OPPOSITION No B 2 864 398

AVIZOR, S.A., La Cañada, 17, 28850 Torrejón de Ardoz (Madrid), Spain (opponent), represented by Ryo Rodriguez Oca, S.L., Calle Juan Hurtado de Mendoza, 9 Apto. 507, 28036 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 20/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 864 398 is upheld for all the contested goods.

2. European Union trade mark application No 16 143 513 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 143 513 for the word mark ‘EVERCLEAR’. The opposition is based on, inter alia, Spanish trade mark registration No 3 531 392 for the figurative trade mark . The opponent invoked Article 8(1)(b) 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 3 531 392 for which no proof of use could be requested since, at the date of filing of the contested sign, it had not been registered for at least five years.

1. The goods

The goods and services on which the opposition is based are the following:

Class 5: Sterile, antiseptic and germicides preparations for cleaning of contact lenses; disinfectants; and bactericide preparations for medical use.

Class 9: Optical apparatus and instruments; corrective and contact lenses; cases, cords, chains and frames for lenses; contact lens cases.

Further to the limitation filed by the applicant, the contested goods and services 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, skin and face; vitamins for care of the eyes; vitamins for care of the skin and face; 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.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods are not regarded as being similar to or dissimilar from 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 include, inter alia, the nature and purpose of the goods, 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 5

The contested 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 are at least similar to the opponent’s disinfectants in Class 5, either because they are included in, or overlap with, the opponent’s goods (and thus they are identical), or because they share in any event their usual distribution channels, coincide in usual producer/provider and may coincide in their purpose (e.g. keeping healthy and clean or free from damaging bacteria, for example the eye or eyewear such as glasses or contact lenses) and end users.

The contested ocular vitamins; eye patches; eye care preparations for medical use; pharmaceuticals for treatment of eye disorders; mediated preparations for the care of the eyes, skin and face; vitamins for care of the eyes; vitamins for care of the skin and face; skincare preparations (medicated); eye masks and eye patches impregnated with medicated preparations; face masks impregnated with medicated preparations are all intended for treating, healing and preventing wounds of the eye or the skin. Therefore, their purpose is at least similar, but can also be identical, to the opponent’s bactericide preparations for medical use insofar as these goods can all be used to improve the medical condition of the eyes or skin of patients. Furthermore, these goods can have the same relevant public and may often have the same distribution channels. Therefore, they are considered at least similar.

Contested goods in Class 9

The contested contact lenses; containers for contact lenses, holders for contact lenses, cases adapted for contact lenses; diver masks, prescription diver masks are at least similar to the opponent’s optical apparatus and instruments, either because they are identically included in the opponent’s broad category (e.g. contact lenses), or because they are highly similar as they may have the same purpose, public, distribution channels and producers as the opponent’s goods (e.g. diver masks). Furthermore, these goods are in competition or complementary, or, in in any event, they will usually coincide in producer, relevant public and distribution channels and are complementary (e.g. containers and cases for contact lenses).

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 found to be at least similar are directed at the public at large and at the professional public in the medical sector, such as, for example, ophthalmologists and dermatologists.

Some of the goods may be sold on prescription, such as certain pharmaceuticals for treatment of eye disorders in Class 5 or the contested prescription diver masks in Class 9, 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 products 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.

Given that the general public is more prone to confusion, the examination will proceed on this basis.

3. The signs

	EVERCLEAR
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). In this respect it must be mentioned that the Opposition Division considers, contrary to the applicant’s view, that the marks have no verbal elements which are clearly more dominant (visually eye-catching) than others and that the component ‘EVER CLEAN’ is the more distinctive component in the earlier mark. Indeed, while the contested sign is a word mark consisting of a sole meaningless element (‘EVERCLEAR’), of normal distinctiveness for the relevant public, the earlier mark consists of the slightly stylised expression ‘AVIZOR EVER CLEAN’ (consisting likewise of meaningless elements, ‘EVER CLEAN’, as well as of the term ‘AVIZOR’ which has a meaning for the relevant public, as explained below), placed one above the other and with the second string of letters ‘EVER’ in a bigger bold, and the third string of letters ‘CLEAN’ in an even bigger, and bold, typeface. Consequently, while it is true that, as the applicant correctly argues, consumers generally pay greater attention to the beginning of a mark as consumers read from left to right, or from above to below, in the present case this is counterbalanced by the fact the second and third element, ‘EVER’ and ‘CLEAN’, respectively, are depicted in a much bigger and bold, and an even bigger, size, respectively. In addition, the first word ‘AVIZOR’ is the Spanish term for ‘watcher; to be vigilant or on the alert’ and thus it is alluding to, if not descriptive of, a characteristic of the effect or the purpose of goods at hand (lens solutions, diver masks). Therefore, this term is at best weak for the goods in question.

As regards the minor stylisation of the earlier mark, this will be perceived as secondary. Furthermore, 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). In the present case, it is the verbal component ‘AVIZOR EVER CLEAR’, and in particular its more distinctive component composed of the terms ‘EVER CLEAR’, of the earlier mark, that will have more impact on consumers.

Therefore, conceptually, contrary to the applicant’s view as stated in its observations filed on 15/05/2018, in the view of the Opposition Division, neither of the signs’ components ‘EVER(*)CLEAN/-R’ have a meaning for a sizable part of the general public in the relevant territory. The English terms in ‘EVER CLEAN’/’EVERCLEAR’, being the second and third elements of the earlier mark, and the sole element of the contested sign, do not belong to the category of basic English words that a significant part of the relevant public in Spain would be familiar with. The Spanish equivalent of the word ‘ever’ is ‘siempre’ which does not resemble the English word at all, and of ‘clean’/‘clear’ it is ‘limpio’/’claro’. On the other hand, the additional word ‘AVIZOR’ of the earlier mark is of, at best, weaker distinctiveness. Therefore, it cannot create a significant distance between the signs while their more distinctive components are meaningless and thus cannot influence the conceptual assessment of similarity of the marks.

Visually and aurally, the signs coincide in the eight letter sequence ‘EVERCLEA*’, constituting the entire contested sign but its last letter, ‘EVERCLEAR’, and the second and third element (except for its last letter) of the earlier mark, ‘AVIZOR EVER CLEAN’. The signs differ thus in their final letter (of both the contested sign and the earlier mark), which may easily be overlooked by the public, as well as in the (sound of the) additional element ‘AVIZOR’ of the earlier mark.

In this context, it is important to note that according to settled case-law, where one of the two words which alone constitute a word mark is identical, both visually and aurally, to the single word which constitutes an earlier word mark, and where those words, taken together or in isolation, have no conceptual meaning for the public concerned, the marks at issue, each considered as a whole, are normally to be regarded as similar within the meaning of Article 8(1)(b) EUTMR (25/11/2003, T‑286/02, ‘Kiap Mou’; 15/02/2005, T‑169/02, ‘Negra modelo’; 16/03/2005, T‑112/03, ‘Flexi Air’; 08/03/2005, T‑32/03, ‘Jello Schuhpark’; 06/10/2004, T‑356/02, ‘Vitakraft’; 23/10/2002, T‑104/01, ‘Fifties’; and 04/05/2005, T‑22/04, ‘Westlife’).

This can be applied by analogy applied for in the present case, since ‘EVERCLEAR/-N’ forms the single word constituting the contested sign and the second and third element (the first being ‘AVIZOR’, moreover being of weaker distinctiveness, at best) constituting the more distinctive part of the earlier mark. Indeed, the minor difference in the coinciding component ‘EVER*CLEAR/-N’, being meaningless for the relevant public taken into account, while the sole different letter is placed at their ending, will go easily unnoticed. In addition, as seen above, the minor visual difference on account of the slight stylisation cannot have a strong impact and is secondary.

Therefore, the signs are held visually and aurally similar to at least 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.

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 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 registered mark, the degree of similarity between the marks and between the goods or services identified (eighth recital of the CTMR). 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, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).

As has been concluded above, the contested goods were found at least similar to those of the earlier mark and are (also) directed at the public at large whose level of attention will vary from average to high. Furthermore, the earlier mark is considered to enjoy a normal degree of distinctiveness and the signs are visually and phonetically similar to at least an average degree, without this impression being altered by any significant different conceptual perception.

In the light of the foregoing, also taking into account the principle of interdependence mentioned above, the degree of similarity between the marks at issue is sufficient for it to be considered that a substantial part of the relevant public could reasonably believe that the goods bearing the word mark ‘EVERCLEAR’ come from the same undertaking or from economically-lined undertakings as those bearing the earlier mark ‘AVIZOR EVER CLEAN’.

Furthermore, likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

In the present case, it is indeed conceivable that the relevant consumer will perceive the contested sign as a mere variation of the earlier mark, according to the type of goods that it designates or in any event will believe that the signs are originating from the same company or economically linked companies.

Bearing this in mind, it is considered that, in the present case, given the similarity of the goods, the overall degree of similarity between the marks is sufficient to justify the conclusion that there is a likelihood of confusion.

Considering all the above, there is a likelihood of confusion on the part of the general public. Given that a likelihood of confusion for only part of the relevant public is sufficient to reject the contested application, there is no need to analyse the remaining part of the Spanish public.

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 3 531 392. It follows that the contested sign must be rejected for all the contested goods.

As the earlier Spanish mark compared above leads to the success of the opposition and to the rejection of the contested sign for all the goods against which the opposition was directed, there is no need to examine the other earlier marks invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268) nor the evidence filed in relation to the proof of use request as regards them.

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Francesca CANGERI SERRANO

Edith VAN DEN EEDE

Riccardo RAPONI

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.