OPPOSITION No B 2 654 781

Clínica La Luz, S.L., C/ General Rodrigo, 8, 28003 Madrid, Spain (opponent), represented by Abril Abogados, C/Amador de los Ríos, 1-1°, 28010 Madrid, Spain (professional representative)

a g a i n s t

Luz Saúde S.A., Rua Carlos Alberto da Mota Pinto 17, 9º, 1070 Lisboa, Portugal (applicant), represented by Gonçalo De Magalhães Moreira Rato, Rua D. Francisco Manuel de Melo, 21, 1070-085 Lisboa, Portugal (professional representative).

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

DECISION:

1.        Opposition No B 2 654 781 is partially upheld, namely for the following contested services:

Class 44: Human healthcare services; human hygiene.

2.        European Union trade mark application No 14 791 495 is rejected for all the above services. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the services of European Union trade mark application No 14 791 495 , namely against all the services in Classes 43 and 44. The opposition is based on Spanish trade mark registration No 2 490 337 and on Spanish trade name No 265 422 ‘CLINICA LA LUZ, S.L.’ The opponent invoked Article 8(1)(b) and 8(4) EUTMR.

Preliminary remark:

The applicant questions the admissibility of the opposition on the basis that the opponent does not have any earlier European Union trade mark. The Opposition Division observes that according to Article 8(1) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered. Article 8(2) EUTMR states that not only EU trade marks can be claimed as earlier trade marks but also trade marks registered in a Member States and trade marks registered under international arrangements having effect in a Member States or in the European Union.

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 of the earlier trade mark registration on which the opposition is based are the following:

Class 44: Medical services, in particular services of a medical-surgical hospital.

The contested services are the following:

Class 43: Providing temporary accommodation; rental of furniture, linens and table settings; services for providing food and drink.

Class 44: Human healthcare services; human hygiene and beauty care; hygienic care for animals.

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

The term ‘in particular’, used in the opponent’s list of services, indicates that the specific 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 (see the judgment of 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 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 services in Class 43

The contested providing temporary accommodation; rental of furniture, linens and table settings; services for providing food and drink are dissimilar to the opponent’s services that consist of medical services the purpose of which is to provide care both for human beings and animals. Therefore, the services in question have a different nature and a different purpose. They are neither complementary nor in competition and, finally, they are not provided through the same undertaking and they are addressed to a different public.

Contested services in Class 44

The contested human healthcare services; human hygiene are included in, or overlap, the broad category of the opponent’s, medical services, in particular services of a medical-surgical hospital. Therefore, they are identical.

The contested hygienic care for animals is a set of practices provided by veterinaries for the preservation of health and that help to prevent the spread of diseases of animals. The opponent’s medical services, in particular services of a medical-surgical hospital are services provided by doctors to improve the health of human beings. To that extent, these services are considered dissimilar because even if they have a similar nature, they are not addressed to the same public and they are not provided through the same undertakings. Furthermore, they are neither complementary nor in competition.

The contested beauty care are treatments with cosmetics to improve the physical aspect that normally do not have any medical purpose. Therefore, they are dissimilar to the opponent’s medical services, in particular services of a medical-surgical hospital since they are services with a different purpose. Furthermore, they are normally not provided through the same undertakings and not addressed to the same final consumer.  

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. Taking into consideration that the services at hand directly affects the state of health of consumers, the degree of attention is considered to be high.

3. The signs

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). 

The words ‘CLÍNICA’ of the earlier mark and ‘HOSPITAL’ of the contested sign will be understood by the relevant public as ‘clinic’ and ‘hospital’, respectively. Bearing in mind that the relevant services are medical services, these elements are non-distinctive.

The arguments from the applicant explaining the differences between a hospital and a clinic are not relevant since these terms remain non-distinctive terms that immediately give information to the public about the field of activity to which the identical services belong. In any case, general consumers are normally not aware of the differences between one and the other.

Furthermore, in response to the argument from the applicant saying that the public will perceive the second word of the earlier mark as a single word (‘la luz’), the Opposition Division considers that even if that were the case and even if average consumers normally perceives a mark as a whole and does not proceed to analyse its various details, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T-256/04 ‘Respicur’, EU:T:2007:46, § 57). In the present case, the average consumer will clearly perceive the definite article ‘LA’ and the noun ‘LUZ’ in the earlier mark.

Consequently, the element ‘LUZ’, which is present in both signs and will be understood as ‘light’ by the public in the relevant territory has no meaning in relation to the services in question and is distinctive.

Given that ‘DA’ in the contested sign is a basic Portuguese word and that it is also used in Galician Language, the language spoken in northwestern Spain, the public in the relevant territory will most likely perceive it as ‘DE LA’. In any event, the impact of this element and of the definite article ‘LA’ in the earlier mark on consumers is minimal since they are only introducing or referring to the word that follows.

The symbol of the cross at the beginning of the contested sign is very often used by medical establishments and professionals to easily be identified. This symbol is consequently not distinctive given that its meaning is immediately recognized by the public and associated to health care.  

The figurative elements on the right side of the earlier mark might be perceived by a part of the public as the representation of the letters ‘C’ and ‘L’, the initials standing for ‘CLÍNICA’ and ‘LUZ’. However, due to the level of stylization of these elements and since the public does not proceed to analyse the various details of a sign, it is rather more likely that the public will not pay attention to this element taking further into account that 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 their most distinctive word ‘LUZ’. However, they differ in the words ‘CLÍNICA’ of the earlier sign and ‘HOSPITAL’ of the contested sign which are devoid of distinctive character and in the words ‘LA’ in the earlier mark and ‘DA’ in the contested sign. The signs also differ in the figurative elements on the right side of the earlier mark and in the blue colour that have no counterparts in the contested sign. The symbol of the cross and the grey colour of the contested sign have no equivalent in the earlier mark.

Therefore, given that the differentiating elements are non-distinctive or secondary, the signs are visually similar to an average degree.

Aurally, taking into consideration that the main differentiating words ‘CLINICA’ and ‘HOSPITAL’ are descriptive, the pronunciation of the signs coincides in the sound of the letters ‛*A-LUZ’ and differ in the letters ‘L****’ in the earlier mark and ‘D****’ in the contested sign.

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the concept of ‘light’ will be perceived in both signs, the signs are conceptually highly similar.

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

According to settled case-law, the likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C-39/97, Canon, EU:C:1998:442, §16).

According to the same line of case-law, 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). Moreover, for the purposes of that 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. 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).

In the present case, the services are partly identical and partly dissimilar. The signs are visually similar to an average degree and aurally and conceptually highly similar, on account of the fact that the word ‘LUZ’ is the most distinctive element in both signs. The rest of the differentiating elements play a secondary role within the signs either because of their lack of distinctiveness or because they will not cause much of an impact on the public.

Consequently, although the coincidences in the signs are less obvious than the differences, a likelihood of confusion still exists, as the coinciding element plays an independent distinctive role in both signs.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

In its observations, the applicant argues that it owns several registrations with the word ‘LUZ’ in the European Union and in Portugal, which coexist with the opponent’s earlier mark.

According to case-law, the possibility cannot be entirely dismissed that, in certain cases, the coexistence of earlier marks on the market could reduce the likelihood of confusion which the Opposition Division and the Board of Appeal find exists between two conflicting marks. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds of refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard it should be noted that formal coexistence on national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) on a national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

Therefore, in the absence of convincing arguments and evidence thereof, this argument of the applicant must be rejected as unfounded.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s Spanish trade mark registration.

It follows from the above that the contested trade mark must be rejected for the services found to be identical to those of the earlier trade mark.

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.

NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a)        rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b)        that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

• the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

• pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

• the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non-registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

1. Prior use in the course of trade of more than mere local significance

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights. Furthermore, such use must indicate that the sign in question is of more than mere local significance.

It must be recalled that the object of the condition laid down in Article 8(4) EUTMR relating to use in the course of trade of a sign of more than mere local significance is to limit conflicts between signs by preventing an earlier right which is not sufficiently definite — that is to say, important and significant in the course of trade — from preventing registration of a new European Union trade mark. A right of opposition of that kind must be reserved to signs with a real and actual presence on their relevant market. To be capable of preventing registration of a new sign, the sign relied on in opposition must actually be used in a sufficiently significant manner in the course of trade and its geographical extent must not be merely local, which implies, where the territory in which that sign is protected may be regarded as other than local, that the sign must be used in a substantial part of that territory. In order to ascertain whether that is the case, account must be taken of the duration and intensity of the use of the sign as a distinctive element for its addressees, namely purchasers and consumers as well as suppliers and competitors. In that regard, the use made of the sign in advertising and commercial correspondence is of particular relevance. In addition, the condition relating to use in the course of trade must be assessed separately for each of the territories in which the right relied on in support of the opposition is protected. Finally, use of the sign in the course of trade must be shown to have occurred before the date of the application for registration of the European Union trade mark (29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 157, 159, 160, 163 and 166).

In the present case, the contested trade mark was filed on 12/11/2015. Therefore, the opponent was required to prove that the sign on which the opposition is based was used in the course of trade of more than local significance in Spain prior to that date. The evidence must also show that the opponent’s sign has been used in the course of trade for hotel services, medical services and hospitalization care of patients in all branches of medicine and health care; services of medical and surgical hospital.

On 05/09/2016 the opponent filed the following evidence:

• An extract from the National trade mark law 17/2001 of December 7, 2011 in Spanish together with the English translation. Article 7 corresponding to earlier trade names is highlighted.

• A DVD with a film in Spanish with information about the ‘Clínica la Luz’.

• 5 Invoices in Spanish from different national providers to the ‘CLINICA LA LUZ’. These documents are not dated or the date that might appear on the stamps is illegible. The goods described in the invoices have not been translated into the language of proceeding.

• 4 invoices in Spanish from ‘CLINICA LA LUZ’ to inpatients corresponding to June and July 2016. The nature of services provided has not been translated into the language of proceeding.

• Several promotional brochures in Spanish showing the following logos or : ‘Unidad de Tráfico’, ‘Centro Integral de Obesidad y Sobrepeso’, ‘Diálogos de la acrualizaación interdisciplinar sobre el tratamiento del cáncer’, ‘V Open de golf de Madrid de centros sanitarios’, ‘Clínica la Luz, la mejor opción en caso de accidente de tráfico’, ‘Unidad de la mujer’, ‘Unidad de trastornos mentales de infancia, adolescencia y adulto joven’ (the same brochure in Portuguese), ‘App de portal de paciente de Quirón salud’, ‘Chequeos médicos’.

• Advertisements: one advertisement in Chinese in a Chinese newspaper published in Madrid dated 03/11/2013 with the following logo  and two other advertisements in Spanish published in the ‘ABOGADOS’ magazine from February 2013 and September-October 2013 for . The invoice corresponding to the 2013 campaign in the ‘ABOGADOS’ magazine is also attached.

• 12 Press clips dated between years 1985 and 2016 in several  Spanish newspapers, such as ‘La Vanguardia, ‘Diario Médico’, ‘El Mundo’, ‘Europa Press’, ‘A tu salud’, ‘20 minutos’ and ‘The doctors’.

• Extract from the opponent’s website in Spanish with the name of several insurance companies.

• Copy of several corporate magazine of the ‘Clínica la Luz’ in Spanish.

• Brochure in Spanish of the ‘Clínica la Luz’ detailing the different services provided.

According to Rule 19(3) EUTMIR, the information and evidence referred to in paragraphs 1 and 2 must be in the language of the proceedings or accompanied by a translation. The translation must be submitted within the time limit specified for submitting the original document.

In the present case, apart from the National law, the rest of the evidence filed by the opponent is not in the language of the proceedings.

On 29/02/2016 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the required evidence and respective translations. This time limit expired on 05/07/2016 and was subsequently extended until 05/09/2016.

The opponent did not submit the necessary translation.

According to Rule 19(4) EUTMIR, the Office will not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office.

Given that the abovementioned evidence cannot be taken into account, the opponent failed to establish use in the course of trade of the sign on which the opposition is based.

Given that one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) 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 only for part of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Martina GALLE

Sandra IBAÑEZ

Pedro JURADO

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.