OPPOSITION No B 2 673 187

Dieter Kropfreiter, Steglandweg 5, 5400 Hallein, Austria (opponent)

a g a i n s t

CPC Life Regeneration Lab, Rosenbergstrasse 6, 9020 Klagenfurt am Worthersee, Austria (applicant), represented by Alessandra Cantori, Via Mateotti 5, 44042 Cento, Italy.

On 28/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 673 187 is upheld for all the contested goods.

2.        European Union trade mark application No 15 168 065 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 350.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 168 065. The opposition is based on European Union trade mark registration No 12 057 261. The opponent invoked Article 8(1)(a) and (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

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

Class 9: Computer software for biofeedback applications and physiological measurements for medical technology.

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 5: Plasters, materials for dressings.

Class 10: Medical implants.

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

The contested plasters, materials for dressings are similar to a low degree to the opponent’s medical apparatus and instruments in Class 10. Despite the difference in their natures, both the contested and the opponent’s goods are closely related to the medical field, they can be distributed through the same distribution channels and they target the same relevant public. Furthermore, they are complementary.

Contested goods in Class 10

The opponent’s medical apparatus and instruments cover a broad range of therapeutic items used in the treatment of diseases, physical conditions or injuries in humans. The contested medical implants are included in the broader category of the opponent’s medical apparatus and instruments. Therefore, they are identical.

2. The signs

Biolife	BioLife
Earlier trade mark	Contested sign

Since both signs are word marks, the differences in the use of lower or upper case letters are immaterial to the finding of identity. The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43).

Consequently, the marks are identical.

3. Global assessment, other arguments and conclusion

The signs were found to be identical and part of the contested goods, namely the contested medical implants are identical. Therefore, the opposition must be upheld under Article 8(1)(a) EUTMR in respect of these goods. Furthermore, the contested plasters, materials for dressings were found to be similar to a low degree to the goods covered by the earlier trade mark.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

Bearing in mind the above principle and considering the identity between the signs, the opposition is successful, as the identity between the marks is sufficient to create a likelihood of confusion on the part of the consumers regarding the commercial origin of the relevant goods, even those found to be similar to a low degree.

Therefore, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition must also be upheld in respect of these goods.

The applicant argues in its observation that the trade mark ‘Biolife’ has a low degree of distinctive character. The opponent, in turn, claims that his trade mark is reputed. At any rate, even if the opponent had proved the reputation of his trade mark, and even if the combination of the word ‘Bio’ and ‘life’ were considered evocative of some characteristic of the goods at issue and, therefore, to have a low degree of distinctiveness in relation to these goods, this could not prevent the finding that there is a likelihood of confusion, as the signs are identical and the goods are identical or similar to a low degree.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 12 057 261. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(a) and (b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

COSTS

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. In the present case the opponent did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

María Belén IBARRA DE DIEGO

Angela DI BLASIO

Gailė SAKALAITĖ

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 will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.