OPPOSITION Nо B 3 094 752

 

Republic Technologies (Na) Llc, 2301 Ravine Way, 60025 Glenview, United States of America (opponent), represented by Marguerite Bilalian, 17 Avenue de Friedland, 75008 Paris, France (professional representative)

a g a i n s t

Извор-Релакс Еоод, Ул. Цар Иван Асен Ii No 127, Гр. Асеновград, Bulgaria (applicant), represented by IP Consulting Ltd., 6-8, Mitropolit Kiril Vidinski Str., Entr. 8, Floor 2, Office 2, 1164 Sofia, Bulgaria (professional representative).

On 02/07/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 094 752 is rejected in its entirety.

 

2.	The opponent bears the costs, fixed at EUR 300.

 

REASONS

 

On 17/09/2019, the opponent filed an opposition against all the goods of European Union trade mark application No 18 039 001 (figurative mark). The opposition is based on European Union trade mark registration No 9 407 123 and French trade mark registrations No 3 460 479 and No 96 621 529, all for the word mark ‘OPTICLAIR’. The opponent invoked Article 8(1)(b) EUTMR.

 

PROOF OF USE

Proof of use of the earlier mark was requested by the applicant. However, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T-296/02, Lindenhof, EU:T:2005:49, § 41, 72). The examination of the opposition will proceed as if genuine use of the earlier marks had been proven for all the goods invoked, which is the best light in which the opponent’s case can be considered.

 

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.

 

a) The goods

 

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

 

European Union trade mark registration No 9 407 123

Class 3: Optical cleaning preparations, cleaning preparations for spectacles, sunglasses, diving and protective goggles, television and computer screens, photographic and video lenses, in the form of sprays, aerosols, tissues, whether impregnated or not, of textile or paper.

French trade mark registration No 3 460 479

Class 3: Optical cleaning preparations, cleaning preparations for spectacles, sunglasses, diving and protective goggles, television and computer screens, photographic and video lenses, in the form of sprays, aerosols, tissues, whether impregnated or not, of textile or paper.

French trade mark registration No 96 621 529

Class 3: Cleaning, polishing, grease-removing and abrasives preparations.

The contested goods are the following:

 

Class 1: Anti-fogging agent for glasses; coatings [chemical] for lenses; chemical coatings for ophthalmic lenses; lenses (preparations for preventing the tarnishing of -).

Class 3: Wiping cloth impregnated with a cleaning preparation for cleaning eye glasses; eyeglass wipes impregnated with a detergent; eyeglass lens cleaning solutions; eye lotions; eyes make-up; eye gels; fragrance sachets for eye pillows; eye compresses for cosmetic purposes.

Class 5: Disinfectants for contact lenses; solutions for contact lenses; contact lens wetting solutions; contact lens cleaning preparations; solutions for disinfecting contact lenses; solutions for sterilising contact lenses; anti-bacterial preparations; antibacterial sprays; antiseptic cleansers; disinfectants impregnated into tissues; solutions for rinsing contact lenses; solutions for neutralizing contact lenses; sanitizing wipes; washes (sterilizing -); eye compresses; eye drops; eye pads for medical use; eye lotions for medical use; eye ointment for medical use; eyepatches for medical purposes.

Class 9: Spectacles [optics]; sunglasses; fashion sunglasses; prescription sunglasses; lens; spectacles [optics]; 3d spectacles; magnifying eyeglasses; smartglasses; sports glasses; anti-glare glasses; corrective eyewear; goggles; anti-glare glasses; goggles; goggles; diving goggles; polarization eyeglasses; optical glasses; snow goggles; spectacles [optics]; fashion eyeglasses; eyewear; welding goggles; spectacle frames; spectacle temples; parts for spectacles; chains for spectacles and for sunglasses; theatre glasses; sports glasses; swim goggles; eyeglass lanyards; cases for spectacles and sunglasses; children's eye glasses; eyewear pouches; bars for spectacles; glasses, sunglasses and contact lenses; frames for spectacles and sunglasses; spectacle lenses; spectacle lenses; reading glasses; spectacle holders; cyclists' glasses; snow goggles; spectacle straps; make up goggles; motorcycle goggles; night vision goggles; cases for children's eye glasses; chains for sunglasses; sunglass cords; replacement lenses for glasses; sunglass temples; prescription goggles for swimming; clip-on sunglasses; clip-on sunglasses; straps for sunglasses; unmounted spectacle frames; frames for sunglasses; shooting glasses [optical]; cases for sunglasses; snow goggles; lenses for sunglasses; prescription eyeglasses; virtual reality glasses; spectacle frames made of metal; spectacle frames made of plastic; sunglass nose pads; safety glasses for protecting the eyes; sports eyewear; optical lenses for use with sunglasses; spectacle frames made of a combination of metal and plastics; spectacle frames made of metal and of synthetic material; spectacle frames made of metal or of a combination of metal and plastic; lens; contact lenses; optical lenses; anti-reflective lenses; circle lens; ophthalmic lenses; glass ophthalmic lenses; correcting lenses [optics]; plastic lenses; lens cases; coloured contact lenses; containers for contact lenses; containers for contact lenses; optical lens blanks; blanks for contact lenses; lens hoods [for cameras]; containers for contact lenses; dustproof glasses; nose pads for eyewear.

Class 10: Eye baths.

Some of the contested goods are identical or similar to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark which, for the opponent, which is the best light in which the opposition can be examined.

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

   

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price. In particular, the public’s degree of attentiveness will be high in relation to some of the contested goods which are of a specialised nature and may have an impact on the health of the eyes (for example eye compresses; eye drops; eye pads for medical use; eye lotions for medical use; eye ointment for medical use; eye patches for medical purposes).

 

c) The signs

 

OPTICLAIR
Earlier trade marks	Contested sign

 

 

The relevant territories are the European Union and France.

 

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 relevant consumers, when perceiving a verbal sign, will break it down into elements 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). It follows that the earlier mark will be dissected in the meaningful components ‘OPTI’ and ‘CLAIR’ by part of the public, such as the French-speaking part of the public. The remaining part of the public may understand only the meaningful prefix ‘OPTI’ or ‘OPTIC’.

The component ‘OPTI(C)’ is usually used as a prefix to refer to eyes and products related to eyes in the relevant territory. Given the proximity existing between the said component and its equivalents in the other languages of the European Union (for example ‘optique’ in French, ‘optic’ in English, ‘ottico’ in Italian, ‘optich’ in German or ‘optik’ in Swedish) it is understood in all the European Union languages. Considering that the relevant products are products for eyes and eye care, this component is non-distinctive, except for cleaning, polishing, grease-removing and abrasives preparations.

For the part of the public that understands the meaning of the component ‘CLAIR’, this component refers to something that shines like light, that has the brilliance of light or which lets the light pass through well, that allows one to see clearly (information extracted from Larousse Dictionary at https://www.larousse.fr/dictionnaires/francais/clair/16309 on 09/06/2021). Therefore, it is weak in relation to the relevant goods because it alludes to the fact that those relevant goods which are optical cleaning preparations help to remove any dirt from the optic and therefore to see clearly.

The verbal element ‘optiCleaner’ of the contested sign will be dissected by all the relevant public in the components, ‘opti’ and ‘Cleaner’. This division is further facilitated by the red colour of the letter ‘C’ and use of upper case.

The component ‘opti’ will be understood as in the earlier marks as indicated above. Therefore, this component is non-distinctive in relation to the relevant goods that are products for eyes and eye care.

The component ‘Cleaner’ of the contested sign will be understood by the English speaking part of the public as a substance used for cleaning things or a device used for cleaning things (information extracted from Cambridge Dictionary at https://www.collinsdictionary.com/dictionary/english/cleaner on 09/06/2021). It is weak in relation to some of the relevant goods in Classes 1, 3 and 5 which are cleaning glasses/lenses preparations, disinfectants and antiseptics whereas it is distinctive in relation to the remaining goods because it does not have any relation with them. For the non-English speaking part of the public this component is meaningless and therefore it is distinctive in relation to all the relevant goods.

The contested sign is also composed of the figurative element representing a pair of black glasses placed before the verbal element ‘optiCleaner’. This figurative element is non-distinctive in relation to some of the relevant goods, such as spectacles and sunglasses. For the remaining goods is distinctive. However, when signs are composed of both word elements and figurative elements, the word element normally has more of an impact on the consumer than the figurative element. The public does not tend to analyse signs and will more easily refer to the signs in question by quoting their word element than by describing their figurative elements (14/07/2005, 312/03-, Selenium-Ace, EU: T: 2005: 289, § 37).

The contested sign has no element that could be considered clearly more dominant than other elements. 

  

Visually, the signs coincide in the letters ‘OPTICL^**(**) R’. However, the signs differ in the letters ‘AI’ of the earlier marks and ‘EANE’ of the contested sign. Furthermore, the signs differ in the figurative element and the stylisation of the contested sign which have no counterpart in the earlier marks. The General Court has held since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will share some of them, but they cannot, for that reason alone, be regarded as visually similar. (25/03/2009, T-402/07, ARCOL / CAPOL, EU:T:2009:85, § 81-82; 04/03/2010, C-193/09 P, ARCOL / CAPOL, EU:C:2010:121). Therefore, while it is true that the signs coincide in the letters ‘OPTICL, they cannot, for that reason alone, be regarded as visually similar. Indeed, it is to be taken into account that the initial letters OPTI(C) form a non-distinctive prefix.

In view of this and the fact that the signs differ in their remaining letters, except for their common final R, the signs are visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in the relevant territories, the signs coincide in the sound of the letters ‘OPTICL-'. Although the sound of the last letter, ‘R’, is also identical, it is part of different syllables in the compared signs because of the presence of the four additional letters '-EANE-', which precede it in the contested sign. Therefore, their number of syllables is also different, three or four in the earlier mark, /OP-TI-CLAIR/ or /OP-TI-CLA-IR/, versus four or five in the contested sign, /OP-TI-CLEA-NER/ or /OP-TI-CLE-A-NER/ and so is their rhythm and intonation.

 

Therefore, the signs are aurally similar to a low degree.

  

Conceptually, although the coinciding component ‘OPTI(C)’ will evoke a concept, it is not sufficient to establish any relevant conceptual similarity, as, according to the considerations expressed above, this element is non-distinctive and cannot indicate the commercial origin of the goods at issue. Therefore, the part of the relevant public whose consumers have no knowledge of the English and French, will tend to pay a greater attention to the additional letters ‘LAIR’ of the earlier marks and the verbal element ‘Cleaner’ of the contested sign, which are both meaningless. In light of that, since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

For the part of the relevant public that has knowledge only of French and that as consequence of this, will understand the meaning of the verbal element ‘CLAIR’ of the earlier mark, but not of the verbal element ‘Cleaner’ of the contested sign, the signs are conceptually dissimilar.

The same conclusion is valid in relation to the part of the public which has knowledge only of the English. Indeed, these consumers will understand the meaning of the verbal element ‘Cleaner’ of the contested sign, but not of the verbal element ‘CLAIR’ of the earlier marks.

 

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

 

d) Distinctiveness of the earlier marks

 

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.

Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier marks must be seen as low for all the goods in question in Class 3 for the part of the relevant public, such as French speaking part of the public that understands the meaning of both components of the earlier mark ‘OPTI’ and ‘CLAIR’. The mark has a normal degree of distinctiveness for the remaining part of the relevant territory, where only the prefix OPTI(C) is understood, despite the fact that the latter is non-distinctive.

 

e) 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 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).

The goods are assumed to be identical. The target the general public and business customers. The degree of attention may vary from average to high. Furthermore, the distinctiveness of the earlier marks is low for part of the public and normal for the remaining part of the public.

The signs are visually and aurally similar to a low degree. Depending on the understanding of the relevant public, the signs are conceptually dissimilar, or a conceptual comparison is not possible.

According to case-law, the conceptual differences between signs may counteract their visual and phonetic similarity (12/01/2006, C-361/04, PICARO, ECLI:EU:C:2006:25, § 20). In the present case, the conceptual differences as regards at least part of the relevant public, are sufficient to immediately counteract the low visual and phonetic similarity between the signs. As to the remaining part of the public for which a conceptual comparison is not possible, it is considered that the differences between the signs are clearly perceptible and sufficient to exclude any likelihood of confusion between the marks, including the likelihood of association.

Furthermore, the point of similarity between the signs lies in the common letters ‘OPTI(C)’, which form the non-distinctive components of the signs under comparison. Therefore, the similarities are not sufficient to lead to a likelihood of confusion on the part of the public. Indeed, it is not likely that consumers, even those with an average degree of attention, would be misled as regards the commercial origin of the identical goods in question merely because of the coincidence in non-distinctive component as ‘OPTI(C)’, the impact of which is diluted within the overall impressions that the marks convey.

Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

 

Given that the opposition is not well founded under Article 8(1) EUTMR, it is unnecessary to examine the evidence of use filed by the opponent.

 

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

 

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

 

 

 

The Opposition Division

 

 

Martina GALLE

Chiara BORACE

Edith Elisabeth VAN DEN EEDE

 

 

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.