OPPOSITION No B 2 750 035

Nobel Biocare Services AG, Balz Zimmermann-Strasse 7, 8302 Kloten, Switzerland (opponent), represented by Zacco Sweden AB, Valhallavägen 117, 114 85, Stockholm, Sweden (professional representative)

a g a i n s t

Bernd Milbrodt, Deutschherrenstraße 45, 53177 Bonn, Germany (applicant), represented by Hübsch & Weil, Patent- und Rechtsanwaltskanzlei, Patentanwalt Dirk Hübsch, Rechtsanwalt Christian Weil, Partnerschaft mbB, Oststr. 9-11, 50996 Köln, Germany (professional representative).

On 13/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 750 035 is partially upheld, namely for the following contested goods and services:

Class 10:        Surgical, medical and dental apparatus and instruments; artificial teeth; dental implants; holding screws for dental implants; abutments for dental implants; impression posts for dental implants; gingiva formers.

Class 35:        Retailing and/or wholesaling in relation to surgical, medical or dental instruments and apparatus, artificial teeth, dental implants.

Class 41:        Provision of medical instruction courses; conducting of courses in the field of implantology.

2.        European Union trade mark application No 14 809 008 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 14 809 008 for the word mark ‘CEOS’. The opposition is based on international trade mark registration No 1 157 626 designating the European Union for the word mark ‘creos’. 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 and services

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

Class 10:        Bone compositions consisting of granules and substrates for use in the repair and replacement of bones, in the form of biological or artificial bone, bone grafts or implants; bone graft substitutes; artificial skin replacing membranes, artificial tissue replacing membranes.

The contested goods and services are the following:

Class 10:        Surgical, medical and dental apparatus and instruments; artificial teeth; dental implants; holding screws for dental implants; abutments for dental implants; impression posts for dental implants; gingiva formers.

Class 35:        Retailing and/or wholesaling in relation to surgical, medical or dental instruments and apparatus, artificial teeth, dental implants, holding screws for dental implants, abutments for dental implants, impression posts for dental implants, gingiva formers.

Class 41:        Provision of medical instruction courses; conducting of courses in the field of implantology.

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 10

The contested surgical, medical and dental apparatus and instruments cover a broad range of therapeutic items used in the treatment of diseases, physical conditions or injuries in humans which include, as a broader category, or overlap with, the opponent’s bone compositions consisting of granules and substrates for use in the repair and replacement of bones, in the form of biological or artificial bone, bone grafts or implants. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested artificial teeth, dental implants overlap with the opponent’s bone compositions consisting of granules and substrates for use in the repair and replacement of bones, in the form of biological or artificial bone, bone grafts or implants. Therefore, they are identical.

The contested holding screws for dental implants, abutments for dental implants, impression posts for dental implants, gingiva formers are similar to the opponent’s bone compositions consisting of granules and substrates for use in the repair and replacement of bones, in the form of biological or artificial bone, bone grafts or implants insofar as they are both used in dental treatments that involve artificially modifying dentition and surgery of the teeth and jaw bones. Therefore, they have the same distribution channels, they target the same public and they are complementary.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

The same principles apply to services rendered in connection with other types of services that consist exclusively of activities revolving around the actual sale of goods, such as retail store services, wholesale services, internet shopping, catalogue or mail order services in Class 35.

Therefore, the contested retailing and/or wholesaling in relation to surgical, medical or dental instruments and apparatus, artificial teeth, dental implants are similar to a low degree to the opponent’s bone compositions consisting of granules and substrates for use in the repair and replacement of bones, in the form of biological or artificial bone, bone grafts or implants in Class 10.

Retail services related to the sale of particular goods and other goods are not similar. It should be remembered that in principle goods are not similar to services. Too broad a protection would be given to retail services if similarity is found where the goods sold at retail are only highly similar or similar to the goods covered by the other mark.

Therefore, the contested retailing and/or wholesaling in relation to holding screws for dental implants, abutments for dental implants, impression posts for dental implants, gingiva formers are dissimilar to the opponent’s goods in Class 10.

Contested services in Class 41

The contested provision of medical instruction courses; conducting of courses in the field of implantology are specialised courses to train medical and dental professionals. These training services include courses that will allow those who undertake them to perform surgical and prosthetic procedures, including procedures that involve dental products, such as implants. Due to the high degree of expertise required, the providers of the courses (e.g. courses in the field of implantology) and the producers of the goods (e.g. implants) that are used as learning materials can be the same, can have the same distribution channels and can target the same public.

Therefore, the contested provision of medical instruction courses; conducting of courses in the field of implantology are similar to the opponent’s bone compositions consisting of granules and substrates for use in the repair and replacement of bones, in the form of biological or artificial bone, bone grafts or implants in Class 10.

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 to varying degrees are directed at business customers with specific professional knowledge or expertise in the medical field (e.g. dentists). The degree of attention will be higher than average due to the specialised nature of the goods and services and their direct effects on the state of health of the patients/users.

3. The signs

creos	CEOS
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 marks are word marks consisting of one element. In the case of word marks, the words themselves are protected, not their written form. Therefore, it is irrelevant whether word marks are in lower or upper case letters, or a combination thereof.

Both elements are distinctive, as they have no meaning in the relevant territory.

In its observations, the applicant claims that the letters ‘os’, included in both signs, will be perceived as the Latin word for bone. In the view of the Opposition Division, the relevant public will not dissect the signs into two parts but will perceive them as a whole and therefore the applicant’s claim has to be set aside. Moreover, according to settled case-law, word marks should not be artificially dissected. Dissection is not appropriate unless the relevant public will clearly perceive the components in question as separate elements, which is not the case here.

The applicant also argues that the earlier mark has a low degree of distinctiveness based on the existence of other companies that use the element ‘creos’ as part of their names, the fact that there are several older marks containing the element ‘os’ used in conjunction with dental products, and the fact that there are many bone replacement materials with names that contain the letters ‘os’. In support of its arguments, the applicant provides two extracts of company names from the internet, a list of company and product names, and a list of bone replacement materials extracted from Implantologie Journal 5/2016.

As regards the applicant’s first argument, the Opposition Division notes that the two companies mentioned by the applicant are active in different fields of dental treatments. As regards the second argument, the examples provided by the applicant are quite different in the overall impression conveyed. Finally, the existence of several replacement materials or dental products containing the letters ‘os’ is not per se particularly conclusive, as it does not necessarily reflect the situation in the market and it cannot be assumed that such materials are widely known or effectively used. Under these circumstances, the applicant’s claims must be set aside.

Visually and aurally, the signs coincide in four letters, ‘C*EOS’, and differ in only the second letter, ‘R’, in the earlier mark. Importantly, the signs coincide in their first letters and in the final combination of letters, ‘EOS’. Furthermore, from an aural point of view, the sound of the additional letter, ‘R’, in the earlier mark has a low impact on the pronunciation of the signs as a whole, as their lengths and rhythms are similar.

Therefore, the signs are visually and aurally similar to a high degree.

Conceptually, neither of the signs has a meaning for 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.

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 territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

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).

In the present case, the contested goods and services are partly identical, partly similar to varying degrees and partly dissimilar to the opponent’s goods.

The marks are visually and aurally similar to a high degree, since they differ in only one letter. Furthermore, there is no perceived conceptual difference to offset such similarities. 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).

In an overall assessment of the relevant factors of the case, it is concluded that the difference identified between the signs, namely one letter, is clearly insufficient to enable the relevant public, even with a higher than average degree of attention, to safely distinguish between the signs.

The applicant argues that the earlier mark is used with additional words and that the contested sign will also be used with additional words that will help to differentiate the signs. In the view of the Opposition Division, the assessment of the comparison of the signs must be based on the earlier mark and the contested sign that are the subjects of the proceedings. The fact that the earlier mark can be used with different descriptions and how the contested sign will be used are irrelevant. Therefore, the applicant’s argument has to be set aside.

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

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

Marta GARCÍA COLLADO

Jorge ZARAGOZA GOMEZ

Richard BIANCHI

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.