OPPOSITION DIVISION
OPPOSITION No B 2 840 497
Genea IP Holdings Pty Ltd, L2, 321 Kent St, Sydney 2000, Australia (opponent),
represented by Patent- und Rechtsanwälte Ullrich & Naumann
Partnerschaftsgesellschaft mbB, Schneidmühlstraße 21, 69115 Heidelberg,
Germany (professional representative)
a g a i n s t
Ucomfor Medical Co. Ltd., 1208 76 Jiuxin Road, Shanghai, 201615, Peoples’
Republic of China (applicant), represented by Bals & Vogel, Universitätsstr. 142,
44799 Bochum, Germany (professional representative).
On 09/01/2018, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 840 497 is partially upheld, namely for the following
contested goods:
Class 10: Enteral feeding pumps; apparatus for enteral feeding; tubes for
enteral feeding; flasks for parenteral nutrition; Intravenous feeding
bottles; Intravenous feeding tubes; Feeding cups for medical
purposes; bags [fitted] for use by doctors; bags [fitted] for use by
surgeons; urological instruments; urological imaging systems;
catheters for urological purposes; urological apparatus and
instruments; medical apparatus for urological purposes; surgical
apparatus and instruments; surgical devices and instruments;
surgical and wound treating equipment; surgical cutting
instruments; surgical splints; surgical instruments; surgical probes;
surgical mesh; surgical thread; surgical saws; surgical scissors;
surgical headlamps; surgical cutlery; surgical staples; surgical
sutures; surgical blades; surgical knives; surgical retractors;
surgical perforators; surgical forceps; surgical masks; surgical
gowns; surgical lamps; surgical mirrors; surgical needles; surgical
clips; artificial surgical implants.
2. European Union trade mark application No 15 754 195 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 15 754 195, “Garvi” (word mark). The opposition is based on
international trade mark registration No 1 277 864, “GAVI” (word mark) designating
the European Union. The opponent invoked Article 8(1)(b) EUTMR.
Decision on Opposition No B 2 840 497 page: 2 of 6
Preliminary remark
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
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.
a) The goods
The goods on which the opposition is based are the following:
Class 9: Scientific and laboratory apparatus, instruments and equipment;
apparatus, instruments and equipment for clinical and medical
laboratory use; vitrification apparatus, instruments and equipment for
laboratory use; vitrification apparatus, instruments and equipment for
scientific use; vitrification apparatus, instruments and equipment for
scientific and laboratory use in the fields of reproductive science,
human fertility, human reproduction and assisted conception.
Class 10: Medical apparatus, instruments and equipment; vitrification apparatus,
instruments and equipment for medical purposes.
The contested goods are the following:
Class 10: Enteral feeding pumps; apparatus for enteral feeding; tubes for enteral
feeding; flasks for parenteral nutrition; feeding bottles; feeding bottle
receptacles; Babies' feeding bottles; Infants' feeding bottles;
Intravenous feeding bottles; Intravenous feeding tubes; Feeding aids
and pacifiers; Feeding cups for medical purposes; bags [fitted] for use
by doctors; bags [fitted] for use by surgeons; urological instruments;
urological imaging systems; catheters for urological purposes;
urological apparatus and instruments; medical apparatus for urological
purposes; surgical apparatus and instruments; surgical devices and
instruments; surgical and wound treating equipment; surgical cutting
instruments; surgical splints; surgical instruments; surgical probes;
surgical mesh; surgical thread; surgical saws; surgical scissors;
surgical headlamps; surgical cutlery; surgical staples; surgical sutures;
surgical blades; surgical knives; surgical retractors; surgical
perforators; surgical forceps; surgical masks; surgical gowns; surgical
Decision on Opposition No B 2 840 497 page: 3 of 6
lamps; surgical mirrors; surgical needles; surgical clips; artificial
surgical implants.
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 enteral feeding pumps; apparatus for enteral feeding; tubes for enteral
feeding; flasks for parenteral nutrition; Intravenous feeding bottles; intravenous
feeding tubes; feeding cups for medical purposes; bags [fitted] for use by doctors;
bags [fitted] for use by surgeons; urological instruments; urological imaging systems;
catheters for urological purposes; urological apparatus and instruments; medical
apparatus for urological purposes; surgical apparatus and instruments; surgical
devices and instruments; surgical and wound treating equipment; surgical cutting
instruments; surgical splints; surgical instruments; surgical probes; surgical mesh;
surgical thread; surgical saws; surgical scissors; surgical headlamps; surgical cutlery;
surgical staples; surgical sutures; surgical blades; surgical knives; surgical retractors;
surgical perforators; surgical forceps; surgical masks; surgical gowns; surgical lamps;
surgical mirrors; surgical needles; surgical clips; artificial surgical implants are
included in the broad category or overlap with the opponent’s medical apparatus,
instruments and equipment. Therefore, they are identical.
The contested feeding bottles; feeding bottle receptacles; babies' feeding bottles;
infants' feeding bottles; feeding aids and pacifiers are mainly goods related to babies,
either in order to calm them or feed them. These goods do not bear any relevant
points of contact with the opponent’s goods in Classes 9 and 10. It is clear that the
goods at issue will not derive from the same manufacturers, will not be distributed via
the same channels, are not aimed at the same consumers, serve different purposes,
and are not in competition with one another or complementary. Therefore, these
goods are dissimilar.
b) 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 specialised
consumers within the medical field (e.g. doctors and medical experts) and at
business customers with specific professional knowledge or expertise within the
medical field, for example, representatives buying medical apparatus for hospitals.
The degree of attention may vary from average to high, depending on the specialised
nature of the goods, the frequency of purchase and their price.
Decision on Opposition No B 2 840 497 page: 4 of 6
c) The signs
GAVI Garvi
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).
Each of the signs is composed of one word. The earlier mark consists of the word,
‘GAVI’, whereas the contested sign features the word ‘Garvi’. In addition, in the case
of word marks, it is the word as such that is protected, not its written form. Therefore,
it is irrelevant whether the word marks are depicted in lower or upper case letters, or
in a combination thereof.
Neither of the signs has any elements that could be considered clearly more
distinctive or dominant (visually eye-catching) than other elements. Neither sign has
any particular meaning in the relevant territory nor they relate in any way to the
relevant goods. Therefore, they are distinctive.
Visually, the signs coincide in the letters ‘GA*VI’. They only differ in one letter ‘r’ of
the contested sign which has no counterpart in the earlier mark. Considering,
however, the middle position of the differing letter in the contested mark, the signs
are visually highly similar.
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
‘GA*VI’, present identically in both signs. The pronunciation differs in the sound of the
letter ‛r’ of the contested mark. Considering, again, the middle position of the differing
sound, the signs are aurally highly similar.
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.
d) 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.
Decision on Opposition No B 2 840 497 page: 5 of 6
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.
e) 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 goods at issue are partly identical and partly dissimilar. They
are directed at specialised consumers whose degree of attention may vary from
average to high. The signs are visually and aurally highly similar and the conceptual
aspect does not influence the assessment of similarity of the signs. The difference
between the signs under comparison results from only one middle letter in the
contested sign, which has no counterpart in the earlier mark. In addition, account is
taken of the fact that 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). 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).
Considering all the above, the Opposition Division finds that there is a likelihood of
confusion on the part of the public and therefore the opposition is partly well founded
on the basis of the opponent’s international trade mark registration No 1 277 864.
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 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party. According to Article 109(3)
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 for only some of the contested goods, both parties
have succeeded on some heads and failed on others. Consequently, each party has
to bear its own costs.
Decision on Opposition No B 2 840 497 page: 6 of 6
The Opposition Division
Irina SOTIROVA Arkadiusz GORNY Loreto URRACA LUQUE
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been filed only when the appeal fee of EUR 720 has been paid.