OPPOSITION No B 2 660 176

 

Mcubetechnology Co., Ltd., 803 Sinnae Techno Town, 485 Sangbong-dong, Jungnang-gu, Seoul  131-220, South Korea (opponent), represented by Viering, Jentschura & Partner mbB, Grillparzerstraße 14, 81675 München, Germany (professional representative)

 

a g a i n s t

 

Biocon Limited, 20th km., Hosur Road, Electronics City P.O., Bangalore, Karnataka, India (holder), represented by Michalski Hüttermann & Partner Patentanwälte mbB, Speditionstraße 21, 40221 Düsseldorf, Germany (professional representative)

 

On 05/05/2017, the Opposition Division takes the following

 

 

DECISION:

 

1.        Opposition No B 2 660 176 is upheld for all the contested goods, namely:

 

Class 5:         Pharmaceutical preparations used in the treatment of diabetes, renal disorder, cancer, heart diseases, autoimmune diseases, neurological disorder, bacterial and viral infections and hormonal disorder; safety pre-filled injections.

 

Class 10:         Medical and veterinary instruments and apparatus, namely insulin pens sold empty, insulin cartridges sold empty, injectable devices for biosimilars sold empty, and inhalers sold empty.

 

2.        International registration No 1 247 430 is refused protection in respect of the European Union for all of the contested goods. It may proceed for the remaining goods.

 

3.        The holder bears the costs, fixed at EUR 650.

 

 

REASONS:

 

The opponent filed an opposition against some of the goods of international registration designating the European Union No 1 247 430, namely against some of the goods in Class 5 and all the goods in Class 10. The opposition is based on international trade mark registration No 997 305 designating the European Union. 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

 

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

 

Class 10: Therapeutic apparatus for urinary incontinence, obstetric apparatus, physiotherapy apparatus, physical exercise apparatus for medical purposes, electric acupuncture instruments, ultra short wave therapy apparatus, ultrasonic therapy apparatus, catheters, electric massage apparatus; all aforementioned goods except for dental and surgical apparatus and instruments.

 

Following a limitation of the contested sign, the contested goods are the following:

 

Class 5: Pharmaceutical preparations used in the treatment of diabetes, renal disorder, cancer, heart diseases, autoimmune diseases, neurological disorder, bacterial and viral infections and hormonal disorder; safety pre-filled injections.

 

Class 10: Medical and veterinary instruments and apparatus, namely insulin pens sold empty, insulin cartridges sold empty, injectable devices for biosimilars sold empty, and inhalers sold empty.

 

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

 

The term ‘namely’, used in the holder’s list of goods to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

 

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.

 

It should also be noted that the limitation at the end of the specification of the opponent’s goods in Class 10 (all aforementioned goods except for dental and surgical apparatus and instruments) does not influence the outcome of the comparison of the goods made below as the contested goods are not related to dental or surgical apparatus and instruments. Therefore, for the sake of clarity, and considering that it would not alter the result of the comparisons, the aforementioned limitation will be taken into account but will not be mentioned in the comparisons that follow.

 

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 applicant argues that all the opponent’s goods in Class 10 are dissimilar to the contested goods in Class 5 because they have a different nature and use, are usually not expected to have the same commercial origin and have different distribution channels.

 

However, the contested pharmaceutical preparations used in the treatment of diabetes, renal disorder, cancer, heart diseases, autoimmune diseases, neurological disorder, bacterial and viral infections and hormonal disorder and safety pre-filled injections are similar to a low degree to the opponent’s broad category of catheters in Class 10.

 

Catheters are medical devices that can be inserted in the body to treat diseases (or perform a surgical procedure). By modifying the material or adjusting the way catheters are manufactured, it is possible to tailor catheters for cardiovascular, urological, gastrointestinal, neurovascular, and ophthalmic applications. Catheters are used for a wide range of different purposes such as drainage of urine from the urinary bladder or the kidney, administration of intravenous fluids, medication or parenteral nutrition, direct measurement of blood pressure, administration of oxygen and other breathing gases into the lungs, subcutaneous administration of insulin or other medications with use of an infusion set or insulin pumps. Therefore, the contested goods and the opponent’s catheters can target the same professional public and end users and can share the same distribution channels. Furthermore, the goods may be complementary to the extent that catheters can be essential to the administration of the contested goods.

 

Contested goods in Class 10

 

The applicant claims that there is no overlap between the relevant goods in Class 10 and, in particular, that the contested goods are completely different from the opponent’s electric acupuncture instruments; all aforementioned goods except for dental and surgical apparatus and instruments which are used by therapists on patients.

 

However, the contested medical and veterinary instruments and apparatus, namely insulin pens sold empty, insulin cartridges sold empty, injectable devices for biosimilars sold empty, and inhalers sold empty are similar to the opponent’s catheters.

 

The contested injectable devices for biosimilars and inhalers include injectable devices for biosimilar insulin and insulin inhalers and the opponent’s catheters include insulin catheters used together with infusion sets for subcutaneous insulin delivery. Therefore, all the contested goods in Class 10 and the opponent’s catheters can target the same professional public and end users; they can have the same purpose to administer insulin and be used together as injectable devices may be connected to catheters. Furthermore, these goods can share the same distribution channels and be manufactured by the same undertakings.

 

 

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.

 

The applicant contends that the opponent’s goods are only purchased by business customers and submitted extracts from a submission by the opponent to the FDA to show that bladder scanners sold by the opponent are intended to be used by qualified medical professionals. However, the contested goods have been compared with the opponent’s catheters which are not only directed at a professional public but may also be purchased directly by the end users. Therefore, in the present case, the goods found to be similar to varying degrees are directed at the public at large and at professionals in the medical field with specific professional knowledge or expertise.

 

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.

 

As regards the relevant goods in Class 10, taking into account that they are specialised goods for the treatment of diabetes and other serious illnesses and are also concerned with consumers’ state of health, the relevant public’s degree of attention will also be high.

 

Therefore, the degree of attention of both the public at large and of medical professionals in relation to all the relevant goods is considered high.

 

 

3. The signs

 

 

 

BioCon
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).

 

As a preliminary remark it should be noted that the applicant contends that the earlier mark is a figurative mark. However, as can be seen from the ROMARIN extract of the earlier international registration submitted by the opponent, it is depicted as a word mark and there is no description of any figurative elements under the Vienna Classification, which would be included if the earlier mark were to be a figurative mark.

 

Consequently, the earlier mark is the word mark ‘BioCon’ and the contested sign is a figurative mark consisting of the verbal element ‘Biocon’ depicted in bold black letters in standard typeface, the first being an uppercase letter whereas the rest are in lowercase. The verbal element of the contested sign is also preceded by a figurative element consisting of two black abstract shapes. The contested sign has no elements that could be considered clearly more dominant (visually eye-catching) than other elements. However, 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). Therefore, the relevant public will pay more attention to the verbal element of the contested sign than to the figurative element.

 

Although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a sign, containing a verbal element, 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). Bearing this in mind, it is reasonable to assume that the public will perceive the letters ‘bio’ and ‘con’ as separate components as ‘bio’ will be associated with a particular meaning, as explained below.

 

The element ‘bio’ of the signs derives from the Greek word ‘bios’ meaning ‘life’ and is a commonly used abbreviation for the word ‘biological’. Therefore, this part of both signs will be perceived by most of the public in the relevant territory as a weak element with little distinctive character. The ending of the verbal element of both signs, ‘con’, will not have any meaning, at least for part of the public in the EU, such as for the German-speaking public or for the relevant public in the Netherlands, Sweden and Denmark, for which ‘con’ will thus be perceived as distinctive. This part of the public in the relevant territory will perceive the meaning of ‘bio’ as outlined above since it is an abbreviation derived from the words for biological in these languages: ‘biologisch’ in German and Dutch and ‘biologisk’ in Swedish and Danish.

 

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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

 

Therefore, in the present case, the Opposition Division will first focus the comparison of the signs on the German-speaking public and the public in the Netherlands, Sweden and Denmark.

 

Visually, the signs coincide in the verbal element ‘BIOCON’ which is distinctive as a whole. However, they differ in the additional figurative element in the contested sign. Nevertheless, for the reasons outlined above, consumers will pay more attention to the verbal element of the contested sign.

 

The applicant argues that the earlier mark shows an unusual capitalization in the middle and that it is depicted in a different typeface. However, as clarified above, the earlier mark is a word mark. In the case of word marks, it is the word as such that is protected and not its written form. The applicant also argues that the figurative element at the beginning of the contested sign takes nearly a third of the sign and that, in the case of short signs small differences may lead to a different overall impression. However, as already clarified above, the figurative element will be given less weight than the verbal element in the overall impression produced by the contested sign. As regards the argument that smaller differences may lead to a different overall impression in relation to short signs as the public will more easily be able to perceive all of its single elements, suffice it to say that, regardless of whether a word of six letters is considered short or not, since both signs consist of the same verbal element, there are no differences between the words for the public to perceive.

 

In view of the above, and contrary to the arguments of the applicant, the signs are visually highly similar.

 

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territories, the pronunciation of the signs is identical.

 

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territories, the weak element ‘bio’, included in both signs, will be associated with the meaning explained above. To that extent, the signs are conceptually similar to a low degree.

 

 

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 goods in question from the perspective of the public in the relevant territories. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a weak element in the mark as stated above in section c) of this decision.

 

 

5. Global assessment, other arguments and conclusion

 

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and 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).

 

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 the present case, the goods at issue are similar to varying degrees and the degree of attention of the relevant public is high. The signs have been found to be visually highly similar, aurally identical and conceptually similar to a low degree.

For the reasons outlined in section c) of this decision, the earlier word mark for ‘BioCon’, which has a normal degree of distinctiveness, is identically reproduced in the contested sign. In view of this, even if there is an additional figurative element in the contested sign, the relevant public, despite displaying a high degree of attention, is still likely to believe that the relevant goods, including those that are only similar to a low degree, sold under the identical verbal element ‘BIOCON’, originate from the same or economically linked undertakings

 

Considering all the above, there is a likelihood of confusion on the part of the German-speaking public in the European Union and the public in the Netherlands, Denmark and Sweden. 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.

 

The applicant argues that the opponent’s therapeutic, obstetric and physiotherapy apparatus are special and sophisticated goods mainly purchased on a visual basis and submitted some extracts from the opponent’s website of two different product descriptions to prove the same. In view of this, according to the applicant, the visual aspect is more important and the signs are visually dissimilar. However, for the reasons outlined above in section c) of this decision, the signs at issue are visually highly similar overall and the verbal element in both signs is identical. Therefore, and although the applicant’s arguments did not concern any of the goods compared, even if some of the relevant goods would mainly be purchased on a visual basis, this could not alter the finding of a likelihood of confusion reached above.

 

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 997 305 designating the European Union. It follows that the contested trade mark must be rejected for all the contested goods.

 

 

COSTS

 

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

 

Since the holder is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

 

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

 

 

 

 

The Opposition Division

 

 

Steve HAUSER

Sam GYLLING

Benoît VLEMINCQ

 

 

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

 

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.