OPPOSITION No B 2 708 041

Laboratorios Salvat, S.A., C/ Gall, 30-36, 08950 Esplugues de Llobregat, Spain (opponent), represented by R. Volart Pons y Cia., S.L., Pau Claris, 77, 2º, 1ª, 08010 Barcelona, Spain (professional representative)

a g a i n s t

Innoneo Bredgade, 15 kl. tv., 4000 Roskilde, Denmark (applicant).

On 24/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 708 041 is partially upheld, namely for the following contested goods:

 Class 10: Orthopaedic bandages; bandages for orthopaedic purposes; supportive bandages; orthopedic support bandages; therapeutic support bandages; elasticated bandages for supportive use; suspensory bandages for use in sports; support bandages for medical purposes; bandages [supportive] for surgical purposes.

2.        European Union trade mark application No 15 176 191 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 15 176 191. The opposition is based on Spanish trade mark registration No 1 329 611. 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 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 goods

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

Class 5: Pharmaceutical and veterinary products and specialities and disinfectants included in this class.

The contested goods are the following:

Class 10: Orthopaedic bandages; Bandages for orthopaedic purposes; Orthoses; Orthopaedic braces; Supportive bandages; Orthopedic support bandages; Therapeutic support bandages; Elasticated bandages for supportive use; Suspensory bandages for use in sports; Support bandages for medical purposes; Bandages [supportive] for surgical purposes.

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 opponent’s pharmaceutical products and the contested orthopaedic bandages; bandages for orthopaedic purposes; supportive bandages; orthopedic support bandages; therapeutic support bandages; elasticated bandages for supportive use; suspensory bandages for use in sports; support bandages for medical purposes; bandages [supportive] for surgical purposes have the same purpose, as they are all used in the process of treatment. Therefore, these goods target the same relevant public. Furthermore, they have the same distribution channels. These goods are, therefore, similar.

However, the contested orthoses; orthopaedic braces are dissimilar to the opponent’s goods. They have different natures, as the contested goods are replacement parts of the human body, with the purpose of restoring functionality or mobility to, or improving the appearance of, people who have lost, or lost the use of, parts of the body through trauma, disease or a congenital condition. The specialised purpose of the contested goods means that they have a highly specialised target market, namely people in need of such replacement parts and the medical professionals who care for those people. Orthopaedic articles and artificial body parts are produced by specialised companies, usually not by pharmaceutical laboratories. Therefore, these goods do not have the same usual commercial origin.

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.

The goods in Classes 5 and 10 target the general public and healthcare professionals. All of these goods can have implications for health or contraindications. Therefore, the public’s degree of attention is high.

3. The signs

HISTOP-SALVAT	HipStop
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 use of title case and upper case letters in the contested sign and the earlier mark, respectively, does not have any impact on the assessment of the similarity between the signs, since the signs are word marks and, therefore, it is their word elements that are protected and not the specific figurative or stylistic elements that they might have (21/09/2012, T-278/10, Western Gold, EU:T:2012:1257, § 44, 46).

Both signs are word marks. Neither of the signs contains elements that could be considered clearly more distinctive or more dominant (visually eye-catching) than other elements.

Visually and aurally, the signs coincide in the letters ‘HI*STOP’. They differ in the additional letter ‘P’ of the contested sign and in the hyphen and the verbal element ‘SALVAT’ of the earlier mark. Aurally, ‘HISTOP’ and ‘HIPSTOP’ are almost identical in Spanish, in spite of the additional letter ‘P’ in the contested sign, which is not noticeable when pronounced in this case.

Therefore, the signs are visually and aurally similar to an average degree.

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.

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 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.

5. Global assessment, other arguments and conclusion

The contested goods are partly similar and partly dissimilar to the opponent’s goods.

The similarity between the signs relates to the fact that, with the exception of the letter ‘P’, the entire contested sign is encompassed in the earlier mark. The visual and aural similarities are strong. The first verbal elements of the earlier mark (‘HISTOP’) and the contested sign (‘HipStop’) are almost the same length and they have six letters out of seven in common, which are all placed in the same positions. The differences resulting from only one letter of the contested sign (‘P’) and the additional element of the earlier mark (‘-SALVAT’) are not sufficient to differentiate the marks.

Furthermore, account should be taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion and therefore the opposition is partly well founded on the basis of the opponent’s Spanish trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods found to be similar 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 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Cristina CRESPO MOLTÓ

José Antonio GARRIDO OTALOA

Loreto URRACA LUQUE

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.