OPPOSITION DIVISION
OPPOSITION No B 2 414 822
Altia Consultores, S.A., Avenida del Pasaje 32, bloque 1, 2°,A-B, 15009 La Coruña,
Spain (opponent), represented by Herrero & Asociados, Cedaceros, 1,
28014 Madrid, Spain (professional representative)
a g a i n s t
Novartis AG, 4002 Basel, Switzerland (applicant), represented by Friedrich Graf
von Westphalen & Partner mbB, Kaiser-Joseph-Str. 284, 79098 Freiburg i. Br.,
Germany (professional representative).
On 17/10/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 414 822 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
Preliminary remark
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS:
The opponent filed an opposition against all the goods and services of European
Union trade mark application No 12 875 241 for the word mark ‘ALTYS’. The
opposition is based on European Union trade mark registration No 1 427 681 and
Spanish trade mark registration No 2 060 585(4), both for the word mark ‘ALTIA’. The
opponent invoked Article 8(1)(b) EUTMR.
PROOF OF USE
In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of
filing of the opposition, now Article 47(2) and (3) EUTMR), if the applicant so
requests, the opponent must furnish proof that, during the five-year period preceding
the date of publication of the contested trade mark, the earlier trade mark has been
put to genuine use in the territories in which it is protected in connection with the
goods or services for which it is registered and which the opponent cites as
justification for its opposition, or that there are proper reasons for non-use. The
earlier mark is subject to the use obligation if, at that date, it has been registered for
at least five years.
Decision on Opposition No B 2 414 822 page: 2 of 4
The same provision states that, in the absence of such proof, the opposition will be
rejected.
The applicant requested that the opponent submit proof of use of one of the trade
marks on which the opposition is based, namely European Union trade mark
No 1 427 681. It should be mentioned that earlier Spanish trade mark registration
No 2 060 585(4) was not the subject of a request for proof of use.
The request was filed in due time and is admissible as the earlier trade mark was
registered on 21/01/2002, that is, more than five years prior to the relevant date
mentioned above (30/06/2014).
On 15/12/2014, the opponent was given two months to file the requested proof of
use. The deadline for submitting proof of use expired on 11/12/2016.
The opponent did not furnish any evidence concerning the use of earlier European
Union trade mark registration No 1 427 681 on which the opposition is based. It did
not argue that there were proper reasons for non-use either.
According to Rule 22(2) EUTMIR (in the version in force at the time of filing the
request for proof of use), if the opposing party does not provide such proof before the
time limit expires, the Office will reject the opposition.
Therefore, the opposition must be rejected pursuant to Article 47(2) EUTMR and
Rule 22(2) EUTMIR (in the version in force at the time of filing the request for proof of
use).
The examination of the opposition will continue in relation to earlier Spanish trade
mark registration No 2 060 585(4), which is not subject to the requirement for proof of
use.
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.
a) The goods and services
The services on which the opposition is based are the following:
Class 42: Professional consultancy in the field of computing (not related to business
management).
The contested goods and services are the following:
Decision on Opposition No B 2 414 822 page: 3 of 4
Class 9: Downloadable mobile applications for use in disease management and
tracking patient compliance with medical treatments, except applications being
related to extracorporeal blood treatments or renal insufficiency.
Class 10: Medical apparatus and instruments, except medical apparatus and
instruments used in dialysis centers and nephrology units.
Class 44: Medical services namely providing healthcare information, except services
being used in dialysis centers and nephrology units.
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 9
The opponent’s services consist of professional consultancy in the field of computing,
which is defined as the activity of using a computer and writing programs on it
(information extracted from Collins Dictionary on 06/10/2017 at
https://www.collinsdictionary.com/dictionary/english/computing), whereas the
contested goods are downloadable mobile applications, which consist of applications
that are normally used on mobile devices in a very specific medical field. Therefore,
the contested goods in Class 9 are dissimilar to the opponent’s services in Class 42.
Apart from being different in nature, since services are intangible whereas goods are
tangible, they serve different needs. The relevant public for the contested goods will
not be writing programs and use of a computer is not the same as use of an
application in a medical field. The distribution channels are not the same and the
goods and services are produced/provided by different companies. Furthermore, they
have different methods of use and are neither in competition nor complementary.
Contested goods in Class 10
The contested goods in Class 10 consist mainly of medical apparatus and
instruments, whereas the opponent’s services in Class 42 consist of professional
consultancy in the field of computing. Apart from being different in nature, since
services are intangible whereas goods are tangible, they serve different needs.
Furthermore, goods and services have different methods of use and are neither in
competition nor complementary. These goods and the opponent’s services are,
therefore, dissimilar.
Contested services in Class 44
The contested services in Class 44 consist mainly of medical services, whereas the
opponent’s services in Class 42 consist of professional consultancy in the field of
computing. The natures and the purposes of these services are different.
Furthermore, the services have different methods of use and are neither in
competition nor complementary. Therefore, they are dissimilar.
b) Conclusion
According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a
condition for a finding of likelihood of confusion. Since the goods and services are
Decision on Opposition No B 2 414 822 page: 4 of 4
clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not
fulfilled, and the opposition must be rejected.
COSTS
According to Article 109(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 Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3)
and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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
Zuzanna STOJKOWICZ Francesca DRAGOSTIN Michaela SIMANDLOVA
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100
(Annex I A(33) EUTMR) has been paid.