In Case T-721/16 (available in French and Spanish), Luxottica successfully enforced its rights against a copycat word mark for its famous RAY-BAN brand.

The General Court (GC) annulled the decision of the 5th Board of Appeal (BOA) which had dismissed in part the opposition between the following parties:

The Opposition Division (OD) partially upheld the opposition, on the basis of Article 8 (1) b) of Regulation No ^o  207/2009 (EUTMR) for all products included in classes 14 and 18 and for some of the goods included in class 9, in particular for sunglasses and spectacle frames.

The BoA  considered that there was only a very small degree of similarity between the signs at issue and that sunglasses and spectacle frames - for which the reputation of the mark was found to be proved- did not have sufficient proximity to the goods concerned so that a link between the marks at issue could not be established in the mind of the relevant public, within the meaning of the Article 8 (5)  of EUTMR, despite the reputation of the earlier mark.

The GC agreed with the EUIPO  regarding : 1)  the relevant public is the average Spanish speaking consumer and 2) the evidence presented by Luxottica, namely the figures relating to sales, advertising expenditure and market shares, as well as the various references to the success of the brand, resulted in the the brand enjoying a high level of knowledge among the relevant public for sunglasses and spectacle frames. In addition, the mark Ray-Ban occupies a consolidated position of approximately 25% of the sunglass market share in Spain, which is a fragmented market.

However, the Court disagreed with the BoA's assessment regarding the visual similarity of the mark: due to  the similar structure and composition of the marks at issue, the use of a similar handwriting and the resemblance of their initial letters 'r' and 'b', the elements of similarity outweigh the differences and that, consequently, the BoA made errors in the assessment of the visual similarity, which would have had to be qualified as average, instead of  verylow.  

Thus, in view of the exceptionally high reputation of the earlier mark, even if there is no direct link which can be established between the goods, the association between the marks can not be excluded, in particular in view of the degree of similarity between the marks and the definition of the relevant public as being being the general public with a moderate level of attention (see judgment of 25 January 2012, VIAGUARA, T-332/10).

The Court therefore held that the Board of Appeal infringed Article 8 (5) of EUTMR and annulled the contested decision.