OPPOSITION No B 2 644 816
Celesio Ag, Neckartalstr. 155, D-70376 Stuttgart, Germany (opponent), represented by Unit4 IP Rechtsanwälte, Jägerstrasse 40, D-70174 Stuttgart, Germany (professional representative)
a g a i n s t
Asahi Intecc Co. Ltd, 1703 Wakita-cho, Moriyama-ku, Nagoya-shi, Aichi 463-0024, Japan (holder), represented by Winter Brandl Fürniss Hübner Röss Kaiser Polte Partnerschaft Mbb Patent- Und Rechtsanwaltskanzlei, Bavariaring 10, D-80336 Munich, Germany (professional representative).
On 14/03/2017, the Opposition Division takes the following
1. Opposition No B 2 644 816 is upheld for all the contested goods.
2. International registration No 1 254 798 is entirely refused protection in respect of the European Union.
3. The holder bears the costs, fixed at EUR 650.
The opponent filed an opposition against all the goods of international registration designating the European Union No 1 254 798. The opposition is based on international trade mark registration No 1 080 783 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 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, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.
- The goods
The goods on which the opposition is based are, inter alia, the following:
Class 10: Surgical, medical, dental and veterinary apparatus and instruments.
The contested goods are the following:
Class 10: Surgical, medical and dental apparatus and instruments, and their parts and accessories; medical guidewires, and their parts and accessories; IVR (interventional radiology) guidewires; PTCA (percutaneous transluminal coronary angioplasty) guidewires; spring guidewires; plastic clad guidewires; medical catheters and their parts and accessories; PTCA (percutaneous transluminal coronary angioplasty) guiding catheters; PTCA balloon catheters; angiographic catheters; micro catheters; occlusion catheters; ablation catheters; atherectomy catheters; stents and their parts and accessories.
Contested goods in Class 10
The contested surgical, medical and dental apparatus and instruments are identically mentioned in both lists of goods.
The contested their parts and accessories (surgical, medical and dental apparatus and instruments) are included in the broad category of the opponent’s surgical, medical, dental apparatus and instruments. These goods are identical.
The contested medical guidewires, and their parts and accessories; IVR (interventional radiology) guidewires; PTCA (percutaneous transluminal coronary angioplasty) guidewires; spring guidewires; plastic clad guidewires; medical catheters and their parts and accessories; PTCA (percutaneous transluminal coronary angioplasty) guiding catheters; PTCA balloon catheters; angiographic catheters; micro catheters; occlusion catheters; ablation catheters; atherectomy catheters; stents and their parts and accessories are included in the broad category of the opponent’s medical apparatus and instruments in Class 10. These goods are identical.
The holder, in its observations of 27/10/2016, points out that the contested goods are different from those of the opponent´s ones. However, as set forth above, the Opposition Division does not agree with this finding and cannot see any reason why these goods are not identical, as they are all considered to be medical apparatus and instruments.
- 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 mainly directed at business customers with specific professional knowledge or expertise in the medical field.
The degree of attention is rather high. The relevant goods can have severe consequences for a person’s health, for example during a surgery, and their price can be very high.
- The signs
Earlier trade mark
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 ‘CELESIO’. The contested sign is a word mark composed of the word ‘CELESON’.
It must be mentioned that the signs have no element which is clearly more dominant (visually eye-catching).
Neither of the two signs has a meaning, at least for a significant part of the public in the relevant territory. Consequently, the earlier mark and the contested sign have no element which is clearly more distinctive.
Visually, the signs coincide in the sequence of letters ‘C-E-L-E-S-(*)-O-(*)‘, of which the first five letters also appear in the same position; the letter ‘O’ is also contained in both marks, occupying the seventh position in the earlier mark versus the sixth position in the contested sign. On the other hand, they differ in the last letter ‘-N’ of the contested sign versus the penultimate letter ‘I’ of the earlier mark. Thus, the marks share six letters out of seven.
Furthermore, the first parts of the conflicting marks coincide. At this point it should be pointed out that consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.
Therefore, the signs are visually similar to a high degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters /C-E-L-E-S-/, present identically in both signs. Moreover, the marks share the sound of the letter /-O-/, albeit in a different position. The marks differ in the sound of the last letter /-N/ of the contested sign versus the sound of the penultimate letter /-I-/ of the earlier mark. The marks are aurally similar to a high degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Neither of the signs has a meaning for, at least a significant part of the public in the relevant territory. 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.
- 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 territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- 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 (eighth recital of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 18; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22).
Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).
The goods are identical and the level of attention of the relevant public is high. The earlier mark has a normal degree of distinctiveness. The signs are visually and aurally similar to a high degree, whereas the conceptual comparison remains neutral.
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). Having said that, it is stressed that 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).
In light of the foregoing and, in particular the identity between the goods and the high similarities between the signs, there is a likelihood of confusion on the part of the public, this even taking into account the higher degree of attention.
Therefore, the opposition is well-founded on the basis of the opponent’s international trade mark registration No 1 080 783 designating the European Union. It follows that the contested trade mark must be rejected for all the contested goods.
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
Chantal VAN RIEL
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.