differing sections constitute significant parts of the signs (i.e. 5 out of 10 letters in the earlier sign and 4 out of 9 letters in the contested sign) and these letters are entirely different both visually and aurally, as explained above. Consequently, the impact of the differing section on consumers’ perception is stronger than that of the coinciding element and, thus, the overall impressions produced by the signs are different.

In addition, as explained in detail in section c) of this decision, for the English-speaking public, which is likely to break the signs down into two elements and single out the coinciding element, ‘CLEAR’, this coinciding element alludes to the features of the relevant goods; consequently, it is distinctive to only a low degree for that part of the public, while the differing elements are more distinctive. The non-English-speaking part of the public is likely to perceive the signs as a whole and, for that part of the public, the element ‘CLEAR’ will not attract any particular attention and will not play an independent distinctive role within the signs.

Even if the part of the non-English-speaking public that understands the meaning of the element ‘MULTI’ of the earlier sign, were to single that element out from the earlier sign, this fact alone would not trigger a likelihood of confusion between the signs. For this part of the public, the contested sign, ‘EVERCLEAR’, remains entirely meaningless and, thus, this part of the public would also not attach any particular attention to the letters ‘CLEAR’. In addition, for that part of the public, the element ‘MULTI’ introduces a semantic meaning that is not present in the contested sign and, thus, helps to differentiate the marks conceptually.

Based on overall assessment of the earlier mark and the contested sign, the Opposition Division takes the view that the mere fact that the marks coincide in the letters ‘CLEAR’, located at their endings, is insufficient to trigger a likelihood of confusion, including a likelihood of association, on the part of the relevant public. The signs’ differing beginnings will enable consumers, both the general public and the professional public, even those displaying an average degree of attention, to safely differentiate between the signs. This is all the more true for the public that displays a higher degree of attention, as this part of the public will notice the differences more easily. Moreover, consumers are not likely to make assumptions as regards the commercial origin of the goods or indeed economic links between commercial undertakings merely on the basis of the element ‘CLEAR’ which, for a part of the public, is only lowly distinctive and, for the remaining part of the public, merely forms a sequence of letters at the end of two long word marks.

According to the principle of interdependence, a lesser degree of similarity between the signs may be offset by a greater degree of similarity between the goods and services, and vice versa. The Opposition Division has taken this principle into account when assessing the likelihood of confusion, and the fact that some of the goods were assumed to be identical (and some were assumed to be highly similar) cannot, in this case, compensate for the differences between the signs.

Considering all the above, there is no likelihood of confusion for any part of the relevant public. Therefore, the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR, it is unnecessary to examine the evidence of use filed by the opponent.

COSTS

According to Article 109(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 Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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

Liliya YORDANOVA

Jakub MROZOWSKI

Maria SLAVOVA

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.