OPPOSITION No B 3 062 424

Safran Vectronix AG, Max Schmidheiny-Strasse 202, 9435 Heerbrugg, Switzerland (opponent), represented by Laytons LLP, 2 More London Riverside, SE1 2AP London, United Kingdom (professional representative)

a g a i n s t

Shanghai Sunclear Vector Optics Trading Co., Ltd, Room 204 #18 Building, No. 423 WuNing Rd., Putuo Dist., 200063 Shanghai, People’s Republic of China (applicant), represented by Daniel Smart, 30 River View Drive, M7 1BG Salford, United Kingdom (professional representative).

On 28/08/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 062 424 is partially upheld, namely for the following contested goods:

Class 9: Instruments containing eyepieces; Mirrors [optics]; Optical apparatus and instruments; Optical glass; Refractors; Binoculars; Telescopes; Sighting telescopes for firearms; Telescopic sights for artillery.

Class 13: Sighting mirrors for rifles; Sighting mirrors for guns and rifles; Sighting mirrors for guns; Sights, other than telescopic sights, for firearms; Sights, other than telescopic sights, for artillery.

2. European Union trade mark application No 17 900 916 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 900 916 . The opposition is based on international trade mark registration No 810 673 designating the European Union, France and Italy ‘VECTOR’. The opponent invoked Article 8(1)(b) EUTMR.

Preliminary remark:

The opponent initially also invoked Article 8(5) EUTMR in relation to the above mentioned earlier right and Article 8(4) EUTMR in relation to the non-registered trade mark ‘VECTOR’ in Austria, Belgium, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, the European Union, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden and the United Kingdom. Nevertheless, on 22/03/2019 the opponent informed the Office that these other grounds should be withdrawn and that the proceeding should continue in relation to Article 8(1)(b) EUTMR only.

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 Division finds it appropriate to first examine the opposition in relation to the opponent’s international trade mark registration No 810 673 designating the European Union.

a) The goods

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

Class 9: Binoculars and telescopes for day and/or night vision; monocular and binocular sighting and aiming devices, with the exception of firearms.

The contested goods are the following:

Class 9: Instruments containing eyepieces; Mirrors [optics]; Optical apparatus and instruments; Optical glass; Refractors; Binoculars; Telescopes; Sighting telescopes for firearms; Telescopic sights for artillery.

Class 13: Sighting mirrors for rifles; Sighting mirrors for guns and rifles; Sighting mirrors for guns; Sights, other than telescopic sights, for firearms; Sights, other than telescopic sights, for artillery; Cleaning brushes for firearms.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services 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 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 Classes 9 and 13

The contested instruments containing eyepieces; optical apparatus and instruments; binoculars; telescopes in Class 9 are identical to the opponent’s goods either because they are identically contained in both lists of goods (including synonyms), or because the contested goods contain, as a broader category, the opponent’s goods or because they overlap.

Even if some of the opponent’s goods are specified to be ‘with the exception of firearms’, it remains that they are at least similar to a low degree to the contested sighting telescopes for firearms; telescopic sights for artillery; mirrors [optics]; optical glass; refractors in Class 9 and to the contested sighting mirrors for rifles; sighting mirrors for guns and rifles; sighting mirrors for guns; sights, other than telescopic sights, for firearms; sights, other than telescopic sights, for artillery in Class 13 because they are all optical enhancers instruments and can coincide in distribution channels, in end user and in producer. The nature of some of these goods can also coincide.

However, and against the argument of the opponent, the Opposition Division considers that the contested cleaning brushes for firearms in Class 13 are dissimilar to all goods covered by the earlier right since they do not have any relevant points of contact that could justify finding a level of similarity between them.

b) 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 identical or similar to a low degree are directed at the public at large (e.g. binoculars) and at business customers with specific professional knowledge or expertise (e.g. optical apparatus and instruments).

The degree of attention paid during their purchase is deemed to be high, independently of the kind of purchaser. This is due to the fact the goods in question require specific technical knowledge in order to be used and/or are highly specialised and/or are not frequently purchased and/or are of high prices.

c) The signs and the distinctiveness of the earlier mark

VECTOR
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).

Taking into account the kind of consumers at which the relevant goods are directed, in the case of the professionals, it is expected that at least a part of the public (with knowledge of English or having a similar equivalent term in the corresponding language) will understand the word ‘VECTOR’ that the signs have in common, as the term used to refer to the direction/course followed by something. For the same reasons, the word ‘optics’, in the contested sign, will largely be understood throughout the territory as the word used to refer to the branch of physical science that deals with light and with vision. For this part of the public, the word ‘VECTOR’ is slightly allusive to the characteristics of the goods, while the word ‘OPTICS’ is non-distinctive.

However, considering that part of the goods are also addressed to the public at large, it cannot be excluded that this part of the public will not associate the verbal element ‘VECTOR’ to any clear meaning given that it is a rather technical term used in mathematics. In such a case, the distinctiveness of this element is average.

Either way, the verbal element ‘VECTOR’ in the contested sign is more distinctive than the verbal element ‘OPTICS’.

Considering the above, and given that the opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation, the distinctiveness of the earlier mark must be seen as below average for the part of the public for which ‘VECTOR’ constituting the earlier mark is slightly allusive, and as normal for the rest of the public.

The contested sign has no element more dominant (visually eye-catching) than others.

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 particular, the stylisation of the letters ‘O’ in the contested sign will not prevent the relevant public from perceiving the same and therefore from identifying the sign as ‘VECTOR OPTICS’.

Rectangular backgrounds such as the one in the contested mark are commonplace in trade and merely serve to highlight the information contained therein, so consumers do not usually attribute any trade mark significance to them (15/12/2009, T-476/08, Best Buy, EU:T:2009:508, § 27).

Visually and aurally, the signs coincide in the word ‘VECTOR’ and in the corresponding sound of its letters, which constitute the earlier mark in its entirety and is placed at the beginning of the contested sign. Indeed, 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. The signs differ in the additional word/sound ‘OPTICS’ of the contested sign, which is non-distinctive for the entire targeted public, and in the figurative elements and colouring of that sign, which impact is minimal for the reasons given above.

As a consequence, the signs are visually and aurally similar to an above average degree, at least.

Conceptually, for the part of the public to whom only the word ‘OPTICS’ in the contested sign has a meaning, as explained above, the other sign has no meaning. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar, although the conceptual difference resulting from this term will have limited importance.

For the rest of the public, as both signs will be associated with a similar meaning, the signs 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.

d) Global assessment, other arguments and conclusion

According to settled case-law, the likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C-39/97, Canon, EU:C:1998:442, §16).

Furthermore, 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 the present case, the goods are partly identical, partly similar to a low degree and partly dissimilar. Visually and aurally, the signs are similar to an above average degree, at least. Conceptually, they are similar to an average degree for a part of the public and not similar for the rest, although this difference will have very little impact for the reasons explained above.

Even considering that the distinctiveness of the earlier mark is below average for a part of the public, the distinctive character of the earlier mark is only one factor among others. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account of the similarity between the signs and between the goods (13/12/2007, T-134/06, ‘Pagesjaunes.com’, EU:T:2007:387, §70).

In the present case, the similarities between the signs are overwhelming since the earlier mark is entirely reproduced at the beginning of the contested sign and the differences are confined to non‑distinctive or secondary elements and aspects.

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. In the present case, 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). Taking into consideration the level of similarity between the signs, this is also true for consumers who will pay a high degree of attention.

Moreover, evaluating 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 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). In the case at hand, the low degree of similarity between some of the goods is largely offset by the striking similarities between the signs.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s international trade mark registration No 810 673 designating the European Union.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to a low degree to those of the earlier trade mark.

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

The opponent has also based its opposition on the same earlier international trade mark registration No 810 673 designating France and Italy. Since this mark covers the same scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those 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. 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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Marta GARCÍA COLLADO

Sandra IBAÑEZ

Aldo BLASI

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.