OPPOSITION No B 2 769 050

SLZ- Société de Laboratories de Zurich, In der Looren 60, 8053 Zurich, Switzerland (opponent), represented by Estudio Juridico Ejaso SL, Goya 15, 1º Planta, 28001 Madrid, Spain (professional representative)

a g a i n s t

Nila Medica, Via Corfù 54, 25124 Brescia, Italy (applicant), represented by Leonardo Dinnella,  Viale XXI Aprile 38 b, 00162 Roma, Italy (professional representative).

On 19/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 769 050 is upheld for all the contested services, namely: 

Class 44        Medical services; Provision of medical services; Advisory services relating to medical services; Medical examinations; Human healthcare services; Medical treatment services; Medical health assessment services; Medical services, namely, in vitro fertilization; Advisory services relating to medical problems; Medical and healthcare services; Medical screening; Stem cell storage.

        

2.        European Union trade mark application No 15 542 913 is rejected for all the contested services. It may proceed for the remaining goods.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 542 913, namely against all the services in Class 44. The opposition is based on European Union trade mark registration No 12 211 603. 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 services

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

Class 44        Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services; farming equipment rental; medical equipment rental; rental of sanitation facilities; pet grooming; aromatherapy services; flower arranging; pharmacy advice; health counseling; medical assistance; veterinary assistance; blood bank services; public baths for hygiene purposes; turkish baths; rest homes; health centers; tree surgery; plastic surgery; medical clinic services; wreath making; animal breeding; animal grooming; landscape design; vermin exterminating for agriculture, horticulture and forestry; weed killing; nursing, medical; pharmacists' services to make up prescriptions; in vitro fertilization services; physiotherapy; horticulture; hospices; hospitals; hair implantation; artificial insemination services; gardening; landscape gardening; manicuring; lawn care; massage; dentistry; midwife services; hairdressing salons; tree planting for carbon offsetting purposes; services of a psychologist; aerial and surface spreading of fertilizers and other agricultural chemicals; chiropractics; rehabilitation for substance abuse patients; nursing homes; beauty salons; health care; sanatoriums; sauna services; aquaculture services; alternative medicine services; opticians' services; speech therapy services; solarium services; health spa services; tattooing; telemedicine services; therapy services; visagists' services; plant nurseries.

The contested services are the following:

Class 44        Medical services; provision of medical services; advisory services relating to medical services; medical examinations; human healthcare services; medical treatment services; medical health assessment services; medical services, namely, in vitro fertilization; advisory services relating to medical problems; medical and healthcare services; medical screening; stem cell storage.

It can be noted that the opposition period expired on 22/09/2016, and after this time limit the extent of the opposition cannot be expanded. Therefore, even though the opponent has listed all the goods and services of the contested sign in its observations submitted on 30/01/2017, the goods in Class 5 of the contested application will not be taken into account and the Opposition Division will proceed with the contested services in Class 44 as filed in the notice of opposition.

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

The term ‘namely’, used in the applicant’s list of services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed service.

Therefore, the contested medical services, namely, in vitro fertilization and the opponent’s in vitro fertilization services refer to the same service and they are identical.

Medical services (listed twice in the contested list of services) are identically contained in both lists of services.

The contested provision of medical services and the opponent’s medical services refer to identical services.

The contested advisory services relating to medical services; medical examinations; medical treatment services; medical health assessment services; advisory services relating to medical problems; medical screening; stem cell storage are included in the broader category of the opponent’s medical services. Therefore, they are identical.

The contested human healthcare services; healthcare services include, as broader categories, or overlap with, the opponent’s medical services. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

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 services found to be identical are directed at the public at large and at business consumers with specific professional knowledge or expertise within the field of medicine, such as hospitals. Taking into account the nature of the services in question, the fact that they affect the consumer’s health and the high medical complexity and price for some of the services (e.g. in vitro fertilization and stem cell storage), the degree of attention will be high.

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 elements ‘BIO’, ‘bimbo’ and ‘la scienza per il tuo bambino’ are meaningful in certain territories, for example, in those countries where Italian is understood, where these elements will be non-distinctive. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Italian-speaking part of the public such as Italy.

The earlier mark is a figurative sign consisting of the verbal element ‘BIOCORD’ written in standard uppercase letters, except the letter ‘C’ which is stylised and green. Even though, the letter ‘C’ is stylised, it can reasonably be assumed that a substantial part of the relevant public will perceive it as the letter ‘C’.

Although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25), the fact remains that, when perceiving a verbal sign, he will break it down into elements which, for him, suggest a concrete meaning or which resemble words known to him (06/10/2004, T-356/02, Vitakraft, EU:T:2004:292, § 51).

The element ‘BIO’ will, by the relevant public, be understood as a prefix meaning ‘life’/’living’ (www.treccani.it) and in relation to the services in question (medical services and in vitro fertilisation) it merely indicates the subject matter, namely that these services concerns life, and this element is therefore non-distinctive. The element ‘CORD’ has no meaning for the relevant public and in relation to the services in question this element has an average degree of distinctiveness. The earlier mark has no elements that can be considered clearly more dominant than other elements.

The contested sign is a figurative sign consisting of the verbal elements ‘bimbo’, ‘cord’ and ‘la scienza per il tuo bambino’, written in standard lowercase letters. The elements ‘la scienza per il tuo bambino’ are written in a more faint shade of colour, are in a much smaller size than the rest of the verbal elements and is placed below them on the right hand side. The sign also contains a figurative element, placed between the verbal elements ‘bimbo’ and ‘cord’, depicting two red half circles facing away from each other but joint in the middle and a filled out red circle above. The figurative element does not convey any clear concept and in relation to the services, it has an average degree of distinctiveness.

The verbal element ‘bimbo’ will be understood as meaning ‘child’ (www.treccani.it), and in relation to the services it merely indicates that these services are targeting children or that they are related to children. Therefore, this element is non-distinctive. The elements ‘la scienza per il tuo bambino’ will be understood as meaning ‘the science for your child’ (www.treccani.it), and in relation to the relevant services this sentence will merely be perceived as indicating that the services are based on science especially adapted for children or relating to children, and it will therefore be non-distinctive. As described above, the element ‘cord’ has an average degree of distinctiveness. The verbal elements ‘la scienza per il tuo bambino’ is considered less dominant than the other elements.  

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).

Visually, the signs coincide in the element ‘CORD’ which is the only distinctive verbal element of both signs. Furthermore, the signs have the same structure, to the extent that the first element of the signs are non-distinctive followed by the distinctive element ‘cord’. The signs differ in the verbal elements ‘BIO’ in the earlier mark and ‘bimbo’ and ‘la scienza per il tuo bambino’ in the contested sign, however all these elements are non-distinctive and the latter are non- dominant in the contested sign. The signs also differ in the stylisation of the letter ‘C’ in the earlier mark, the figurative element of the contested sign and the colours of the signs.

The Opposition Division has especially taken into consideration that all the differentiating verbal elements are non-distinctive and that the verbal elements have a stronger impact on consumers than the figurative elements.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛cord’ constituting the only distinctive element in the signs. The pronunciation differs in the sound of the letters ‘BIO’ in the earlier mark and ‘bimbo’ and ‘la scienza per il tuo bambino’ in the contested sign, however all these elements are non-distinctive and the latter is non-dominant.

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

Conceptually, the common element ‘cord’ is meaningless and therefore, cannot influence the conceptual comparison. The same applies to the words ‘BIO’, ‘bimbo’ and ‘la scienza per il tuo bambino’, with the meanings described above, as these elements are non-distinctive, and therefore cannot influence the conceptual comparison in a relevant manner either. It follows that 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 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 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 non-distinctive element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

For the purposes of the global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks, but must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323). This is also true for consumers with a high degree of attention, since these customers would also need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

The services are identical and the degree of distinctiveness of the earlier mark is normal. The degree of attention of the relevant public is high.

The signs differ only in verbal elements that are non-distinctive and in figurative elements and colours, as explained above under section c) of this decision. As consumers pay less attention to those elements in a trade mark that are non-distinctive, and taking into account the stronger impact of verbal elements than figurative elements, the consumer will focus on the coinciding element ‘cord’. It follows, that the difference between the signs is insufficient to outweigh the similarity and to exclude a likelihood of confusion. Taking into consideration the imperfect recollection, this is the case even taken into account the consumers’ high degree of attention.

In addition, the Opposition Division notes that the likelihood of confusion includes likelihood of association, in the sense that the public may, if not confuse the two signs directly, believe that they come from the same undertaking or from economically related ones (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 16). In the present case, consumers may easily conclude that the goods labelled with the contested sign come from the same undertaking or economically linked undertakings as those labelled with the earlier mark and that they are all being offered under the ‘cord’ brand. For example, the public may think that the contested sign, ‘bimbo cord la scienza per il tuo bambino’, denotes a product line under the ‘cord’ brand, that is targeting children or that relates to children.

In that regard, it has to be pointed out that It is common practice, in the relevant market, for manufacturers to make variations of their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them, in order to denote new product lines, or to endow their trade marks with a new, fashionable image. Therefore, when encountering the conflicting signs, the relevant public, which only rarely has the chance to directly compare two trade marks and must rely on its imperfect recollection, is likely to mentally register the fact that they have in common the element ‘cord’, as their only distinctive element, and perceive the contested sign as a variation of the earlier mark, or vice versa. Consequently, the public may attribute the same (or an economically linked) commercial origin to the goods that are similar.

Considering all the above, there is a likelihood of confusion on the part of the Italian-speaking part of the public. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 12 211 603. It follows that the contested trade mark must be rejected for all the contested services.

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.

The Opposition Division

Birgit FILTENBORG

Cecilie Leth BOCKHOFF

Francesca CANGERI SERRANO

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.