OPPOSITION No B 2 429 218

Jose Manuel Ferrandez Rivera, San Salvador No 2, Entresuelo E, 36204 Vigo, Pontevedra, Spain (opponent), represented by Clarke, Modet y Cía. S.L., Rambla de Méndez Núñez, 12 – 1º Puerta 2 bis, 03002 Alicante, Spain (professional representative)

a g a i n s t

Aesculap AG, Am Aesculap-Platz, 78532 Tuttlingen, Germany (applicant), represented by Patentanwälte Ruff, Wilhelm, Beier Dauster & Partner mbB, Kronenstr. 30, 70174 Stuttgart, Germany (professional representative).

On 17/01/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 429 218 is upheld for all the contested services, namely:

Class 44: Medical services; hygienic and beauty care for human beings or animals.

2.        European Union trade mark application No 13 131 743 is rejected for all the contested services. It may proceed for the remaining services.

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

REASONS:

The opponent filed an opposition against some of the services of European Union trade mark application No 13 131 743, namely against all the services in Class 44. The opposition is based on Spanish trade mark registration No 2 735 198. 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 shall furnish proof that, during the period of five years preceding the date of publication 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 in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.

According to the same provision, in the absence of such proof the opposition must be rejected.

The applicant requested that the opponent submit proof of use of Spanish trade mark registration No 2 735 198.

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the publication of the contested application.

The contested application was published on 15/09/2014. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Spain from 15/09/2009 to 14/09/2014 inclusive. Furthermore, the evidence must show use of the trade mark for the services on which the opposition is based, namely the following:

Class 44:        Medical services

According to Rule 22(3) EUTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 15/07/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 20/09/2015 to submit evidence of use of the earlier trade mark. The opponent requested an extension until 20/11/2015, which was granted by the Office. On 20/11/2015, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following (as grouped by the opponent):

• Annex 1: various invoices for medical services rendered under the trade mark ‘ENDOPROCTOS’ issued between 2009 and 2014.

• Annex 2: various invoices relating to promotional campaigns and advertising spots on Spanish TV channels, radio and the internet for ‘ENDOPROCTOS’ and to medical services rendered by the opponent under this mark issued between 2009 and 2014.

• Annex 3: images of the ‘ENDOPROCTOS’ mark from the internet.

• Annex 4: the results of a Google search for the word ‘ENDOPROCTOS’ and public opinions from the website http://www.doctoralia.es/.

The applicant contests the evidence of use filed by the opponent on the grounds that it does not originate from the opponent itself but from another company.

According to Article 15(2) EUTMR, use of the European Union trade mark with the consent of the proprietor shall be deemed to constitute use by the proprietor. Although this provision covers EUTMs, it can be applied by analogy to earlier marks registered in Member States.

The fact that the opponent submitted evidence of use of its marks by a third party implicitly shows that it consented to this use (08/07/2004, T-203/02, Vitafruit, EU:T:2004:225).

Consequently, since it can be presumed that the evidence filed by the opponent is an implicit indication that use has been made with its consent, the applicant’s claim is unfounded.

To this extent, and in accordance with Article 15(2) EUTMR, the Opposition Division considers that the use made by those other companies was made with the opponent’s consent and thus is equivalent to use made by the opponent.

The invoices show that the place of use is Spain. This can be inferred from the language of the documents (Spanish) and some addresses in Spain. Therefore, the evidence relates to the relevant territory.

Most of the evidence is dated within the relevant period.

The documents filed, namely the invoices, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier mark.

The evidence shows that the mark has been used as registered for all the services for which the mark is registered, namely medical services.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory.

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 services

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

Class 44: Medical services.

The contested services are the following:

Class 44: Medical services; hygienic and beauty care for human beings or animals.

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.

The contested medical services are identically reproduced in both lists of services.

The contested hygienic and beauty care for human beings or animals are mainly services provided by persons or establishments to human beings and animals in the field of hygiene and beauty care. These services are aimed at preserving health, that is, they have a physiological aim. There are some relevant similarities between these services, in particular because of their connection with maintaining and promoting human health, for instance by avoiding infections through the relevant preventative care in respect of cleanliness and personal hygiene. They can be provided by the same undertakings. Therefore, these services are similar.

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 services found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise, namely doctors. The degree of attention may be rather high, depending on the price of the services, how specialised they are and the frequency with which they are purchased. Some of the services could be quite expensive. In addition, some of these services can have consequences for the user’s appearance or health. The degree of attention will vary from average to high.

3. The signs

	EndoPro
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 sign is formed of the word ‘ENDOPROCTOS’ in light-green upper case letters. It is accompanied by a figurative element consisting of a mirror image of the letter E, as shown above.

The contested sign is a word mark, ‘EndoPro’. It is not relevant whether it is written in upper or lower case.

Neither of the marks has any element that could be considered clearly more distinctive or more dominant than other elements.

Visually and aurally, the signs coincide in the letters ‘ENDOPRO’ and differ in the additional letters ‘CTOS’ of the earlier mark; visually, they also differ in the figurative element placed at the beginning of the earlier mark.

Given that the earlier sign includes the contested sign in its entirety, with an additional element placed at its end and a figurative element placed at its beginning, the signs are visually and aurally similar to an average degree.

Conceptually, neither of the signs has a meaning for part of the public in the relevant territory (i.e. Spain). Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs. However, for another part of the public, namely the professional public, ‘ENDO’ in both signs will be understood as ‘internal’. Therefore, for this part of the public, the signs are conceptually similar.

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 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.

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 services are partly identical and partly similar, and the public’s degree of attention may vary from average to high.

The conflicting signs are visually and aurally similar to the extent that they coincide in the letters/phonemes ‘ENDOPRO’.

In spite of some differences between the marks, the relevant consumers might be led by the visual and aural commonalities in the letters ‘ENDOPRO’ to believe that the identical and similar services under the two marks came from the same undertaking or economically-linked undertakings. Even though the consumer would not immediately confuse the marks, they would associate them with the same origin. The Opposition Division considers that the abovementioned differences between the signs do not offset their commonalities and that there is a likelihood of confusion on the part of the relevant public, even taking into account that the public’s degree of attention may vary from average to high and that part of the public is generally less vulnerable to confusion.

In view of all the relevant factors in the present case and the principle of interdependence between them, that is, the principle that a lesser degree of similarity between the marks may be offset by a greater degree of similarity between the services, the identity or similarity between the services offsets the lesser degree of similarity between the signs.

Furthermore, account should be taken of the fact that the average consumer only rarely has 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).

Considering all the above, there is a likelihood of confusion on the part of the part of the public for all the contested services.

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 2 735 198. It follows that the contested trade mark must be rejected for all the contested services.

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

Isabel DE ALFONSETI

Inés GARCIA LLEDO

Ana MUÑIZ RODRÍGUEZ

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.