OPPOSITION DIVISION

OPPOSITION No B 2 718 776

Sozialwerk St. Georg E.V., Emscherstraße 62, 45891 Gelsenkirchen, Germany

(opponent), represented by Siebeke – Lange – Wilbert, Cecilienallee 42, 40474

Düsseldorf, Germany (professional representative)

a g a i n s t

George Clinical Pty Ltd, Level 5, 1 King Street, Newtown NSW 2042, Australia,

(holder), represented by Norton Rose Fulbright Llp, Taunustor 1, (TaunusTurm),

have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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.

REASONS

The opponent filed an opposition against all the goods and services of international

registration designating the European Union No 1 264 731 ‘GEORGE CLINICAL’.

The opposition is based on international trade mark registration

No 1 063 881 ’Sozialwerk St. Georg’ designating the European Union. The opponent

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.

Decision on Opposition No B 2 718 776 page: 2 of 7

a) The goods and services

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

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical,

weighing, measuring, signalling, checking (supervision), life-saving

processing equipment and computers; fire-extinguishing apparatus.

Class 41: Education; providing of training; entertainment; sporting and cultural

activities.

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; advice on assistive

technology for people with a disability.

Class 44: Medical services; veterinary services; hygienic and beauty care for

human beings or animals; agriculture, horticulture and forestry

services; nursing services; health counseling.

consumer health and medicine.

Class 16: Printed matter for the conduct, management, reporting, development,

education and analysis of clinical research, consumer healthcare and

medicine including stationery, publications, reports, bookbinding,

material, instructional, educational, teaching and training material.

Class 35: Provision of business administration services in the field of clinical

research, consumer health and medicine; placement of personnel

usually engaged in or associated with the clinical research industry,

consumer health and medicine, including all associated personnel

management consulting; information, consultancy and advisory

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Class 42: Scientific and technological research, design and analysis services

related to the conduct, management, reporting, development,

education and analysis of clinical research, consumer health and

medicine; design and development of computer software and

hardware for the conduct, management, reporting, development,

education and analysis of clinical research, consumer health and

medicine; information, consultancy and advisory services relating to

the aforementioned services.

Some of the contested goods and services are identical to goods and services on

which the opposition is based. For reasons of procedural economy, the Opposition

Division will not undertake a full comparison of the goods and services listed above.

The examination of the opposition will proceed as if all the contested goods and

services were identical to those of the earlier mark.

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.

the public at large and at business customers with specific professional knowledge or

c) The signs

Sozialwerk St. Georg GEORGE CLINICAL

to a generic form of an institution doing social work or providing social services.

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Therefore, this conjoined word (Sozial+werk) is considered to have less distinctive

character, for the German-speaking public, when seen together with the goods and

services offered. For the remaining public who does not perceive any meaning, this

word is distinctive.

The following words ‘St. Georg’ refer to ‘Sankt Georg’ in German as in Saint George,

a saint. It can also refer to a surname St. George or meaningless letters St., and a

name GEORG. The word GEORGE is a male first name, perceived as such

word GEORGE is a male first name, perceived as such throughout the relevant

territory, either as present in their language or as a foreign name. As the element

GEORGE is not descriptive, allusive or otherwise weak for the relevant goods and

services, it is distinctive.

The mark also contains a word CLINICAL. It is an English word. It means involving or

relating to the direct medical treatment or testing of patients (20/11/2017 Collins

English dictionary, https://www.collinsdictionary.com/dictionary/english/clinical).

Considering that the goods and services in the contested mark are related to

healthcare, it is considered that this word is weak for the English-speaking public.

Contrary to the opponent’s arguments, this word is not considered to be a basic

English word which would be understood throughout the relevant territory. As the

opponent demonstrated, there are words remotely resembling it present nearly in all

case, it cannot be assumed (and there are no proper arguments for assuming it) that

to the purpose of the relevant goods and services, it is at worst allusive, if not

distinctive, for the relevant goods and services for the non-English speaking part of

the relevant public.

Moreover, with reference to the verbal elements, differences are immediately

recognisable at the beginnings of the signs. In that regard, the Opposition Division

recalls that the consumer generally pays greater attention to the beginning of a mark

than to the end (25/03/2009, T 109/07, Spa Therapy, ECLI:EU:T:2009:81, § 90).

Visually, the signs coincide in the letter string GEORG. However, they differ in that

there is an additional letter E added to that string in the contested mark. Furthermore,

this string of letters is placed in a different position in the marks, which also contain

conclusion above regarding the distinctiveness of the signs and the perception of the

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

Decision on Opposition No B 2 718 776 page: 5 of 7

GEORG, present in both signs. The pronunciation differs in all the remaining letters

Sozialwerk St. / CLINICAL, that will be pronounced and have no counterpart in the

other mark as well as in the letter ‘E’ of the element ‘GEORGE’ of the contested sign

(when pronounced).

Moreover, the sequence of syllables, rhythm and intonation of the signs are different.

The mere coincidence in GEORG between the signs is not sufficient to outweigh the

differences in the beginning of the signs; thus the overall impression created by the

speaking public who will perceive the contested mark as containing two meaningful

words and the earlier mark as containing only a meaningful word combination St.

Georg.

Reference is also made to the previous assertions concerning the semantic content

conveyed by the marks. Both signs coincide conceptually only as far as they refer to

a name with a common root (GEORG/GEORGE). To that extent, the signs are

conceptually similar to an average degree.

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

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 and 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, despite the presence of a less distinctive element (for part of the

public) in the mark as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The goods and services have been assumed identical. The comparison of the marks

has been done above.

The signs are similar to the extent that they share the sequence of letters GEORG,

are particularly relevant when assessing the likelihood of confusion between them.

Decision on Opposition No B 2 718 776 page: 6 of 7

The beginnings of the signs are different. Consumers generally tend to focus on the

beginning of a sign when they encounter a trade mark. This is because 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. Even if the German-

speaking public perceives a slightly descriptive meaning in the first element of the

contested sign as described, the word remains with sufficient distinctiveness pointing

to a social institution, a concept which is clearly perceived and clearly differs from

that of the contested mark considering also the endings of the signs are different,

issue. The conceptual similarity, albeit average for a part of the public, is not sufficient

for a finding of likelihood of confusion even with regard to identical goods and

services. This is because the signs display only low visual or aural similarities. It is

also taken into account that the degree of attention of the relevant public is

considered to vary from average to higher, that the signs clearly differ in their

beginnings, and that the earlier sign has an average degree of distinctiveness. The

Opposition Division considers that, despite the assumed identity of the goods and

services at issue, even consumers with only an average level of attention will not

confuse the marks.

Considering all the above, even assuming that the goods and services are identical,

there is no likelihood of confusion on the part of the public. Therefore, the opposition

must be rejected.

Since the opponent is the losing party, it must bear the costs incurred by the holder in

the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3)

and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the

holder are the costs of representation, which are to be fixed on the basis of the

maximum rate set therein.

Decision on Opposition No B 2 718 776 page: 7 of 7

According to Article 67 EUTMR, any party adversely affected by this decision has a

The amount determined in the fixation of the costs may only be reviewed by a

decision of the Opposition Division on request. According to Article 109(8) EUTMR

(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be

filed within one month of the date of notification of this fixation of costs and will be

deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)

EUTMR) has been paid.