OPPOSITION No B 3 063 177

Opticland GmbH, Fürther Str. 212, 90429 Nürnberg, Germany (opponent), represented by Knebl, Schnaubert & Partner Rechtsanwälte, Stadtgrabenstr. 22, 71032 Böblingen, Germany (professional representative)

a g a i n s t

ZHEJIANG MAISIWEI TRADING CO.LTD, 24 Beiwei 2nd Road, Ouhai Industrial development zone, Wenzhou, People’s Republic of China (applicant), represented by Libo Chen Chen, calle Amor Hermoso 37, Local Bajo, 28026 Madrid, Spain (professional representative).

On 30/06/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 063 177 is upheld for all the contested goods in Class 9.

2. European Union trade mark application No 17 900 000 is rejected for all the contested goods. It may proceed for the remaining non-contested goods, namely make up goggles in Class 9 and all the goods in Class 18.

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

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 900 000 for the figurative mark , namely against some of the goods in Class 9. The opposition is based on European Union trade mark registration No 3 864 246 for the figurative 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.

1. The goods and services

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

Class 9: Spectacles, spectacle frames, sunglasses, contact lenses, containers and cases for the aforesaid goods.

Class 44: Opticians’ services.

The contested goods are the following:

Class 9: Optical devices, enhancers and correctors; glasses, sunglasses and contact lenses; sunglasses; chains for sunglasses; clip-on sunglasses; cords for sunglasses; sunglass cords; spectacle straps; straps for sunglasses; cases for sunglasses; cases for spectacles and sunglasses; covers for sunglasses; fashion sunglasses; lenses for sunglasses; optical lenses for use with sunglasses; frames for sunglasses; corrective eyewear; contact lens washing apparatus; prescription eyewear; spectacle chains; eyeglass lanyards; optical glasses; eyewear cases; spectacle cases; cases for children’s eye glasses; lens cases; containers for contact lenses; covers for glasses; spectacles; prescription eyeglasses; reading glasses; prescription goggles for swimming; children’s eye glasses; polarizing spectacles; goggles; contact lenses; spectacle lenses; spectacle frames; unmounted spectacle frames; monocle frames; frames for pince-nez; monocles; spectacle holders; pincenez; blanks for contact lenses; bars for spectacles; eyeglass shields; sunglass nose pads; eyewear pouches; fashion eyeglasses; prescription sunglasses; glacier eyeglasses; correcting lenses [optics]; replacement lenses for glasses; lens blanks for eyesight correction; glass ophthalmic lenses; spectacle lens blanks; spectacle frames made of metal or of a combination of metal and plastic; spectacle frames made of metal and of synthetic material; frames for spectacles and sunglasses; spectacle frames made of metal; spectacle frames made of a combination of metal and plastics; spectacle frames made of plastic; spectacle temples; sunglass temples; parts for spectacles; spectacle nose pads; nose pads for eyewear; chains for spectacles and for sunglasses; optical glass; side guards for eyeglasses; optical lenses; ophthalmic lenses plastic lenses; anti-reflective lenses.

Some of the contested goods are identical to the opponent’s spectacles, spectacle frames, sunglasses, contact lenses, containers and cases for the aforesaid goods (because the contested goods are identically listed, included in the broad category of, or overlap with, the said opponent’s goods), the remainder are at least similar to a low degree, because the conflicting goods are complementary, coincide in end users and distribution channels and often have the same commercial origin.

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 in question.

In the present case, the goods considered to be identical or at least similar to a low degree are directed at the public at large and also at professionals in the field of optics.

The degree of attention may vary from average (e.g. for cases for sunglasses; chains for sunglasses; clip-on sunglasses; cords for sunglasses; sunglass cords; spectacle straps; straps for sunglasses) to higher than average (e.g. for contact lenses).

3. The signs

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).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The Opposition Division finds it appropriate to focus the comparison of the signs on the public in Ireland, Malta and the United Kingdom.

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).

The signs’ verbal elements ‘SUNRAY’/‘SunRay’ will be understood by the relevant public as a ‘radiating line or broadening stripe resembling a ray of the sun’ (information extracted from LEXICO on 18/06/2019 at https://www.lexico.com/en/definition/sunray).

It is common market practice for some goods under a particular trade mark to be identified as ‘LIGHT’ in the sense that they are not heavy, or not so complex as the regular goods. Therefore, due to its position (below the dominant element) and its different, smaller and lighter typeface within the structure of the contested sign, and considering its possible perception, this element will be seen as having a secondary position and reduced distinctiveness.

Nevertheless, and for completeness, the Opposition Division notes that, whether or not the word ‘SUNRAY’ leads to some associations with the relevant goods that could affect the distinctive character of the signs, is rather immaterial since, due to the presence of the same word in both signs, and its dominant character in the contested sign, they are both on an equal footing with regard to their distinctiveness.

The earlier mark has no element that could be considered clearly more dominant than other elements.

Visually, the marks are similar to the extent that they are both figurative marks containing the verbal element ‘SUNRAY’. Although the letters in both signs are stylised in different ways, their graphical depiction is not significantly different. Moreover, in both signs the words are visually separated into their components ‘Sun’ and ‘Ray’.

The signs differ in their colours, figurative elements and in the contested sign’s element ‘LIGHT’, which has no counterpart in the earlier sign. However, it is clear that the function of the figurative elements and the typeface is purely decorative. Considering the level of significance of the elements in both signs, they are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the word ‘SUNRAY’, present identically in both signs, and the sole element of the earlier trade mark. The pronunciation differs in the second word element, ‘LIGHT’, of the contested sign. However, considering its secondary position and the finding of the court that consumers generally only refer to the dominant elements in trade marks (03/07/2013, T‑206/12, LIBERTE american blend, EU:T:2013:342, § 43-44), and that they tend to shorten marks containing several words, the contested sign will be referred to as ‘SUNRAY’. Therefore, the signs are aurally highly similar, if not identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs will be associated with the same concept evoked by the word ‘SUNRAY’. The contested sign differs in the concept evoked by the word ‘LIGHT’ which has no counterpart in the earlier mark. However, the resulting difference should not be overestimated on account of the secondary character of this element and its reduced distinctive character. Therefore, the signs are conceptually highly 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 as a whole has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the possible perception of the verbal element leading to some associations in regard to some of the goods, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods. Therefore, a lesser degree of similarity between goods 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 earlier mark has average distinctiveness for the relevant public. Although there are some differences between the signs – in the typeface/font of their word elements; in the figurative elements; and in the additional word ‘LIGHT’ of the contested sign – these are not sufficient to distract the consumer’s attention from the fact that the most dominant element of the contested sign, ‘SunRay’, reproduces the only verbal element of the earlier mark. Moreover, the differences in the signs are mainly due to their stylisation, which are not as important as the similarity originating from the conceptual identity of the most important (or sole) word elements of the signs.

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 covered are from the same or economically linked undertakings.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). The contested sign’s additional element ‘LIGHT’ favours this conclusion, as explained above. It is frequently used in the market as an indication alongside the main brand. Therefore, the contested goods could be seen as belonging to a line of goods, for example a simpler or more basic version, marked with a variation of the opponent’s sign.

Therefore, it is highly conceivable that the relevant consumers, even those with a high degree of attention, will make a connection between the conflicting signs and assume that the goods, even those similar to a low degree, come from the same undertaking or, as the case may be, from economically linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking parts of the public. Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 3 864 246.

It follows from the above that the contested trade mark must be rejected for all the contested goods.

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

Irena LYUDMILOVA LECHEVA

Maria Slavova

Aurelia PEREZ BARBER

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.