OPPOSITION No B 2 768 631

Innovaciones Hospitalarias IDD Holding S.L., Rector Ubach, 9, 08021 Barcelona, Spain (opponent), represented by Asociados Pymark S.L., Londres, 67, 2º, 3º, 08036 Barcelona, Spain (professional representative)

a g a i n s t

Danuta Gugglberger, Krottenseestraße 18, 4810 Gmunden, Austria (applicant), represented by Christoph Friedrich Jahn, Rothenburg 41, 48143 Münster, Germany (professional representative).

On 21/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 768 631 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 goods and services of European Union trade mark application No 15 407 232, namely against some of the goods and services in Classes 10 and 35. The opposition is based on Spanish trade mark registration No 3 040 151. The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK

In accordance with Article 41 EUTMR, the notice of opposition must be submitted within the period of three months following the EUTM’s publication.

By indicating the goods and services against which the opposition is directed in accordance with Rule 15(3)(a) EUTMIR the opponent determines the actual scope of the opposition which subsequently may not be extended (24/08/2016, R 1157/2015-5, PlanVet / PlantaVet et al., § 25-26).

The contested trade mark application was published on 13/06/2016. In the notice of opposition filed on 12/09/2016, it was clearly indicated that the opposition was directed against only some of the contested goods and services, namely:

Class 10: Medical instruments; Electro medical instruments.

Class 35: Retailing and wholesaling, including via the internet, in the fields of medical products, medical equipment, electromedical equipment.

In its submission of 20/01/2017, part 3 Comparison of goods and services, the opponent indicated that its opposition was also directed against the remaining goods and services of the contested EUTM application, namely:

Class 10: Medical instruments; Electro medical instruments; Physical therapy equipment.

Class 35: Retailing and wholesaling, including via the internet, in the fields of medical products, medical equipment, electromedical equipment, wellness apparatus.

However, since this submission was received after the expiry of the three-month period granted for the opponent to determine the scope of the opposition, the indication of additional items into the list of contested goods and services in Classes 10 and 35 filed on 20/01/2017 must be considered an inadmissible extension of the scope of the opposition and cannot, therefore, be taken into account.

Consequently, the Office deems the opposition to have been filed against some of the goods and services in Classes 10 and 35, as originally indicated in the notice of opposition filed of 12/09/2016.

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 on which the opposition is based are the following:

Class 10: Medical and surgical instruments and apparatus; prostheses.

The contested goods and services are the following:

Class 10: Medical instruments; Electro medical instruments.

Class 35: Retailing and wholesaling, including via the internet, in the fields of medical products, medical equipment, electro-medical equipment.

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 10

The contested medical instruments are identically contained in both lists of goods.

The contested electro medical instruments are included in the opponent´s broader category of medical instruments. Therefore, they are identical.

Contested services in Class 35

Retail services allow consumers to satisfy different shopping needs at one stop and usually target the general consumer. They can take place in a fixed location, such as the retail stores and wholesale outlets, or in the form of non-shop retailing, that is, over the internet, or by catalogue or mail order. The object of wholesale trade is similar, except that, in this case, the relevant public is the retailer purchasing the goods wholesale (07/07/2005, C-418/02, Praktiker, EU:C:2005:425).

Retail (and wholesale) 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.

In the present case, it is considered that medical products, medical equipment, electro-medical equipment, which are the object of the contested services in Class 35, are all identical to the opponent’s medical instruments and apparatus in Class 10, since they are either included in the broad category of these opponent’s goods (medical equipment, electro-medical equipment) or overlap with them (medical products), because some medical products could easily be included in Class 5 as well as in Class 10.

Therefore, the contested retailing and wholesaling, including via the internet, in the fields of medical products, medical equipment, electro-medical equipment is similar to a low degree to the opponent’s medical and surgical instruments and apparatus in Class 10.

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 primarily directed at professionals with specific knowledge or expertise in the medical field.

The degree of attention will be high as these kinds of goods and services are not purchased on a frequent basis, are likely to be fairly expensive and has a potential impact on human’s health and wellbeing.

3. The signs

	IQ WELL
Earlier trade mark	Contested sign

The relevant territory is Spain.

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).

Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components.

The earlier mark is composed of the sequence of letters ‘IQC’ in a white slightly stylised typeface (mostly affecting the letter ‘Q’ which is in uppercase compared to the other lowercase letters and is filled in with a light green background) and the verbal expression ‘INNOVACIONS QUIRÚRGIQUES DE CATALUNYA’ written below in a much smaller black thin lettering. Although written in Catalonian, the expression ‘INNOVACIONS QUIRÚRGIQUES DE CATALUNYA’ will be perfectly understood by the relevant public because of its closeness with the Spanish equivalent words. This element, meaning ‘surgical innovations of Catalonia’, will be perceived as referring to the purpose or nature of the goods in question as well as their geographical origin, and therefore, it is considered that its distinctiveness is rather low.

The element ‘iQc’ of the earlier mark has no meaning itself, other than been seen as the acronym for the mark’s other verbal expression, and is, therefore, distinctive to an average degree for the relevant goods.

The figurative element of the earlier mark, namely the dark green rectangle, is a commonplace and banal element which only performs a decorative function within the mark. Furthermore, it is established practice that when signs consist of both verbal and figurative components (as the earlier mark does), 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 figurative element of the earlier mark has only a limited impact on the consumer’s perception.

The most dominant (visually eye-catching) element of the earlier mark is the sequence of letters ‘IQC’ due to its size, position and colour which is contrasting with the dark green background. The other verbal element of the mark, ‘INNOVACIONS QUIRÚRGIQUES DE CATALUNYA’, is written in significantly smaller letters than the element ‘IQC’ and, in addition, it is placed in a secondary position at the bottom part of the mark.  

The contested sign is a word mark which consists of the sequence of letters ‘IQ’ followed by the verbal element ‘WELL’. The element ‘IQ’ in the contested sign has no relevant meaning in relation to the goods and services at hand. It is therefore considered to have a normal degree of distinctiveness. Regarding the element ‘WELL’, the opponent argued that it which could be considered as descriptive of the quality of the goods and services. Whilst the Opposition Division believes that given that the level of comprehension of English among medical professionals is generally high, it is reasonable to assume that the element ‘WELL’ will be understood by the relevant public (or at least by a substantial part of it), and will be perceived as a term evoking the concept of ‘in good health’. However, the Opposition Division does not agree with the opponent, as whilst people or animals can be described as being well, it is not a characteristic of the goods or services in question; for example, a scalpel could be described as being sharp or durable or strong or blue or titanium or cheap, but well in the sense of ‘in good health’ does not describe a characteristic of a scalpel. Therefore, this element is of normal distinctiveness.

Contrary to the opponent´s argument relating to the dominance of the element ‘IQ’ in the contested sign, the Opposition Division considers that there are no elements within the contested sign that could be considered clearly more dominant than other elements. At this regard, it must be pointed out that word marks, which is the case of the contested sign, have no dominant elements because, by definition, they are written in standard typeface. The length of the words or the number of letters is not an issue of dominance but of overall impression. In summary, the elements ‘IQC’ and ‘IQ’ are the most distinctive elements of the marks and the former is, furthermore, the most visually dominant element of the earlier mark. This consideration constitutes the best case scenario for the opponent.  

Visually, the signs only coincide in the sequence of letters ‘IQ*’. However, they differ in the presence of the letter ‘C’ at the end of the letter sequence ‘IQC’ in the earlier mark and in the overall representation of the earlier mark, including the colour combination, the stylisation of letters and, especially, the way the ‘Q’ is depicted. (The letters ‘iQc’ are depicted inside of a dark green rectangle with rounded corners.)

 Furthermore, the contested sign has an additional verbal element ‘WELL’ which is not present in the earlier mark.

Account must be taken of the fact that the additional verbal elements ‘INNOVACIONS QUIRÚRGIQUES DE CATALUNYA’ in the earlier sign and the additional figurative element of the earlier mark are weak, for the reasons explained above, and will have a lesser impact on the overall assessment of likelihood of confusion. As a result, the signs’ constituents ‘IQC’ and ‘IQ WELL’ that have a stronger impact on the visual comparison of the signs are on one hand a short verbal element against a longer two element sign, three letters against six, and the fact that they differ in three additional letters as well as a verbal element is a factor of particular relevance to take into consideration.

Therefore, the signs are visually similar to a low degree.

Aurally, the opponent argues that the signs are phonetically identical; however there is no valid reason to agree with this argument. The relevant public may pronounce the initial parts of the conflicting signs letter by letter, that is ‘/I-Q-C/’ in the earlier mark and ‘/I-Q/GÜEL/’ in the contested sign.

Bearing in mind the weight attributed to the differentiating verbal elements ‘INNOVACIONS QUIRÚRGIQUES DE CATALUNYA’ of the earlier mark, , the signs are aurally similar to a below average degree (two letters out of three and six.).

Conceptually, although the meaning of the weak verbal element of the contested sign ‘WELL’ will be grasped by the relevant public as explained above, the contested sign, as a whole, does not have a meaning. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

Moreover, the signs are also conceptually different for the part of the relevant public that will associate the meaning of ‘IQC’ in the earlier mark with the initial letters of the Catalonian words ‘INNOVACIONS QUIRÚRGIQUES DE CATALUNYA’ as the contested sign is devoid of any conceptual meaning.

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as average for all the goods in question, despite the presence of some non-distinctive and weak elements in the mark.

5. Global assessment, other arguments and conclusion

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/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).

As concluded above, the contested goods and services are either identical or similar to a low degree to the opponent’s goods and they target business consumers with a high degree of attention.

The signs are visually similar to a low degree, aurally similar to an average degree and conceptually not similar.

Bearing in mind the non-distinctive or weak character of the additional elements of both signs, the only normally distinctive elements in the present case, are composed of three letters in the case of the earlier mark, ‘IQC’, and of two letters in the case of the contested sign, ‘IQ’; both are, consequently, short elements and it is considered that the fact that they differ in one additional letter is a relevant factor to consider when evaluating the likelihood of confusion between the conflicting signs. Consequently, the fact that they only coincide in two letters, does not lead to a finding of likelihood of confusion, because the additional letter ‘C’, although placed at the end of the earlier sign’s distinctive and dominant element, will not go unnoticed by consumers (23/10/2002, T-388/00, ELS, EU:T:2002:260, by analogy).

The Opposition Division concludes that the striking visual differences established between the signs are sufficient to outweigh the similarity between them that has been identified on the aural level, and is sufficient to enable the relevant public to safely distinguish between the signs, especially taking into account that the relevant public´s degree of attention will be enhanced at the moment of choosing the goods and services.

Consequently, it is concluded that the average consumer, who, for the purposes of the assessment of likelihood of confusion, is considered reasonably well informed and reasonably observant and circumspect, will neither directly confuse the conflicting signs nor perceive them as coming from the same undertaking or from economically linked undertakings.

The opponent refers to 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).

In the present case, the Opposition Division´s decision No B 1 485 632 of 11/06/2010 in case ZIP/ZIP DELUXE referred to by the opponent is not relevant to the present proceedings as in the mentioned case, the signs involved were both word marks and presented an average degree of visual and aural similarity and the earlier mark was entirely reproduced in the contested sign’s first element whilst DELUXE was found descriptive for beverages in general. In the present opposition, as already explained, the earlier mark is a figurative mark with certain particularities that lead to a low degree similarity and neither the earlier mark appears in its entirety in the contested sign nor is the contested sign’s second element descriptive.

Considering all the above, there is no likelihood of confusion on the part of the public.

Therefore, the opposition must be rejected.

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

Martin MITURA

Alexandra APOSTOLAKIS

Ric WASLEY

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.