OPPOSITION Nо B 3 094 788

 

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 27/07/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 094 788 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 registrations No 11 023 686 (figurative mark) and No 1 532 936 ‘OPTINETT’ (word mark). The opponent invoked Article 8(1)(b) EUTMR.

 

PROOF OF USE

Proof of use of the earlier marks 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 11 023 686

Class 3: Cleaning preparations, in particular paper composed of chemicals, for cleaning and preserving all optical components and all high-precision metal components; cleaning preparations in the form of aerosol sprays or sprays for optical parts and high-precision parts of metal of all kinds; 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.

European Union trade mark registration No 001532936

Class 3: Cleaning preparations, among other chemical papers for cleaning and preservation of all high precision metal components and optical components, except substances for cleaning and maintenance of furniture and floors.

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

 

Earlier mark 1 Earlier mark 2 OPTINETT
Earlier trade marks	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 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 relevant public will recognise the component ‘OPTI’ placed at the beginning of all the signs at issue. This component ‘OPTI’ 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, it is non-distinctive.

The component ‘NETT’ of the earlier marks can be understood by the English-speaking part of the public as ‘remaining after all deduction’ (information extracted from Collins Dictionary at https://www.collinsdictionary.com/it/dizionario/inglese/nett on 19/07/2021). Yet, in English, ‘NETT’ has no meaning in relation to the relevant goods and hence, it is distinctive to a normal degree. Another part of the public, such as the French-speaking part of the public, will understand ‘NETT’, despite the slightly deviating spelling, among the different meanings, as the adjective ‘net’ (i.e. clean in English) (information extracted from Larousse Dictionary https://www.larousse.fr/dictionnaires/francais/net/54328 on 19/07/2021). For this part of the public, given that the relevant goods are cleaning preparations, this component is non-distinctive because it indicates the purpose of the products at hand. Finally, for another part of the public, ‘NETT’ is meaningless and therefore distinctive to a normal degree.

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 non-distinctive 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.

Earlier mark 1 further contains a depiction of a pair of glasses is depicted on a small square background. This figurative element is non-distinctive in relation to the relevant goods which are products for glasses. The contested sign also contains a figurative element representing a pair of glasses, in black, 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 whereas it is distinctive to a normal degree for the remaining goods.

Finally, both earlier mark 1 and the contested sign contains elements of stylisation such as a grey square background, the use of a specific typeface and/or colours, or horizontal lines, etc. These additional elements are merely decorative and, as such, lack distinctiveness.

Earlier mark 1 and the contested sign have no element that could be considered clearly more dominant than other elements. 

Visually, the signs coincide in the component ‘OPTI’. Furthermore, earlier mark 1 and the contested sign coincide in that they both contain a figurative element representing a pair of glasses, although the respective representations also display differences, in particular in their colours. The signs differ further in the letters ‘NETT’ of the earlier marks and ‘Cleaner’ of the contested sign as well as in the remaining graphic and figurative elements of earlier mark 1 and the contested sign described above, which have no counterparts in the other signs.

According to the applicant, the signs have an identical visual structure. Nevertheless, while it is true that the signs coincide in the letters ‘OPTI’ followed by other letters or a verbal component, they cannot, for that reason alone, be regarded as visually identical. Indeed, it is to be taken into account that the identical initial letters ‘OPTI’ form a non-distinctive prefix in all signs.

In view of all the foregoing, 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 ‘OPTI-'. They differ in the sound of the letters ‘NETT’ of the earlier mark and ‘Cleaner of the contested sign.

According to the opponent, consumers will have a lower attention over the two last syllables ‘Cleaner’ of the contested sign since this word is descriptive of the relevant products. However, the Opposition Division points out that ‘Cleaner’ is meaningless for part of the public which does not speak English. Therefore, it is distinctive, and it will attract more the consumer’s attention in respect to the non-distinctive prefix ‘OPTI’. Furthermore, even if ‘Cleaner’ were weak or non-distinctive for the part of the public that understands its meaning, it remains that the sounds of the letters ‘Cleaner’ significantly contribute to the aural differentiation of the signs (by analogy 19/11/2014, T-138/13, Viscotech / Viscoplex, EU:T:2014:973, § 75; 30/10/2012, R 2270/2011-5, EASYSTORE / EASY et al., § 27).

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

  

Conceptually, although the coinciding component ‘OPTI’ will evoke a concept, it is not sufficient to establish any relevant conceptual similarity, since, as established above, this element is non-distinctive and cannot indicate the commercial origin of the goods at issue. Therefore, the part of the relevant public which has no knowledge of English and French will tend to pay a greater attention to the additional component ‘NETT’ of the earlier marks and the verbal element ‘Cleaner’ of the contested sign, which are both meaningless. Consequently, for this part of the public, a conceptual comparison is not possible and the conceptual aspect does not influence the assessment of the similarity of the signs.

According to the applicant, the signs have the same meaning because in French ‘nett’ is the abbreviation of ‘nettoyant’ which means ‘cleaner’ in English. The Opposition Division does not agree with this view since ‘nett’ is not a commonly used abbreviation of ‘nettoyant’ in French. At best, the French-speaking part of the public will associate ‘nett’ with the French word ‘net’ which indeed means ‘clean’. Yet, even if ‘nett’ were to be perceived as an abbreviation of ‘nettoyant’, it remains that ‘nett’ and ‘cleaner’ carry different concepts for the English-speaking part of the public whereas for the French-speaking part of the public, the only element that is endowed with a concept, despite a difference in spelling, is the element ‘nett’. As a consequence, for the part of the relevant public that will understand either the meaning of the verbal element ‘NETT’ of the earlier marks (the English- and the French-speaking parts of the public) or the verbal element ‘Cleaner’ of the contested sign (the English-speaking part of the public), the signs are conceptually dissimilar.

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 that understands the meaning of both components of the earlier marks ‘OPTI’ and ‘NETT’. The mark has a normal degree of distinctiveness for the remaining part of the public, despite the presence of the non-distinctive prefix ‘OPTI’.

 

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.

The point of similarity between the signs lies in the common letters ‘OPTI’, which form the non-distinctive components of the signs under comparison. Therefore, it is clear that due to its non-distinctive nature, it does not have a distinctive role in the overall impression of the sign (see, by analogy, 22/01/2010, C-23/09 P, Ecoblue, EU:C:2010:35, § 45; 25/03/2010, T-5/08 and T-7/08, Golden Eagle/Golden Eagle Deluxe, EU:T:2010:123, § 60; 03/109/2010, T-472/08, a nossa alegria, EU:T:2010:347, § 49 and the case-law cited therein). If follows that the part of the relevant public which understand only the meaning of the component ‘OPTI’ will be inclined to focus on the further verbal elements of the signs in order to discern the commercial origin of the relevant goods, ‘NETT’ in the earlier marks and ‘Cleaner’ in the contested sign (see, by analogy, 30/10/2012, R 2270/2011-5, EASYSTORE, EASY et al., § 26; 02/03/2009, R 1538/2007-2, EASY LIVING / EASY et al., § 40). Therefore, 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.

For the remaining part of the public, the conceptual differences along with the visual and phonetic differences are enough to counteract the similarities between the signs.

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’, 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

Aldo BLASI

 

 

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.