OPPOSITION DIVISION

OPPOSITION No B 2 764 309

Toray Kabushiki Kaisha (Toray Industries, Inc.), 1-1, Nihonbashi-Muromachi 2-

chome, Chuo-ku, Tokyo 103-8666, Japan (opponent), represented by Marks &

Clerk Llp, 90 Long Acre, London WC2E 9RA, United Kingdom (professional

representative)

a g a i n s t

Instrumentation Laboratory Company, 180 Hartwell Road, Bedford,

2. The opponent bears the costs, fixed at EUR 300.

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 13 298 286 for the word mark

‘HEMOFEEL’. The opponent invoked Article 8(1)(b) EUTMR.

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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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

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.

Decision on Opposition No B 2 764 309 page: 2 of 7

a) The goods

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

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

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.

specific medical items used for treatment of renal problems.

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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,

and laboratory computer hardware; data management and laboratory automation

medical diagnostics and hemostasis are electronic devices that compute, especially

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

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

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

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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.

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

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

(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 ‘FEEL’ and ‘CELL’, respectively.

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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, medical

public, such as the English-speaking part, as ‘a feeling or sensation, or as an action

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 ‘FEEL’ 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 ‘F*E*’ versus ‘C*L*’,

respectively, the latter constituting the first and the third letter of the most distinctive

elements of the marks.

constituting the non-distinctive element 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 ‘FEEL’ of the contested sign 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 /FIːL/. For the sake of completeness, it should be noted that the

double letter ‘L’ of the contested sign is pronounced as being one letter /L/.

Therefore, the signs are aurally similar to a low degree at best.

Conceptually, reference is made to the previous assertions concerning the semantic

content conveyed by the marks. Although the coinciding prefix ‘HEMO’ will evoke a

Decision on Opposition No B 2 764 309 page: 6 of 7

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

in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue

meaning for any of the goods in question from the perspective of the public in the

relevant territory. Even considering what was stated in section c) of this decision, the

distinctiveness of the earlier mark as a whole is normal.

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.

In the present case, the Opposition Division is of the opinion that both the low visual

similarity and the low aural similarity, if any, 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.

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.

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

Decision on Opposition No B 2 764 309 page: 7 of 7

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

maximum rate set therein.

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