OPPOSITION No B 3 088 957

Cartier International AG, Hinterbergstr. 22, Postfach 61, 6312 Steinhausen, Switzerland (opponent), represented by Cabinet Germain & Maureau, 12, rue Boileau, 69006 Lyon, France (professional representative)

a g a i n s t

Visron Optical B.V., Rivium Boulevard 301, 2909 LK Capelle aan den IJssel, Netherlands (applicant).

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

DECISION:

1. Opposition No B 3 088 957 is rejected in its entirety.

2. The opponent bears the costs.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 048 702, ‘CARTTIO’ (word mark), namely all of the goods in Class 9 and some of services in Classes 35 and 44. The opposition is based on European Union trade mark registration No 13 207 097, ‘CARTIER’ (word mark). The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

1. The goods and services

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

Class 9: Optical apparatus and instruments; spectacles, optical goods and spectacle cases; frames, cords and chains for spectacles and sunglasses, magnifying glasses; personal digital assistant; cellular telephones, portable telephones, smartphones; agendas (electronic -); digital photograph frames; mice and mouse mats; bags for computers, CD cases, cases and holders for tablets; directional compasses, accessories for telephones; cases, bags and pouches for telephones; Instruments and carriers for the storage and recording of data (including USB keys).

Class 35: Presentation of goods on all kinds of communications media, for retail purposes, namely the following articles: cosmetics, perfumery, optical goods, jewellery, works of art, horological instruments, watches, precious stones, precious metals, writing instruments, cartridges, inks, organisers, stationery, luggage, small items of leatherware, bags, clothing, clothing accessories, headscarves, smokers’ articles; public relations services; advertising for luxury goods, namely cosmetics, perfumery, optical goods, jewellery, works of art, horological instruments, watches, precious stones, precious metals, writing instruments, cartridges, inks, organisers, stationery, luggage, small items of leatherware, bags, clothing, clothing accessories, headscarves, smokers’ articles; business management and organisation consultancy in the field of luxury goods; consultancy for the purchase and sale of jewellery, precious stones, works of art and collectors’ items; administrative management and research in databases for domain names of computer networks; business management and organisation consultancy in the field of luxury goods; consultancy for the purchase and sale of jewellery, precious stones, works of art and collectors’ items.

The contested goods and services are the following:

Class 9: Spectacles; spectacle frames; spectacle mountings; spectacle chains; spectacle cases; spectacle glasses; spectacle lenses; spectacle temples; polarizing spectacles; 3D spectacles; protective spectacles; safety spectacles; spectacles [optics]; prescription spectacles; spectacles [glasses]; spectacle nose pads; spectacle lens blanks; eyeglasses; cases for eyeglasses and sunglasses; cases for children’s eyeglasses; protective eyeglasses; eyeglasses for sports; optical lenses for eyeglasses; eyewear; corrective eyewear; prescription eyewear; eyewear cases; sports eyewear; goggles; snow goggles; ski goggles; dust goggles; protective goggles; safety goggles; swim goggles; swimming goggles; smart glasses; dustproof glasses; antireflection coated eyeglasses; sunglasses; sunglasses frames; prescription sunglasses; clip-on sunglasses; lenses for sunglasses; cases for sunglasses; chains for sunglasses; glasses, sunglasses and contact lenses; optical glasses; frames for spectacles and sunglasses.

Class 35: Wholesale; based; retail services in relation to safety, security, protection devices; wholesale services in relation to safety, security, protection devices; catalogue retail services in relation to safety, security, protection devices; online retail services in relation to safety, security, protection devices; mail order retail services in relation to safety, security, protection and signalling devices; television shopping based retail services in relation to safety, security, protection devices; retail services in relation to optical devices, enhancers and correctors; wholesale services in relation to optical devices, enhancers and correctors; catalogue retail services in relation to optical devices, enhancers and correctors; online retail services in relation to optical devices, enhancers and correctors; mail order retail services in relation to optical devices, enhancers and correctors; television shopping based retail services in relation to optical devices, enhancers and correctors.

Class 44: Opticians’ services.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 9

Spectacles; spectacle frames; spectacle chains; spectacle cases; sunglasses frames; chains for sunglasses; frames for spectacles and sunglasses are identically contained in both lists of goods (including synonyms).

The contested spectacle glasses; spectacle lenses; polarizing spectacles; 3D spectacles; protective spectacles; safety spectacles; spectacles [optics]; prescription spectacles; spectacles [glasses]; eyeglasses; protective eyeglasses; eyeglasses for sports; optical lenses for eyeglasses; eyewear; corrective eyewear; prescription eyewear; sports eyewear; goggles; snow goggles; ski goggles; dust goggles; protective goggles; safety goggles; swim goggles; swimming goggles; smart glasses (glasses with special functions comparable to 3D spectacles); dustproof glasses; antireflection coated eyeglasses; sunglasses; prescription sunglasses; clip-on sunglasses; lenses for sunglasses; glasses, sunglasses and contact lenses; optical glasses are included in the broad category of the opponent’s optical apparatus and instruments. Therefore, they are identical.

The contested cases for eyeglasses and sunglasses; cases for children’s eyeglasses; eyewear cases; cases for sunglasses are included in the broad category of the opponent’s spectacle cases. Therefore, they are identical.

The contested spectacle mountings; spectacle temples; spectacle nose pads; spectacle lens blanks are goods used to make spectacles. They are basic components of the end products or constitute integral parts of them. Therefore, these contested goods are similar to the opponent’s spectacles as they usually coincide in producer, relevant public and distribution channels. Furthermore, they are complementary.

Contested services in Class 35

Retail and wholesale services concerning the sale of specific goods are similar to an average degree to these specific goods. Although the nature, purpose and method of use of these goods and services are not the same, they display similarities, having regard to the fact that they are complementary and that the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

The goods covered by the retail and wholesale services and the specific goods covered by the earlier mark have to be identical in order to find an average degree of similarity between the retail and wholesale services of those goods and the goods themselves, that is to say, they must either be exactly the same goods or fall under the natural and usual meaning of the category.

Therefore, the contested retail services in relation to optical devices, enhancers and correctors; wholesale services in relation to optical devices, enhancers and correctors; catalogue retail services in relation to optical devices, enhancers and correctors; online retail services in relation to optical devices, enhancers and correctors; mail order retail services in relation to optical devices, enhancers and correctors; television shopping based retail services in relation to optical devices, enhancers and correctors are similar to an average degree to the opponent’s optical apparatus and instruments in Class 9, because the goods that are the subject of the contested retail and wholesale services are included in the broad category of the opponent’s goods.

There is a low degree of similarity between the retail and wholesale services concerning specific goods and other specific similar or highly similar goods, because of the close connection between them on the market from the perspective of the consumer. Consumers are accustomed to the practice of a variety of similar or highly similar goods being brought together and offered for sale in the same specialised shops or in the same sections of department stores or supermarkets. Furthermore, they are of interest to the same consumer.

Therefore, the contested retail services in relation to safety, protection devices; wholesale services in relation to safety, protection devices; catalogue retail services in relation to safety, protection devices; online retail services in relation to safety, protection devices; mail order retail services in relation to safety, protection devices; television shopping based retail services in relation to safety, protection devices are similar to a low degree to protective goggles which are included in the broad category of the opponent’s optical apparatus and instruments in Class 9. This is because the goods covered by these contested services are devices with safety and protective properties especially against accidents, radiation and fire, and, as such, coincide with the nature and purpose of the opponent’s optical apparatus and instruments (in particular protective goggles). These goods are offered in the same places, belong to the same market sector and are of interest to the same consumers.

However, the contested retail services in relation to security devices; wholesale services in relation to security devices; catalogue retail services in relation to security devices; online retail services in relation to security devices; mail order retail services in relation to security and signalling devices; television shopping based retail services in relation to security devices are dissimilar to all the opponent’s goods in Class 9. This is because the goods covered by these contested services are security devices, such as surveillance cameras, alarms and access control devices. They have different natures, purposes and origins compared to all the opponent’s goods. They are offered through different channels to different consumers and are neither complementary nor in competition. Therefore, the abovementioned contested services are dissimilar to all the opponent’s goods in Class 9.

Moreover, the contested retail services in relation to security devices; wholesale services in relation to security devices; catalogue retail services in relation to security devices; online retail services in relation to security devices; mail order retail services in relation to security and signalling devices; television shopping based retail services in relation to security devices are dissimilar to all the opponent’s services in Class 35 since the latter are intended to provide assistance to businesses by promoting their products, as well as increasing their market share or improving their functioning. As such, they are rendered by specialised undertakings such as advertising agencies or business consultants. The contested services mentioned above are rendered by specialised retail and wholesale outlets, have different natures, purposes and origins. They are offered through different channels to different consumers and are neither complementary, nor in competition.

Contested services in Class 44

The contested opticians’ services are similar to the opponent’s optical apparatus and instruments as they usually coincide in relevant public and distribution channels. Furthermore, they are complementary, as the opponent’s goods are indispensable for the provision of the contested services. Moreover, since the opponent’s goods are regularly offered to the consumer in optical establishments, their presence for sale in premises where the contested services are provided is not only important but essential.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods and services found to be identical or similar to varying degrees are directed at the public at large and business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased.

3. The signs

CARTIER	CARTTIO
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark is meaningful in two of the languages of the relevant territory, namely in French it means ‘manufacturer of playing cards’ (information extracted from Larousse French Dictionary on 24/03/2020 at https://www.larousse.fr/dictionnaires/francais/cartier/13476?q=cartier#13312) and in Romanian it means ‘residential area, neighbourhood’ (information extracted from Sensagent Dictionary on 24/03/2020 at http://dictionary.sensagent.com/cartier/ro-ro/). Furthermore, it is not excluded that a part of the public would perceive the earlier mark as a surname, given the fact that Jacques Cartier (1491-1557) was a French mariner, whose explorations of the Canadian coast and the St. Lawrence River laid the basis for later French claims to North America (information extracted from Encyclopaedia Britannica on 24/03/2020 at https://www.britannica.com/biography/Jacques-Cartier). For the remaining part of the public, the earlier mark has no meaning. The earlier mark has a normal degree of distinctiveness as, even if meaningful, it does not have any relation to the relevant goods and services.

The contested sign is meaningless for the relevant public and is, therefore, distinctive.

Visually, the signs coincide in their first four letters ‘CART’. However, they differ in their endings, namely ‘IER’ of the earlier mark and ‘TIO’ of the contested sign. Although the letter ‘I’ is included in both signs, it is in different positions. Furthermore, the double letter ‘T’ in the middle of the contested sign is particularly original and visually striking and, therefore, will be clearly perceived and remembered by the relevant public.

The General Court has held that the same number of letters in two marks is not, as such, of any particular significance for the relevant public, even for a specialised public. 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 have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar. In addition, the public is not, in general, aware of the exact number of letters in a word mark and, consequently, will not notice, in the majority of cases, that two conflicting marks have the same number of letters (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, the signs are visually similar to a lower-than-average degree.

Aurally, the majority of the public would pronounce the signs as [kar-ti-er] / [kar-ti-o] or [kar-ti-er] / [kar-tti-o]; another part of the public would pronounce them as [kar-tjé] / [kar-ti-o], while others — as [tzar-ti-er] / [tzar-ti-o].

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Depending on the part of the public, the conceptual similarity varies.

For the part of the public that would not associate the signs with a meaning, a conceptual comparison is not possible, and the conceptual aspect does not influence the assessment of the similarity of the signs.

For the part of the public that would understand the earlier mark, while the contested sign is meaningless, the signs are not conceptually similar.

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

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent claimed that the earlier trade mark enjoys a reputation but did not file any evidence in order to prove such a claim.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. 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).

As established above in section a) of this decision, the goods are partly identical and partly similar and the services are partly dissimilar and partly similar to varying degrees. As identity or similarity of goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this Article and directed at the dissimilar services cannot be successful.

The goods and services found to be identical or similar to varying degrees target both the general and professional public whose degree of attention may vary from average to high.

The signs are visually similar to a lower-than-average degree and aurally similar to an average degree, while the conceptual comparison is at most neutral. The distinctiveness of the earlier mark is normal. Although the signs coincide in their first four letters, the differences identified between them would not be overlooked by the relevant consumer, even if the signs were used for identical goods or similar services. Moreover, the contested sign contains a striking combination of letters, ‘TT’, in the middle, which is very specific from a visual aspect and, for a part of the public, also from an aural aspect, thus further decreasing the similarities between the signs.

Although average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26), this does not automatically mean that they tend to retain the similarities of the marks more than the differences.

The fact that consumers will generally remember the beginning of a mark rather than the end cannot hold in all cases and does not cast doubt on the principle that the assessment of the similarity of marks must take account of the overall impression produced by those marks, since the average consumer normally perceives a trade mark as a whole and does not analyse its different aspects (12/06/2018, T‑136/17, cotecnica MAXIMA (fig.) / MAXIM Alimento Superpremium (fig.), EU:T:2018:339, § 60). Consequently, it is the overall impression produced by the marks that should be taken into consideration and not any individual parts in isolation.

Therefore, the mere coincidence in some letters/sounds is not sufficient to conclude that the relevant consumer would confuse the marks and consider that the goods and services in question, bearing the marks, were from the same undertaking or economically linked undertakings.

Consequently, the differences between the signs are readily perceptible and are sufficient to enable the relevant public, whose degree of attention may vary from average to high, to safely distinguish between them.

Considering all the above, there is no likelihood of confusion and the opposition must be rejected insofar as these grounds are concerned.

The opponent directed its opposition against services in Class 35, which are not part of the specification of the contested mark, namely wholesale; based. This appears to be an oversight or typographical error. Even if these services had been objected and had been similar, no likelihood of confusion would exist with respect to them.

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

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 provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Article 7(1) EUTMDR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Article 7(2)(f) EUTMDR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

In the present case, the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.

On 30/07/2019 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 04/12/2019.

The opponent did not submit any evidence concerning the reputation of the trade mark on which the opposition is based.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.

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. In the present case, the applicant did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Claudia MARTINI

Lidiya NIKOLOVA

Christian STEUDTNER

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.