OPPOSITION No B 2 770 033

Medicon eG Chirurgiemechaniker-Genossenschaft, Gänsäcker 15, 78532 Tuttlingen, Germany (opponent), represented by Mammel & Maser, Tilsiter Str. 3, 71065 Sindelfingen, Germany (professional representative)

a g a i n s t

Medicone Szczepanski i Wspólnicy Spółka Partnerska Lekarzy, ul. Jerzego Kukuczki 5, 50-570 Wrocław, Poland (applicant).

On 27/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 770 033 is partially upheld, namely for the following contested services:

Class 35:        Retail services in relation to medical apparatus; retail services in relation to medical instruments; wholesale services in relation to dietary supplements; retail services in relation to toiletries; wholesale services in relation to medical instruments; wholesale services in relation to medical apparatus; retail services in relation to physical therapy equipment; wholesale services in relation to beauty implements for humans; retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies; department store retail services connected with the sale of beauty products, toiletries, machines for household use, hand tools, optical goods, domestic electrical and electronic equipment; wholesale services in relation to dietetic preparations; wholesale services in relation to hygienic implements for humans.

Class 42:        Medical and pharmacological research services; medical laboratory services; biological research, clinical research and medical research.

Class 44:        Human healthcare services; medical services; dentistry; pharmaceutical services; mental health services; physical therapy; medical and healthcare services; paramedical services; medical clinic services; medical screening; medical consultations; medical counseling; medical examination of individuals; medical evaluation services; medical care; providing medical information; medical assistance; health clinic services [medical]; medical nursing; providing medical advice in the field of dermatology; medical services for treatment of the skin; medical services for the treatment of skin cancer; medical diagnostic services; medical health assessment services; health care consultancy services [medical]; medical analysis for the diagnosis and treatment of persons; residential medical advice services; residential medical treatment services; medical treatment services provided by clinics and hospitals; health screening services in the field of sleep apnea; medical services relating to the removal, treatment and processing of bone marrow; medical services relating to the removal, treatment and processing of stem cells; medical services relating to the removal, treatment and processing of human cells; medical services relating to the removal, treatment and processing of umbilical cord blood; medical services relating to the removal, treatment and processing of human blood; medical screening services relating to cardiovascular disease; medical assistance consultancy provided by doctors and other specialized medical personnel; hospitals; private hospital services; cosmetic treatment.

2.        European Union trade mark application No 15 422 314 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 all the services of European Union trade mark application No 15 422 314. The opposition is based on European Union trade mark registration No 11 332 301. 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 goods and services

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

Class 5:        Pharmaceutical and veterinary preparations, other than antibiotics, sleeping pills and sedatives; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

Class 10:        Surgical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; suture materials; implants; resorbent and non-resorbent implants for osteosynthesis; instruments for the application of resorbent implants.

Class 35:        Drawing up organisational plans and operational plans for hospitals and medical practices; wholesaling and retailing of surgical and medical apparatus and instruments, orthopaedic articles, suture materials, implants, health care preparations, materials for dressings and medicines.

Class 37:        Maintenance and repair of medical and surgical equipment, apparatus and instruments; filling of surgical and medical instrument stores; hospital services, namely sterilisation of instruments and equipment; cleaning of surgical and medical apparatus and instruments; upgrading of surgical and medical instruments; conducting screening in hospitals.

Class 41:        Conducting medical further training events, seminars and congresses; publication of scientific information; organisation of symposiums and workshops; providing of training.

Class 44:        Rental of medical, dental and veterinary apparatus, surgical instruments and devices for medical purposes.

The contested services are the following:

Class 35:        Retail services in relation to medical apparatus; retail services in relation to medical instruments; wholesale services in relation to dietary supplements; retail services in relation to toiletries; wholesale services in relation to medical instruments; wholesale services in relation to medical apparatus; retail services in relation to physical therapy equipment; wholesale services in relation to beauty implements for humans; retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies; department store retail services connected with the sale of beauty products, toiletries, machines for household use, hand tools, optical goods, domestic electrical and electronic equipment; wholesale services in relation to dietetic preparations; wholesale services in relation to hygienic implements for humans.

Class 42:        Medical and pharmacological research services; medical laboratory services; biological research, clinical research and medical research.

Class 44:        Human healthcare services; medical services; dentistry; pharmaceutical services; opticians’ services; mental health services; physical therapy; medical and healthcare services; nursing home services; arranging of accommodation in rest homes; arranging of accommodation in convalescent homes; paramedical services; medical clinic services; medical screening; medical consultations; medical counseling; medical examination of individuals; medical evaluation services; medical care; providing medical information; medical assistance; health clinic services [medical]; medical nursing; providing medical advice in the field of dermatology; medical services for treatment of the skin; medical services for the treatment of skin cancer; medical diagnostic services; medical health assessment services; health care consultancy services [medical]; medical analysis for the diagnosis and treatment of persons; residential medical advice services; residential medical treatment services; medical treatment services provided by clinics and hospitals; health screening services in the field of sleep apnea; medical services relating to the removal, treatment and processing of bone marrow; medical services relating to the removal, treatment and processing of stem cells; medical services relating to the removal, treatment and processing of human cells; medical services relating to the removal, treatment and processing of umbilical cord blood; medical services relating to the removal, treatment and processing of human blood; medical screening services relating to cardiovascular disease; medical assistance consultancy provided by doctors and other specialized medical personnel; hospitals; private hospital services; hospital nursing home services; human hygiene and beauty care; cosmetic treatment.

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 35

The opponent’s services are, inter alia, the following retail and wholesale services of some explicitly listed goods: wholesaling and retailing of surgical and medical apparatus and instruments, suture materials, health care preparations, materials for dressings and medicines. The contested retail services in relation to medical apparatus; retail services in relation to medical instruments; wholesale services in relation to dietary supplements; wholesale services in relation to medical instruments; wholesale services in relation to medical apparatus; retail services in relation to physical therapy equipment; retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies; wholesale services in relation to dietetic preparations are identical to the opponent’s services listed above, either because the services are identically contained in both lists (including synonyms) or because the opponent’s services include, are included in or overlap with the contested services.

The contested retail services in relation to toiletries; wholesale services in relation to beauty implements for humans; department store retail services connected with the sale of beauty products, toiletries, machines for household use, hand tools, optical goods, domestic electrical and electronic equipment; wholesale services in relation to hygienic implements for humans are considered similar to the opponent’s wholesaling and retailing of surgical and medical apparatus and instruments, suture materials, health care preparations, materials for dressings and medicines. The services at issue have the same nature since both are retail (or wholesale) services, the same purpose of allowing consumers to conveniently satisfy different shopping needs, and the same method of use.

Contested services in Class 42

The contested medical and pharmacological research services; biological research, clinical research and medical research and the opponent’s conducting medical further training events, seminars and congresses in Class 41 have the same general purpose of acquiring and/or imparting or disseminating knowledge or skills. Furthermore, they have the same providers and distribution channels, such as universities, which carry out a lot of research, not only as academic training but also as a stand-alone part of what they do. Universities bid on tenders to be able to provide such research services, and therefore this is a service that can be provided to third parties. It follows that the services under comparison are similar.

The contested medical laboratory services include medical research in a laboratory environment, which could be performed by universities that have been assigned, for instance, the task of performing the relevant research and laboratory tests. It is therefore concluded that the above reasoning applies and these contested services are similar to the opponent’s conducting medical further training events, seminars and congresses, as they have the same purpose, providers and distribution channels.

Contested services in Class 44

The contested pharmaceutical services include the provision of pharmaceutical information and advice when a pharmaceutical preparation is bought. Pharmaceutical advice relates to informing individuals about medication. It may be performed by a doctor, nurse or pharmacist. The contested services and the opponent’s pharmaceutical preparations, other than antibiotics, sleeping pills and sedatives have the same distribution channels and relevant public. Furthermore, these goods and services are complementary. It follows that they are similar to a low degree.

The contested human healthcare services; medical services; medical and healthcare services; health clinic services [medical]; medical clinic services; medical treatment services provided by clinics and hospitals; hospitals; private hospital services; medical screening; medical consultations; medical counseling; medical examination of individuals; medical evaluation services; medical care; providing medical information; medical assistance; health screening services in the field of sleep apnea; medical screening services relating to cardiovascular disease; medical assistance consultancy provided by doctors and other specialized medical personnel; medical nursing are similar to a low degree to the opponent’s implants in Class 10. These goods and services have the same purpose (i.e. improving the health of a patient) and relevant public. Furthermore, they are complementary, as the services can relate to assessing the medical condition of the patient before placing an implant, providing advice and consultation in relation to placing an implant and/or the placing of the implant (which could be in various areas of the human body and for various purposes; examples of such implants might be valves and pacemakers for implantation in the heart, sleep apnea implants, etc.).

The contested dentistry; medical diagnostic services; medical health assessment services; health care consultancy services [medical]; medical analysis for the diagnosis and treatment of persons; residential medical advice services; residential medical treatment services; cosmetic treatment (which could be in the form of cosmetic dentistry treatment) are services that could be provided in the area of dental medical treatment and care. They and the opponent’s dental apparatus and instruments in Class 10 (which are medical apparatus and instruments) have the same purpose (i.e. improving dental health or appearance) and relevant public, and they are complementary. It follows that they are similar to a low degree.

The contested mental health services; physical therapy; paramedical services; providing medical advice in the field of dermatology; medical services for treatment of the skin; medical services for the treatment of skin cancer; medical services relating to the removal, treatment and processing of bone marrow; medical services relating to the removal, treatment and processing of stem cells; medical services relating to the removal, treatment and processing of human cells; medical services relating to the removal, treatment and processing of umbilical cord blood; medical services relating to the removal, treatment and processing of human blood are similar to the opponent’s providing of training in Class 41. These services have the same providers, for instance a medical institution that is educating its medical staff or medical students in one of these specialisms and providing courses and training in that field. Moreover, the services under comparison are often provided through the same channels and they can target the same consumers. It follows that they are similar to a low degree.

The remaining contested services, namely opticians’ services; nursing home services; arranging of accommodation in rest homes; arranging of accommodation in convalescent homes; hospital nursing home services; human hygiene and beauty care, are services related to providing residential care in special facilities (nursing homes), or are services provided in optician’s stores (e.g. fitting and dispensing glasses and lenses, but not their prescription per se), services related to beautifying, or services related to providing special types of accommodation. These services are not similar to the opponent’s goods and services. The contested services do not have the same usual origin as the opponent’s goods in Classes 5 and 10 or the opponent’s services in Classes 35 (retail, wholesale and organisational services), 37 (maintenance, repair and services thereof related to equipment or buildings), 41 (provision of training) or 44 (rental of medical appliances). The remaining contested services and the opponent’s goods and services do not have the same nature, purpose or method of use. They are neither in competition nor necessarily complementary. They are usually distributed through different channels. It follows that they are dissimilar.

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 different degrees are directed at the public at large, but also at business customers with specific professional knowledge or expertise, such as medical practitioners.

It is apparent from the case-law that, insofar as pharmaceutical preparations are concerned, the relevant public’s degree of attention is relatively high, whether or not issued on prescription (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.

It follows that the public’s degree of attentiveness may vary from average to high, depending on the price, sophistication, specialised nature, or terms and conditions of the purchased goods and services.

3. The signs

Medicon	MEDICONE
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.

Both the earlier mark and the contested sign are word marks; the earlier mark consists of the sole element ‘Medicon’ and the contested sign consists of the sole element ‘MEDICONE’. In the case of word marks, it is the word as such that is protected, and not its written form. Therefore, the use of upper or lower case letters is immaterial.

It is noted that the marks and their components have or allude to certain meanings in different languages (e.g. ‘medic’, present as component in both signs, and ‘one’, present as component in the contested sign, have meanings in English). For part of the relevant public, such as the Polish-speaking part, components of the signs are only allusive of certain meanings. The Opposition Division finds it appropriate to focus the comparison of the signs on the Polish-speaking part of the relevant public.

The earlier mark as a whole has no meaning for the relevant part of the public. However, the component ‘Medi’ is likely to be perceived by a significant part of the public as alluding to the Polish word ‘medycyna’, meaning ‘medicine’, that is, ‘the science of the diagnosis, treatment, and prevention of disease; medical studies’.

The contested sign as a whole has no meaning for the relevant part of the public. However, the component ‘MEDI’ is likely to be perceived by a significant part of the public as having the meaning specified above.

Bearing in mind that the relevant goods and services are health care related goods and services and supporting services thereof, the component ‘MEDI’, present in both signs and having the meaning specified above, is considered weaker than average for all these goods and services.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the component ‘MEDI’ of both marks, which is found to be weaker than average for the relevant part of the public. It is, therefore, considered that the signs are conceptually similar to a low degree.

Visually and aurally, the signs coincide in the sequence (and the sound) of the letters ‘MEDICON’, namely in all of the letters of the earlier mark and the first seven (out of eight) letters of the contested sign. They differ in the final letter, ‘E’, of the contested sign, and the sound of this final letter, which has no counterpart in the earlier mark.

Taking into account the coinciding letters and sounds, and bearing in mind what has been stated above in relation to the distinctiveness of the component ‘MEDI’, it is considered that the signs are visually and aurally 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 lower than average for all of the goods and services in question, namely the goods and services in Classes 5, 10, 35 and 41.

5. Global assessment, other arguments and conclusion

As concluded above, the contested services are partly identical, partly similar to different degrees and partly dissimilar to the opponent’s goods and services. The degree of attention will vary from average to high when choosing the relevant goods and services.

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).

Although the earlier sign has a lower than average degree of distinctiveness for all of the relevant goods and services, this cannot prevent the opposition against the relevant services from succeeding. While the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442), this is only one of a number of elements entering into that assessment and it is established case-law that, even in a case involving an earlier mark with a weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (16/03/2005, T-112/03, Flexi Air, EU:T:2005:102).

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 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). In the present case, the earlier sign is entirely included in the contested mark, and the sole difference between them lies in the final letter, ‘E’, of the contested sign. It is therefore concluded that the high degree of visual and aural similarity between the signs offsets any lesser degree of similarity between some of the relevant goods and services.

In the light of the foregoing, the degree of similarity between the marks is sufficient for it to be concluded that a substantial part of the Polish-speaking public could reasonably believe that the goods and services found to be identical or similar, including to a low degree, originated from the same undertaking or economically linked undertakings, even when the degree of attention is high.

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 European Union trade mark registration. 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 services found to be identical or similar, including to a low degree, to the goods and services 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.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent and in relation to identical and similar services. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar services, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

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

André Gerd Günther BOSSE

Irina SOTIROVA

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.