OPPOSITION No B 2 755 992

Broadley-James Corporation, 19 Thomas, Irvine, California 92618, United States of America (opponent), represented by Bird & Bird LLP, 12 New Fetter Lane, London, EC4A 1JP, United Kingdom (professional representative)

a g a i n s t

Bionet Servicios Tecnicos, S.L., Parque Tecnológico Fuente Álamo. Ctra. del Estrecho-Lobosillo km. 2 – Avda. Azul, parcela 2.11.2, 30320 Fuente Álamo, Spain (applicant), represented by Jaudenes Abogados, C/ Maestro Serrano 10, 28290 Las Rozas (Madrid), Spain (professional representative).

On 24/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 755 992 is partially upheld, namely for the following contested goods:

Class 9:         Probes and measuring apparatus for use in biotechnology, except those intended for artificial reproduction; apparatus for breeding cell cultures (not for medical purposes); cell culture vessels with sensors; bioreactors for use in laboratories, bioreactors for research use; filtering units for laboratory use; ultra filtration membranes for laboratory apparatus; software for automated control systems and control of equipment and processes for bioreactors, fermentation systems and bioprocesses; tangential flow filter apparatus machines for preparation of biological samples: bioreactors.

2.        European Union trade mark application No 15 350 762 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 350 762 for . As EUTM registration No 3 299 931 was withdrawn on 27/04/2017, the opposition is now only based on European Union trade mark registration No 11 153 161 for the word ‘BIONET’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority 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.

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 the trade mark on which the opposition is based.

In the present case, the date of filing of the contested trade mark is 19/04/2016. Earlier trade mark No 11 153 161 was registered on 27/03/2013. Therefore, the request for proof of use is inadmissible. The opponent was informed in this regard by the Office’s letter of 24/03/2017.

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 9:         Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus; all goods included in the alphabetical list of the Nice classification of this class; measuring and laboratory equipment; peripherals for controlling variable fermentation, sensors and controllers for science and industry, sensors and electrodes for measuring, monitoring and controlling aqueous solutions; parts and accessories for all the foregoing goods; automated control systems and controller software for monitoring and controlling equipment and processes for bioreactors, fermentation systems and bioprocess systems.

Class 41:        Education; providing of training; entertainment; sporting and cultural activities; all services included in the alphabetical list of the Nice classification of this class; providing of training in the field of bioprocess systems and industries.

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; all services included in the alphabetical list of the Nice classification of this class; research, development, engineering and testing services in the field of bioprocess systems and industries; installation, repair and maintenance of software in the field of bioprocess systems.

The contested goods are the following:

Class 7:         Filtering machines; strainers (machines), portable filtration units [machines].

Class 9:         Probes and measuring apparatus for use in biotechnology, except those intended for artificial reproduction; apparatus for breeding cell cultures (not for medical purposes); cell culture vessels with sensors; bioreactors for use in laboratories, bioreactors for research use; filtering units for laboratory use; ultra filtration membranes for laboratory apparatus; software for automated control systems and control of equipment and processes for bioreactors, fermentation systems and bioprocesses; tangential flow filter apparatus machines for preparation of biological samples; bioreactors.

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 goods in Class 7

When comparing the contested goods in Class 7 with the opponent’s goods in Class 9, these are considered dissimilar. The opponent’s goods are used in several fields, such as in the scientific, nautical, optical, electrical, data processing, photographic, cinematographic, teaching and laboratory fields, while the contested goods are very specific ones that are rather used in industry with the purpose of filtration and straining. Even though the opponent’s goods also contain peripherals for controlling variable fermentation, sensors and controllers for industry, also these have a different nature and purpose when compared to the contested goods. All these goods are not in competition or complementary, have different distribution channels, sales outlets and are normally produced by different kind of undertakings. The same applies when comparing the contested goods with the opponent’s services in Class 41 (services related to education, entertainment, sporting and cultural activities) and in Class 42 (scientific and technological services and services related to computer hardware and software), as not only are goods different from services in the sense that goods are tangible, while services are not, they also have a different nature and purpose. These goods and services are not complementary nor in competition. They have different distribution channels and target another public. Furthermore, usually the company who manufactures the contested goods is the end consumer of the earlier services. In other words, it is unlikely that an undertaking involved in the manufacturing of filtering machines and strainers would provide technological services, industrial analysis and research services to third parties under the same trade mark.

In its observations, the opponent claims that the earlier goods in Class 9 also cover filtration apparatus for scientific purposes, therefore, they may be offered by the same entities as the contested goods in Class 7. It also states that the goods in conflict are complementary to each other, are offered via the same distribution channels and target the same relevant public. The Opposition Division does not deny that the earlier goods might contain filtration apparatus for scientific purposes as mentioned by the opponent, however, the contested good in Class 7 are definitely not intended to be used for scientific purposes, as they are designed for industry, otherwise they would have been classified in Class 9 by the applicant. This is also supported by the nature of the goods in question defined by the number of the respective class of the Nice Classification. Considering this, it is rather unlikely that the conflicting goods will be perceived as coming from the same undertaking.  Under these circumstances, the above opponent’s argument must be set aside.    

Contested goods in Class 9

The contested probes and measuring apparatus for use in biotechnology, except those intended for artificial reproduction; apparatus for breeding cell cultures (not for medical purposes); cell culture vessels with sensors; bioreactors for use in laboratories, bioreactors for research use; filtering units for laboratory use; ultra filtration membranes for laboratory apparatus; tangential flow filter apparatus machines for preparation of biological samples; bioreactors are included in the broad category of the opponent’s scientific and measuring apparatus and instruments in Class 9. Therefore, they are identical.

The contested software for automated control systems and control of equipment and processes for bioreactors, fermentation systems and bioprocesses are included in the broad category of the opponent’s computer software in Class 9. Therefore, they are identical.

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 found to be identical are directed at customers with specific professional knowledge or expertise, for example in the biotechnology. The degree of attention is rather high, because of the high price, (specialised) nature and the (technical) conditions of the purchased goods.

3. The signs

BIONET
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 earlier mark is a word mark consisting of the word ‘BIONET’, which means not only that it does not claim any particular figurative element or appearance, but also that differences in the use of lower or upper case letters are immaterial.

The contested sign is a figurative mark consisting of the word ‘bionet’ written in a slightly fancy typeface with the first element ‘bio’ in light grey and the element ‘net’ in black. On the left side of the verbal elements appears a figurative element in the form of a circle with some circles inside. Underneath appears the word ‘ENGINEERING’, in a much smaller typeface in grey capital letters.

The word ‘bionet’, together with the figurative element, are the co-dominant elements of the contested sign, as they are the most eye-catching compared to the word ‘ENGINEERING’, due to their size and position in the mark.

Regarding the earlier mark and the contested sign, the Court has held that, although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words they know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57). With respect to the contested sign, the element ‘bio’ is visually separated from the remaining element, because of its different colour when compared to the element that follows. Furthermore, in the case of the earlier mark, even though the letters ‘BIO’ are not visually separated from the remaining letters, consumers naturally look for a meaning when reading a word. Indeed, it can be reasonably assumed that the public will readily discern the prefix ‘BIO’ as referring to organic, biological and also to ‘biotechnology’ or ‘environmental sustainability’. This is justified by the fact that nowadays it is widely used in commerce to refer to organic and/or environmentally friendly products. This has also been confirmed by the General Court, which held that the term ‘bio’ is used on the market to indicate that the goods in question contribute to environmental sustainability, that they use natural products or that they have been produced organically (10/09/2015, T-610/14, BIO organic, EU:T:2015:613, § 17; 21/02/2013, T-427/11, Bioderma, EU:T:2013:92, § 45, 46).

Considering this and with respect to the present case, the element ‘BIO’ included in both signs, is a weak element, given that it refers to the fact that the relevant goods are intended to be used in biotechnology and/or for biotechnological purposes. The remaining element ‘NET’, that the signs also have in common, refers to a net or a network, but it is distinctive with respect to the goods at stake and, consequently, it is the most distinctive verbal element.

The figurative element of the contested sign is fanciful and for the goods at stake it is normally distinctive. Furthermore, the word ‘ENGINEERING’ in the contested sign is not only less dominant, but it is also weak, since it is perceived as meaning: ‘the work involved in designing and constructing engines and machinery, or structures, such as roads and bridges’ (see Collins English Dictionary online) and in this way it rather refers to the fact that the applicant’s company is involved in the field of engineering, namely machinery constructing, and that it manufactures products related to that field.

For the sake of completeness, the Opposition Division points out that, since the targeted consumer is a rather specific professional public whose level of attention is high and for which it is reasonable to assume that its level of understanding of English is also high, being their working language, all the words ‘BIO’, ‘NET’ and ‘ENGINEERING’, as explained above, will be understood throughout the whole European Union.

Visually, the signs coincide in the sequence of letters ‘B-I-O-N-E-T’, with the only difference that in case of the contested sign they are written in two colours and appear in a slightly fancy typeface. Even though the element ‘BIO’ is considered weak in both marks, it is followed by the distinctive element ‘NET’. Furthermore, in the contested sign, ‘BIONET’, is one of the two co-dominant elements of the sign. On the other hand, the marks differ in the additional elements of the contested sign, namely the word ‘ENGINEERING’, which is not only less dominant, but also a less distinctive element of this sign and in the remaining figurative element, as pointed out above.  

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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). This is also applicable in the case at hand with respect to the figurative element in the contested sign.

Regarding the slightly fancy typeface in which the verbal elements of the contested sign are written, this stylisation must be considered not that elaborate or sophisticated and it will not lead the consumer’s attention away from the elements it seems to embellish.

Therefore, considering all the circumstances described above, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the syllables /BI-O-NET/, present identically in both signs. As the word ‘ENGINEERING’ of the contested sign is not only weak, but also appears in such a small lettering, the Opposition Division is of the opinion that this word is most likely not to be pronounced, at least by a part of the public. In this regard the Opposition Division does not agree with the applicant, as argued in its observations, where it points out that the contested sign will be pronounced in seven syllables, including the word ‘ENGINEERING’. The marks are aurally identical, for at least a part of the public, and for another part of the public, they are similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks and their individual elements. The elements ‘BIO’, ‘NET’ and ‘ENGINEERING’ are understood, as seen above. As the elements ‘BIO’ and ‘ENGINEERING’ are weak, they have little impact on the conceptual comparison. However, both marks also contain the concept of the distinctive element ‘NET’. Therefore, the marks are conceptually similar to a high degree.  

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the 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, 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

A likelihood of confusion (including a likelihood of association) 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.

The goods and services at issue have been found partly identical and partly dissimilar. The relevant public is the professional public and the level of attention is rather high. The earlier mark has a normal degree of distinctiveness.

The marks have been found visually similar to an average degree, aurally identical, for at least a part of the public, and for another part, they are similar to a high degree, to the extent that the earlier mark is fully incorporated into the contested sign, as well as the marks are conceptually similar to a high degree.

In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers with a high degree of attention need to rely on the their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

The applicant argues, in its observations of 14/03/2017 (in the section named ‘Coexistence’), that its EUTMA has a reputation. The right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings. Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts which happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM. Therefore, the applicant’s argument must be set aside

Considering all the above, the Opposition Division finds that there is a likelihood of confusion and, therefore, the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 11 153 161.

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

The rest of the contested goods 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 goods cannot be successful.

 

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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Martin MITURA

Chantal VAN RIEL

Saida CRABBE

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.