OPPOSITION No B 3 084 466

Grandvision France, société par actions simplifiée, 1, rue Jean-Pierre Timbaud, 78180 Montigny Le Bretonneux, France (opponent), represented by Merkenbureau Knijff & Partners B.V., Leeuwenveldseweg 12, 1382 LX Weesp, Netherlands (professional representative)

a g a i n s t

Budgetlens B.V., Industriestraat 3, 2802 AC Gouda, Netherlands (applicant), represented by Merk-Echt B.V., Keizerstraat 7, 4811 HL Breda, Netherlands (professional representative).

On 04/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 084 466 is upheld for all the contested goods and services.

2. European Union trade mark application No 18 024 804 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 and services of European Union trade mark application No 18 024 804 for the figurative mark , namely against all the goods and services in Classes 5, 9, 35 and 44. The opposition is based on, inter alia, European Union trade mark registration No 1 035 690 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.

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 European Union trade mark registration No 1 035 690.

1. The goods and services

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

Class 5: Pharmaceutical, veterinary and sanitary preparations, disinfectants; maintenance preparations and solutions for contact lenses, contact lens cleaning preparations, eye drops, artificial tears; saline solutions.

Class 9: Scientific, nautical, surveying apparatus and instruments, optical, photographic, cinematographic, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; calculating machines and data-processing equipment; spectacles, spectacle frames, glasses and sunglasses, sports masks except fencing masks, spectacle lenses and optical lenses, lenses for sunglasses, corrective lenses, contact lenses, spectacle cases, containers for contact lenses, bands, cords, chains and bindings for holding spectacles, binoculars, magnifying glasses.

Class 35: Advertising; business management; business administration; office functions; direct mail advertising; rental of publicity material; business management assistance, business management and organisation consultancy, business management consultancy, personnel management consultancy, professional business consultancy; commercial business estimates; accounting; document reproduction; secretarial services; statistical information; shorthand; television advertising; radio advertising; auditing; organisation of exhibitions of optical products for commercial purposes; public relations; subscription to all news, written, audio and/or visual media, including subscriptions to newspapers and magazines; data entry and data processing; opinion polling.

Class 42: Providing of food and drink; hotel and restaurant reservations; temporary accommodation; medical care; hygienic and beauty care; veterinary and agricultural services; legal services; opticians' services, scientific and industrial research; programming, rental of computer software; leasing of access time to a computer data base server centre; rest homes and convalescent homes; day-nurseries; marriage bureaux; undertaking; engineering, professional consultancy and construction drafting, non-business; engineering work (not for construction); prospecting; material testing; laboratories; rental of farming equipment, clothing, bed linen, vending machines; printing; news reporters services; filming on video; management of exhibition facilities.

The contested goods and services are the following:

Class 5: Solutions for contact lenses; contact lens cleaning preparations; disinfectants for contact lenses; disinfectants for contact lenses; contact lens wetting solutions; contact lens cleaning preparations; solutions for rinsing contact lenses; solutions for neutralizing contact lenses; solutions for sterilising contact lenses.

Class 9: Containers for contact lenses; contact lenses; blanks for contact lenses; coloured contact lenses; containers for contact lenses; containers for contact lenses; containers for customised contact lenses; contact lens washing apparatus.

Class 35: Advertising; business management; business administration; compilation of statistics; provision of commercial information; market prospecting, research and analysis; opinion polling; business organisation management and business economics consultancy; business intermediary services in the purchase and resale of contact lenses, spectacles, in particular sunglasses, spectacle frames, magnifying glasses, cases and sleeves for spectacles, accessories for spectacles, containers for contact lenses, medical articles and aids, for others, cosmetics, eye drops, not for medical purposes, contact lens solutions, preparations for cleaning contact lenses and contact lens fluids.

Class 44: Fitting of contact lenses; information services relating to contact lenses; opticians' services; sight-testing [opticians'] services.

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 5

Solutions for contact lenses; contact lens cleaning preparations (listed twice in the contested goods) are identically contained in both lists of goods.

The contested disinfectants for contact lenses (listed twice) are included in the broad category of the opponent’s disinfectants. Therefore, they are identical.

The contested contact lens wetting solutions; solutions for rinsing contact lenses; solutions for neutralizing contact lenses; solutions for sterilising contact lenses are included in the broad category of the opponent’s solutions for contact lenses. Therefore, they are identical.

Contested goods in Class 9

Containers for contact lenses (listed three times in the contested goods); contact lenses are identically contained in both lists of goods.

The contested coloured contact lenses are included in the broad category of the opponent’s contact lenses. Therefore, they are identical.

The contested containers for customised contact lenses are included in the broad category of the opponent’s containers for contact lenses. Therefore, they are identical.

The contested blanks for contact lenses are the basic components for the manufacture of the opponent's contact lenses. For this reason, they are decisive for the form, character, quality and value of the latter. Consequently, they are of great significance for the opponent's goods. Therefore, they are similar.

The contested contact lens washing apparatus are similar to the opponent's contact lenses as they usually coincide in their producers, as well as in their targeted public and distribution channels. Furthermore, they are complementary to each other, as the contested goods are specifically used for the purposes of washing (cleaning) the opponent’s goods.

Contested services in Class 35

Advertising; business management; business administration; opinion polling are identically contained in both lists of services.

The contested compilation of statistics; provision of commercial information; market prospecting, research and analysis; business organisation management and business economics consultancy; business intermediary services in the purchase and resale of contact lenses, spectacles, in particular sunglasses, spectacle frames, magnifying glasses, cases and sleeves for spectacles, accessories for spectacles, containers for contact lenses, medical articles and aids, for others, cosmetics, eye drops, not for medical purposes, contact lens solutions, preparations for cleaning contact lenses and contact lens fluids are intended to help companies manage their business by setting out the strategy and/or direction of the company. They involve activities associated with running a company and are usually rendered by companies specialised in this specific field such as business consultants. They gather information and provide tools and expertise to enable their customers to carry out their business or to provide businesses with the necessary support to acquire, develop and expand their market share. Therefore, these contested services are included in the broad category of, or overlap with, the opponent’s business management. Consequently, they are identical.

Contested services in Class 44

The earlier mark was registered according to the 7^th edition of the Nice Classification. In that edition, Class 42 covered all services which could not be classified in other classes, including opticians' services, which presently, under the 11^th edition, belong to Class 44.

Consequently, opticians' services are identically contained in both lists of services.

The contested fitting of contact lenses; information services relating to contact lenses; sight-testing [opticians'] services are included in the broad category of, or overlap with, the opponent’s opticians' services. Therefore, they are identical.

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 and services found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to higher than average, as the nature, quality and efficiency of these goods and services, such as contact lenses in Class 9 and opticians' services in Class 44, are important for ensuring the proper care and protection of consumers’ vision and their eyes. Furthermore, some of the relevant services in Class 35, such as business management, can have important business consequences.

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 deems it appropriate to focus the comparison of the signs on the French-speaking part of the public for the reasons set out below.

The signs’ verbal elements, ‘GRANDOPTICAL’ of the earlier mark and ‘GrandOptix’ of the contested sign, are both visually divided into two elements, due to the use of a capital/bigger letter ‘O’.

The common element ‘GRAND’ is a basic French adjective describing something which is great, important, impressive above all others of the kind. Therefore, this element is descriptive and non-distinctive for the relevant goods and services as it will be seen as an indication of their quality.

The words ‘OPTICAL’ of the earlier mark and ‘Optix’ of the contested sign as such do not exist in French. However, both will allude to the French word ‘optique’, which means, inter alia, ‘of or relating to the eye or to the sense of sight; optic’. The applicant argues that it invented the word ‘Optix’ by using the letter ‘x’. In this regard it must be stated that regardless if the public will perceive this element as a foreign or indeed as an invented word, the allusion to ‘optique’ is clear. Bearing in mind that the relevant goods and services relate to contact lenses and opticians’ services, these elements are weak when used on their own. However, despite the allusive or weak character of these elements, the entire combination ‘GRANDOPTICAL’ of the earlier mark and ‘GrandOptix’ of the contested sign are not usual or common expressions used in the area of the relevant goods and services. Therefore, the combination of these elements is considered to have at least the minimum degree of distinctiveness.

The earlier mark contains a thick vertical line positioned after the verbal element. Although its height is bigger than the verbal element, this line is a simple decorative element with no distinctiveness and with no/limited impact.

The contested sign contains also a blue figurative element, in the middle of which a dot and the letter G are depicted in white. This combination resembles an eye. The applicant argued that this figurative element is highly distinctive due to its structure and position. On the contrary, bearing in mind that the relevant goods and services relate to eyes, the stylised depiction of an eye has reduced (if any) distinctiveness. Moreover, even if on its own the letter ‘G’ has no link with the relevant goods and services, in the overall impression of the contested sign, this letter will not have more impact on consumers than the elements ‘GrandOptix’, because it will be seen as referring to the first letter of the word ‘Grand’.

Although the contested sign is composed of several identifiable components, none of them can be clearly considered dominant.

Visually, the signs coincide in the letter string ‘GrandOpti*’, positioned at the beginning of the signs’ verbal elements, where the letter ‘O’ is depicted in a bigger font in both signs. However, these verbal elements differ in their endings, namely ‘cal’ of the earlier mark and ‘x’ of the contested sign.

Furthermore, the signs differ in the earlier mark’s decorative line and in the contested sign’s device on top of the verbal element (letter ‘G’, positioned inside the figurative element, resembling an eye), which, as explained above, will not be attributed more significance in the overall impression of the signs than the elements where the coincidences were found.

In addition, as pointed out by the opponent, 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).

Therefore, the signs are visually similar to an average degree.

Aurally, the signs will be pronounced as [ɡrahn/op/tik/al] (the earlier mark) and as [ɡrahn/op/tiks] (the contested sign). The pronunciation of the signs coincides in the sound of ten letters ‘GRANDOPTIC/X’, since the letter ‘C’ of the earlier mark is pronounced as [K] and the letter ‘X’ of the contested sign is pronounced as [KS]. The pronunciation of the signs differs in the ending sounds, namely the sound of the letters ‘al’ of the earlier mark and the sound [s], produced by the letter ‘x’ of the contested sign. As regards the letter ‘G’ in the figurative device of the contested sign, it will rather not be pronounced because it refers to the word ‘Grand’.

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs’ verbal elements will be associated with the same concepts, while the differing elements of the contested sign are either of reduced (if any) distinctiveness (the figurative element), or will be linked to the verbal element ‘Grand’ (the letter ‘G’), 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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as lower than average for all the goods and services in question.

5. Global assessment, other arguments and conclusion

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.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

In the present case, the goods and services found to be identical or similar are directed at the general and professional public, whose degree of attention varies from average to higher than average.

The signs are visually similar to an average degree, aurally and conceptually highly similar, owing to the similarities in their verbal elements ‘GRANDOPTICAL’ and ‘GrandOptix’. Although the common element ‘GRAND’ is non-distinctive, the overall impression created by the signs is similar. Furthermore, the contested sign’s letter ‘G’, positioned in the figurative element resembling an eye, will not have more impact on consumers than the element ‘GrandOptix’ because it will be seen as referring to the first letter of the word ‘Grand’. The signs’ figurative elements will barely (if at all) be attributed trade mark significance. Moreover, as stated above, 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.

Therefore, it is highly conceivable that the relevant public, who, even if having a higher-than-average degree of attention, will also have to rely on their imperfect recollection of the signs, could confuse the signs or believe that the identical or similar goods and services originate from the same or economically linked undertakings.

This finding is not called into question by the weak distinctive character of the earlier trade mark. Indeed, according to established case-law, the finding of a low degree of distinctiveness for the earlier trade mark does not prevent a finding that there is a likelihood of confusion in this case. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor, inter alia, involved in that assessment. In the present case, despite the weak distinctive character of the earlier mark, there is a likelihood of confusion on account, in particular, the similarity between the signs, as well as the identity or similarity of the goods and services.

Considering all the above, there is a likelihood of confusion on the part of the French-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 1 035 690. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the abovementioned earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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, 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

Denitza STOYANOVA-VALCHANOVA

Lidiya NIKOLOVA

Marta Maria CHYLIŃSKA

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.