The applicant, N & C Franchise Ltd, filed an application for an EU trade mark for the figurative sign (above left).

The goods and services in respect of which registration was sought were:-

Class 9: ‘Sunglasses; sunglasses frames; clip-on sunglasses; frames for sunglasses; lenses for sunglasses; straps for sunglasses; cases for sunglasses; chains for sunglasses; frames for spectacles and sunglasses; optical lenses for use with sunglasses; eye glasses; spectacles [glasses]; children’s eye glasses’;

Class 21: ‘Cloths for eye-glasses; wiping cloth for wiping eye glasses’;

Class 37: ‘Repair of sunglasses’.

Eschenbach Optik GmbH filed a notice of opposition based on the international registration designating the European Union for the word mark OIO, in Class 9 covering: ‘spectacles, spectacle frames, optical apparatus and instruments’ on the ground of a likelihood of confusion.

The Opposition Division upheld the opposition.

On appeal by the applicant, the Board of Appeal dismissed the appeal and held that there was a likelihood of confusion between the signs.

  • the Board of Appeal focused the assessment of the likelihood of confusion on the Slovenian-speaking part of the relevant public;
  • the goods and services in question are aimed at both average consumers and professionals, whose level of attention would vary from average to higher than average;
  • it confirmed the decision of the Opposition Division which concluded that the goods and services covered were identical in part and similar in part;
  • regarding the comparison of the signs at issue it said that, visually, the earlier trade mark oio was almost entirely reproduced in the Applicant’s mark;
  • phonetically, the Board of Appeal rejected the applicant’s argument that the letters ‘j’ and ‘i’ were pronounced differently in Slovenian, endorsing, the Opposition Division’s finding that the pronunciation of the words ‘ojo’ and ‘oio’ would remain the same, at least in Slovenian;
  • the signs at issue were not conceptually similar, in view of (i) the ‘weak’ nature of the word element ‘sunglasses’ for the part of the relevant public having some knowledge of English and (ii) the lack of meaning of the word element ‘ojo’.

On appeal to the General Court, the applicant argued that the marks at issue were sufficiently dissimilar because of the artistic stylisation of the mark applied for. The applicant emphasised that the element ‘ojo’ represents, with a strong degree of artistic stylisation, a nose and two eyes wearing glasses and that it constitutes the distinctive and dominant element of the mark applied for.

However, the Court found the fact that a part of the public will (perhaps) perceive the element ‘ojo’ not only as a word element but also as a figurative element representing a nose with two eyes wearing glasses, which is a nod to the goods and services covered by the mark applied for, is not capable of establishing that the figurative element is more distinctive or dominant in comparison with how the element is perceived verbally.

It consequently dismissed the appeal.

Case Ref T-792/16