OPPOSITION No B 2 333 253
Imex Salud, S.L, Charles Robert Darwin 22, Parque Tecnológico, 46980 Paterna (Valencia), Spain (opponent), represented by S. Orlando Asesores Legales Y En Propiedad Industrial, S.L., C/ Castelló, 20, 4ºD, 28001 Madrid, Spain (professional representative).
a g a i n s t
Med-Tronik GmbH, Daimlerstraße 2, 77948 Friesenheim, Germany (applicant), represented by Schulte-Franzheim Rechtsanwälte, Hohenstaufenring 78, 50674 Köln, Germany (professional representative).
On 26/01/2017, the Opposition Division takes the following
1. Opposition No B 2 333 253 is upheld for all the contested goods, namely goods in class 10.
2. European Union trade mark application No 12 305 851 is rejected for all the contested goods. It may proceed for the remaining services
3. The applicant bears the costs, fixed at EUR 650.
The opponent filed an opposition against some the goods of European Union trade mark application No 12 305 851, namely against all the goods in Class 10. The opposition is based on Spanish trade mark registration No 3 050 985. 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 10: Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopedic articles; suture materials.
The contested goods are the following:
Class 10: Electronic devices for producing electromagnetic fields for the purpose of pain management, medical diagnostics and physical therapy, for home use, for use by Physiotherapists, for use by naturopaths and for use by practitioners of sports medicine; electronic devices for the use in bio-physical and bioresonance therapy for purpose of medical and physical therapy, for home use, for use by physical therapists, for use by naturopaths and for use by physicians and medics; electronic apparatus for laboratory diagnostics and for sports medicine performance diagnostic for home use, for use by physical therapists, for use by naturopaths and for use by practitioners of sports medicine.
All the contested goods are included in the broad category of the opponent’s medical apparatus and instruments.Therefore, they are identical.
- 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 are directed public at large and at medical professionals and physiotherapists. The goods at issue are directed at professionals with specific knowledge or expertise, but can also be used at home by patients. Given the fact that they are specialised medical devices, the degree of attention of the public will be higher than average.
- The signs
Earlier trade mark
The relevant territory is Spain.
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 earlier mark is a figurative mark composed of the verbal element ‘mora’ written in white fonts placed on a dark red/maroon rectangular label-like background. The word ‘mora’ means blackberry in Spanish; it has no relation to the relevant goods. The use of rectangles and white letters that are easily legible for marketing purposes is quite normal. Therefore, the figurative elements are less distinctive than the verbal element which has an average degree of distinctiveness in relation to the relevant goods.
The contested sign is a word mark ‘MORA’. The sign has no elements that could be considered more dominant or distinctive than other elements.
Visually, the signs are similar to the extent that they coincide in the letters ‘MORA’. As regards the contested sign, the use of upper or lower case letters is irrelevant, since, in the case of word marks, protection is sought for the word as such and not for the word in a particular typeface. The signs differ in the figurative elements and colours of the earlier mark, which have no counterparts in the contested mark. However, the figurative elements of the earlier mark are less distinctive than the verbal element.
When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).
The signs are visually similar to a high degree.
Aurally, the signs are identical.
Conceptually, the public in the relevant territory will perceive both the earlier sign and the contested mark as ‘blackberry’. Therefore, the signs are conceptually identical.
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 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.
- Global assessment, other arguments and conclusion
The signs have been found to be highly similar from the visual and identical from the aural and conceptual perspectives. The goods are identical.
The figurative element of the earlier mark consists of a simple label-like background and therefore has less influence on the overall impression of the mark than the verbal element. It follows that the identity of the verbal element of the earlier mark and the contested word mark is of a particular importance. Since the differences between the signs are confined to non-distinctive or secondary elements and aspects they are not sufficient to enable the relevant public, even displaying a higher degree of attention, to safely distinguish between the signs in the context of identical goods.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public in relation to all the contested goods that were found identical. Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 3 050 985.
It follows from above that the contested mark must be rejected for all the contested goods.
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 applicant 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
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.