OPPOSITION Nо B 3 093 673

 

Vision Direct Group Ltd, c/o Veale Wasbrough Vizards, Narrow Quay House, Narrow Quay, Bristol BS1 4QA, United Kingdom (opponent), represented by Reddie & Grose LLP, The White Chapel Building, 10 Whitechapel High Street, London E1 8QS, United Kingdom (professional representative) 

 

a g a i n s t

 

Avizor, S.A., La Cañada, 17, 28850 Torrejón De Ardoz (Madrid), Spain (applicant), represented by Ryo Rodriguez Oca, S.L., Calle Juan Hurtado De Mendoza, 9 Apto. 507, 28036 Madrid, Spain (professional representative).

On 21/01/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 093 673 is partially upheld, namely for the following contested goods: Class 5: All goods in this class except for material for stopping teeth, dental wax; herbicides.

 

2.	European Union trade mark application No 18 029 119 is rejected for the contested goods as reflected under point 1 above. It may proceed for the remaining goods.

 

3.	Each party bears its own the costs.

 

REASONS

 

The opponent filed an opposition against all the goods of European Union trade mark application No 18 029 119 (figurative mark).

The opposition is based as follows:

(i) on the non-registered trade mark under the laws of Ireland ‘EVERCLEAR’ (word), with respect to which the opponent invoked Article 8(4) EUTMR;

(ii) on the Danish trade mark application No VA 2020 01031 ‘EVERCLEAR’ (word), with respect to which the opponent invoked Article 8(1)(b) EUTMR.

For the sake of completeness, the opposition was initially based on European Union trade mark application No 16 143 513 ‘EVERCLEAR’ (word), which was withdrawn by the opponent and its conversion requested in Denmark. Furthermore, initially the opponent based its opposition also on non-registered rights under the laws of the United Kingdom, and on the non-registered word trade mark under the laws of Ireland ‘EVERCLEAR PLUS’. Nevertheless, in its submissions of 18/05/2020, the opponent expressly narrowed down the basis of its opposition to the above listed rights and grounds, thus excluding the rights mentioned immediately above from the scope of the opposition.

 

I. NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE — ARTICLE 8(4) EUTMR

 

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

 

(a)   rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

 

(b)   that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

 

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

 

 the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

 

 pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

 

 the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

 

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non-registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

 

a) Prior use in the course of trade of more than mere local significance

 

Submitted evidence

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

On 18/05/2020 the opponent submitted evidence of use in the course of trade. As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the respective pieces of evidence only in the most general terms without divulging any such data. The evidence consists of the following documents:

 

Annex 7: Witness Statement – signed by a Director of Vison Direct Group Ltd. and dated 18/05/2020. The document provides information on the opponent’s business and in particular states that Vison Direct is an online retailer of contact lenses and other ocular products, where orders are placed by customers direct through the network of websites of the corporate group operated under various country code top-level domain names. It also clarifies that the EVERCLEAR brand was launched in 2013, when the product line consisted of one type of contact lens, namely the ‘EVERCLEAR 1 DAY’, and a multi-purpose contact lens solution branded EVERCLEAR. Eye drops under the EVERCLEAR trade mark are said to be retailed since 2014. Furthermore, the document explains that by 01/03/2019 there were five types of contact lenses retained in Ireland under the EVERCLEAR brand, namely EVERCLEAR ADM (daily), EVERCLEAR ELITE (daily), EVERCLEAR PLUS (bi-weekly), EVERCLEAR AIR (monthly), EVERCLEAR UV (monthly).

The witness statement also has twenty-two exhibits, as follows:

 Exhibit MBK1: Organizational chart relating to the Vision Direct group of companies, where the opponent is shown as the ultimate owner of several companies, among which are Vision Direct Europe Ltd, GetLenses Ltd, Vision Direct Ltd and Vision Direct BV;

 Exhibit MBK2: Extracts from the online records of UK Companies House showing the Officers of Vision Direct Group Limited;

 Exhibit MBK3: Extracts from the online records of UK Companies House showing the Officers and Persons with significant control for Vision Direct Europe Ltd, GetLenses Ltd and Vision Direct Ltd;

 Exhibit MBK4: Extracts from the online records of the Dutch Chamber of Commerce relating to Vision Direct BV;

 Exhibit MBK5: Memorandum of Association for Getoptics Group Limited and confirmations showing this was a former company name of the current opponent;

 Exhibit MBK6: Extracts from the online database of EUIPO on EU trade mark registrations owned by the opponent;

 Exhibit MBK7: A copy of a confirmatory license between the opponent and Vision Direct BV on the license to use, of the latter, at least from 01/03/2013 of, inter alia, ‘EVERCLEAR’ trade mark (registered or unregistered, as applicable), in the territory of the EU and each of the individual Member States, including Ireland, in relation to, among others, contact lenses, contact lens cleaning solution, eye drops;

 Exhibit MBK8: A selection of printouts from the www.visiondirect.ie taken from the Internet Archive’s Way Back Machine, covering the years 2014 – 2019. They show offers for sale (prices in EUR) of contact lenses, contact lenses cleaning solutions and eye drops under the EVERCLEAR brand. By way of example, the products offered appear as follows:

 Exhibit MBK9: A collection of images of EVERCLEAR products.

 Exhibit MBK10: A collection of images of the packaging for EVERCLEAR contact lenses.

 Exhibit MBK11 Tables which provide a breakdown of the turnover (in British pounds sterling) relevant for the sale in Ireland of EVERCLEAR branded contact lenses, contact lenses solutions and eye drops between 2014 and 28 February 2019. The figures indicate a constant increase of the sales of the three types of products.

 Exhibit MBK12: A breakdown of the number of orders fulfilled for EVERCLEAR contact lenses, contact lens solution and eye drops in Ireland between 2014 and 28 February 2019. The figures show a constant increase of orders throughout the years.

 Exhibit MBK13: Selection of extracts from GfK market research reports relating to the contact lens market in Ireland. Based on the data provided therein and the opponent data on its revenue, the market share of the opponent in Ireland is calculated in the witness statement to represent 1,99% of the market share in 2014 and 11,29% in 2016, while its estimated share in 2017 is 13,70% and in 2018 – 16,36%. It is noted however that the provided calculations appear to be general and not for the turnover specifically from the EVERCLEAR brand.

 Exhibit MBK14: A selection of invoices relating to the sale of EVERCLEAR contact lenses, contact lens solution and eye drops in various regions in Ireland between 2014 and 28 February 2019. The quantities sold under the invoices vary from one or several items per article to several hundreds per article (240 is the highest number sold under the submitted invoices).

 Exhibit MBK15: An extract from Vision Direct’s customer database providing details of all transactions relating to EVERCLEAR contact lenses, contact lens solution and eye drops in Ireland from January 2014 to February 2019. The extract shows continuous and uninterrupted transactions during the entire period. Some customer IDs appear as purchasers more than once.

 Exhibit MBK16: information concerning the Eircode system, that is the Irish postal code system, and a list of the Routing Keys used in the Eircode system.

 Exhibit MBK17: An extract from Wikipedia on the counties of Ireland

 Exhibit MBK18: An extract from Vision Direct’s customer database providing part of the shipping address for a representative sample of transactions relating to EVERCLEAR contact lenses, contact lens solution and eye drops in Ireland from January 2014 to February 2019. The extract shows sales to all counties of Ireland during the referenced period. The number of packs sold is usually between one and ten, as there are however instances of sales of bigger quantities e.g. twenty four packs). Some customer IDs appear to have purchased goods more than once.

 Exhibit MBK19: An extract from Google Analytics relating to the global web traffic of the website www.visiondirect.ie from 01/05/2015 to 31/03/2020.

 Exhibit MBK20: Extracts taken from SimilarWeb Pro relating to the web traffic of the website www.visiondirect.ie from April 2019 to March 2020. The traffic shown is global and has reached nearly 15 000 visits in some of its peaks. According to the provided data the visits for the entire period are 138 900. There is also a graph showing the top countries per visits, as the visits from Ireland represent more than half of the visits on a global level. Information on how SimilarWeb Pro measures traffic is also provided.

 Exhibit MBK21: A selection of promotional emails relating to EVERCLEAR products which is said to have been sent to Irish customers.

 Exhibit MBK22: A selection of advertisements for EVERCLEAR products that have been displayed on www.visiondirect.ie in 2017 and 2019, retrieved via the Internet Archive’s Wayback Machine.

It should be noted that as far as the written statement is concerned, Article 97(f) EUTMR expressly mentions written statements as admissible evidence. Based on the case-law, where a statement of that kind has been issued, probative value can be attributed to that statement if it is supported by other evidence (13/05/2009, T‑183/08, jello SCHUHPARK, EU:T:2009:156, § 39; 12/03/2014, T‑348/12, SPORT TV INTERNACIONAL, EU:T:2014:116, § 33)

In the case at hand, it is noted that the submitted written statement, to a great extent, serves the purposes of introducing the rest of the submitted materials. In other words, most of the statements contained therein are corroborated and detailed by the additionally submitted documents. Separately, while part of the furnished materials stem from the opponent (e.g. information from its website and documents created by it), these documents are corroborated by documents from independent sources, such as website traffic data and official documents like the invoices.

Finally, the applicant does not challenge the reliability or truthfulness of the submitted evidence. On the contrary, it expressly confirms that the sign at issue has been used in Ireland, which is considered a strong indication on the reliability of the evidence submitted by the opponent to show use of the sign.

 

Analysis of the evidence

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights. Furthermore, such use must indicate that the sign in question is of more than mere local significance.

Those two conditions, namely those relating to the use of the sign relied on and its significance, which must be more than merely local, are apparent from the very wording of Article 8(4) of EUTMR and must therefore be interpreted in the light of the EU law. The EUTMR thus sets out uniform standards relating to the use of signs and their significance, which are consistent with the principles underlying the system established by that regulation (13/12/2018, T-274/12, MONSTER DIP, EU:T:2018:928, § 91 and the case-law cited).

The object of these two conditions is to limit conflicts between signs by precluding an earlier right that is not sufficiently definite — that is to say, important and significant in the course of trade — from preventing registration of a new European Union trade mark.

A right of opposition of that kind must be reserved for signs with a real and actual presence on their relevant market. To be capable of preventing registration of a new sign, the sign relied on in opposition must actually be used in a sufficiently significant manner in the course of trade, and its geographical extent must not be merely local, which implies, where the territory in which that sign is protected may be regarded as other than local, that the sign must be used in a substantial part of that territory.

The significance of a sign used to identify specific business activities must be established in relation to the identifying function of that sign. That consideration means that account must be taken, first, of the geographical dimension of the sign’s significance, that is to say of the territory in which it is used to identify its proprietor’s economic activity. Account must be taken, secondly, of the economic dimension of the sign’s significance, which is assessed in the light of the length of time for which it has fulfilled its function in the course of trade and the degree to which it has been used, of the group of addressees among which the sign in question has become known as a distinctive element, namely consumers, competitors or even suppliers, or even of the exposure given to the sign, for example, through advertising or on the internet. (24/03/2009, T-318/06 to T-321/06, GENERAL OPTICA, EU:T:2009:77, § 37) Finally, use of the sign in the course of trade must be shown to have occurred before the date of the application for registration of the European Union trade mark (29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 157, 159-160, 163, 166).

In the present case, the contested trade mark was filed on 01/03/2019. Therefore, the opponent was required to prove that the sign ‘EVERCLEAR’ was used in the course of trade of more than local significance in Ireland prior to that date. The evidence must also show that the opponent’s sign has been used in the course of trade for  the following goods: contact lenses, contact lens cleaning solution, eye drops. For the sake of completeness, in its submission of 18/05/2020 the opponent states that use of the sign is claimed also for retail services. However, since these services were not invoked by it within the notice period, their addition outside of the said period is not admissible and they are not considered below.

Use of the sign in the course of trade

The evidence shows use of the sign when offering goods for sale and to sell goods, as well as in advertisement. These types of use represent commercial use and hence, the evidence shows that the sign has been used in the course of trade.

Use of more than mere local significance

(i) Geographical dimensions

The submitted evidence, such as for example the invoices, the screenshots from www.visiondirect.ie and the information on the web visits from SimilarWeb Pro, shows that the place of use is Ireland. This can be inferred from the addresses in Ireland and the fact that a significant number of visitors of the website www.visiondirect.ie at least during one-year period before the relevant date was from the territory of Ireland.

 

(ii) Use before the relevant date

The evidence is mostly dated before the relevant date. In fact, the only piece of evidence that also relates to a period after the relevant date is the web traffic data from SimilarWeb Pro, which covers the period from April 2019 to March 2020. However, the bigger portion of this period is before the relevant date 01/03/2020 and therefore the impact of this additional month is not considered to be of a nature to significantly alter the representativeness of the evidence. Moreover, this additional month reconfirms the continuity of use.

(iii) Economic dimensions

The submitted evidence provides sufficient information concerning the commercial volume of use, the length of time of use and the frequency of use. It is clear from the evidence that starting from 2014 the opponent was continuously and interruptedly offering for sale and selling goods bearing the sign. While the offers for sale were made only online, the submitted exemplary invoices and excerpts from the database of the opponent show that goods bearing the sign were sold in all regions of Ireland. It is true that the goods at issue are not particularly expensive and that the quantities shown under the invoices indicate sales to end-consumers, i.e. they are not significant. Nevertheless, the excerpts from the databases of the opponent and the provided turnover figures, the reliability of which is not challenged by the opponent, show a significant number of sales from 2014 until 2020, which in fact are continuously increasing during the years. Furthermore, it can be seen that the product portfolio of the opponent has grown in the course of the years to add additional products under the EVERCLEAR sign. Also, as shown by the evidence, the website of the opponent offering and advertising goods under the sign was subject to a significant number of visits from Ireland at least during the year preceding the filing of the contested application. An additional indication on the actual economic impact of the use of the sign is the fact that based on the excerpts from the opponent’s database, it has a number of returning customers (more than one or regular purchases made under the same customer IDs in the database of the opponent), which serve to indicate that the opponent has an established position on the respective market.

(iv) Use in relation to the goods

 

The evidence shows that the opponent’s sign has been used in relation to the goods, as claimed by the opponent, namely contact lenses, contact lens cleaning solution, eye drops.

Consequently, the Opposition Division concludes that the opponent’s sign was used in the course of trade of more than local significance in Ireland for contact lenses, contact lens cleaning solution, eye drops before the filing date of the contested trade mark. 

 

b)   The right under the applicable law

 

Non-registered marks are generally protected against subsequent marks according to the same criteria that are applicable to conflicts between registered marks, namely identity or similarity between the signs, identity or similarity between the goods or services, and the presence of a likelihood of confusion. In these cases, the criteria developed by the courts and by the Office with regard to Article 8(1) EUTMR can be applied mutatis mutandis when examining Article 8(4) EUTMR.

The opposition is based on a non-registered trade mark used in Ireland. The opponent claims to have the right to prohibit the use of the contested trade mark under the tort of passing off.

 

In the present case, according to the law governing the sign in question, namely Section 10(4)(a) of the Trade Marks Act 1996 of Ireland, as amended:

‘(4) A trade mark shall not be registered if, or to the extent that, its use in the State is liable to be prevented -

(a) by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade, subject to the condition that the rights to the unregistered trade mark or other sign were acquired prior to the date of application for registration of the trade mark or date of the priority claimed for that application and that unregistered trade mark or other sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.’

Passing off is a common law tort which has been developed by jurisprudence. The essential requirements to establish a sustainable passing off claim were established in the House of Lords judgment of Reckitt & Colman Products Ltd v Borden [1990] WLR 491 All ER 873. This judgment established the ‘classic trinity’. In Chapter 3 from Glen Gibbons, Trade Marks Law, Second Edition (Clarus Press, 2016), entitled “Passing Off and Ancillary Torts” at paragraph 3-07 it is states that the classical trinity test as adopted in that judgment is also relevant for the Irish law and jurisprudence. Then, at paragraph 30-8 the same source refers to a passage of that judgment. The judgment refers to the following conditions:

“The law of passing off can be summarised in one short general proposition – no man may pass off his goods as those of another. More specifically, it may be expressed in terms of the elements which the plaintiff in such an action has to prove in order to succeed. These are three in number. First, he must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying "get-up" (whether it consists simply of a brand name or a trade description, or the individual features of labelling or packaging) under which his particular goods or services are offered to the public, such that the get-up is recognised by the public as distinctive specifically of the plaintiff's goods or services. Secondly, he must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the plaintiff. Whether the public is aware of the plaintiff's identity as the manufacturer or supplier of the goods or services is immaterial, as long as they are identified with a particular source which is in fact the plaintiff. For example, if the public is accustomed to rely upon a particular brand name in purchasing goods of a particular description, it matters not at all that there is little or no public awareness of the identity of the proprietor of the brand name. Thirdly, he must demonstrate that he suffers or, in a quia timet action, that he is likely to suffer damage by reason of the erroneous belief engendered by the defendant's misrepresentation that the source of the defendant's goods or services is the same as the source of those offered by the plaintiff.”

The applicability in Ireland of the test adopted in the above judgment is confirmed also by the Irish jurisprudence, for example a decision from the High Court of Ireland in McCambridge Limited v Joseph Brennan Bakeries [2014] IEHC 269. In this decision, the court expressly refers to and applies the classic trinity test set out in Reckitt and Coleman Products Limited v Borden Inc and also confirms that an authority from England and Wales is highly persuasive on the Irish courts.

Consequently, a successful claim for passing off must satisfy three cumulative conditions. Failure to satisfy any one of them means that the claim cannot succeed. The conditions are:

 

Firstly, the opponent must prove that it enjoys goodwill or is known for specific goods under its mark. The evidence must show that the opponent’s mark is recognized by the public as distinctive for the opponent’s goods. For the purposes of opposition proceedings, goodwill must be proven to have existed before the filing date of the contested trade mark.

 

Secondly, the opponent must demonstrate a misrepresentation by the defendant to the public (whether intentional or not), that is that the applicant’s mark would be likely to lead the public to believe that the applicant’s goods  originate from the opponent.

 

Thirdly, the opponent must show that it suffers or is likely to suffer damage as a result of the applicant’s use of the contested trade mark.

The Opposition Division will proceed to analyses if all of these conditions have been met in the present case.

 

c) Goodwill

For the purposes of proving the acquisition of that right, the opponent must prove that it enjoys goodwill for the goods claimed under its mark. As shown in section a) above, the evidence submitted by the opponent and analyzed thereunder, show that by the filing date of the contested trade mark, the opponent’s goods had been effectively present in the market for several years, generating transactions and sales. Consequently, the Opposition Division finds that the evidence is sufficient to prove that the opponent enjoys goodwill for its goods in the mind of the purchasing public for the sign on which the opposition is based.

 

d) Misrepresentation  

The opponent must demonstrate that the applicant’s mark would be likely to lead the public to believe that the applicant’s goods originate from the opponent

 

The contested trade mark must be likely to lead the public to believe that goods or services to be offered by the applicant are the opponent’s goods or services. Therefore, it is necessary to examine whether, on a balance of probabilities, it is likely that a substantial part of the relevant public will be misled into purchasing the applicant’s goods or services in the belief that they are the opponent’s.

 

Therefore, a comparison of the signs is required.

 

Furthermore, the contested goods must be compared with the goods for which the opponent has shown that it has acquired goodwill through use. This is relevant in determining the likelihood of misrepresentation, as stated at paragraph 3-72 in Trade Marks Law, Second Edition (Clarus Press, 2016), because ‘there is a positive correlation between the trade sector similarity and the likelihood of deception y consumers.’

1. The goods 

 

The opposition is directed against the following goods of the contested trade mark: 

Class 5: Pharmaceuticals; Medical and veterinary preparations; Sanitary preparations for medical purposes; Foodstuffs and dietetic substances for medical or veterinary purposes; Baby food; Dietary supplements for humans and animals; Plasters, materials for dressings; Material for stopping teeth, dental wax; Disinfectants; Preparations for destroying vermin; Fungicides; Herbicides; Sterile, antiseptic and germicidal preparations for cleaning contact lenses; Disinfectants and bacterial preparations for medical purposes; Bactericidal cleaning preparations for contact lenses; Contact lens care preparations in solution and tablet form for disinfecting, cleaning, wetting, cushioning, soaking, or rinsing contact lenses; Liquid solutions which rewet, lubricate, rehydrate or relieve dryness in the eyes or contact lenses; Artificial tears; Ocular decongestants; Collyrium; Ocular pharmaceuticals; Tissues impregnated with pharmaceutical lotions.

The opponent’s non-registered trade mark is used for: contact lenses, contact lens cleaning solution, eye drops.

The contested sanitary preparations for medical purposes; disinfectants; sterile, antiseptic and germicidal preparations for cleaning contact lenses; disinfectants and bacterial preparations for medical purposes; bactericidal cleaning preparations for contact lenses; contact lens care preparations in solution and tablet form for disinfecting, cleaning, wetting, cushioning, soaking, or rinsing contact lenses are included, include or at least overlap with the opponent’s contact lens solutions. These goods are therefore identical.

The contested pharmaceuticals; medical and veterinary preparations; liquid solutions which rewet, lubricate, rehydrate or relieve dryness in the eyes or contact lenses; artificial tears; ocular decongestants; collyrium; ocular pharmaceuticals; tissues impregnated with pharmaceutical lotions are or could include pharmaceutical preparations. They are therefore at least similar to the opponent’s eye drops, since they may coincide at least in their purpose to be used for the treatment of eyes, share the same producers, distribution channels and relevant public.

The contested foodstuffs and dietetic substances for medical or veterinary purposes; dietary supplements for humans and animals may, inter alia, have as a purpose ensuring eye comfort or assisting the wellness of the eyes. Thus, they share the same purpose as the opponent’s eye drops and may have the same sales channels and relevant consumers. These goods are hence, similar.

The contested plasters, materials for dressings are also considered similar to the opponent’s eye drops. In particular, they may have the same purpose in as much as they could be used or intended for use in relation to eye injuries. Consequently, their relevant public and distribution channels may also coincide.

With respect to the contested fungicides in particular, it is expressly noted that term generally refers to any active ingredient used to kill parasitic fungi, without restriction to a specific sector. Moreover, the Court has already held that fungicides could have a medical or therapeutic purpose (12/07/2012, T-470/09, medi, EU:T:2012:369, § 36 to 38). Thus, these goods are considered lowly similar to the opponent’s eye drops. In particular, the goods at issue may share the same purpose of treating the eye, distribution channels and furthermore be complementary.

Finally, when it comes to the contested preparations for destroying vermin, the ordinary meaning of the term ‘vermin’ refers in everyday language to animal species whose presence is considered to be a risk or a nuisance to humans, their environment and human activities. That term may therefore refer, inter alia, to animal species representing a potential risk or nuisance to human health and to the health of domestic animals, for example, a parasitic species or a species which may be the source, by its presence or contact, of various animal and/or human diseases. Consequently, it is possible that some preparations for destroying vermin may be used in order to prevent the risks to human or animal health which the species whose elimination is sought represent. In addition, the use of those preparations may be complementary to that of pharmaceutical or veterinary preparations used to treat ailments caused, directly or indirectly, by the presence of those animal species or contact with them (e.g. allergies). Moreover, some of those preparations, in particular some insecticides, may be sold in pharmacies. Thus, in the light of the intended purpose of part of the preparations for destroying vermin, their complementary nature in relation to pharmaceuticals and their distribution channels, there is a low degree of similarity of these contested goods with eye drops of the opponent (13/05/2015, T‑169/14, KOragel, EU:T:2015:280, § 49 to § 51 and the case law cited).

Finally, the contested food for babies is considered lowly similar to the opponent’s eye drops. Food for babies refers to food that is especially composed in order to safeguard the health of infants and young children, either because they are physically unable to eat other foods or because it is medically required that they eat this particular type of foods. Bearing this in mind, their purpose is similar to that of pharmaceutical products and the opponent’s eye drops in particular (substances used in the treatment or prevention of diseases) insofar as they are used to maintain and improve the baby’s health. The goods share the same distribution channels, such as pharmacies. These goods are, therefore, considered to be similar to a low degree.

Nevertheless, the remaining goods of the applicant, namely herbicides and material for stopping teeth, dental wax are considered to be dissimilar to the opponent’s goods.

It should be observed that the term ‘herbicide’ refers to all phytosanitary formulae designed to protect the environment, and in particular crops, against undesirable plants. Thus, the objective of such a product is entirely separate from the objective of pharmaceutical products to protect human health and it is well known that the active substances which they contain are not generally related to those used in pharmaceutical products. In addition, the distribution channels are also different. Lastly, with regard both to their intended purpose and to their nature, there is no competition or complementarity with pharmaceutical products. Similar reasoning applies regarding the opponent’s contact lens solutions, which even if having the general purpose to disinfect, have a completely different field of application, namely contact lenses and human health. Thus, no similarity can be established with these opponent’s goods either. Finally, the opponent’s contact lenses are even more distinct and thus, no similarity exists with them either.

As for material for stopping teeth, dental wax, these are goods used exclusively by professionals in relation to the dental health, while the opponent’s goods are used to heal and prevent eye diseases as well as to assist in providing comfort and wellness to the eye. While it may be that certain pharmaceuticals reveal similarity with these goods because for example they can be used in a dental treatment, this is not the case for any and all pharmaceutical products. Treatment of the eyes is not considered to have anything in common with dental treatment. Thus, the goods under comparison have distinct consumers and distribution channels, they have different purpose, method of use and nature and usually have district producers. Therefore, no similarity exists with these goods, either.

2.  The signs

 

EVERCLEAR
Earlier trade mark	Contested sign

 

The relevant territory is Ireland.

 

The earlier mark, even though composed of a single verbal element, will likely be broken down by the relevant consumers into the meaningful English words ‘ever’ and ‘clear’. This is because consumers naturally break down single verbal elements into components that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58). While both words ‘ever’ and ‘clear’ have various meanings, in view of the goods at issue, that is eye products, it is likely that these elements are seen as a unit, referring to the ability to always see well and distinctly, or to purify/clean things or preserve them pure/clean (‘ever’, inter alia, meaning ‘always, at all times’ and ‘clear’ - seeing distinctly, having keen perception (of the eyes, and faculty of sight) and ‘unspotted, unsullied; free from fault, offence, or guilt; innocent. Cf. clean adj.’; information extracted from www.oed.com). While this meaning is not directly descriptive, it alludes to the characteristics of the goods and is hence weakly distinctive.

The contested sign is composed of the English words ‘ever’, ‘clean’ and ‘plus’. It is settled case-law that the word ‘plus’ is part of the promotional vocabulary used to indicate the added value or exceptional quality of the goods at issue (03/03/2010, T-321/07, A+, EU:T:2010:64, § 41-42). To that end, it is not capable to serve as an origin identifier and is devoid of distinctiveness.

As for ‘ever’ and ‘clean’, they are likely to be seen as a conceptual unit, referring to something or someone that is always free from dirt, pure or clear (meaning of ‘clean’ – pure or clear – information extracted from www.oed.com). The perception of these elements by the public as a unit is further prompted by their graphical representation in bold letters and in the same colour. Given the goods at issue, similarly to the earlier mark, the phrase would likely create an allusion to the ability of the goods to clean or purify things or preserve them clean and pure. Therefore, this expression is weakly distinctive in relation to the goods at issue.

The curved lines and small circle in the contested sign will be seen as serving decorative purposes and their impact would therefore be limited.

The contested sign has no element that is visually more dominant than others.

 

Visually, the signs coincide in their first verbal element ‘EVER’ and all but the last letter of their second verbal element ‘CLEAN’ and ‘CLEAR’, respectively. As already shown, they differ in the last letter of their second verbal elements, the non-distinctive element ‘PLUS’ and decorative elements in the contested mark, as well as the graphical representation of the latter sign. These differences, pertaining to elements of no trademark significance or of limited impact (decorative elements and stylization of the sign which is not particularly original or striking), are not capable of overshadowing the coincidences. Therefore, the signs are considered visually similar to an average degree.

 

Aurally, the signs coincide in the pronunciation of the word ‘ever’, identically contained at the beginning in both of them. They further coincide in the initial sounds of ‘CLEAN’ and ‘CLEAR’, namely /kli/. They however differ in the pronunciation of the endings of these words, where ‘CLEAR’ is pronounced as /klɪə(r)/, while ‘CLEAN’ as /kliːn/. Part of the public might pronounce ‘PLUS’ at the end of the contested sign and another part not, given that consumers tend to shorten signs to economize on time and also that the word is devoid of distinctiveness. In any event, considering the coincidences are at the beginning of the signs and the distinctiveness factor, the signs are at least aurally similar to an average degree.

 

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Even though ‘EVER CLEAR’ and ‘EVER CLEAN’ in the signs do not have exactly the same meaning, the fact remains that ‘clean’ and ‘clear’ have quite similar meanings and in the context of the goods at issue, they are likely to be seen as referring to the ability of the goods to keep things clean or pure. The ‘plus’ concept would hardly have any impact. Consequently, the signs are conceptually highly similar.

 

3. Global assessment of the conditions under the applicable law

It follows from the above that some of the contested goods, namely herbicides and material for stopping teeth, dental wax are dissimilar to the opponent’s goods. Under such circumstances, the Opposition Division finds it unlikely that the opponent’s customers will mistake the applicant’s goods for the opponent’s goods. In its submission the opponent states that it is not necessary to show a common field of activity but submits no evidence to prove this statement. On the contrary, as already mentioned above, the sources of Irish law provided by the opponent expressly refer to the ‘positive correlation between the trade sector similarity and the likelihood of deception y consumers.’ It is true that at paragraph 3-73 of the same source (Trade Marks Law, Second Edition (Clarus Press, 2016) it is said that a strong and distinctive mark may occasionally lead to a likelihood of misrepresentation even when the economic activities are dissimilar, but that this is a limited approach. Moreover, the opponent does not claim or show that its mark is particularly strong or distinctive.

However, the remaining contested goods are identical or similar to various degrees to the opponent’s goods. With regard to these goods, there is a risk that they will be taken to be the opponent’s goods. As mentioned above, the signs reveal significant similarities in all aspects of comparison where one of the verbal elements of the earlier mark is entirely contained in the contested and the other one is very similar to the second element of the earlier mark. Furthermore, the mentioned elements of the contested sign represent its most distinctive elements, which will focus the consumers attention and will have significance as an origin identifier. It is particularly relevant as well that the same grammatical construction is used in both signs, where ‘ever’ is followed by another word, which second words are quite similar not only visually and aurally, but also conceptually. Thus, despite the fact that the words ‘clear’ and ‘clean’ as present in the compared signs are existing English words, these words evoke very similar concepts and hence, it is likely that when seeing the contested sign, the consumers are misled to believe that these are goods of the opponent.

 4. Damage

 

As indicated above, the third cumulative requirement is that the opponent shows that it is likely to suffer damage as a result of the applicant’s use of the contested trade mark.

 

It has been concluded that, given the similarities between the signs in dispute and the identity and similarity of the goods in question, the opponent’s customers are likely to perceive the goods to be marketed under the contested trade mark as originating from the opponent.

 

While this does not necessarily lead to damage being caused in all possible cases, damage is the most likely result whenever, as in the present case, the opponent has demonstrated that it enjoys goodwill in the earlier sign and the contested sign is similar to the opponent’s mark, thus leading consumers to attribute the contested sign to the opponent. The opponent is not obliged to prove that it has suffered actual damage. It is sufficient that damage is likely. A misrepresentation that leads the relevant public to believe that the applicant’s goods are the opponent’s is intrinsically likely to damage the opponent if the parties’ fields of business are reasonably close.

 

Under those circumstances, it is likely that the opponent would lose sales because its customers — who intend to buy its goods — would erroneously buy the applicant’s goods. Moreover, as the opponent states, this might further lead to negative publicity and/or loss of its ability to license its mark.

 

In its submission the applicant states that its mark ‘AVIZOR EVER CLEAN’ has been present on the Irish market before and after the launch on the market of the goods of the opponent. This, according to it, shows that there is no likelihood for any damage since both signs have been peacefully coexisting. However, it is noted that the mark ‘AVIZOR EVER CLEAN’ is different from the mark in the present proceedings. This signs and the contested sign substantially differ due to the additional verbal element ‘AVIZOR’. Separately, the opponent has not invoked any evidence to show the claimed coexistence. It indeed refers to a decision of the Opposition Division and of the Boards of Appeal; however the decisions as such may not serve to show in the present proceedings that the invoked sign has been used on the Irish market. The evaluation of specific materials always depends on the particular circumstances of the case and without having seen the materials presented before the adjudicating bodies, the Opposition Division is not able to make any conclusions of relevance for the present proceedings. Therefore, this claim of the applicant is set aside.

In the light of the foregoing considerations, the Opposition Division considers that, in the absence of any indications to the contrary, the opponent is likely to suffer damage.

 

d) Conclusion

 

Considering all the above, the Opposition Division finds the opposition is well founded on the basis of the opponent’s earlier sign insofar as it is directed against the following goods:

Class 5: Pharmaceuticals; Medical and veterinary preparations; Sanitary preparations for medical purposes; Foodstuffs and dietetic substances for medical or veterinary purposes; Baby food; Dietary supplements for humans and animals; Plasters, materials for dressings; Disinfectants; Preparations for destroying vermin; Fungicides; Sterile, antiseptic and germicidal preparations for cleaning contact lenses; Disinfectants and bacterial preparations for medical purposes; Bactericidal cleaning preparations for contact lenses; Contact lens care preparations in solution and tablet form for disinfecting, cleaning, wetting, cushioning, soaking, or rinsing contact lenses; Liquid solutions which rewet, lubricate, rehydrate or relieve dryness in the eyes or contact lenses; Artificial tears; Ocular decongestants; Collyrium; Ocular pharmaceuticals; Tissues impregnated with pharmaceutical lotions

The opposition is not successful on the basis of this ground insofar as the remaining goods, namely material for stopping teeth, dental wax; herbicides, are concerned.

Since the opponent has also invoked Article 8(1)(b) EUTMR, the Opposition Division with respect to examination of the opposition on this ground in relation to these dissimilar goods.

II. 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 opponent has based its opposition on the Danish trade mark application No VA 2020 01031 ‘EVERCLEAR’ (word), with respect to which the opponent invoked Article 8(1)(b) EUTMR.

a) The goods

The goods on which the opposition is based 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.

The contested goods are the following:

Class 5: Material for stopping teeth, dental wax; herbicides.

The bigger portion of the goods of the opponent in Class 5 comprise contact lens solutions, preparations and other articles for cleaning spectacles and sunglasses, pharmaceuticals, other medicated preparations and articles, as well as vitamins, all of which are for the care and/or treatment of the eyes. These goods largely overlap with the goods of the opponent, that were compared with these contested goods in section I above. Therefore, the above reasoning and finding on dissimilarity between these goods is fully applicable and the Opposition Division refers to it.

Additionally, the opponent’s goods include also vitamins and medicated preparations for the care of the skin and face. When it comes to these additional goods, the Opposition Division does not find that they reveal any similarity with the contested goods either. In particular, it has already been stated above that herbicides are intended to be applied on plants only and no crossing point could exist between them and these additional goods of the opponent. As for material for stopping teeth, dental wax, the Opposition Division does not agree with the opponent that its face-related goods include goods for the treatment of the teeth or that they could generally include dental preparations. When goods are analysed, it is their usual and natural meaning that is taken into account. Thus, the opponent’s goods relate to the face, the latter understood as the front part of the head, from the forehead to the chin; the countenance, visage. The skin is also a different part of the body not linked to teeth. Thus, the opponent’s goods have nothing to do with dental care. Accordingly, these goods are dissimilar as well.

Finally, the opponent’s goods in Class 9 are contact lenses and articles and accessories for contact lenses, as well as divers masks. These goods are also completely distinct from the contested goods and hence, dissimilar to them.

b) Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods material for stopping teeth, dental wax; herbicides are clearly dissimilar from those of the opponent, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition against these goods and based on this Article must be rejected.

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

 

 

Kieran HENEGHAN

Teodora Valentinova TSENOVA-PETROVA

Manuela RUSEVA

 

 

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.