OPPOSITION No B 3 063 132

Carl Zeiss AG, Carl-Zeiss-Straße 22, 73447 Oberkochen, Germany (opponent), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative)

a g a i n s t

Shanghai Sunclear Vector Optics Trading Co.,Ltd, Room 204 #18 Building, No.423 WuNing Rd., Putuo Dist., 200063 Shanghai, People’s Republic of China (applicant), represented by Daniel Smart, 30 River View Drive, M7 1BG Salford, Manchester, United Kingdom (professional representative)

On 14/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 063 132 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 900 916 . The opposition is based on the following earlier rights:

• German trade mark registration No 302 013 038 844 for the word mark ‘Victory’.

• International trade mark registration No 1 204 971 designating United Kingdom, Italy, Finland, Poland, Romania, Bulgaria, Czech Republic, Austria, Denmark, Hungary, Spain, France for the word mark ‘Victory’.

The opponent invoked Article 8(1)(a) and (b) EUTMR in relation to both earlier rights.

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

The goods on which the opposition is based (covered by all the earlier rights) are the following:

Class 9: Optical apparatus and instruments, binoculars, field glasses, telescopes, sighting telescopes, spotting scopes, monoculars, laser distance meters, night vision goggles; parts of the afore mentioned goods.

The contested goods are the following:

Class 9: Instruments containing eyepieces; mirrors [optics]; optical apparatus and instruments; optical glass; refractors; binoculars; telescopes; sighting telescopes for firearms; telescopic sights for artillery.

Class 13: Sighting mirrors for rifles; sighting mirrors for guns and rifles; sighting mirrors for guns; sights, other than telescopic sights, for firearms; sights, other than telescopic sights, for artillery; cleaning brushes for firearms.

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

2. Relevant public — degree of attention

In the present case, the goods assumed to be identical or similar are directed in part at professionals (e.g. optical apparatus and instruments), in part at consumers with specific knowledge in relation to the goods concerned, that could be professionals or only enthusiasts of a particular hobby (e.g. sighting mirrors for guns), and in part at the public at large (e.g. binoculars).

The degree of attention paid during their purchase is deemed to be high, independently of the kind of purchaser. This is due to the fact the goods require specific technical knowledge in order to be used and/or are highly specialised and/or are not frequently purchased and/or are of high prices.

3. The signs

Victory
Earlier trade marks	Contested sign

The relevant territories are Germany (in relation to the earlier national trade mark) and United Kingdom, Italy, Finland, Poland, Romania, Bulgaria, Czech Republic, Austria, Denmark, Hungary, Spain and France (in relation to the earlier international registration).

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 word ‘Victory’ is understood by some of the consumers in the relevant territories as the English word for ‘triumph’, either because they are aware of the English meaning of the word (e.g. German-speaking consumers) or because the equivalent terms in their languages are so similar phonetically/in spelling that the same concept will be brought to mind (e.g. ‘victoire’ in French). It can also be perceived as having the concept of a woman´s name, due to the similar spelling in certain languages (e.g. “Victoria” in Spanish) and as meaningless for part of the public (e.g. Bulgarian-speaking consumers)

Taking into account the kind of consumers at which the contested goods are directed (See section b) above), it is expected that “vector” is understood as the English term used to refer to the direction/course followed by something, and ‘optics’ as the English word used to refer to the branch of physical science that deals with light and with vision.

Consumers will attribute the abovementioned meanings to the terms either because they are aware of the English words (i.e. consumers from United Kingdom and consumers with enough English knowledge in other territories, such as German-speaking consumers) or because the equivalent terms in their languages are so similar phonetically and/or in spelling that the same concept will be brought to mind (e.g. ‘vecteur’ in French, ‘Vektor’ in German and ‘vettore’ in Italian; ‘optique’ in French, ‘optica’ in Spanish, ‘Optik’ in German, ‘optika’ in Hungarian and Czech, ‘optyka’ in Polish, etc.)

The earlier marks are of average distinctive character in relation to the kind of goods involved.

The contested sign is formed by two verbal elements of lower than average distinctive character for being at least allusive of the characteristics of the goods involved, such as their purpose or the kind of goods. The stylisation of letters ‘O’ in this mark is also of reduced impact, since it is a device commonly used in certain components of telescopes and some parts of certain types of arms, and represents the sight/focus on what it being seen or pointed at.

The contested sign has no element more dominant (visually eye-catching) than others.

Visually and aurally, the signs coincide in letters ‘V’ and ‘CTOR’ (and their sound). They differ in letters ‘i’ and ‘y’ in the earlier marks, and in ‘E’, and ‘OPTICS’ in the contested mark (and their sound). Aurally, the signs have different number of words and length (i.e. one word vs. two; three syllables vs. four syllables). Visually, they also differ in the stylisation of letters ‘O’ and in the black background in the contested mark.

Taking into account the degree of distinctiveness of each of the elements in the marks described above, it is considered that the marks are visually and aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks, where applicable. As the signs will be associated with clearly dissimilar meanings or at least one of the signs will have no meaning at all, the signs are conceptually not 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 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.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole have no meaning for any of the goods 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

The goods have been assumed to be identical or similar, and are directed at different types of consumers, whose degree of attention during the purchase of the goods is deemed to be high for the various reasons explained in section b) above.

Despite the coincidences in some of the letters forming the marks, they can be clearly differentiated visually and aurally on account of their differing components, as already referred to above. The signs have been considered to be visually and aurally similar to a low degree, do not coincide in concept. The earlier mark is of average distinctive character.

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 (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17). In this case, the assumed identity or similarity between the goods and the coincidences between the marks are clearly insufficient to counteract their significant dissimilarities, moreover taking into account that the degree of attention of the relevant public is high.

Considering all the above, even assuming that the goods are identical or similar, the differences between the marks, described in section c) above, are clearly perceivable and sufficient to exclude any likelihood of confusion between the marks. There is no likelihood of confusion on the part of the public, and therefore, the opposition must be rejected.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the signs are obviously not identical.

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 (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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

Sofía SACRISTÁN MARTÍNEZ

María del Carmen SUCH SANCHEZ

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.