OPPOSITION No B 2 708 165

dm-drogerie markt GmbH + Co. KG, Carl-Metz-Str. 1, 76185 Karlsruhe, Germany (opponent), represented by Lemcke, Brommer & Partner Patentanwälte Partnerschaft mbB, Siegfried-Kühn-Straße 4, 76135 Karlsruhe, Germany (professional representative)

a g a i n s t

Densitas Inc., 1344 Summer Street, Suite 311.2, Halifax, Nova Scotia B3H 0A8, Canada (applicant), represented by Lewis Silkin LLP, 5 Chancery Lane, Clifford’s Inn, London EC4A 1BL, United Kingdom (professional representative).

On 21/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 708 165 is upheld for all the contested goods and services.

2.        European Union trade mark application No 14 552 475 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 552 475 for the word mark ‘DM’. The opposition is based on European Union trade mark registration No 11 654 456 for the word mark ‘DM’ and international trade mark registration No 1 066 507 designating the European Union for the word mark ‘DM’. 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 European Union trade mark registration No 11 654 456 ‘DM’.

1. The goods and services

The opposition is based, inter alia, on the following goods and services:

Class 9:        Scientific, nautical, photographic, cinematographic, optical, weighing, 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; Racks (Photographic -); Alarms; Alcoholmeters; Answering machines; Distance recording apparatus; Breathing apparatus, except for artificial respiration; Respiratory masks, other than for artificial respiration; Respirators for filtering air; Electric batteries; Photometers; Downloadable music files; Phototelegraphy apparatus; Video telephones; Diaphragms [photography]; Anti-glare glasses; Anti-dazzle shades; Flashlights [photography]; Photographic flashlamps; Letter scales; Spectacles [optics]; Spectacle cases; Frames for glasses; Lenses for eyeglasses; Compact disc players; Magnetic encoders; Cd roms; Discs (Compact -) [audio-video]; Computer programmes [programs], recorded; Computer software, recorded; Computer operating programs, recorded; Peripherals adapted for use with computers; Programs (Computer -) [downloadable software]; Games software; Computer keyboards; Data processing apparatus; Transparencies [photography]; Transparency projection apparatus; Theft prevention installations, electric; Anti-theft warning apparatus; Digital photo frames; Dictating machines; Regulators [dimmers] (Light -), electric; Floppy disks; Disk drives for computers; Dosimeters; Printers for computers; Pressure measuring apparatus; Lamps (Darkroom -) [photography]; Darkrooms [photography]; DVD players; Socks, electrically heated; Locks, electric; Electrical cables; Thermionic valves; Electronic display boards; Electronic publications, downloadable; Electronic diaries; Electrified fences; Audio- and video-receivers; Distance measuring apparatus; Ergometers; False coin detectors; Facsimile machines; Television apparatus; Telephones; Fire alarms; Fire resistant clothing; Exposed film; Cinematographic cameras; Film cutting apparatus; Filters for respiratory masks; Camera filters; Cameras; Photocopiers; Hands free kits for phones; Radiotelephony sets; Gas testing instruments; Teller machines (Automated -) [ATM]; Juke boxes, musical; Money counting and sorting machines; Weights; Global Positioning System [GPS] apparatus; Semiconductors; Altimeters; Dog whistles; Hygrometers; Identity cards, magnetic; Interfaces for computers; Electricity conduits; Wire connectors [electricity]; Smart cards [integrated circuit cards]; Cassette players; Plates (Carriers for dark -) [photography]; Cinematographic film, exposed; Optical character readers; Terminals [electricity]; Bells [warning devices]; Downloadable ring tones for mobile phones; Eyeglasses; Coaxial cables; Encoded magnetic cards; Collectors, electric; Compasses [measuring instruments]; Contact lenses; Containers for contact lenses; Headphones; Battery chargers; Computers; Computer carrying cases; Lasers, not for medical purposes; Loudspeakers; Speaker enclosures; Ducts [electricity]; Readers [data processing equipment]; Light-emitting diodes [LED]; Signs, luminous; Light-emitting electronic pointers; Rules [measuring instruments]; Air analysis apparatus; Magnifying glasses [optics]; Magnetic tapes; Magnetic tape units for computers; Magnetic data carriers; Mouse [computer peripheral]; Mouse mats; Megaphones; Measuring instruments; Measuring devices, electric; Measuring instruments; Measuring spoons; Rules [measuring instruments]; Microphones; Microprocessors; Microscopes; Mobile phones; Modems; Monitors [computer hardware]; Monitors [computer programs]; Cinematographic film (Apparatus for editing -); Teeth protectors; Downloadable music files; Food analysis apparatus; Nose clips for divers and swimmers; Vehicles (Navigation apparatus for -) [on-board computers]; Navigational instruments; Notebook computers; Ear plugs for divers; Opticians’ goods; Optical apparatus and instruments; Optical data carriers; Optical fibers; Optical discs; Radio pagers; Physics (Apparatus and instruments for -); Record players; Plotters; Projectors; Projection screens; Radar apparatus; Radios; Car radios; Frames for photographic transparencies; Centering apparatus for photographic transparencies; Smoke detectors; Calculators; Slide-rules; Reflecting discs for wear, for the prevention of traffic accidents; Cash registers; Riding helmets; Safety nets; Safety tarpaulins; Life jackets; Life saving apparatus and equipment; Life jackets; Hourglasses; Glazing apparatus for photographic prints; Scanners [data processing equipment]; Recording discs; Switches, electric; Switchgear [electric]; Distribution consoles [electricity]; Mechanical signs; Screens [photography]; Head protection; Protective helmets for sports; Protective masks; Transmitting sets [telecommunication]; Electronic tags for goods; Signalling panels, luminous or mechanical; Sunglasses; Computer memory devices; Cases especially made for photographic apparatus and instruments; Mirrors [optics]; Goggles for sports; Speaking tubes; Sprinkler systems for fire protection; Spools [photography]; Stands for photographic apparatus; Stands for photographic apparatus; Clocks (Time -) [time recording devices]; Plugs, sockets and other contacts [electric connections]; Covers for electric outlets; Bar code readers; Buzzers; Tachometers; Pocket calculators; Electronic pocket translators; Telescopes; Temperature indicating apparatus; Temperature indicator labels, not for medical purposes; Thermometers, not for medical purposes; Sound recording strips; Apparatus for recording sound; Tape recorders; Sound recording carriers; Amplifiers; Apparatus for the reproduction of sound; Portable media players; Personal stereos; Walkie-talkies; Drying apparatus for photographic prints; Drying racks [photography]; Filters for ultraviolet rays, for photography; Clothing for protection against accidents, irradiation and fire; Gloves for protection against accidents; Nets for protection against accidents; Protection devices for personal use against accidents; Teaching apparatus; Audiovisual teaching apparatus; USB flash drives; Enlarging apparatus [photography]; Releases (Shutter -) [photography]; Video cassettes; Video screens; Camcorders; Video cassettes; Video recorders; Video game cartridges; Balancing apparatus; Weighing apparatus and instruments; Weight measuring instruments; Vehicle breakdown warning triangles; Washing trays [photography]; Spirit levels; Anemometers; Wind socks for indicating wind direction; Animated cartoons; Time recording apparatus; Time switches, automatic; Batteries for lighting; All of the aforesaid goods excluding media receivers, amplifiers, transmitters and cables for use in relation to a transport system for delivery of high definition digital video, digital audio, streaming audio and high-speed control.

Class 10:        Artificial limbs, eyes and teeth; Orthopedic articles; Suture materials; Aerosol dispensers for medical purposes; Cases fitted for use by surgeons and doctors; Teething rings; Surgical apparatus and instruments; Surgical cutlery; Suture needles; Sponges (Surgical -); Surgical mirrors; Defibrillators; Ice bags for medical purposes; Bandages, elastic; Electric acupuncture instruments; Finger guards for medical purposes; Feeding bottle teats; Hearing protection devices; Body cavities (Appliances for washing -); Plaster bandages for orthopedic purposes; Belts for medical purposes; Belts for orthopaedic purposes; Hair prostheses; Gloves for medical purposes; Urinals [vessels]; Blankets, electric, for medical purposes; Pads (Heating -), electric, for medical purposes; Hearing aids; Corsets for medical purposes; Douche bags; Cushions for medical purposes; Stockings for varices; Crutches; Lamps for medical purposes; Lasers for medical purposes; Air pillows for medical purposes; Air cushions for medical purposes; Air mattresses, for medical purposes; Masks for use by medical personnel; Massage apparatus; Esthetic massage apparatus; Gloves for massage; Medical apparatus and instruments; Physical exercise apparatus, for medical purposes; Spoons for administering medicine; Breast pumps; Nonchemical contraceptives; Ear picks; Plugs (Ear -) [ear protection devices]; Orthopedic articles; Arch supports for footwear; Bandages for joints, anatomical; Orthopaedic knee bandages; Orthotic footwear; Orthopedic soles; Condoms; Pulse meters; Pumps for medical purposes; Feeding bottle receptacles; Feeding bottle valves; Scissors for surgery; Surgical splints; Slings [supporting bandages]; Dummies for babies; Scalpels; Containers especially made for medical waste; Elastic stockings for surgical purposes; Thermal packs for first aid purposes; Thermometers for medical purposes; Ultraviolet ray lamps for medical purposes; Maternity belts; Incontinence sheets; Hypogastric belts; Urological apparatus and instruments; Sprayers for medical purposes; Veterinary apparatus and instruments; Vibromassage apparatus; Compresses (Thermo-electric -) [surgery]; Mirrors for dentists; Tongue scrapers.

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; Updating of computer software; Architectural consultation; Consultancy in the field of energy-saving; Information technology [IT] consulting services; Consultancy in the design and development of computer hardware; Web site design consultancy; Providing search engines for the internet; Computer software consultancy; Computer software design; Computer system design; Architecture; Design of interior decor; Dress designing; Packaging design; Computer virus protection services; Digitization of documents [scanning]; Chemical analysis; Computer programming; Monitoring of computer systems by remote access; Cosmetic research; Creating and maintaining web sites for others; Graphic arts design; Hosting computer sites [web sites]; Installation of computer software; Data conversion of computer programs and data [not physical conversion]; Conversion of data or documents from physical to electronic media; Duplication of computer programs; Server hosting; Software as a service [SaaS]; Styling [industrial design]; Maintenance of computer software; Recovery of computer data.

Class 44:        Beauty care for human beings or animals; Agriculture, horticulture and forestry services; Beauty salons; Visagists' services; Massage; Gardening; Hair implantation; Manicuring; Plastic surgery; Lawn care; Vermin exterminating for agriculture, horticulture and forestry; Telemedicine services; Animal grooming; Weed killing; Medical equipment rental; Rental of sanitation facilities.

The contested goods and services are the following:

Class 9:        Software and pre-recorded digital discs, drives and media for and related to breast imaging, mammography, digital mammography, medical and health examination relating to breasts and breast cancer, oncology relating to breasts, assistance with radiology, radiology support, breast cancer risk assessment, breast cancer diagnosis, breast cancer management, breast cancer recovery, triage and treatment relating to breast cancer and mammography; software and pre-recorded digital discs, drives and media for and related to medical screening and medical tests relating to breast cancer, and related performance and quality assessment; computer software for use in breast health information systems for receiving, processing, transmitting and displaying data, and controlling and managing patient health information; computer software for processing radiological images relating to breast health and breast examination, diagnosis, treatment and related recovery; computer software for quality control relating to breast examination, diagnosis, treatment and related recovery; computer software using algorithms to facilitate the comparison of metrics, medical and healthcare analytics, and data capture relating to breast examination, health, diagnosis, treatment and related recovery; none of the aforementioned products provided by a retailer, pharmacist or drug store.

Class 42:        Research, development, engineering, design, installation and support services related to software for breast imaging, digital mammography, assistance with radiology, radiology support, breast cancer risk assessment, breast cancer diagnosis, breast cancer management, breast cancer recovery, triage and treatment relating to breast cancer and mammography, medical screening and medical tests relating to breast cancer, and related performance and quality assessment; provision of software and online platforms for and related to breast imaging, digital mammography, assistance with radiology, radiology support, breast cancer risk assessment, breast cancer diagnosis, breast cancer management, breast cancer recovery, triage and treatment relating to breast cancer and mammography, medical screening and medical tests relating to breast cancer, and related performance and quality assessment; software as a service for and related to breast imaging, digital mammography, assistance with radiology, radiology support, breast cancer risk assessment, breast cancer diagnosis, breast cancer management, breast cancer recovery, triage and treatment relating to breast cancer and mammography, medical screening and medical tests relating to breast cancer, and related performance and quality assessment; medical technology development and research relating to breast cancer and breast health, examination, treatment, diagnosis and related recovery; analysis of human breast tissues for medical research; provision of software platforms for medical and diagnostic purposes relating to breast cancer and breast health, examination, treatment, diagnosis and related recovery; software as service for medical purposes relating to breast cancer and breast health, examination, treatment, diagnosis and related recovery; encryption and encoding of digital images for medical purposes relating to breast cancer and breast health, examination, treatment, diagnosis and related recovery; technical support in respect of the aforesaid services; performance and quality assessment in respect of breast imaging for medical purposes, digital mammography, radiology and radiology support relating to mammography and breast cancer, breast cancer risk assessment, breast cancer diagnosis, breast cancer management, triage relating to breast cancer, analysis of medical screening and medical tests relating to breast cancer; provision of advisory, information and consultancy services in relation to the aforesaid services; none of the aforementioned products provided by a retailer, pharmacist or drug store.

Class 44:        Breast imaging for medical purposes; digital mammography; radiology and radiology support relating to mammography and breast cancer; breast cancer risk assessment; breast cancer diagnosis; breast cancer management; triage relating to breast cancer; analysis of medical screening and medical tests relating to breast cancer; consultation and advisory services relating to medical devices and equipment related to the aforesaid services; rental of medical equipment for the aforesaid purposes; provision of advisory, information and consultancy services in relation to the aforesaid services; none of the aforementioned products provided by a retailer, pharmacist or drug store.

PRELIMINARY REMARK

In a letter dated 20/03/2017, the applicant requested that its goods and services be limited by adding the specification ‘none of the aforementioned products provided by a retailer, pharmacist or drug store’ to Classes 9, 42 and 44. The opponent was duly informed of this limitation. However, this limitation does not influence the outcome of the comparison of the goods and services made below, as the opponent’s goods and services are not limited in any way and thus the limitation of the contested goods and services does not affect their degree of similarity to the opponent’s goods and services. Therefore, for the sake of clarity, and considering that it would not alter the result of the comparisons, the aforementioned limitation has been taken account of 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 9

The contested software for and related to breast imaging, mammography, digital mammography, medical and health examination relating to breasts and breast cancer, oncology relating to breasts, assistance with radiology, radiology support, breast cancer risk assessment, breast cancer diagnosis, breast cancer management, breast cancer recovery, triage and treatment relating to breast cancer and mammography; software for and related to medical screening and medical tests relating to breast cancer, and related performance and quality assessment; computer software for use in breast health information systems for receiving, processing, transmitting and displaying data, and controlling and managing patient health information; computer software for processing radiological images relating to breast health and breast examination, diagnosis, treatment and related recovery; computer software for quality control relating to breast examination, diagnosis, treatment and related recovery; computer software using algorithms to facilitate the comparison of metrics, medical and healthcare analytics, and data capture relating to breast examination, health, diagnosis, treatment and related recovery are included in the broad categories of the opponent’s computer software, computer software, recorded; programs (computer -) [downloadable software]. Therefore, they are identical.

A digital disc is a type of optical medium used for storing data. A compact disc is a portable storage medium that can be used to record, store and play back audio, video and other data in digital form. A hard drive is a non-volatile memory hardware device that permanently stores and retrieves digital data on a computer. Consequently, the contested pre-recorded digital discs, drives and media for and related to breast imaging, mammography, digital mammography, medical and health examination relating to breasts and breast cancer, oncology relating to breasts, assistance with radiology, radiology support, breast cancer risk assessment, breast cancer diagnosis, breast cancer management, breast cancer recovery, triage and treatment relating to breast cancer and mammography; pre-recorded digital discs, drives and media for and related to medical screening and medical tests relating to breast cancer, and related performance and quality assessment are included in the broad categories of or overlap with the opponent’s magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media. Therefore, they are identical.

Contested services in Class 42

The contested research, development, engineering, design services related to software for breast imaging, digital mammography, assistance with radiology, radiology support, breast cancer risk assessment, breast cancer diagnosis, breast cancer management, breast cancer recovery, triage and treatment relating to breast cancer and mammography, medical screening and medical tests relating to breast cancer, and related performance and quality assessment are included in the broader categories of the opponent’s scientific and technological services and research and design relating thereto; design and development of computer software. Therefore, they are identical.

The contested software as a service for and related to breast imaging, digital mammography, assistance with radiology, radiology support, breast cancer risk assessment, breast cancer diagnosis, breast cancer management, breast cancer recovery, triage and treatment relating to breast cancer and mammography, medical screening and medical tests relating to breast cancer, and related performance and quality assessment; medical technology development and research relating to breast cancer and breast health, examination, treatment, diagnosis and related recovery; analysis of human breast tissues for medical research are included in the broad category of the opponent’s Software as a service [SaaS]. Therefore, they are identical.

The contested installation and support services related to software for breast imaging, digital mammography, assistance with radiology, radiology support, breast cancer risk assessment, breast cancer diagnosis, breast cancer management, breast cancer recovery, triage and treatment relating to breast cancer and mammography, medical screening and medical tests relating to breast cancer are included in the broader categories of or overlap with the opponent’s installation of computer software; maintenance of computer software, updating of computer software. Therefore, they are identical.

The contested provision of advisory, information and consultancy services in relation to the aforesaid services fall under the broad category of or overlap with the opponent’s computer software consultancy. Consequently, these services are identical.

The contested provision of software and online platforms for and related to breast imaging, digital mammography, assistance with radiology, radiology support, breast cancer risk assessment, breast cancer diagnosis, breast cancer management, breast cancer recovery, triage and treatment relating to breast cancer and mammography, medical screening and medical tests relating to breast cancer; provision of software platforms for medical and diagnostic purposes relating to breast cancer and breast health, examination, treatment, diagnosis and related recovery; software as service for medical purposes relating to breast cancer and breast health, examination, treatment, diagnosis and related recovery; encryption and encoding of digital images for medical purposes relating to breast cancer and breast health, examination, treatment, diagnosis and related recovery; technical support in respect of the aforesaid services are specific software solution services that can be created and maintained by the same programmers or software engineers. These services are closely related to the opponent’s computer software consultancy; computer software design; computer system design. These services have the same general purpose (that of providing IT solutions to customers) and may target the same consumers. They are provided by the same undertakings (IT specialists) and are likely to be distributed thorough the same channels. Moreover, they are often complementary. Therefore, these services are highly similar.

The contested performance and quality assessment in respect of breast imaging for medical purposes, digital mammography, radiology and radiology support relating to mammography and breast cancer, breast cancer risk assessment, breast cancer diagnosis, breast cancer management, triage relating to breast cancer, analysis of medical screening and medical tests relating to breast cancer are basically processes employed to ensure that a manufactured product or performed service adheres to a defined set of quality criteria or meets the requirements of the client or customer. Consequently, these services are closely connected to the opponent’s design and development of computer hardware and software; installation, maintenance or updating of computer software; computer software consultancy. These services partly coincide in their technological nature. They may have the same providers and target the same end users (e.g. they can be regarded as part of the same maintenance service packages offered to customers). Consequently, they are considered similar.

Contested services in Class 44

The contested rental of medical equipment for the aforesaid purposes is included in the broad category of the opponent’s medical equipment rental. Therefore, these services are identical.

The contested breast imaging for medical purposes; digital mammography; radiology and radiology support relating to mammography and breast cancer; breast cancer risk assessment; breast cancer diagnosis; breast cancer management; triage relating to breast cancer; analysis of medical screening and medical tests relating to breast cancer; consultation and advisory services relating to medical devices and equipment related the aforesaid services; provision of advisory, information and consultancy services in relation to the aforesaid services are all various types of medical or related services. As such, they have the same general purpose as for example the opponent’s medical apparatus and instruments in Class 10, namely improving the health of human beings. Moreover, the aforementioned goods and services are complementary, given that medical instruments or apparatus are indispensable for providing healthcare services. In addition, they can target the same public. Therefore, they are considered similar to a low degree.

2. The signs

DM	DM
Earlier trade mark	Contested sign

The signs are identical.

3. Global assessment, other arguments and conclusion

The signs are identical and some of the contested goods and services, namely all of the goods in Class 9 and some of the services in Classes 42 and 44, are identical to the opponent’s goods and services. Therefore, the opposition must be upheld according to Article 8(1)(a) EUTMR for these goods and services. Furthermore, some of the contested goods and services in Classes 42 and 44 were found to be similar to those covered by the earlier trade mark. Given the identity of the signs, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition must also be upheld for these goods and services.

As the earlier right ‘European Union trade mark registration No 11 654 456’ leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 applicant 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

Loreto URRACA LUQUE

Arkadiusz GORNY

Judit NÉMETH

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.