OPPOSITION No B 2 676 578

Sensorion, 375 rue du Professeur Blaynac, 34080 Montpellier, France (opponent), represented by Inlex IP Expertise, Rambla de Mendez Núñez 21-23 / 5ºAB, 03002 Alicante, Spain (professional representative)

a g a i n s t

Sensorio Medical Products GmbH, Warchalowskigasse 5, 2700 Wiener Neustadt, Austria (applicant) represented by Allinger Ludwiger Rechtsanwälte, Herrengasse 25, 2700 Wiener Neustadt, Austria (professional representative).

On 05/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 676 578 is partially upheld, namely for the following contested goods and services:

Class 05:        Medical and veterinary preparations and articles; hygienic preparations and articles.

Class 10:        Medical and veterinary apparatus and instruments.

Class 44:        Human healthcare services; human hygiene and beauty care.

2.        European Union trade mark application No 14 878 102 is rejected for all the above goods and services. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 878 102, namely against all the goods and services in Classes 05, 10 and 44. The opposition is based on European Union trade mark registration No 11 170 701. 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.

1. The goods and services

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

Class 01:        Chemicals for use in science, bases (chemical preparations), chemical products for use in the manufacture of pharmaceutical preparations.

Class 05:        Pharmaceutical and veterinary preparations for the treatment and/or prevention of diseases of the ears, capsules for pharmaceutical purposes; medicines for human or veterinary purposes; chemical and biological preparations for medical and pharmaceutical purposes, micro-organism cultures for medical use; capsules for medicines.

Class 42:        Clinical and academic research in the fields of science, biology, medicine and technology provided by engineers and scientists, chemical analysis, clinical research; design of computer systems, the aforesaid services being provided in the field of medical research relating to vestibular disorders.

The contested goods and services are the following:

Class 05:        Medical and veterinary preparations and articles; hygienic preparations and articles.

Class 10:        Hearing protection devices; physical therapy equipment; feeding aids and pacifiers; medical clothing; medical furniture and bedding, equipment for moving patients; medical and veterinary apparatus and instruments; orthopaedic and mobility aids; prosthetics and artificial implants; sex aids.

Class 44:        Human healthcare services; human hygiene and beauty care.

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 5

Veterinary preparations are identically contained in both lists of goods.

The contested medical preparations and articles and veterinary articles include, as a broader category the opponent’s pharmaceutical and veterinary preparations for the treatment and/or prevention of diseases of the ears. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods they are considered identical to the opponent’s goods.

Hygienic preparations and articles in Class 5 include disinfectants, antiseptics, bandages and other items aimed at cleanliness and hygiene. The contested hygienic preparations and articles overlap with the opponent’s chemical and biological preparations for medical and pharmaceutical purposes. Such chemical preparations would include disinfectants, which are chemical liquids that destroy bacteria. Therefore, they are identical.

Contested goods in Class 10

The contested hearing protection devices; physical therapy equipment; feeding aids and pacifiers; medical clothing; medical furniture and bedding, equipment for moving patients; orthopaedic and mobility aids; prosthetics and artificial implants; sex aids are dissimilar to all the opponent’s goods. The nature and purpose of the goods are not the same. They are neither complementary nor are they in competition. The method of use differs and the usual origin does not normally coincide.

The contested medical and veterinary apparatus and instruments are similar to a low degree to pharmaceutical and veterinary preparations for the treatment and/or prevention of diseases of the ears. They may be complementary goods for which the distribution channels and relevant public may coincide.

Contested services in Class 44

The contested human healthcare services; human hygiene and beauty care are similar to a low degree to the opponent’s clinical research in the fields of science, biology, medicine and technology provided by engineers and scientists. Such clinical research would include research carried out for both medical and cosmetic products. These services are complementary and may come from the same provider.

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 a low degree are specialised goods and services directed both at the general public and at professional customers with specific professional knowledge or expertise

The degree of attention is considered to vary from average to high. It will be high when the goods and services at issue affect the state of health of the consumer, or the patient if prescribed by a doctor.

3. The signs

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 element ‘so!’ is meaningful in certain territories, for example, in those countries where English and German is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public to avoid going into different possible meanings in different languages.

The earlier mark is a figurative mark with the word element ‘Sensorion’ in a blue fairly basic typeface, preceded by a dark grey figurative element made up of curving lines. ‘Sensorion’ has no meaning and so is distinctive for the goods and services at issue. The figurative element is decorative and not particularly distinctive.

The contested sign is made up of the word elements ‘so! sensorio’. The word ‘so’ has many meanings in English and its exact meaning is derived depending on its position within a phrase. It can mean ‘very’; it can mean ‘thus’; it can mean ‘then’, it can mean ‘therefore’. In the present case together with the exclamation mark ‘so!’ it is hard to say how exactly it will be perceived by the relevant consumer. It unusual to see ‘so’ followed by an exclamation mark. Some may see it as a laudatory introduction to the word ‘sensorio’, in which case it would be weak, while others will not attach any meaning at all, in which case it would be distinctive. ‘Sensorio’ has no meaning for the English-speaker and so is distinctive. ‘so!’ is clearly the dominant element and is significantly bigger than ‘sensorio’ which is placed underneath and aligned towards the right.

The Opposition Division finds it appropriate to first proceed on the basis that the element ‘so!’ has no meaning and so is distinctive.

Visually, the signs coincide in ‘sensorio’, a distinctive element of the contested sign that is contained entirely in the earlier mark’s verbal element. It differs in the ‘n’ at the end of ‘Sensorion’ and in the dominant and distinctive element ‘so!’ at the beginning of the contested sign. It differs also in the structure, in the colours, and in the figurative element of the earlier sign that has no counterpart in the contested mark.

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).

Therefore, the signs are visually similar to a below average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛SEN-SO-RIO’. The pronunciation differs in the sound of the letter ‛N’ at the end of the earlier sign and in the sound of ‘so!’ at the start of the contested sign which has no counterpart in the earlier mark. The rhythm and intonation of the signs are somewhat different. The differing component is distinctive.

Therefore, the signs are aurally similar to an above average degree.

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

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 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 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, despite the presence of a weak element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

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.

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 (eighth recital of the CTMR). 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).

In the present case, the goods and services have been found to be identical, similar to a low degree and dissimilar. The signs are visually similar to a below average degree and aurally similar to an above average degree. The attention of the relevant consumer varies from average to high and the earlier mark has a normal level of distinctive character.

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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54).

Despite the dominance of the distinctive element ‘so!, which may well first grab the consumer’s attention, the smaller verbal element of the contested sign ‘sensorio’ will not go unnoticed. It cannot be denied that this distinctive element is entirely contained in and almost identical to the earlier mark. Only the letter ‘n’, at the end of the word ‘Sensorion’ where it has less impact, serves to distinguish them.

Given the above, a likelihood of confusion cannot be ruled out on the part of the relevant public who do not attach any meaning to the word ‘so!’ This can be said even for those with a high degree of attention and for the goods and services with a low degree of similarity.

It follows that for those that do attach a meaning to ‘so!’ and see it, for example, as a laudatory introduction to ‘sensorio’ and therefore weak, the likelihood of confusion is even more probable. This is because the differentiating verbal element would have less weight and less capacity to distinguish between the signs.

Given the similarity between the words ‘sensorio’ and ‘Sensorion’ and the imperfect recollection of the consumer, 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 or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-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 a low degree to those of the earlier trade mark.

The rest of the contested goods 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 cannot be successful.

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

Lars HELBERT

Lynn BURTCHAELL

Martin EBERL

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.