OPPOSITION DIVISION
OPPOSITION No B 2 439 035
McAirlaid's Vliesstoffe GmbH, Münsterstr. 61-65, 48565 Steinfurt, Germany
(opponent), represented by Bungartz Christophersen, Homberger Straße 5, 40474
Düsseldorf, Germany (professional representative)
a g a i n s t
CuraGlobe B.V., Kennemerstraatweg 588, 1851 NK Heiloo, Netherlands (applicant),
represented by Novagraaf Nederland B.V., Hoogoorddreef 5, 1101 BA Amsterdam,
Netherlands (professional representative).
On 12/01/2018, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 439 035 is partially upheld, namely for the following
contested goods and services:
Class 5: Pharmaceutical and sanitary preparations; Fabrics for dressings and
items for wound treatment including absorbent and implantable styptic agents
and preparations, including gelatine sponges.
Class 35: Retailing and wholesaling of pharmaceutical and sanitary
preparations, materials for dressings and articles for wound treatment including
absorbent and implantable styptic agents and preparations, including gelatine
sponges.
Class 42: Research services relating to the development and testing of
pharmaceuticals.
Class 44: Provision of pharmaceutical information.
2. European Union trade mark application No 13 134 879 is rejected for all the
above goods and services. It may proceed for the remaining services.
3. Each party bears its own costs.
Preliminary remark
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
Decision on Opposition No B 2 439 035 page: 2 of 10
REASONS
The opponent filed an opposition against all the goods and services of European
Union trade mark application No 13 134 879 for the word mark ‘CURAMEDICAL’.
The opposition is based on, inter alia, international trade mark registration
No 1 071 954, for the word mark ‘curea medical’, designating the European Union.
The opponent invoked Article 8(1)(a) and (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 opposition is based on more than one earlier trade mark. The Opposition
Division finds it appropriate to first examine the opposition in relation to the
opponent’s international trade mark registration No 1 071 954 designating the
European Union.
a) The goods and services
The goods on which the opposition is based are the following:
Class 5: Sanitary preparations for medical use; plasters, materials for dressings,
wound treatment preparations, including absorbent and implantable haemostatic
agents and preparations; skin care preparations for medical use; preparations for
removing plasters and materials for dressings and residues therefrom.
Class 10: Surgical and medical instruments; suture materials; draw-sheets for sick
beds; incontinence sheets; pads for absorbing bodily fluids.
Class 27: Floor mats.
The contested goods and services are the following:
Class 5: Pharmaceutical and sanitary preparations; Fabrics for dressings and items
for wound treatment including absorbent and implantable styptic agents and
preparations, including gelatine sponges.
Class 35: Retailing and wholesaling of pharmaceutical and sanitary preparations,
materials for dressings and articles for wound treatment including absorbent and
implantable styptic agents and preparations, including gelatine sponges; Business
mediation in the purchase and sale of pharmaceutical and sanitary preparations,
materials for dressings and articles for wound treatment including absorbent and
implantable styptic agents and preparations, including gelatine sponges.
Class 42: Research services relating to the development and testing of
pharmaceuticals.
Decision on Opposition No B 2 439 035 page: 3 of 10
Class 44: Provision of pharmaceutical information.
An interpretation of the wording of the list of goods and services is required to
determine the scope of protection of these goods.
The term ‘including’, used in the opponent’s and the applicant’s list of goods and
services, indicates that the specific goods and 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).
As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR,
goods or services are not regarded as being similar to or dissimilar from 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 sanitary preparations are identically contained in both lists of goods.
The contested pharmaceutical preparations include, as a broader category, the
opponent’s skin care preparations for medical use. Since the Opposition Division
cannot dissect ex officio the broad category of the contested goods, they are
considered identical to the opponent’s goods.
The contested fabrics for dressings are included in the broad category of the
opponent’s materials for dressings. Therefore, they are identical.
The contested items for wound treatment including absorbent and implantable styptic
agents and preparations, including gelatine sponges include, as a broader category,
the opponent’s wound treatment preparations, including absorbent and implantable
haemostatic agents and preparations. Since the Opposition Division cannot dissect
ex officio the broad category of the contested goods, they are considered identical to
the opponent’s goods.
Contested services in Class 35
Retail services concerning the sale of particular goods are similar to a low degree to
those particular goods. Although the nature, purpose and method of use of these
goods and services are not the same, they have some similarities, as they are
complementary and the services are generally offered in the same places where the
goods are offered for sale. Furthermore, they target the same public. The same
principle applies to services rendered in connection with other types of services that
consist exclusively of activities revolving around the actual sale of goods, such as
wholesale services.
Therefore, the contested retailing and wholesaling of pharmaceutical and sanitary
preparations, materials for dressings and articles for wound treatment including
absorbent and implantable styptic agents and preparations, including gelatine
sponges are similar to a low degree to the opponent’s skin care preparations for
Decision on Opposition No B 2 439 035 page: 4 of 10
medical use; sanitary preparations for medical use; materials for dressings, wound
treatment preparations, including absorbent and implantable haemostatic agents and
preparations in Class 5, respectively.
However, the contested business mediation in the purchase and sale of
pharmaceutical and sanitary preparations, materials for dressings and articles for
wound treatment including absorbent and implantable styptic agents and
preparations, including gelatine sponges involves acting as an intermediary in order
to carry out business. It refers to activities that accompany the goods on their way
from the actual manufacturer to the final consumer and so they are, in general, part
of the activities carried out in commercial trading. These contested services have
nothing relevant in common, under the abovementioned criteria, with the opponent’s
goods in Classes 5, 10 and 27. Apart from being different in nature, as goods are
tangible and services are intangible, they have completely different purposes, usual
origins, distribution channels and end users, and are neither complementary nor in
competition. Therefore, these goods and services are clearly dissimilar.
Contested services in Class 42
The contested research services relating to the development and testing of
pharmaceuticals are similar to a low degree to the opponent’s skin care preparations
for medical use in Class 5, since they are complementary. Furthermore, they can
originate from the same undertaking.
Contested services in Class 44
The contested provision of pharmaceutical information is similar to a low degree to
the opponent’s skin care preparations for medical use in Class 5. These goods and
services may target the same end users and be offered through the same distribution
channels. Furthermore, they are complementary.
b) 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 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 specialised
nature of the goods and services, the frequency of purchase and their price.
It is apparent from the case-law that, insofar as pharmaceutical preparations,
whether or not issued on prescription, are concerned, the relevant public’s degree of
attention is relatively high (15/12/2010, T-331/09, Tolposan, EU:T:2010:520, § 26;
15/03/2012, T-288/08, Zydus, EU:T:2012:124, § 36 and cited case-law).
In particular, medical professionals have a high degree of attentiveness when
prescribing medicines. Non-professionals also have a higher degree of attention,
regardless of whether the pharmaceuticals are sold without prescription, as these
goods affect their state of health.
Decision on Opposition No B 2 439 035 page: 5 of 10
c) The signs
curea medical CURAMEDICAL
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). This applies by analogy to international registrations
designating the European Union. Therefore, a likelihood of confusion for only part of
the relevant public of the European Union is sufficient to reject the contested
application.
The contested sign as a whole is meaningless. However, the Court has held that,
although the average consumer normally perceives a mark as a whole and does not
proceed to analyse its various details, the fact remains that, when perceiving a word
sign, they will break it down into elements which, for them, suggest a specific
meaning or which resemble words they know (13/02/2007, T-256/04, Respicur,
EU:T:2007:46, § 57). In the present case, the relevant public will undoubtedly grasp
the component ‘MEDICAL’ because it is a basic English word and given the similarity
with the equivalent words in most of the EU languages, such as ‘médico’ in
Portuguese and Spanish, ‘médical’ in French, ‘medico’ in Italian, ‘medisch’ in Dutch,
‘medizinische’ in German and ‘medicinski’ in Slovenian and Croatian.
The component ‘cura’ included at the beginning of the contested sign is meaningful in
certain territories, for example, in those countries with Latin-based languages, such
as Spanish, Portuguese and Italian. Consequently, the Opposition Division finds it
appropriate to focus the comparison of the signs on that part of the public that will
perceive the word ‘cura’ as meaningless, such as the Polish-speaking public.
Both signs are word marks. In the case of word marks, it is the word as such that is
protected and not its written form. Therefore, it is irrelevant whether they are
presented in upper or lower case letters, or in a combination thereof. Being word
marks, neither of the marks has any elements that could be considered clearly more
dominant than other elements.
The element ‘medical’ present in both signs will be associated with ‘medicine’, as the
equivalent words in Polish are close, ‘medyk’ or ‘medyzczny’. Therefore, it is
expected to be generally understood in an unambiguous manner by the relevant
public. Bearing in mind that the relevant goods and services relate to
pharmaceuticals, sanitary preparations, materials for dressings and items for wound
treatment, it is considered that this element is weak.
Decision on Opposition No B 2 439 035 page: 6 of 10
The elements ‘curea’ of the earlier mark and ‘cura’ of the contested sign are
meaningless for the relevant public and will be perceived as fantasy words.
Therefore, they are 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. Therefore, the differences at the beginnings of the signs play an important
role and a reduced weighting is given to the similarities which are in a secondary
position.
Visually, the signs coincide in their second word, ‘medical’, which is weak, and in the
sequence of letters ‘cur*a’ of their respective first elements, ‘curea’ in the earlier mark
and ‘cura’ in the contested sign, which are distinctive. However, the signs differ in the
additional letter ‘e’ placed in the fourth position of the first element in the earlier mark.
Although the contested sign is presented in one word, whereas the earlier mark in
two, they have almost identical lengths, namely 12 letters versus 11, placed in the
same order.
Therefore, the signs are visually highly similar.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‘cur*a’,
present identically in their first elements, and in the three syllables that form the
second element that they have in common, /me/di/cal/. The pronunciation differs in
the sound of the additional letter ‘e’ in the first element of the earlier mark, which has
no counterpart in the contested sign.
Although the presence of the additional letter ‘e’ in the word ‘curea’ gives this element
of the earlier mark a different rhythm and intonation from the word ‘cura’ of the
contested sign, the fact remains that the signs coincide in the sound of 11 letters and
only differ in one. Therefore, overall, the signs are aurally highly similar.
Conceptually, although the signs as a whole do not have any meaning for the public
in the relevant territory, the element ‘medical’, included in both signs, will be
associated with the meaning explained above. Since this coinciding element is weak,
whereas the words ‘curea’ of the earlier mark and ‘cura’ of the contested sign are
meaningless and distinctive, the signs are conceptually similar to a low degree.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) 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
Decision on Opposition No B 2 439 035 page: 7 of 10
normal, despite the presence of a weak element in the mark, as stated above in
section c) of this decision.
e) Global assessment, other arguments and conclusion
According to the case-law of the Court of Justice, in determining the existence of
likelihood of confusion, trade marks have to be compared by making an overall
assessment of the visual, aural and conceptual similarities between the marks. The
comparison ‘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, § 22). Likelihood of confusion must be assessed globally,
taking into account all the circumstances of the case.
Likelihood of confusion implies some interdependence between the relevant factors,
and, in particular, similarity between the trade marks and between the goods or
services. Accordingly, a lesser degree of similarity between the goods or 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).
The contested goods and services are partly identical, partly similar to a low degree
and partly dissimilar to the opponent’s goods. The degree of attention of the relevant
public varies from average to high and the earlier mark enjoys a normal
distinctiveness.
The signs are visually and aurally highly similar on account of the letters that they
have in common, ‘cur*a medical’. Although the additional letter ‘e’ present in the first
element, ‘curea’, of the earlier mark will not go unnoticed by the relevant public, it is
likely to have a limited impact for the public. 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). Indeed, the differing letter placed in the
fourth position of a fancy word, ‘curea’, is likely to be confused with the similar and
meaningless word ‘cura’. Furthermore, the signs have identical beginnings, the same
word structure (regardless of a blank space between the two words) and almost
identical lengths, and their second element is identical. The signs are conceptually
similar to a low degree, as explained above.
The applicant refers to some previous decisions of the Office to support its
arguments. However, the Office is not bound by its previous decisions, as each case
has to be dealt with separately and with regard to its particularities.
This practice has been fully supported by the General Court, which stated that,
according to settled case-law, the legality of decisions is to be assessed purely with
reference to the EUTMR, and not to the Office’s practice in earlier decisions
(30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).
While the Office does have a duty to exercise its powers in accordance with the
general principles of European Union law, such as the principle of equal treatment
and the principle of sound administration, the way in which these principles are
applied must be consistent with respect to legality. It must also be emphasised that
each case must be examined on its own individual merits. The outcome of any
Decision on Opposition No B 2 439 035 page: 8 of 10
particular case will depend on specific criteria applicable to the facts of that particular
case, including, for example, the parties’ assertions, arguments and submissions.
Finally, a party in proceedings before the Office may not rely on, or use to its own
advantage, a possible unlawful act committed for the benefit of some third party in
order to secure an identical decision.
In particular, the applicant refers to the decisions by the Boards of Appeal
(R 533/2015-5 and R 664/2015-5, both dated 23/05/2016) in the conflicts between,
inter alia, the earlier word mark ‘CURAMEDICAL’, in the name of CuraMedical B.V.,
and the applied for trade marks ‘curea medical’ and ,
respectively, in the name of McAirlaid’s Vliesstoffe GmbH. The Boards of Appeal
found, in both cases, that the signs only share a non-distinctive element, the word
‘medical’, and the visual, aural and conceptual differences occur in the first part of the
marks, namely the elements ‘cura’ (with a very weak level of distinctiveness) and
‘curea’, then concluding that no likelihood of confusion will arise. However, differently
from the present case, in those previous cases the relevant territory was Italy and
Germany (in case R 533/2015-5) and Germany (in case R 664/2015-5), and so only
the perception of the public in those countries was relevant.
In view of the above, it follows that, even if the previous decisions submitted to the
Opposition Division are to some extent factually similar to the present case, the
outcome may not be the same, for the reasons already explained.
The applicant also refers to previous national decisions issued by the German Patent
and Trade Mark Office to support its arguments. However, it must be noted that
decisions of national courts and national offices regarding conflicts between identical
or similar trade marks on the national level do not have a binding effect on the Office
since the European Union trade mark regime is an autonomous system which
applies independently of any national system (13/09/2010, T-292/08, Often,
EU:T:2010:399).
Even though previous national decisions are not binding, their reasoning and
outcome should be duly considered, particularly when the decision has been taken in
the Member State that is relevant to the proceedings.
In the present case, the previous cases referred to by the applicant are not relevant
to the present proceedings since, unlike the present case, it was the German
relevant public under examination. Therefore, the circumstances therein cannot be
extrapolated to the present case when the perception of another part of the relevant
public is considered.
Considering all the above, the Opposition Division finds that there is a likelihood of
confusion on the part of the Polish-speaking part of the public and therefore the
opposition is partly well-founded on the basis of the opponent’s international trade
mark registration No 1 071 954 designating the European Union. 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.
Decision on Opposition No B 2 439 035 page: 9 of 10
The rest of the contested 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 services cannot be successful.
The opponent has also based its opposition on the following earlier trade marks:
German trade mark registration No 30 2010 049 687 for the figurative mark
, in Classes 5, 10 and 27;
German trade mark registration No 30 2010 050 187 for the word mark ‘curea
medical’, in Classes 5, 10 and 27;
International trade mark registration No 1 076 267 designating the European
Union, for the figurative mark , in Classes 5, 10 and 27.
Since the second mark listed above is identical to the one that has been compared
and cover the same scope of goods, the outcome cannot be different with respect to
the dissimilar services for which the opposition has already been rejected. Therefore,
no likelihood of confusion exists with respect to those goods and services.
The other two earlier rights invoked by the opponent are less similar to the contested
mark. This is because they contain further figurative elements and additional words
such as the expression ‘Innovation with Care’, which are not present in the contested
trade mark. Moreover, they cover the same scope of the goods. Therefore, the
outcome cannot be different with respect to the dissimilar services for which the
opposition has already been rejected; no likelihood of confusion exists with respect to
those goods and services.
For the sake of completeness, it must be mentioned that the opposition must also fail
insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the
remaining services because the signs and the goods and services are obviously not
identical.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party. According to Article 109(3)
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 for only some 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.
Decision on Opposition No B 2 439 035 page: 10 of 10
The Opposition Division
Richard BIANCHI Marta GARCÍA COLLADO Saida CRABBE
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been filed only when the appeal fee of EUR 720 has been paid.