OPPOSITION DIVISION
OPPOSITION No B 2 762 543
Fresenius Hemocare Brasil Ltda, Rua Lisboa, 60, Valo Velho, Itapecerica da Serra
06856-760, Brasil (opponent), represented by Lerroux & Fernández-Pacheco,
Claudio Coello, 124 4º, 28006 Madrid, Spain (professional representative)
a g a i n s t
Instrumentation Laboratory Company, 180 Hartwell Road, Bedford,
Massachusetts 01730, United States of America (applicant), represented by Filemot
Technology Law Ltd, 25 Southampton Buildings, London WC2A 1AL, United
Kingdom (professional representative).
On 13/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 762 543 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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.
REASONS
The opponent filed an opposition against all the goods of European Union trade mark
application No 15 413 842 for the word mark ‘HEMOCELL’. The opposition is based
on European Union trade mark registration No 4 543 567 for the word mark
‘HEMOSEAL’. 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
Decision on Opposition No B 2 762 543 page: 2 of 7
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 10: Machinery and equipment for blood banks, artificial limbs, eyes and teeth;
orthopedic articles.
The contested goods are the following:
Class 9: Hemostasis laboratory automation systems, namely, data management
and laboratory computer hardware; data management and laboratory
automation systems comprised of computer hardware and software for use
in the fields of hemostasis and medical diagnostics; laboratory equipment
for use in the field of medical diagnostics, namely, automation equipment
to automate sorting of laboratory samples and tubes, online sample
storage, sample transport, centrifugation, sample resealing and desealing,
and aliquoting; data management and laboratory computer hardware; data
management and laboratory automation systems comprised of computer
hardware and software for use in the fields of medical diagnostics and
hemostasis; calibration devices; computer software.
Class 10: Hemostasis laboratory automation systems and parts therefor; laboratory
equipment for use in the fields of hemostasis and medical diagnostics,
namely, automation equipment to automate sorting of laboratory samples
and tubes and aliquoting; apparatus and instruments for transferring and
sorting blood collecting tubes and sample tubes or containers for samples,
all for medical use; medical sample tube sorting apparatus; sample
container transfer apparatus for medical purposes; sample rack transfer
apparatus for medical purposes; laboratory automation systems for use in
the field of hemostasis analysis and medical diagnostics; diagnostic
instruments for medical use, namely, automated coagulation analyzers for
measuring clotting characteristics and clotting constituents in blood;
hemostasis laboratory automation systems comprised of computer
software and hardware, diagnostic instruments and parts therefor; medical
diagnostic instruments; medical analysis instruments; medical instruments.
An interpretation of the wording of the list of goods is required to determine the scope
of protection of these goods.
The term ‘namely’, used in the applicant’s list of goods to show the relationship of
individual goods with a broader category, is exclusive and restricts the scope of
protection only to the specifically listed goods.
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.
Decision on Opposition No B 2 762 543 page: 3 of 7
Contested goods in Class 9
The opponent’s machinery and equipment for blood banks, artificial limbs, eyes and
teeth; orthopedic articles in Class 10 are specific medical items used for treatment of
different health problems.
The contested hemostasis laboratory automation systems, namely, data
management and laboratory computer hardware; data management and laboratory
automation systems comprised of computer hardware and software for use in the
fields of hemostasis and medical diagnostics; laboratory equipment for use in the
field of medical diagnostics, namely, automation equipment to automate sorting of
laboratory samples and tubes, online sample storage, sample transport,
centrifugation, sample resealing and desealing, and aliquoting; data management
and laboratory computer hardware; data management and laboratory automation
systems comprised of computer hardware and software for use in the fields of
medical diagnostics and hemostasis are electronic devices that compute, especially
programmable electronic machines that perform high-speed mathematical or logical
operations or that assemble, store, correlate, or otherwise process information;
programs and procedures required to enable a computer to perform a specific task;
physical parts or components of a computer or other equipment which process is
performed without human assistance, all used in the fields of medical diagnostics and
hemostasis.
The contested calibration devices are instruments that show the extent or amount or
quantity or degree of something, perform tests on a device and check or adjust (by
comparison with a standard) the accuracy of a measuring instrument.
The contested computer software refers to programs and procedures required to
enable a computer to perform a specific task.
These contested goods and the opponent’s goods have no relevant points in
common. They clearly differ in their nature, purpose and methods of use.
Furthermore, they are not produced by the same companies and they would not be
presented or sold together in the market, as they are distributed through different,
specialised distribution channels. Moreover, these goods are neither in competition
with each other nor complementary. At this point, the Opposition Division would like
to draw the opponent’s attention to the fact that the notion of ‘complementarity’ does
not extend to any situation in which two goods can be used alongside one another,
but requires that there is a close connection between the two goods, in the sense
that one is indispensable or important for the use of the other in such a way that
customers may think that the responsibility for the production of those goods or for
the provision of those services lies with the same undertaking. Such a connection
does not exist between the conflicting goods; the consumer will not believe that the
responsibility for the production of the contested products lies with the company that
is responsible for the production of the opponent’s medical items. The mere fact that
some of the conflicting goods would be sold and used together, an argument of the
opponent which remains unsubstantiated, and that part of the earlier mark’s goods
may include some of the contested goods does not render the goods similar
(16/12/2013, R 634/2013-4, ST LAB (fig.) / ST, § 20). Even though, the Opposition
Division cannot exclude that some of the contested goods might be used together
with the opponent’s goods in Class 10, case law has found that these goods are
intended for different publics, which is the case here, and cannot be found
complementary (22/06/2011, T-76/09, Farma Mundi Farmaceuticos Mundi,
EU:T:2011:298, § 30; 12/07/2012, T-361/11, Dolphin, EU:T:2012:377, § 48). Thus, the
Decision on Opposition No B 2 762 543 page: 4 of 7
argument raised by the opponent that the conflicting goods would be complementary
to each other fails.
In light of the foregoing, these goods are considered dissimilar.
Contested goods in Class 10
Some of the contested goods in this class are identical or similar to goods in Class
10 on which the opposition is based. For reasons of procedural economy, the
Opposition Division will not undertake a full comparison of those goods listed above.
The examination of the opposition will proceed as if all the contested goods in Class
10 were identical to those of the earlier mark which, for the opponent, is the best light
in which the opposition can be examined.
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 assumed to be identical are specialised goods
directed at customers with specific professional knowledge or expertise in the
medical field.
Considering the nature of the goods and the fact that they may be rather expensive
and object of infrequent purchase, the degree of attention will be high.
c) The signs
HEMOSEAL HEMOCELL
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).
When assessing the similarity of the signs, an analysis of whether the coinciding
components are descriptive, allusive or otherwise weak is carried out to assess the
extent to which these coinciding components have a lesser or greater capacity to
indicate commercial origin. It may be more difficult to establish that the public may be
confused about the origin due to similarities that pertain solely to non-distinctive
elements.
In the present case, the signs as a whole have no meaning. However, it should be
pointed out that the Court has held that, although the average consumer normally
Decision on Opposition No B 2 762 543 page: 5 of 7
perceives a mark as a whole and does not proceed to analyse its various details, the
fact remains that, when perceiving a word sign, they will break it down into elements
which, for them, suggest a specific meaning or which resemble words known to them
(judgment of 13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57). Thus, it is
reasonable to assume that the relevant public will dissect the common element
‘HEMO’ from the following elements, namely ‘SEAL’ and ‘CELL’, respectively.
The component ‘HEMO’, which the signs have in common, will be associated by the
relevant public with blood, as ‘hemo’ is a prefix, a combining form, originating from
Greek, meaning ‘blood, or blood related’ and it is used in expressions such as
‘hemofilie’ (‘haemophilia’ in English) or ‘hemodialyse’ (‘hemodialysis’ in English). It is,
therefore, likely that the professional public will perceive this reference, and this part
of the signs is, therefore, non-distinctive in relation to the goods at stake, being
medical items, because it indicates their purpose.
The word ‘SEAL’ of the earlier mark will be understood by at least part of the relevant
public, such as the English-speaking part, as ‘a device or a piece of material, for
example in a machine, which closes an opening tightly so that air, liquid, or other
substances cannot get in or out’ (see Collins English Dictionary online). For this part
of the public, the distinctiveness of the term ‘SEAL’ is reduced insofar as the goods at
stake are concerned, since it may refer to the purpose of those goods. For the
remaining part of the relevant public this element is meaningless and so its
distinctiveness should be seen as normal.
The word ‘CELL’ of the contested sign will be understood by at least part of the
relevant public, such as the English-speaking part, as it refers to ‘the smallest part of
an animal or plant that is able to function independently’ (see Collins English
Dictionary online). Thus, for this part of the relevant public, the distinctiveness of this
element might be reduced, as it alludes to the purpose of the goods (to treat blood
cells). For the remaining part of the relevant public this element is meaningless and
so its distinctiveness should be seen as normal.
In light of the above, it is considered that the elements ‘SEAL’ and ‘CELL’ are the
most distinctive elements of the marks at stake.
Visually, the signs coincide in the prefix ‘HEMO’, being a non-distinctive element of
the marks, and the letters ‘*E*L’ whereas they differ in the letters ‘S*A*’ versus ‘C*L*’,
respectively, the latter constituting the first and the third letter of the most distinctive
elements of the marks.
Therefore, since the signs coincide in a non-distinctive element and the differentiating
aspects concern not only the first letters of the most distinctive elements of the signs,
but also the third ones out of the short, four-letter second parts, the marks are
visually similar to a low degree.
Aurally, irrespective of the different pronunciation rules in different parts of the
relevant territory, the pronunciation of the signs coincides in the syllables /HE-MO-/,
constituting the non-distinctive elements of the marks, and both the second and
fourth (the last) letter of the most distinctive elements of the marks, namely /-*E*L/,
present identically in both signs. The latter holds true for the part of the public that
perceives at least the term ‘SEAL’ as meaningless and pronounces it as it is written.
The remaining part of the public would pronounce the second element of the earlier
mark as /SIːL/. Furthermore, it should be noted that the double ‘L’ of the contested
sign is pronounced as being one letter /L/.
Decision on Opposition No B 2 762 543 page: 6 of 7
Therefore, the signs are aurally similar to a low degree.
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks. Although the coinciding prefix ‘HEMO’ will evoke a
concept, contrary to the opponent’s arguments, it is not sufficient to establish any
conceptual similarity, as this element is non-distinctive and cannot indicate the
commercial origin. Moreover, bearing in mind the differentiating concept of the
elements ‘SEAL’ vs ‘CELL’, if understood, the signs are not similar. In case the
elements ‘SEAL’ vs ‘CELL’ are meaningless, the conceptual aspect does not
influence the assessment of the similarity of the signs.
As the signs have been found similar to a low degree 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.
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its
distinctiveness per se. Considering what has been stated above in section c) of this
decision, the distinctiveness of the earlier mark might be seen as lower than normal
for the goods at stake for the English-speaking part of the public. The mark has a
normal degree of distinctiveness for the remaining part of the relevant territory, where
the element ‘SEAL’ has no meaning in relation with the goods in question.
e) 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 goods at issue have been assumed identical insofar as the contested goods in
Class 10 are concerned and found dissimilar insofar as the contested goods in Class
9 are concerned. The relevant public consists of professionals whose level of
attention is high.
In the present case, the Opposition Division is of the opinion that both the low visual
similarity and the low aural similarity between the signs is not enough to lead to a
likelihood of confusion, even in relation to the assumed identical goods directed at
the professionals with a high level of attention. Due to the high level of attention,
these consumers are even less vulnerable to confuse the marks.
Therefore, the opposition must be rejected.
For the sake of completeness, it should be pointed out that the Opposition Division
concurs with the opponent that it is common practice in the market to create series of
trade marks containing a common element, as the ones cited on page 8 of the
opponent’s writ dated 31/08/2016. However, this does not hold true in the present
Decision on Opposition No B 2 762 543 page: 7 of 7
case insofar as the element ‘HEMO’ is concerned due to its descriptive nature.
Furthermore, there has been no evidence on file to the contrary. Thus, this argument
fails.
The rest of the contested goods in Class 9 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
either.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party.
Since the opponent is the losing party, it must bear the costs incurred by the
applicant 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
applicant are the costs of representation, which are to be fixed on the basis of the
maximum rate set therein.
The Opposition Division
Chantal VAN RIEL Klaudia MISZTAL Vít MAHELKA
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.
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.