sevenseyewear | Decision 2696667
Date Published: Sep 22, 2017
OPPOSITION No B 2 696 667
Seven S.P.A., Via Fornacino, 96, 10040 Leinì (Torino), Italy (opponent), represented by Buzzi, Notaro & Antonielli d’Oulx, Via Maria Vittoria, 18, 10123 Torino, Italy (professional representative)
a g a i n s t
OTC Siebenhandl GmbH, Lämmerweg 29, 89079 Ulm, Germany (holder), represented by Alexander Duve, Muenzstrasse 15, 10178 Berlin, Germany (professional representative).
On 15/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 696 667 is upheld for all the contested goods, namely:
Class 9: Eyeglasses; spectacles [optics]; spectacle holders; spectacle cases; spectacle frames; bars for spectacles; spectacle lenses; frames and bars for sun glasses; sun glasses; corrective glasses; contact lenses; polarizing spectacles.
2. International registration No 1 263 400 is refused protection in respect of the European Union for all of the contested goods. It may proceed for the remaining uncontested services in Classes 35 and 44.
3. The holder bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against some of the goods and services of international registration designating the European Union No 1 263 400 ‘sevenseyewear’, namely against all the goods in Class 9. The opposition is based on international registration designating the European Union No 1 231 145 . The opponent invoked Article 8(1)(b) 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.
- The goods
The goods on which the opposition is based are the following:
Class 9: Optical apparatus and instruments, eyeglasses, sunglasses, spectacles, frames, goggles for sports; cases for glasses.
The contested goods are the following:
Class 9: Eyeglasses; spectacles [optics]; spectacle holders; spectacle cases; spectacle frames; bars for spectacles; spectacle lenses; frames and bars for sun glasses; sun glasses; corrective glasses; contact lenses; polarizing spectacles.
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.
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.
The contested eyeglasses; spectacles [optics]; spectacle cases; sun glasses are included in the opponent’s list of goods (including synonyms and slightly different wording). Therefore, these goods are identical.
The contested spectacle frames; frames for sun glasses are included in the broad category of the opponent’s frames; the contested spectacle lenses; contact lenses are included in the broad category of the opponent’s optical apparatus and instruments; the contested corrective glasses are included in the broad category of the opponent’s eyeglasses; the contested polarizing spectacles are included in the broad category of the opponent’s spectacles. Therefore, they are all identical.
The contested bars for spectacles; bars for sun glasses have the same distribution channels (opticians), target the same relevant public and are usually manufactured by the same undertakings as the opponent’s eyeglasses. Furthermore, these goods may be complementary to each other. Therefore, they are similar.
The contested spectacle holders and the opponent’s cases for glasses usually originate from the same producers and have the same distribution channels. Furthermore, they target the same relevant public. Therefore, they are similar to a low degree.
- 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 found to be identical or similar to different degrees are directed at the public at large and at business customers with specific professional knowledge or expertise, such as opticians.
The degree of attention may vary from average (e.g. for spectacle cases) to higher than average (e.g. for eyeglasses and spectacle lenses), as some of the relevant goods generally require an intermediary, such as an optician, to establish the exact strength of the lens required to correct an individual’s vision, and so these goods are chosen with care.
- The signs
sevenseyewear | |
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
All of the verbal elements of the signs are meaningful for the English-speaking part of the public in the relevant territory. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on this part of the public.
The earlier mark is a figurative mark consisting of the numeral ‘7’ followed by the word ‘seven’. The letters are stylised and are in lower case white letters, outlined in black. The first letter of the word ‘seven’ slightly overlaps the numeral ‘7’. This numeral is stylised in a similar manner to the letters, but also contains a small black star.
From the perspective of the English-speaking part of the public, both the numeral ‘7’ and the verbal element ‘seven’ of the earlier mark will be understood as referring to the cardinal number ‘7’ (information extracted from Oxford Dictionaries online at https://en.oxforddictionaries.com/definition/seven). As regards the distinctiveness of these elements, given that they do not directly describe or allude to any characteristics of the relevant goods in a manner that could affect their distinctiveness in a material way, they are distinctive to an average degree.
In its observations, the holder argues that the word ‘seven’ of the earlier trade mark has a low degree of distinctive character, given that it indicates the seven weekdays during which the goods can be worn by consumers. However, as already pointed out above, the Opposition Division cannot see any direct link or association between this element and any of the characteristics of the relevant goods that could lead to the conclusion that the word ‘seven’ is a descriptive/non-distinctive or weak element. The association mentioned by the holder is too far-fetched in the Opposition Division’s view, as there is too much of a mental leap required to reach this association. Moreover, no evidence has been filed by the holder to support this argument. Therefore, this argument must be rejected as unfounded.
Furthermore, according to the holder, the word ‘seven’ is commonly used on the market for goods in Class 9. To support this argument, the holder filed a sample of five printouts from various websites offering eyewear under several brands, namely ‘7 for all mankind’, ‘7-seven eyeglasses’, ‘G-sevenstars’, ‘DEGREE SEVEN’ and ‘SEVEN’. With respect to this argument, the Opposition Division firstly notes that the evidence submitted by the holder is not dated and it is not clear to which territory or territories it refers. The evidence is in English; however, the URLs end with ‘.com’ and not, for example, with ‘.co.uk’ or ‘.ie’ and, although one of the extracts does show a price in euros, namely an extract depicting the sign ‘SEVEN’, another extract, containing the sign ‘7 for all mankind’, refers to a price in dollars. Secondly, the existence of five marks consisting of or including the element ‘seven’ is not particularly conclusive in determining whether this element is commonly used on the market or not. Consequently, the sample of five, undated, extracts from websites and the extent of use of the marks including the word ‘seven’ that can be inferred from these extracts cannot be considered sufficient for a finding that the element ‘seven’ is commonly used in the course of trade in the context of goods in Class 9. Finally, the holder claims that the degree of distinctiveness of the element ‘seven’ is low also because there are some trade marks that include this word. In support of this argument, the holder refers to two international trade mark registrations covering goods in Class 9, namely IR No 999 437, ‘G Seven’, and IR No 1 042 839, ‘seven brand ventures’. In this regard, the Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed by the holder does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks (brands) that include the element ‘seven’. Under these circumstances, the holder’s abovementioned claims must be set aside.
As regards the stylisation of the earlier mark, it performs only a decorative function within the mark and so has only a low impact on the assessment of the likelihood of confusion. The small black star inside the numeral ‘7’ also plays a minor role in the overall impression, due to it being smaller than the other elements and its laudatory connotations (namely alluding to excellence). These elements are therefore considered non-distinctive.
The contested sign is a word mark composed of the verbal element ‘sevenseyewear’.
The Court has held that, although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).
With respect to the present case, it can be reasonably assumed that English-speaking consumers in the relevant territory will break up the verbal element of the contested sign, ‘sevenseyewear’, into separate elements that have a clear and specific meaning for them and thus they will perceive it as a combination of the words ‘sevens’ and ‘eyewear’.
What has been stated above regarding the perception and distinctiveness of the word ‘seven’ of the earlier mark is fully applicable to the element ‘sevens’ of the contested sign. The presence of the letter ‘s’ at the end of this element does not convey a markedly different concept and is immaterial from the conceptual point of view.
The word ‘eyewear’ means ‘things worn on the eyes, such as spectacles and contact lenses’ (information extracted from Oxford Dictionaries online at https://en.oxforddictionaries.com/definition/eyewear). Considering this, and bearing in mind that the relevant goods are different types of glasses and parts and accessories therefor in Class 9, this element is non-distinctive for these goods, as it merely describes their kind and nature. The public will understand the meaning of this element and will not pay as much attention to this non-distinctive element as to the other, more distinctive, element of the mark, that is, ‘sevens’. Consequently, the impact of this non-distinctive element is limited when assessing the likelihood of confusion between the marks at issue.
In summary, the numeral ‘7’ and the word ‘seven’ are equally distinctive elements of the earlier mark and the word ‘sevens’ is the only distinctive element of the contested sign. The other elements present in the signs are non-distinctive, as explained above.
In terms of dominance, neither of the signs has any element that could be considered clearly more dominant (visually eye-catching) than other elements.
Visually and aurally, the signs contain the similar words/sounds ‘seven’/‘sevens’, forming distinctive elements in both signs. Contrary to the holder’s argument, the difference in the final letter/sound ‘s’ of the word ‘sevens’ in the contested sign does not play a significant visual and aural role in the sign, since it is placed in the middle of the sign, to which consumers usually pay less attention. However, the signs differ in the additional word/sound of the contested sign ‘eyewear’, which is a non-distinctive element of the sign.
Visually, the signs also differ in the stylisation of the earlier mark. However, this stylisation is purely decorative and is not considered particularly overwhelming, so it will not distract the consumer’s attention from the word it embellishes. A further visual difference between the signs lies in the numeral ‘7’ (including a non-distinctive black star therein) present at the beginning of the earlier mark.
Aurally, the pronunciation of the signs also differs if the numeral ‘7’ at the beginning of the earlier mark is pronounced. However, the Opposition Division considers this unlikely because many consumers will naturally refer to the earlier mark more readily by the word ‘seven’ than by the numeral ‘7’, especially given that both refer to the same number.
It is important to note that the earlier mark’s verbal element ‘seven’ also appears at the beginning of the contested sign. Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.
Taking all the above considerations into account, the signs are visually and aurally similar to at least an average degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks and their individual elements.
Considering the perception of the English-speaking part of the public in the relevant territory, the signs coincide in the concept conveyed by the distinctive word ‘seven’ (also reinforced by the numeral ‘7’ at the beginning of the earlier mark). On the other hand, the signs differ in the concepts lying in their remaining, non-distinctive, elements, that is, in the concept of a black star in the numeral ‘7’ of the earlier mark and in the concept of the word ‘eyewear’ in the contested sign.
Therefore, the signs are conceptually similar to at least an average degree.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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 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 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 relevant goods from the perspective of the English-speaking part of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some non-distinctive elements in the mark as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Accordingly, a greater degree of similarity between the goods and services may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
The present assessment of likelihood of confusion considers the perception of the English-speaking part of the public in the relevant territory. The relevant public consists of the public at large and professionals.
As concluded above, the contested goods are partly identical and partly similar (to different degrees) to the opponent’s goods; the degree of attention varies from average to higher than average and the earlier mark has an average degree of inherent distinctiveness.
The conflicting signs are similar to at least an average degree on all levels (visually, aurally and conceptually), as explained in detail above in section c) of this decision. This is, in particular, justified by the fact that the verbal elements ‘seven’ and ‘sevens’ play distinctive and conceptually important roles in the signs, and are clearly similar.
The Opposition Division is of the opinion that the differences between the signs, as indicated above, are not sufficient to counteract their similarities, also for the reasons explained below.
Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. Furthermore, it is common practice in the relevant market for manufacturers/providers to make variations to their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them, to denote a new product and/or service line or to endow a trade mark with a new fashionable image.
In the present case, although the relevant public might detect certain differences between the conflicting signs, the likelihood that it might associate the signs with each other is very real. It is highly likely that the relevant consumer will perceive the contested sign as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). It is therefore conceivable that the relevant public, even the part of it with a higher degree of attention, will regard the goods designated by the conflicting signs as belonging to two ranges of goods coming from the same undertaking.
Based on an overall assessment, the Opposition Division concludes that there is a likelihood of confusion (including a likelihood of association) on the part of the English-speaking part of the public in the relevant territory and therefore the opposition is well founded on the basis of the opponent’s international trade mark registration designating the European Union No 1 231 145. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
It follows from the above that the contested sign must be rejected for all the contested goods found to be identical or similar (to different degrees) to those of the earlier trade mark, even for the contested goods that are similar to only a low degree to the opponent’s goods. This is because, bearing in mind the interdependence principle mentioned above, the moderate degree of similarity between those goods is clearly offset by the at least average degree of similarity between the signs.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the holder is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.
According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Vít MAHELKA | Martin MITURA | Ric WASLEY |
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.