OPPOSITION No B 2 603 374

Dr. Campos Costa – Consultório de Tomografia Computorizada S.A., rua de Avis, No.39, 2º, 4050-075 Porto, Portugal (opponent), represented by J. Pereira da Cruz S.A., Rua Victor Cordon, 14, 1249-103 Lisboa, Portugal (professional representative)

a g a i n s t

Nexsys Electronics Inc, 667 Folsom Street, San Francisco, California 94017, United States of America (applicant), represented by Pons Patentes y Marcas Internacional S.L., Glorieta de Rubén Darío 4, 28010 Madrid, Spain (professional representative).

On 13/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 603 374 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the services of European Union trade mark application No 13 623 095 ‘MEDWEB’, namely against all the services in Class 44. The opposition is based on Portuguese trade mark registration No 420 853  registered for services in Class 44. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely Portuguese trade mark No 420 853.

The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The contested application was published on 10/08/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Portugal from 10/08/2010 to 09/08/2015 inclusive.

Furthermore, the evidence must show use of the trade mark for the services on which the opposition is based, namely the following:

Class 44:        Medical assistance; assistance (medical); health services.

According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 07/06/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 12/08/2016 to submit evidence of use of the earlier trade mark. Upon request made by the opponent, the above time limit was extended until 12/10/2016. On 12/10/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

•        Exhibit 1

This exhibit is a note entitled ‘Apresentação’. It is in Portuguese, concerns the history of Dr. Campos Costa Clinic and derives from an unknown source. A corresponding translation into English is attached thereto. According to this translation ‘with over 70 years of experience in the field of health, particularly Medical Imaging, Dr. Campos Costa guide their conduct through a continued search for medical excellence, provision of high-level services and constant adoption of modern technology, at the service of medicine’. In addition the note mentions that in 2008 ‘the new teleradiology service with the mark MedWeb’ was launched.

•        Exhibit 2

This exhibit is a document entitled ‘Table of examinations carried out between 2010 and 2015 under the trademark MEDWEB’. It is in Portuguese and derives from an unknown source.

•        Exhibit 3

This exhibit is a copy of the contract entitled ‘Contrato de prestação de serviços’. It is in Portuguese, is dated 01/01/2013 and concerns collaboration between ESCALA BRAGA Sociedade Gestora de Estebelecimento S.A. and Dr. CAMPOS COSTA Consultorio de Tomografia Computadorizada S.A. (i.e. the oponente) A corresponding translation into English is attached thereto. According to this translation ‘computer system of the Managing Entity of the Establishment in communication with the computer application of Dr. Campos Costa (MedWeb) for sending report and image requests, including the respective reports sent by MedWeb’.

•        Exhibit 4

This exhibit is a printout from the Internet (2 pages – source: www.google.pt). It concerns a search with regard to the phrase ‘medweb dr campos costa’. The search covers the period between 10/08/1010 and 10/08/2015. All the results are in Portuguese and refer to the following terms ‘medico radiodiagnostico’, ‘consultor de tomografia’, ‘check up’ and ‘exams’. No corresponding translation into English is attached.

•        Exhibit 5

This exhibit is a printout from the Internet (1 pages – source: www.josedemellosaude.pt). The document is entitled ‘Dr. Campos Costa celebra 70O aniversario’. It is in Portuguese and dated 26/05/2012. No corresponding translation into English is attached.

•        Exhibit 6

This exhibit is a printout from the Internet (1 page – source: www.drcamposcosta.pt). The document is entiteled ‘Dr. Campos Costa’. It is in Portuguese and dated 22/09/2016. A corresponding translation into English is attached thereto. It bears the date, namely 2013 (‘periodo de colaboracao 2013’). According to this translation ‘Dr. Campos Costa manage 14 imaging units disseminated in the north of the country … and a teleradiology unit, namely MedWeb’. The document states furthermore that it has been included in the Group José de Mello Saúde.

•        Exhibit 7

This exhibit is a printout from the Internet (1 page – source: www.josedemello.pt). The document is entitled ‘Noticias do Grupo’. It is in Portuguese and refers to 09/07/2013. A corresponding translation into English is attached thereto. According to this translation ‘José de Mello buys 100% of Campos Costa and focuses on Official Portuguese Speaking Countries’. The document states also that the Group José de Mello Saúde is interested in ‘internationalisation of this activity to the Official Portuguese Speaking Countries, The strategy is to provide services abroad through their affiliate MedWeb’.

•        Exhibit 8

This exhibit is a printout from the Internet (3 pages – source: www.first-global.com). The document is entitled ‘A First Solutions marcará presença em mais dois Eventos’. It is in Portuguese and dated 27/05/2009. A corresponding translation into English is attached thereto. According to this translation ‘within the scope of the celebrations of the 30th anniversary of the National Health System (SNS) and under the aegis of innovation and the future, this event hosts hospital directors, managers, doctors and other persons who are in charge of Portuguese health units’. The document states also that MedWeb will have ‘their technological platform on display at this event’.

Assessment of evidence

The evidence concerning proof of use may cover the following documents, for example: invoices, price lists, affidavits, catalogues, surveys, turnover and sales figures, press clips, samples of products / packaging, advertisements, offers made to potential clients and other documents confirming that the mark was used genuinely on the market. The opponent submitted only some of the aforesaid documents, such as printouts from the Internet, a copy of the contract and some notes. It should be highlighted that the final outcome depends on the overall assessment of the evidence in the particular case.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

Place of use

The note entitled ‘Apresentação’ (Exhibit 1), the contract (Exhibit 2), the Internet printouts (Exhibits 4, 5, 6, 7 and 8) show that the place of use is Portugal. This can be inferred from the language (Portuguese) used in these materials and references made to the territory of Portugal. In addition, some of these documents directly refer to various cities/regions in Portugal. Therefore, this part of the evidence relates to the relevant territory. However, the rest of the evidence does not pertain to any territory (Exhibit 2) or pertains to countries outside the European Union, for instance Brasil and Angola (Exhibit 7).

Time of use

All of the evidence relates to the relevant period. However, some of the documents bear no date of issue, for instance Exhibits 1 and 2. Furthermore, the source of these documents is unknown.

Extent of use

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The only documents that pertain to the commercial volume achieved under the mark in question are the note entitled ‘Apresentação’ (Exhibit 1), the document entitled ‘Table of examinations carried out between 2010 and 2015 under the trademark MEDWEB’ (Exhibit 2), the document entitled ‘Dr. Campos Costa’ (Exhibit 6).

However, in terms of commercial turnover, the aforesaid document entitled ‘Table of examinations carried out between 2010 and 2015 under the trademark MEDWEB’ is not sufficient, as it merely refers to the number of examinations undertaken by the opponent. This document generically refers to ‘examinations’ without any further information on the kind of examination. It means that it does not refer to the services rendered by the opponent or the trade mark used by the opponent. As these figures are not broken down to the services, the territory and the trade mark, the Opposition Division cannot find out how they relate to the relevant services, the relevant territory and the relevant trade mark. Apart from that, the aforesaid Exhibits were either produced by the opponent (Exhibit 6) or seem to be produced by the opponent (Exhibits 1 and 2).

From these documents it is impossible to calculate actual turnover figures.

The remainder of the documents submitted by the opponent do not give the turnover and the volume of sales of services under the earlier trade mark.

Therefore, the Opposition Division considers that the opponent has not provided sufficient indications concerning the extent of the use of the earlier marks.

Nature of use

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered. The opponent’s earlier trade mark is the figurative mark and should be used in that form, that is, .

 

The Opposition Division considers that the evidence does not show use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR.

What has been shown use for are either ‘Dr. Campos Costa’ or ‘MedWeb’, but not , the latter being how the earlier trade mark was registered. The figurative element is not a secondary and non-distinctive element and its omission alters the earlier trade mark (24/11/2005, T-135/04, Online Bus, EU:T:2005:419). It should be stressed that a difference in words or even single letters can constitute an alteration of the distinctive character of the mark. The earlier trade mark is strongly characterised by the presence of the above figurative element. Apart from that the evidence does not show the use of the ‘MedWeb Dr. Campos Costa’, neither. The pronunciation of the marks used by the opponent (separately ‘Dr. Campos Costa’ and ‘MedWeb’) is therefore different to the pronunciation of the mark in question , namely ‘MedWeb Dr. Campos Costa’. Therefore, the Office considers that the use of the opponent’s trade mark as it is used is not an acceptable and consequently use of the mark as registered is not shown.

Overall assessment

The Opposition Division concludes that the evidence furnished by the opponent is insufficient to prove that the earlier trade mark was genuinely used in the relevant territory during the relevant period of time. Most of the evidence comes from either an unknown source, the opponent itself or entities being in a commercial relationship with the opponent (i.e. Group José de Mello Saúde). Therefore, they have a little weight. As far as the probative value of this kind of evidence is concerned, documents drawn up by the interested parties themselves or their commercial partners are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter. Moreover, it is impossible to ascertain the commercial volume of the services rendered by the opponent, as no invoices, price lists or affidavits in this regard were submitted by the opponent. Last but not least the Opposition Division is of the opinion that the opponent did not provide any evidence proving that the trade mark in question was used as it was registered.

As is apparent from the judgment of the Court of First Instance (i.e. 12/12/2002, T-39/01, HIWATT, EU:T:2002:316) genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned.

Therefore, the opposition must be rejected pursuant to Article 42(2) and (3) EUTMR and Rule 22(2) EUTMIR.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Claudia ATTINÀ

Michal KRUK

Judit NÉMETH

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.