OPPOSITION No B 2 733 932

Synoptis Pharma Sp. z o.o., Krakowiaków 65, 02-255 Warszawa, Poland (opponent), represented by Kondrat & Partners, Al. Niepodległości 223/1, 02-087 Warszawa, Poland (professional representative)

a g a i n s t

Aptevo Therapeutics Inc., 2401 4th Avenue, Suite 1050, Seattle Washington 98121, United States of America (applicant), represented by Hasik & Partners, Al. J. Ch. Szucha 16/18, 00-582 Warszawa, Poland (professional representative).

On 26/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 733 932 is partially upheld, namely for the following contested goods and services:

Class 5: Pharmaceuticals, medical and veterinary preparations; 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; pharmaceutical preparations for the treatment and prophylaxis of infectious diseases, cancer and immune system diseases and disorders, auto immune system diseases, and blood disorders.

Class 42: Scientific and technological services and research and design relating thereto; research and development in the pharmaceutical and biotechnology fields.

2.        European Union trade mark application No 15 221 261 is rejected for all the above goods and services. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 221 261. The opposition is based on, inter alia, European Union trade mark registration No 10 207 249, for the word mark 'APTEO'. 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s EUTM No 10 207 249 for the word mark 'APTEO'.

1. The goods and services

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

Class 5: Pharmaceutical preparations, medical products, vitamins, minerals, mineral food supplements, mineral water for: medical purposes, parapharmaceuticals, dietary supplements for medical purposes, dietetic foodstuffs adapted for medical purposes, dietetic substances adapted for medical use, herbal preparations, medicinal herbs, medicinal teas, biocides, biological preparations, antibacterial preparations, vaccines, serums, preparations derived from blood, biotechnological preparations, pharmaceutical preparations for skin care, anti-acne preparations, dental preparations and materials, pharmaceutical liquids, food for babies, plasters, plaster dressings, materials for dressings, sanitary preparations for medical purposes, disinfectants; veterinary preparations, chemical preparations for medical science, diagnostic preparations for medical purposes, disinfectants; dietary supplements for human consumption.

Class 10: Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopedic articles; suture materials, medical apparatus and instruments, diagnostic apparatus for medical purposes, analysis apparatus for medical purposes, feeding bottles for babies, surgical apparatus and instruments, dental apparatus and instruments, physiotherapy equipment, cases fitted for use by surgeons and doctors, orthopaedic articles, dummies (teats) for babies, bandages, cushions (pads) for medical purposes, syringes for medical purposes, veterinary apparatus and equipment.

Class 30: Candy and confectionery; ice-cream; coffee; tea; seasonings and spices; food flavourings; flour; pasta; kasha; rice; coffee, chocolate and tea based beverages; sauces; sushi; foodstuffs, food supplements for special nutritional use, food supplements.

Class 44: Medical services; veterinary services; hygienic and beauty care for human beings or animals; pharmacy advice, nursing homes, medical clinics; pharmaceutical services in the field of prescription medicines.

The contested goods and services are the following:

Class 5: Pharmaceuticals, medical and veterinary preparations; 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; pharmaceutical preparations for the treatment and prophylaxis of infectious diseases, cancer and immune system diseases and disorders, auto immune system diseases, and blood disorders.

Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; research and development in the pharmaceutical and biotechnology fields.

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 5

The contested pharmaceuticals, medical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical use, food for babies; dietary supplements for humans; plasters, materials for dressings; disinfectants are identically contained in both lists of goods (including synonyms).

The contested dietetic food and substances adapted for veterinary use are included in the opponent's dietetic foodstuffs adapted for medical purposes, dietetic substances adapted for medical use. They are identical.

The contested dietary supplements for animals are included in the broad category of the opponent’s veterinary preparations. Therefore, they are identical.

The contested material for stopping teeth, dental wax are included in the broad category of the opponent’s dental preparations and materials. Therefore, they are identical.

A biocide is defined in the European legislation as a chemical substance or microorganism intended to destroy, deter, render harmless, or exert a controlling effect on any harmful organism by chemical or biological means. In view of this, the contested preparations for destroying vermin; fungicides, herbicides are included in the broad category of, or overlap with, the opponent’s biocides. Therefore, they are identical.

The contested pharmaceutical preparations for the treatment and prophylaxis of infectious diseases, cancer and immune system diseases and disorders, auto immune system diseases, and blood disorders are included in the broad category of the opponent’s pharmaceutical preparations. Therefore, they are identical.

Contested services in Class 42

The contested scientific services and research and design relating thereto and the opponent's medical services in Class 44 can coincide in provider, end user and distribution channels. Furthermore they are complementary. Therefore they are similar.

While the contested technological services and research and design relating thereto and the opponent's medical apparatus and instruments in Class 10 are of a different nature and have different purposes and methods of use, they can coincide in provider and target the same public such as hospitals. Therefore they are similar.

The contested research and development in the pharmaceutical and biotechnology fields and the pharmacy advice in Class 44 are of a different nature and have different purposes but the latter can be the corollary of the former. Indeed, the same provider can offer research and development activities in the pharmaceutical and biotechnology fields to third parties and offer pharmacy advice to the same public and through the same channels in relation to the outcome of these research and development services. Therefore, these services are similar.

On the other hand, apart from being different in nature, purpose and method of use, the contested industrial analysis and research services; design and development of computer hardware and software and the above listed opponents' goods and services in Classes 5, 10, 30 and 44, are not targeted at the same public, are not sold/provided by the same companies or through the same channels. Therefore, 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 are directed at business customers with specific professional knowledge or expertise but some of the goods in Class 5 are also directed at the public at large.

In the present case, regarding the services in Class 42, these are considered rather specialised and sophisticated services and the degree of attention of the relevant public is deemed to be higher than average for such services.

Regarding the goods in Class 5, 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. The same degree of attention can be expected for the remaining goods in Class 5 as they also affect one's state of health.

3. The signs

APTEO	APTEVO
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).

Both signs are word marks and neither has a meaning for the relevant public. Therefore they are distinctive.

Visually, the signs coincide in the letters 'APTE-(*)-O’ whereas they differ in the additional letter 'V' in the contested sign placed in penultimate position. Therefore, the signs are highly similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territories, the pronunciation of the signs coincides in the sound of the letters ‛APTE-*-O', present identically in both signs. The pronunciation differs in the sound of the letter ‛V’ of the contested sign, which has no counterpart in the earlier mark. Therefore, the signs are highly similar.

Conceptually, neither sign has a meaning for the public in the relevant territories. Since a conceptual comparison is not possible, 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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim within the time limit set for the opponent to substantiate the earlier rights and submit further material (30/11/2016).

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 goods and 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.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C251/95, Sabèl, EU:C:1997:528, § 22).

In addition, the global assessment of the risk of confusion entails certain interdependence between the factors taken into account and, in particular, between the similarity of the trademarks and the similarity of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 25).

The goods and services, found to be identical or similar, are directed at the public at large and/or at business customers whose degree of attention is higher than average. The degree of distinctiveness of the earlier sign is one of the factors to be taken into account in the overall assessment (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23). In the present case, the distinctiveness of the earlier marks must be seen as normal. The signs are visually and aurally similar to a high degree. They only differ in the additional letter/sound 'V' and there is no concept that helps distinguishing them further.

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).

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 wellfounded on the basis of the opponent’s European Union and Polish trade mark registrations.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar 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.

The opponent has also based its opposition on the following earlier trade marks among which are other word marks 'APTEO' for which the opponent also claimed enhanced distinctiveness but did not file any evidence in order to prove such claim within the time limit set to substantiate the earlier rights and submit further material (30/11/2016). Therefore, the distinctiveness of these earlier word marks must be seen as normal. Likewise, and for the sake of completeness, the distinctiveness of the remaining earlier marks must also be seen as normal despite the presence of elements that are possibly weak or non-distinctive but will not be analysed for reasons of economy of procedure.

1. EUTM No 10 207 272 'APTEO' and for the following goods and services:

Class 3: Cosmetics, including medicated cosmetics; soaps, creams, pastes, lotions, exfoliating scrubs, nail varnish, beauty masks, lipsticks, antiperspirants, bath preparations, cosmetic preparations for slimming purposes, shaving preparations, breath-freshening sprays, mouthwashes, preparations for cleaning dentures, teeth-whitening gels and strips, hair care preparations, shampoos, sun-tanning preparations (cosmetics), perfumery, perfumes, tissues impregnated with cosmetic lotions, depilatories, toilet and cosmetic utensils, sanitary preparations, cleaning, polishing, scouring and abrasive preparations; preparations for laundry use, including bleaching preparations; ethereal oils.

Class 35: Advertising, including publicity columns preparation, radio and television advertising; dissemination of advertising matter, direct mail advertising; rental of advertising space; organization of exhibitions for commercial or advertising purposes; business management; business administration; administrative services; business investigations, market research, professional business consultancy, outsourcing services; import of goods; sale of medical preparations, dietary supplements, medical goods, foodstuffs

Class 41: Education, arranging of training and conferences; entertainment; sporting and cultural activities.

2. Polish registered trade mark No 243 800 'APTEO' and for the following goods:

Class 35: Advertising, including press, radio and television; distribution and dissemination of advertising materials – samples, prints, prospects of brochures, demonstrations of goods; renting of advertising space; arranging of exhibitions for business or advertising purposes; management of enterprise; administration of enterprise; office actions; market research, market analysis, specialist business consulting, outsourcing; import of goods; sale of medicinal products, dietary supplements, medical devices, foodstuffs.

Class 41: Education, organization of workshops and conferences; education services, entertainment services, services connected with the improvement of physical fitness, physical culture and sport, cultural services included in this class; 

Class 44: Medical services; veterinary services; pharmaceutical advice, services for the provision of medical facilities, services for the provision of medical clinics; pharmaceutical services concerning prescriptions, services related to improvement and taking care of beauty of people and animals, beauty services for people or animals, cosmetic, hygienic, hairdressing services for people or animals.

3. Polish registered trade mark No 245 417 'APTEO' and for the following goods:

Class 5: Pharmaceutical preparations; medical products; vitamin;, mineral; mineral food supplements; mineral water for medical purposes; pharmaceuticals for an adjunctive therapy and strengthening the body; dietary supplements for medical purposes; dietetic foodstuffs adapted for medical purposes; dietetic substances adapted for medical use; herbal preparations; medicinal herbs; medicinal teas; biocides; biological preparations; antibacterial preparations; vaccines; serums; preparations derived from blood; biotechnological preparations; pharmaceutical preparations for skin care; anti-acne preparations; dental preparations and materials; pharmaceutical liquids; food for babies, plasters; plaster dressings; materials for dressings; hygienic bandages; bandages for dressings; sanitary preparations for medical purposes; disinfectants; veterinary preparations; chemical preparations for medical science; diagnostic preparations for medical purposes; disinfectants for sanitary purposes; disinfectants.

Class 10: Medical articles; medical apparatus and instruments, diagnostic apparatus for medical purposes, analysis apparatus for medical purposes, feeding bottles for babies, surgical apparatus and instruments, dental apparatus and instruments, physiotherapy equipment, cases fitted for use by surgeons and doctors, orthopaedic articles, dummies (teats) for babies, bandages, cushions (pads) for medical purposes, syringes for medical purposes, veterinary apparatus and equipment.

Class 30: Coffee; tea; cocoa; sugar; rice; tapioca; sago; artificial coffee; flour and preparations made from cereals; bread; pastry and confectionery; ice cream; honey; syrups and treacles; yeast; baking powder; salt; mustard; vinegar; sauces [condiments]; condiments; ice; not mentioned food products included in this class; dietary supplements for human consumption included in this class; foodstuffs intended for particular nutritional based products included in class 30.

4. EUTM No 11 199 783 for the word mark 'APTEO MED' and for the following goods:

Class 3: Cosmetics, including medicated cosmetics; Soaps, creams, pastes, lotions, exfoliating scrubs, nail varnish, beauty masks, lipsticks, antiperspirants, bath preparations, cosmetic preparations for slimming purposes, shaving preparations, breath-freshening sprays, dentifrices and mouthwashes, preparations for cleaning dentures, teethwhitening gels and strips, hair care preparations, shampoos, sun-tanning preparations, perfumery, perfumes, tissues impregnated with cosmetic lotions, depilatory preparations, cleaning, polishing, scouring and abrasive preparations; Preparations for laundry use, including bleaching preparations; Ethereal oils.

Class 5: Pharmaceutical preparations, medical products, vitamins, minerals, mineral food supplements, mineral water for medical purposes, parapharmaceuticals, dietary supplements for medical purposes, dietetic foodstuffs adapted for medical purposes, dietetic substances adapted for medical use, herbal preparations, medicinal herbs, medicinal teas, biocides, biological preparations, antibacterial preparations, vaccines, serums, preparations derived from blood, biotechnological preparations, pharmaceutical preparations for skin care, anti-acne preparations, dental preparations and materials, pharmaceutical liquids, food for babies, plasters, plaster dressings, materials for dressings, sanitary preparations for medical purposes, disinfectants; Veterinary preparations, chemical preparations for medical science, diagnostic preparations for medical purposes, disinfectants; Dietary supplements for human consumption.

Class 10: Surgical, medical, dental and veterinary apparatus and instruments, excluding suture needles, needles for medical purposes, cannulae, catgut, suture materials and surgical thread; Orthopedic articles; medical apparatus and instruments, diagnostic apparatus for medical purposes, analysis apparatus for medical purposes, feeding bottles for babies, surgical apparatus and instruments excluding suture needles, needles for medical purposes, cannulae, catgut, suture materials and surgical thread; dental apparatus and instruments, physiotherapy equipment, cases fitted for use by surgeons and doctors, orthopaedic articles, dummies (teats) for babies, bandages, cushions (pads) for medical purposes, veterinary apparatus and equipment. 

5. EUTM No 14 334 825, for the figurative mark  and for the following goods:

Class 3: Cosmetics, including medicated cosmetics; soaps; creams; washing pastes; lotions; exfoliants for skin; nail polish; beauty masks; lipstick; anti-perspiration preparations; bath preparations; cosmetic preparations for slimming purposes; shaving preparations; breath freshening sprays; oral and dental preparations; dentures (preparations for cleaning -); teeth-whitening gels and strips; hair preparations and treatments; shampoo; tanning preparations; perfumery; perfume; tissues impregnated with cosmetic lotions; depilatories; toilet and cosmetic utentils; sanitary articles; cleaning, polishing, scouring and abrasive preparations; preparations for laundry use, including bleaching preparations; essential oils.

Class 5: Pharmaceutical products; medical preparations; vitamins; minerals; mineral food supplements; mineral water for medical purposes; parapharmaceuticals; nutritional additives for medical purposes; dietetic food adapted for medical use; dietetic substances for medicinal use; herbal preparations; medicinal herbs; tea for medical purposes; biocides; biological preparations, germicides; vaccines; serums; blood derived products; biotechnological products; pharmaceutical preparations for skin care; anti-acne products; dental preparations and materials; pharmaceutical lotions; infant formula; adhesive plasters; plaster casts; dressings [medical]; sanitary preparations for medical purposes; disinfectants; veterinary preparations; chemicals for use in medical science; diagnostic preparations; disinfectants; dietary supplements for human consumption.

Class 10: Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopedic articles; suture materials; technical medical apparatus and instruments; diagnostic apparatus for medical purposes; analytical apparatus for medical purposes; babies' bottles; dental apparatus and instruments; remedial gymnastics and physiotherapy apparatus; cases fitted for use by surgeons and doctors; teats; bandages (supportive-); cushions for medical purposes; medical syringes; veterinary apparatus and instruments.

6. Polish registered trade mark No 246 020, for the figurative mark  and for the following goods:

Class 3: Cosmetics, including medical cosmetics; soaps, creams, pastes, lotions, peelings, nail polish, cosmetic masks, lip balms, antiperspirants, bath preparations, cosmetic preparations for weight loss, shaving preparations; breath fresheners in the form of aerosol, preparations for care of teeth and mouth, preparations for cleaning dentures, teeth whitening gels and strips, hair care preparations, shampoos, sunbathing preparations, perfumery preparations, perfumes, tissues impregnated with cosmetics, preparations for depilation, toiletries and cosmetic preparations, sanitary preparations, cleaning, polishing, scouring and abrasive preparations; preparations used in laundry, including whitening preparations; essential oils.

Class 5: Medicated cosmetics; pharmaceutical preparations; medical products; vitamin;, mineral; mineral food supplements; mineral water for medical purposes; pharmaceuticals healing and strengthening the body; dietary supplements for medical purposes; dietetic foodstuffs adapted for medical purposes; dietetic substances adapted for medical use; herbal preparations; medicinal herbs; medicinal teas; biocides; biological preparations; biological preparations for medical purposes; biological preparations for veterinary purposes; antibacterial preparations; vaccines; serums; blood plasma; blood for medical purposes; biotechnological preparations for medical purposes; pharmaceutical preparations for skin care; anti-acne preparations; dental preparations and materials; pharmaceutical liquids; food for babies, plasters; materials for dressings; sanitary preparations for medical purposes; disinfectants; Veterinary preparations; chemical preparations for medical science; diagnostic preparations for medical purposes; disinfectants for sanitary purposes; disinfecting chemicals for toilet.

Class 10: Medical articles; medical apparatus and instruments, diagnostic apparatus for medical purposes, analysis apparatus for medical purposes, feeding bottles for babies, surgical apparatus and instruments, dental apparatus and instruments, physiotherapy equipment, cases fitted for use by surgeons and doctors, orthopaedic articles, babies’ pacifers (teats), plaster for medical or surgical purpose, elastic bandages; plaster bandages for orthopedic purposes; cushions (pads) for medical purposes, syringes for medical purposes, veterinary apparatus and equipment.

7. Polish registered trade mark No 262 562, for the word mark 'Apteo Med' and for the following goods:

Class 3: Cosmetics; soaps, creams, pastes, lotions, peelings, nail polish, cosmetic masks, lip balms, antiperspirants, bath preparations, cosmetic preparations for weight loss, shaving preparations; breath fresheners in the form of aerosol, preparations of care of teeth and mouth, preparations for cleaning dentures, teeth whitening gels and strips, hair care preparations, shampoos, sunbathing preparations, perfumery preparations, perfumes, tissues impregnated with cosmetics, preparations for depilation, toiletries and cosmetic preparations, sanitary preparations included in this class, cleaning, polishing, scouring and abrasive preparations; preparations used in laundry, including whitening preparations; essential oils.

Class 5: Medicated cosmetics; pharmaceutical preparations; medical products; vitamins included in this class, minerals included in this class; mineral food supplements; mineral water for medical purposes; pharmaceuticals healing and strengthening the body; dietary supplements for medical purposes; dietetic foodstuffs adapted for medical purposes; dietetic substances adapted for medical use; herbal preparations; medicinal herbs; medicinal teas; biocides; biological preparations for medical/veterinary purposes; antibacterial preparations; vaccines; serums; preparations derived from blood; biotechnological preparations for medical/veterinary purposes; pharmaceutical preparations for skin care; anti-acne preparations and dental preparations, pharmaceutical liquids; food for babies, plasters; plaster materials for dressings; materials for dressings, sanitary preparations for medical purposes; disinfectants; veterinary preparations; chemical preparations for medical science; diagnostic preparations for medical purposes; disinfectants.

Class 10: Medical devices included in this class; medical apparatus and instruments, diagnostic apparatus for medical purposes, analysis apparatus for medical purposes, feeding bottles for babies, surgical apparatus and instruments, dental apparatus and instruments, physiotherapy equipment, cases fitted for use by surgeons and doctors, orthopaedic articles, babies’ pacifers (teats), plasters included in this class, cushions (pads) for medical purposes, syringes for medical purposes, veterinary apparatus and equipment. 

8. Polish registered trade mark No 253 239, for the figurative marl  for the following goods and services:

Class 3: Cosmetics, including medical cosmetics; soaps, creams, pastes, lotions, peelings, nail polish, cosmetic masks, lip balms, antiperspirants, bath preparations, cosmetic preparations for weight loss, shaving preparations; breath fresheners in the form of aerosol, preparations of care of teeth and mouth, preparations for cleaning dentures, teeth whitening gels and strips, hair care preparations, shampoos, sunbathing preparations, perfumery preparations, perfumes, tissues impregnated with cosmetics, preparations for depilation, toiletries and cosmetic preparations, sanitary preparations, cleaning, polishing, scouring and abrasive preparations; preparations used in laundry, including whitening preparations; essential oils.

Class 5: Pharmaceutical preparations; medical products; vitamins, minerals; mineral food supplements; mineral water for medical purposes; pharmaceuticals healing and strengthening the body; dietary supplements for medical purposes; dietetic foodstuffs adapted for medical purposes; dietetic substances adapted for medical use; herbal preparations; medicinal herbs; medicinal teas; biocides; biological preparations; antibacterial preparations; vaccines; serums; preparations derived from blood; biotechnological preparations; pharmaceutical preparations for skin care; anti-acne preparations, dental preparations and materials, pharmaceutical liquids; food for babies, plasters; plaster dressings; materials for dressings, sanitary preparations for medical purposes; disinfectants; veterinary preparations; chemical preparations for medical science; diagnostic preparations for medical purposes; disinfectants;

Class 30: Candies and sweetmeats; ice cream; coffee; tea; spices and herbs; food flavorings; flour; pasta; semolina; rice; chocolate/milk/coffee/tea based beverages; dressings, sushi.

Class 35: Market research, market analysis, specialist business consulting, outsourcing; distribution and dissemination of advertising materials – samples, prints, prospects and brochures, demonstrations of goods; advertising, including press, radio and television; renting of advertising space; arranging of exhibitions for business or advertising purposes; import of goods; sale of medicinal products, dietary supplements, cosmetics and medical devices.

9. Polish registered trade mark No 259 326, for the figurative mark  for the following goods:

Class 3: Cosmetics, soaps, cosmetic creams, skin whitening creams, pastes, lotions, peelings, nail polish, cosmetic masks, lip balms, antiperspirants as antisweat preparations, bath preparations, cosmetic preparations for weight loss, shaving preparations; breath fresheners in the form of aerosol, preparations of care of teeth and mouth, preparations for cleaning dentures, teeth whitening gels and strips, hair care preparations, shampoos, sunbathing preparations, perfumery preparations, perfumes, tissues impregnated with cosmetics, preparations for depilation, toiletries, sanitary preparations, cleaning, polishing, scouring and abrasive preparations; preparations used in laundry, including whitening preparations; essential oils.

Class 5: Medicated cosmetics; pharmaceutical preparations; medical products; vitamins, minerals, mineral food supplements; mineral water for medical purposes; pharmaceuticals healing and strengthening the body; dietary supplements for medical purposes; dietetic foodstuffs adapted for medical purposes; dietetic substances adapted for medical use; herbal preparations; medicinal herbs; medicinal teas; biocides; biological preparations for medical purposes; biological preparations for veterinary purposes, antibacterial preparations; vaccines; serums; blood plasma, blood for medical purposes, biotechnological preparations for medical purposes; pharmaceutical preparations for skin care; anti-acne preparations, dental preparations and materials, pharmaceutical liquids; food for babies, plasters; plaster materials for dressings; plaster materials for surgery, plaster materials, sanitary preparations for medical purposes; disinfectants; veterinary preparations; chemical preparations for medical science; diagnostic preparations for medical purposes; disinfectants for hygienic purposes, chemical disinfectants for toilets.

Class 10: Medical devices; medical apparatus and instruments, diagnostic apparatus for medical purposes, analysis apparatus for medical purposes, feeding bottles for babies, surgical apparatus and instruments, dental apparatus and instruments, physiotherapy equipment, cases fitted for use by surgeons and doctors, orthopaedic articles, babies’ pacifers (teats), dressing plasters, hygienic plasters, cushions (pads) for medical purposes, syringes for medical purposes, veterinary apparatus and equipment.

10. Polish registered trade mark No 259 775 for the word mark 'APTEO PLUS' for the following goods:

Class 3: Cosmetics; soaps, creams, pastes, lotions, peelings, nail polish, cosmetic masks, lip balms, antiperspirants, bath preparations, cosmetic preparations for weight loss, shaving preparations; breath fresheners in the form of aerosol, preparations of care of teeth and mouth, preparations for cleaning dentures, teeth whitening gels and strips, hair care preparations, shampoos, sunbathing preparations, perfumery preparations, perfumes, tissues impregnated with cosmetics, preparations for depilation, toiletries and cosmetic preparations, sanitary preparations included in this class, cleaning, polishing, scouring and abrasive preparations; preparations used in laundry, including whitening preparations; essential oils.

Class 5: Medicated cosmetics; pharmaceutical preparations; medical products; vitamins, minerals included in this class; mineral food supplements; mineral water for medical purposes; pharmaceuticals healing and strengthening the body; dietary supplements for medical purposes; dietetic foodstuffs adapted for medical purposes; dietetic substances adapted for medical use; herbal preparations; medicinal herbs; medicinal teas; biocides; biological preparations for medical and/or veterinary purposes; antibacterial preparations; vaccines; serums; preparations derived from blood; biotechnological preparations for medical and/or veterinary purposes; pharmaceutical preparations for skin care; anti-acne preparations and dental preparations, pharmaceutical liquids; food for babies, plasters; plaster materials for dressings; materials for dressings, sanitary preparations for medical purposes; disinfectants; veterinary preparations; chemical preparations for medical science; diagnostic preparations for medical purposes; disinfectants.

Class 10: Medical devices included in this class; medical apparatus and instruments, diagnostic apparatus for medical purposes, analysis apparatus for medical purposes, feeding bottles for babies, surgical apparatus and instruments, dental apparatus and instruments, physiotherapy equipment, cases fitted for use by surgeons and doctors, orthopaedic articles, babies’ pacifers (teats), plasters included in this class, cushions (pads) for medical purposes, syringes for medical purposes, veterinary apparatus and equipment.

Since these marks cover essentially the same scope of goods and services in Classes 5, 10, 30 and 44, the outcome cannot be different with respect to services for which the opposition has already been rejected, namely industrial analysis and research services; design and development of computer hardware and software in Class 42. In any event, in relation to earlier goods and services in the same classes that should not have been contemplated in the above comparison and in relation to other earlier goods and services in other classes covered by these marks, namely those in Classes 3, 35 and 41, the same reasons for concluding to their dissimilarity with the remaining contested goods can be stated, namely that apart from being different in nature, purpose and method of use, the contested industrial analysis and research services; design and development of computer hardware and software in Class 42 and the earlier goods and services covered by the above marks are not targeted at the same public, are not sold by the same companies or through the same channels. Therefore, they are dissimilar.

Therefore, no likelihood of confusion exists with respect to the remaining 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. 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 goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Benoit VLEMINCQ

Martina GALLE

Frédérique SULPICE

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.