OPPOSITION No B 2 682 261

PokitDok, Inc., 28 East 3rd Ave., #300, San Mateo, California 94401, United States of America (opponent), represented by DLA Piper France LLP, IP & T department, 27 rue Laffitte, 75009 Paris, France (professional representative)

a g a i n s t

Pokdok Oy, Sinebrychoffinkatu 11, 00120 Helsinki, Finland (applicant).

On 12/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 682 261 is partially upheld, namely for the following contested goods and services:

Class 9: Computer software; Application software; Computer software applications, downloadable; computer software for use on mobile phones and devices; interactive computer software; Computer software to enable searching of data; computer application software for mobile phones, portable media players and handheld computers; software application for searching health care services; mobile application for searching health care services.

Class 42: Scientific and technological services and research and design relating thereto; Industrial analysis and research services; Design and development of computer hardware and software; research and design in the field of downloadable mobile application; providing a software application for searching, comparing and booking health care services; providing a software application for searching health care services by location.

2.        European Union trade mark application No 14 758 478 is rejected for all the above goods and services It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 758 478. The opposition is based on European Union trade mark registration No 15 079 064. The opponent invoked Article 8(1)(b) and 8(5) 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.

1. The goods and services

The goods and services on which the opposition is based are the following:

Class 9: Computer application software for mobile devices, namely, software for connecting consumers with healthcare providers, seeking and obtaining healthcare cost information, scheduling appointments with healthcare providers, and paying for healthcare provider services.

Class 35: Providing an online marketplace for connecting consumers with healthcare providers and insurance providers and providing healthcare cost information; promoting the goods and services of others by providing a website featuring information about healthcare providers and healthcare costs.

Class 36: Providing healthcare financing information to consumers; providing health insurance information to consumers, healthcare providers, and healthcare insurance providers including eligibility, claims status, deductibles, coverage levels and co-pay amount, benefit enrollment submission, and changes to covered member's plan.

Class 42: Providing an interactive website featuring temporary use of nondownloadable software allowing website users to research and compare healthcare procedures, providers, and costs; application service provider featuring application programming interface (API) for health-care providers to build profiles, respond to quote requests, provide a menu of services and check insurance information.

The contested goods and services are the following:

Class 9: Computer software; Application software; Computer software applications, downloadable; computer software for use on mobile phones and devices; interactive computer software; Computer software to enable searching of data; interactive entertainment software for use with personal computers and mobile devices; computer application software for mobile phones, portable media players and handheld computers; software application for searching health care services; mobile application for searching health care services.

Class 42: Scientific and technological services and research and design relating thereto; Industrial analysis and research services; Design and development of computer hardware and software; research and design in the field of downloadable mobile application; providing a software application for searching, comparing and booking health care services; providing a software application for searching health care services by location.

Class 44: Medical services; Healthcare services; Pharmaceutical services; Veterinary services; Providing information related to healthcare while travelling; Consultancy and information services relating to medical and pharmaceutical services; Health advice and information services; medical information services.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘including’, used in the opponent’s list of services in Class 36, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in the opponent’s list of goods in Class 9 to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

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.

Contested goods in Class 9

The contested computer software; application software; computer software applications, downloadable; computer software for use on mobile phones and devices; interactive computer software; computer software to enable searching of data; computer application software for mobile phones, portable media players and handheld computers; software application for searching health care services; mobile application for searching health care services include, as broader categories, or overlap with, the opponent’s computer application software for mobile devices, namely, software for connecting consumers with healthcare providers, seeking and obtaining healthcare cost information, scheduling appointments with healthcare providers, and paying for healthcare provider services. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

There are many types of software, and although software by nature (a set of instructions that enables a computer to perform a task) is the same, this does not mean that their specific purpose is the same. In the present case, the field of application of the contested interactive entertainment software for use with personal computers and mobile devices is not the same as the opponent’s computer application software for mobile devices, namely, software for connecting consumers with healthcare providers, seeking and obtaining healthcare cost information, scheduling appointments with healthcare providers, and paying for healthcare provider services. Due to these significantly different fields of application, the expertise needed to develop these types of software is not the same, nor are their end users or distribution channels. These goods are therefore dissimilar. The goods are also dissimilar to all the opponent’s services in Classes 35, 36 and 42. They belong to different areas of activity, have a different nature and purpose. The usual commercial origin, distribution channels and end users are different. Furthermore, they are neither complementary nor in competition.

Contested services in Class 42

Computer software is the programs that can be used with a particular computer system. Application software, also known as ‘an app’, is computer software that is designed to help the user perform various tasks on smartphones, tablets and computers. A website is a set of data and information about a particular subject which is available on the Internet. In this regard, the contested design and development of computer software; providing a software application for searching, comparing and booking health care services; providing a software application for searching health care services by location is highly similar to the opponent’s providing an interactive website featuring temporary use of nondownloadable software allowing website users to research and compare healthcare procedures, providers, and costs as they coincide in providers, end users and distribution channels. Furthermore, they have the same purpose and may be in competition.

The contested scientific and technological services and research and design relating thereto; industrial analysis and research services are services provided in relation to the theoretical and practical aspects of complex fields of activities. These services are provided by members of professions such as physicists, engineers, computer programmers, etc. The opponent’s providing an interactive website featuring temporary use of nondownloadable software allowing website users to research and compare healthcare procedures, providers, and costs are IT services provided by computer engineers and IT experts. These services are similar as they have the same nature. Furthermore, they can coincide in producer and end user.

The contested research and design in the field of downloadable mobile application and the opponent’s computer application software for mobile devices, namely, software for connecting consumers with healthcare providers, seeking and obtaining healthcare cost information, scheduling appointments with healthcare providers, and paying for healthcare provider services in Class 9 are at least similar. These services may have the same purpose, target the same public and can be expected to be provided by the same technology companies.

The contested design and development of computer hardware are similar to the opponent’s computer application software for mobile devices, namely, software for connecting consumers with healthcare providers, seeking and obtaining healthcare cost information, scheduling appointments with healthcare providers, and paying for healthcare provider services in Class 9, as these goods and services can coincide in producer/provider, end user and distribution channels. Furthermore, they are complementary.

Contested services in Class 44

Although the contested medical services; healthcare services; pharmaceutical services; veterinary services; providing information related to healthcare while travelling; consultancy and information services relating to medical and pharmaceutical services; health advice and information services; medical information services and the opponent’s computer application software for mobile devices, namely, software for connecting consumers with healthcare providers, seeking and obtaining healthcare cost information, scheduling appointments with healthcare providers, and paying for healthcare provider services in Class 9 refer to the same subject matter of health and/or medicine, the opponent’s software and the contested medical and healthcare services are not provided by the same undertakings. The goods and services have a different nature, purpose and method of use. They are not in competition with each other or complementary to each other. Therefore, all the contested services are dissimilar to the opponent’s goods.

For the sake of completeness, these contested services are also dissimilar to the remaining opponent’s services in Classes 35, 36 and 42, because they do not coincide in nature, purpose or method of use. Furthermore, they target different end users and are provided by different undertakings through different distribution channels. Moreover, they are not complementary or in competition. The opponent claims that in the previous decision B 2 419 839 of the Opposition Division the services for the provision of medical care information were found to be included and, therefore, identical to the healthcare services. However, in the claimed case the services pertained to the same class 44, whereas in the present case, even if related to healthcare, the opponent’s information services correspond to different sectors and classes like commercial promotion in Class 35 or healthcare financing or healthcare insurance in Class 36. Therefore, the opponent’s claim must be dismissed.

2. 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 and services found to be identical or similar to varying degrees are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high depending on the specialisation and technical features of the goods and services.

3. The signs

POKITDOK	POKDOK
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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The signs are not meaningful in certain territories, for example, in those countries where English is not understood. Indeed, English speakers may well perceive the earlier mark has a play on words (pocket and doctor) which would have an impact on distinctiveness and as such the degree of similarity. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public.

The signs have no meaning for the relevant public and are, therefore, distinctive.

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.

Visually, the signs coincide in the sequence of letters ‘POK**DOK’. The signs differ in the two additional letters placed in the fourth and fifth positions of the earlier mark, namely the letters ‘IT’. Consequently, the first and last parts of the earlier mark coincide with the contested sign which is fully contained therein, while the only different letters fall in the middle of the earlier mark, where they can be overlooked by the consumer.

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘pok**dok’, present identically in both signs. The pronunciation differs in the sound of the letters ‛it’ of the earlier sign which have no counterparts in the contested mark. Even if the signs have a different number of syllables, in total they have six phonemes in common out of eight in the earlier mark, particularly coinciding in the striking sound of the repeated letter ‘k’.

Therefore, the signs are aurally highly similar.

Conceptually, since neither of the signs has a meaning for the public in the relevant territory, a conceptual comparison is not possible and, therefore, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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 has no meaning for any of the goods and services 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 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).

It has been established in the previous sections of this decision that the contested goods and services are considered partly identical, partly similar to varying degrees and partly dissimilar to the opponent’s goods and services. They target both the public at large and professionals, with a degree of attention that will vary from average to high and the earlier mark has a normal degree of distinctiveness.

It has also been concluded that the signs are visually and aurally highly similar, whereas the conceptual aspect does not influence the assessment of the similarity of the signs.

Additionally, account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Furthermore, it should also be born in mind that 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. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub brand, a variation of the earlier mark, configured in a different way according to the type of goods and services which it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Therefore, the Opposition Division considers that the difference between the signs found in the two additional middle letters of the earlier mark is not sufficient to counterbalance the overall degree of similarity between them. Therefore, the relevant public, even with a higher than average level of attention, may believe that the identical or similar goods and services come from the same undertaking or, at least, economically-linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration. 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 trade mark must be rejected for the goods and services found to be identical or similar to varying degrees to those of the earlier trade mark.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods and services cannot be successful.

The examination with proceed as regards these goods and services in connection with the remaining ground claimed by the opponent, namely Article 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

In the present case the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.

On 18/04/2016 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 23/08/2016.

The opponent did not submit any evidence concerning the reputation of the trade mark on which the opposition is based.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as this ground and the remaining dissimilar goods and services are concerned.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Marta GARCÍA COLLADO

Alexandra APOSTOLAKIS

Vanessa PAGE

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.