REFERRAL DECISION

of the Second Board of Appeal

of 30 October 2019

In case R 2573/2018-2

Multiopticas Sociedad Cooperativa
Avenida de los Reyes, s/n. Polígono Industrial La Mina 28 770 Colmenar Viejo (Madrid) Spain	Opponent / Appellant

represented by Ars Privilegium, S.L., Felipe IV, 10, 28014 Madrid, Spain

v

Vision Direct Group Ltd
209 Tower Bridge Business Centre 46-48 East Smithfield London E1W 1AW United Kingdom	Applicant / Defendant

represented by Reddie & Grose LLP, The White Chapel Building 10 Whitechapel High Street, London E1 8QS, United Kingdom

APPEAL relating to Opposition Proceedings No B 2 840 711 (European Union trade mark application No 16 143 513)

The Second Board of Appeal

composed of S. Stürmann (Chairperson and Rapporteur), C. Negro (Member) and A. Szanyi Felkl (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 8 December 2016, Vision Direct Group Ltd (‘the applicant’) sought to register the word mark

EVERCLEAR

for, after limitation, the following list of goods:

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.

2. The application was published on 16 December 2016.

3. On 1 February 2017, Multiopticas Sociedad Cooperativa (‘the opponent’) filed an opposition against the registration of the published trade mark application for part of the goods, after restriction, namely:

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; vitamins for care of the eyes; 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.

4. The grounds of opposition were those laid down in Article 8(1)(b) EUTMR.

5. The opposition was based on the EUTM registration No 8 927 204, MULTICLEAR, filed on 4 March 2010 and registered on 27 July 2010 for ‘contact lens cleaning, disinfecting and preserving preparations’ in Class 5.

6. By decision of 31 October 2018 (‘the contested decision’), the Opposition Division rejected the opposition in its entirety. It gave, in particular, the following grounds for its decision:

• 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. The examination of the opposition will proceed as if genuine use of the earlier mark had been proven for all the goods invoked, which is the best light in which the opponent’s case can be considered.

• Some of the contested goods are identical or similar to goods on which the opposition is based. The examination of the opposition will proceed as if all the contested goods in Class 5 were identical to those of the earlier mark and as if all the contested goods in Class 9 were highly similar to those of the earlier mark.

• The signs are visually and aurally similar to a below average degree, or, for the English-speaking public, similar to a low degree.

• Conceptually, for the English-speaking part of the public the signs are similar inasmuch as the coinciding element ‘CLEAR’ evokes the same concept. However, the resulting similarity must not be overestimated due to the allusive character of this element for the relevant goods, as explained above. The signs differ in the concepts evoked by the elements ‘MULTI’ in the earlier sign and ‘EVER’ in the contested sign which, as explained above, have a higher degree of distinctiveness than the coinciding element. Overall, for this part of the public, the signs are similar to a low degree.

• A substantial part of the non-English-speaking public will perceive the signs as a whole, namely as meaningless words, that are inherently distinctive to an average degree. For this part of the non-English-speaking public, a conceptual comparison is not possible and the conceptual aspect does not influence the assessment of the similarity of the signs.

• For the sake of completeness it must be noted that, even if the part of the non-English-speaking public that understands the meaning of the element ‘MULTI’ of the earlier sign, such as the Italian and Spanish-speaking parts of the public, were to single that element out from the earlier sign, this would not result in any degree of conceptual similarity between the marks, because the contested sign as a whole would remain meaningless for that part of the public. In this case, since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

• The distinctiveness of the earlier mark must be seen as normal, despite the presence of some weak elements in the mark for a part of the relevant public.

• The Opposition Division is of the opinion that the earlier mark and the contested sign are not similar enough to lead to a likelihood of confusion and that the differences between the signs would allow consumers to safely distinguish between them.

7. On 26 December 2018, the opponent filed an appeal against the contested decision, requesting that the decision be entirely set aside. The statement of grounds of the appeal was received on 28 February 2019.

8. In its response received on 6 May 2019, the applicant requested that the appeal be dismissed.

Reasons

9. The appeal complies with Articles 66, 67 and Article 68(1) EUTMR. It is admissible.

10. As it is inferred from Article 161 in conjunction with Article 47 EUTMR and Article 71(1) EUTMR, the Opposition Division and the Boards of Appeal do not have the competence to examine absolute grounds for refusal during opposition proceedings (18/02/2004, T-10/03, Conforflex, EU:T:2004:46, § 55, 57; 30/06/2004, T-186/02, Dieselit, EU:T:2004:197, § 71).

11. It follows from Article 45(3) EUTMR and Article 30(2) EUTMDR, that where a decision of the Opposition Division is subject to an appeal, and the Board of Appeal considers that an absolute ground for refusal may apply to some or all of the goods or services listed in the trade mark application, the Board may, by means of a reasoned interim decision, suspend the appeal proceedings and remit the contested application to the examiner competent for examining that application with a recommendation to reopen the examination of absolute grounds for refusal.

12. Such examination may be initiated at any time before registration, as expressly foreseen by Article 45 EUTMR and Article 30(2) EUTMDR.

13. Pursuant to Article 30(3) EUTMDR, where the examination of the contested application has been reopened, the appeal proceedings shall remain suspended until the examiner’s decision has been taken and, where the contested application has been rejected in whole or in part, until the examiner’s decision to this effect has become final.

14. In the present case, for the reasons laid down below, it is appropriate to recommend a reopening of the examination of absolute grounds for refusal of the trade mark applied for

Article 7(1)(c) EUTMR

15. Article 7(1)(c) EUTMR provides that registration is to be refused in respect of descriptive marks, that is to say marks composed exclusively of signs or indications which may serve to designate the characteristics of the goods and services in respect of which registration is applied for.

16. Under Article 7(1)(c) EUTMR, trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, intended purpose or other characteristics of the goods or services, shall not be registered.

17. Thus, Article 7(1)(c) EUTMR pursues the aim, which is in the common interest, of ensuring that signs or indications comprising the name of the product or describing characteristics of the goods or services in respect of which registration is applied for may be freely used by all. All undertakings must be free to use the name of the product or indications describing characteristics of their own goods or services. Hence, this provision does not permit such signs or indications to be reserved for use by one undertaking as a result of their registration as a trade mark (04/05/1999, C-108/97 and C-109/97, Chiemsee, EU:C:1999:230, § 25; 08/04/2003, C-53/01, C-54/01 and C-55/01, Linde, EU:C:2003:206, § 73; 06/05/2003, C-104/01, Libertel, EU:C:2003:244; 12/02/2004 § 52, 12/02/2004, C-363/99, Postkantoor, EU:C:2004:86, § 55).

18. Therefore, under Article 7(1)(c) EUTMR, the competent authority must assess whether, in the mind of the relevant class of persons, a sign is the name of a product, describes the characteristics of a product or it is reasonable to assume that such an association may be established in the future.

19. The assessment of the trade mark must be conducted in the context of the goods applied for. The goods applied for in the case at hand are range of pharmaceutical products, in particular contact lens solutions, eye care preparations for medical use, pharmaceuticals for treatment of eye disorders, eye drops, etc. in Class 5 and related goods in Class 9, in particular contact lenses, containers for contact lenses etc. As the Opposition Division stated in the contested decision, the goods are aimed partly at the public at large and at the professional public in the medical sector, in particular ophthalmologists. Consequently 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.

20. The Board points out that a high attentiveness of the relevant public does not imply that a sign is less subject to any absolute grounds of refusal. In fact, it can be quite the contrary, terms which are not (fully) understood by consumers of cheap, mass-consumption goods, can be grasped immediately by the specialized public, in particular if the sign is composed of words which relate to the field in which the latter public (11/10/2011, T-87/10, Pipeline, EU:T:2011:582, § 27-28).

21. In the present case, the mark in question is composed of two common English words ‘EVER’ and ‘CLEAR’. The expression for which protection is sought is made up of words of common parlance that any English-speaking person would understand immediately.

22. The meanings of the words ‘EVER’ and ‘CLEAR’ are immediately clear for any member of the public that speaks English, and the same applies when the words are combined as ‘EVERCLEAR’, i.e. always, or ever, clear/visible/transparent.

23. It should be noted that the Opposition Division recognised the meaning of the element ‘CLEAR’ in its decision and provided its definition according to the Oxford Dictionary, i.e. ‘the coinciding element ‘CLEAR’ is an adjective meaning, inter alia, (1) ‘easy to perceive, understand, or interpret’, (2) ‘(of a substance) transparent; unclouded’, for example ‘(of a person's skin) free from blemishes’, and (3) ‘free of any obstructions or unwanted objects’ (information extracted from Oxford Dictionary on 22/10/2018 at en.oxforddictionaries.com/definition/clear)’ and further, even stated that ‘the degree of inherent distinctiveness of this element for the English-speaking public is low’ since ‘considering that the majority of the contested goods are related to either eyes or vision, namely various eye preparations (eye drops, ocular vitamins, pharmaceuticals for treatment of eye disorders, etc.), contact lenses, holders and cases therefor, and preparations for contact lenses, spectacles and sunglasses (for cleaning, disinfecting, preserving, etc.), the English-speaking public will perceive “CLEAR” as alluding to the fact that the goods will help them establish, maintain or restore good vision, that is, vision free of any obstructions or unwanted objects’.

24. The same reasoning was applied to the contested ‘diver masks, prescription diver masks’ in Class 9 which also may serve the same reason. When it comes to the contested ‘skincare preparations (medicated); face masks impregnated with medicated preparations’ in Class 5, the Opposition Division also stated that ‘CLEAR’ may allude to the expected effects of the goods, namely the fact that skin will become ‘free from blemishes’.

25. The same was stated in relation to the element ‘EVER’. The Opposition Division provided its definition according to the Oxford Dictionary whereby it is defined as follows:

EVER - an adverb meaning, inter alia, (1) ‘at any time’ and (2) ‘at all times; always’ (information extracted from Oxford Dictionary on 22/10/2018 at en.oxforddictionaries.com/definition/ever).

Furthermore, it should also be highlighted that the Opposition Division went on to say that ‘it could be perceived by the English-speaking public as a laudatory suggestion of the long lasting effect of the contested goods’. As such the element is non-distinctive for the goods applied for under the contested mark.

26. As can be seen from the definitions above, the meanings of both of the words that the mark applied for consists of are clear and the meaning of the mark as a whole will certainly by perceived by the relevant English-speaking public, regardless if English speakers would typically use this particular expression in common parlance to indicate that something is always clear/transparent.

27. The expression is simply a combination of two separate terms that has nothing unusual or striking about it, as it merely combines the meanings lent by the elements of which it is composed. The relevant public will be able to immediately grasp the meaning of the expression of the goods applied for in Classes 5 and 9 since the expression contains obvious and direct information on the kind, quality or the intended purpose of the goods in question, for instance the durability or longevity of the contested goods being always clear.

Article 7(1)(b) EUTMR

28. Article 7(1)(b) EUTMR provides that trade marks which are devoid of any distinctive character are not to be registered.

29. A minimum degree of distinctive character is sufficient to preclude the application of the absolute ground for refusal set out in Article 7(1)(b) EUTMR (24/01/2017, T-96/16, STRONG BONDS. TRUSTED SOLUTIONS., EU:T:2017:23, § 14).

30. It is settled case-law that for a trade mark to possess distinctive character for the purposes of that provision, it must serve to identify the goods in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish those goods from those of other undertakings, so that the consumer who acquires the goods designated may repeat the experience, if it proves to be positive, or avoid it, if it proves to be negative, on the occasion of a subsequent acquisition (11/12/2012, T-22/12, Qualität hat Zukunft, EU:T:2012:663, § 22 and the case-law cited).

31. As regards marks made up of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods covered by those marks, registration of such marks is not excluded as such by virtue of such use. As regards the assessment of the distinctive character of such marks, it is inappropriate to apply to them criteria which are stricter than those applicable to other types of signs (08/02/2011, T-157/08, Insulate for life, EU:T:2011:33, § 47 and the case-law cited).

32. The assessment of the trade mark must be conducted in the context of the goods applied for. As mentioned above in paragraphs 19 and 20, the goods in the application are directed to the general public and professional public, whose level of attentiveness will vary between average and high. Moreover, it is established case-law that the fact that the relevant public is a specialist one cannot have a decisive influence on the legal criteria used to assess the distinctive character of a sign. Although it is true that the degree of attention of the relevant specialist public is, by definition, higher than that of the average consumer, it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is specialist (12/07/2012, C-311/11 P, Wir machen das Besondere einfach, EU:C:2012:460, § 48).

33. Where a mark applied for is an advertising slogan, the General Court has established that the public’s level of attention when it comes to promotional indications is relatively low, also in the case of a professional public (09/07/2008, T-58/07, Substance for success, EU:T:2008:269, § 23; and 06/06/2013, T-126/12, Inspired by efficiency, EU:T:2013:303, § 27).

34. In the case of advertising slogans, it must always be examined whether there are elements which, beyond their plain advertising function, would enable the relevant public to memorise the sign easily and instantly as a distinctive trade mark for the goods and services designated. Since the relevant public is not very attentive if a sign does not immediately indicate the origin or intended use of the object of their intended purchase, but just gives purely promotional, abstract information, they will not take the time to enquire into the sign’s various possible functions or register it mentally as a trade mark (05/12/2002, T-130/01, Real People, Real Solutions, EU:T:2002:301, § 28, 29; and 09/07/2008, T-58/07, Substance for success, EU:T:2008:269, § 22).

35. In the present case, as noted above, the mark in question is composed of two common English words ‘EVER’ and ‘CLEAR’ joined together. The expression for which protection is sought is made up of words of common parlance that any English-speaking person would understand immediately. The absence of a space separating the components will not modify the perception and understanding that the consumer will have of the contested mark. In English compound nouns can be formed with or without a space and can even be joined by the use of a hyphen.

36. The Board is of the opinion that the sign will not be perceived as a badge of origin. When it comes to the goods in question, there is absolutely nothing that can be found distinctive in using the expression ‘EVERCLEAR’ for the goods covered by the contested mark, beyond its obvious promotional meaning that the goods applied for always provide a clear/visible outcome/result, e.g. eye drops to aid the visibility and clear the eye, contact lenses to make the vision always clear/visible etc, to enable the relevant public to memorise it easily and instantly as a distinctive mark for the goods concerned. The relevant public cannot, in the absence of prior knowledge, perceive it other than in its promotional sense. The expression applied for is not surprising or unexpected. It is just an ordinary advertising message extoling the fact that the goods applied for will always give clear results. Extoling such a characteristic would not appear out of context or unusual in the context of the goods in question, in particular, contact lens solutions, eye care preparations for medical use, pharmaceuticals for treatment of eye disorders, eye drops, etc. in Class 5 and related goods in Class 9, in particular contact lenses, containers for contact lenses etc. The mark applied for as a whole, therefore possesses no particular resonance (see, to that effect, 09/07/2008, T‑70/06, Vorsprung durch Technik, EU:T:2008:266, § 44-45 and 56-59). Therefore, the relevant public will not perceive it as an indication of the commercial origin of the goods in question.

37. Since the relevant consumer is not very attentive if a sign does not immediately indicate to him/her the origin or intended use of the object of her/his intended purchase, but just gives him/her purely promotional, abstract information, s/he will not take the time either to enquire into the sign’s various possible functions or mentally to register it as a trade mark (05/12/2002, T-130/01, Real People, Real Solutions, EU:T:2002:301, § 28-29; 09/07/2008, T-58/07, Substance for success, EU:T:2008:269, § 22; 05/05/2014, R 532/2014-4, MAKE LOVE (FIG. MARK), § 16).

38. The sign does not constitute a play on words and contains no imaginative, surprising or unexpected element as to confer on it, in the minds of the relevant public, a distinctive character. Accordingly, the sign applied for is in the form of a classic slogan, devoid of elements which could, apart from its promotional function, enable the average consumer concerned easily and immediately to memorise it as a trade mark for the goods referred to. The relevant consumer, upon seeing the mark ‘EVERCLEAR’, in connection with the goods at issue, will not be able to identify the commercial source of the said goods. When considered as a whole and in relation to the designated goods, the mark applied for will thus be perceived as a promotional advertising message, rather than as an indication of the commercial origin of the goods (28/03/2017, R 1262/2017-2, BEST FRIEND TRUE LOVE, § 25, 29).

39. Moreover, it is worth pointing out that the Opposition Division state in its decision that the mark is a laudatory expression.

40. Finally, it is worth mentioning that the Boards of Appeal have also on a number of occasions refused the registration of trade marks consisting of the element ‘EVER’ in combination with other descriptive or non-distinctive elements, bearing a similar composition to the mark applied for in the present case, such as:

• 04/04/2018, R 2073/2017-2, EVERLAST, for goods in Class 8;

• 09/10/2013, R 2047/2012-2, EVERCLEAN, for goods in Class 2;

• 06/08/2013, R 12/2013-2, EverClean, for goods in Classes 7, 8, 9 and 11;

• 26/05/2011, R 2424/2010-1, EVERFRESH, for goods in Classes 31 and 32.

Conclusion

41. In light of the above, it appears that the mark applied for may fall within the scope of the ground for refusal set out in Articles 7(1)(c) and 7(1)(b) EUTMR in relation to all of the goods for which registration is sought.

42. The Board is therefore suspending the present appeal proceedings in accordance with Article 30(2) EUTMDR and refers the case to the examiner in order for him or her to decide whether to reopen the examination of absolute grounds for refusal of the contested mark.

Order

On those grounds,

THE BOARD

hereby:

1. Suspends the present appeal proceedings;

2. Refers the case to the examiner for consideration on whether to reopen the examination of absolute grounds for refusal.

Signed S. Stürmann

Signed C. Negro

Signed A. Szanyi Felkl

Registrar: Signed H.Dijkema