OPPOSITION No B 2 639 287

Flace Investments S.L., Venezuela 122, 08019 Barcelona, Spain (opponent), represented by Curell Suñol S.L.P., Via Augusta 21, 08006 Barcelona, Spain (professional representative)

a g a i n s t

S. M. L. Success Ltd., 119 Har Ya'ala St, Moshav Mesilat Zion  99770, Israel (applicant), represented by Ipser S.R.L., Via Macedonio Melloni, 32, 20129 Milano, Italy (professional representative).

On 22/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 639 287 is rejected in its entirety.

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 14 507 503. The opposition is based on European Union trade mark registrations No 5 787 701, No 14 281 281, No 8 525 677 and No 8 525 693. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

On 28/09/2016 the Office requested that the opponent files proof of use of two earlier marks, namely European Union trade marks No 5 787 701 and No 8 525 693. However, on 26/10/2016, the Office cancelled this request because it was noticed that the applicant’s argumentation referring to a series of earlier marks was erroneously considered a request for proof of use.

According to the Office’s practice, a request for proof of use must be explicit, unambiguous and unconditional. This is because it has important procedural consequences: if the opponent does not file proof of use, the opposition must be rejected.

Since the applicant’s statement is not an explicit, unambiguous and unconditional request for proof of use, it has not been treated as such. Therefore, the opponent was not under any obligation to submit proof that its earlier trade marks had been put to genuine use.

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:

European Union trade mark registration No 5 787 701:

Class 10: Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopedic articles; suture materials.

European Union trade mark registration No 14 281 281:

Class 10: Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; Orthopedic articles; Suture materials; Abdominal belts; Electric acupuncture instruments; Water bags for medical purposes; Acupuncture needles; Needles for medical purposes; Hot air therapeutic apparatus; Soporific pillows for insomnia; Air pillows for medical purposes; Abdominal pads; Pads (Heating -), electric, for medical purposes; Sores (Pads [pouches] for preventing pressure -) on patient bodies; Thermal packs for first aid purposes; Analysers for medical use; Blood testing apparatus; Anaesthetic apparatus; Ambulance stretchers; Teething rings; Dental apparatus and instruments; Hearing aids for the deaf; Galvanic belts for medical purposes; Feeding bottle receptacles; Knives for surgical use; Ice bags for medical purposes; Douche bags; Pumps for medical purposes; Radium tubes for medical purposes; Boots for medical purposes; Hernia bandages; Slings [supporting bandages]; Orthotic footwear; Hydrostatic beds for medical purposes; Beds, specially made for medical purposes; Stretchers, wheeled; Strait jackets; Sterile sheets, surgical; Cannulae; Catheters; Catgut; Body cavities (Appliances for washing -); Brushes for cleaning body cavities; Dummies for babies; Feeding bottle valves; Belts, electric, for medical purposes; Hypogastric belts; Belts for medical purposes; Air cushions for medical purposes; Cushions for medical purposes; Air mattresses, for medical purposes; Childbirth mattresses; Thermo-electric compresses [surgery]; Compressors [surgical]; Condoms; Tips for crutches for invalids; Non-chemical contraceptives; Corn knives; Quartz lamps for medical purposes; Spoons for administering medicine; Bed pans; Finger guards for medical purposes; Dentures; Dental apparatus, electric; Dental examination chairs; Defibrillators; Diagnostic apparatus for medical purposes; Dialyzers; Artificial teeth; Drainage tubes for medical use; Physical exercise apparatus, for medical purposes; Electrocardiographs; Electrodes for medical use; Maternity belts; Enema apparatus for medical purposes; Scalpels; Spittoons for medical purposes; Mirrors for dentists; Mirrors for surgeons; Spirometers [medical apparatus]; Sponges (Surgical -); Esthetic massage apparatus; Stethoscopes; Cardiac stimulators; Cases fitted for use by surgeons and doctors; Temperature indicator labels for medical purposes; Abdominal corsets; Belts for orthopaedic purposes; Corsets for medical purposes; Surgical splints; Filters for ultraviolet rays, for medical purposes; Physical therapy equipment; Forceps; Dropper bottles for medical purposes; Dental burs; Fumigation apparatus for medical purposes; Galvanic therapeutic appliances; Cattle (Obstetric apparatus for -); Gastroscopes; Droppers for medical purposes; Surgical staples; Gloves for massage; Gloves for medical purposes; Hemocytometers; Thread, surgical; Medical guidewires; Hypodermic syringes; Surgical implants [artificial materials]; Incubators for babies; Incubators for medical purposes; Inhalers; Surgical cutlery; Insufflators; Injectors for medical purposes; Injection syringes; Medical syringes; Nursing appliances; Lamps for medical purposes; Lancets; Lasers for medical purposes; Lenses [intraocular prostheses] for surgical implantation; Ear picks; Cases fitted for medical instruments; Artificial jaws; Blankets, electric, for medical purposes; Massage apparatus; Anaesthetic masks; Masks for use by medical personnel; Elastic stockings for surgical purposes; Stockings for varices; Medical apparatus and instruments; Operating tables; Microdermabrasion apparatus; Furniture especially made for medical purposes; Crutches; Love dolls [sex dolls]; Obstetric apparatus; Ophthalmometers; Opthalmoscopes; Hearing protection devices; Artificial eyes; Urinals [vessels]; Orthodontic appliances; Orthopedic articles; Basins for medical purposes; Radiology screens for medical purposes; Invalids' hoists; Pessaries; Artificial skin for surgical purposes; Supports for flat feet; Castrating pincers; Balling guns; Pins for artificial teeth; Orthopedic soles; Artificial limbs; Hair prostheses; Artificial breasts; Pulse meters; Aerosol dispensers for medical purposes; Surgical apparatus and instruments; Radiological apparatus for medical purposes; Radiological apparatus for medical purposes; Radiotherapy apparatus; Tongue scrapers; Ultraviolet ray lamps for medical purposes; X-ray apparatus for medical purposes; Apparatus and installations for the production of X-rays, for medical purposes; Protection devices against X-rays, for medical purposes; Resuscitation apparatus; Containers especially made for medical waste; Receptacles for applying medicines; Rehabilitation apparatus (Body -) for medical purposes; Apparatus for artificial respiration; Respirators for artificial respiration; Orthopaedic knee bandages; Clothing especially for operating rooms; Incontinence sheets; Surgical drapes; Breast pumps; Draw-sheets for sick beds; Saws for surgical purposes; Commode chairs; Armchairs for medical or dental purposes; Probes for medical purposes; Arch supports for footwear; Apparatus for the treatment of deafness; Stents; Suspensory bandages; Suture needles; Suture materials; Plugs (Ear -) [ear protection devices]; Sphygmomanometers; Thermometers for medical purposes; Feeding bottle teats; Bougies [surgery]; Scissors for surgery; Traction apparatus for medical purposes; Trocars; Ear trumpets; X-ray tubes for medical purposes; Umbilical belts; Urethral syringes; Urethral probes; Urological apparatus and instruments; Uterine syringes; Vaginal syringes; Sprayers for medical purposes; Bandages for joints, anatomical; Plaster bandages for orthopedic purposes; Bandages, elastic; Cupping glasses; Veterinary apparatus and instruments; Vibromassage apparatus; Hot air vibrators for medical purposes; Bed vibrators.

European Union trade mark registration No 8 525 677:

Class 10: Artificial limbs, eyes and teeth.

European Union trade mark registration No 8 525 693:

Class 10: Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopedic articles; suture materials.

The contested goods are the following:

Class 10: Baby bottles; nipples for baby bottles; cups adapted for feeding babies and children; handles for baby bottles; pacifiers for babies and holders thereof; teething rings; nipples; nipple covers for baby bottles; breast pumps; breast milk storage bottles; feeding bottle valves.

Some of the contested goods are identical to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier marks.

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.

In the present case, the goods assumed to be identical are directed at the public at large. The degree of attention is considered to be average.

3. The signs

ICOSAFE (EUTM No 5 787 701)  (EUTM No 14 281 281) ICOGAMMA (EUTM No 8 525 677) ICOPIUMA (EUTM No 8 525 693)	ICOMFORT
Earlier trade marks	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 origin due to similarities that pertain solely to non-distinctive elements.

The earlier mark No 14 281 281 is a figurative mark consisting of clearly perceptible elements ‘ICO’ and ‘plus’ separated by ‘(‘. While the element ‘ICO’ as appearing in the sign is meaningless in the relevant territory, the element ‘plus’ will be perceived by the relevant public as referring to some advantage or benefit. As such, it is non-distinctive for the goods in question. The earlier mark No 14 281 281 has no elements that could be considered dominant.

Three remaining earlier marks are word marks. It should be noted, that although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a verbal sign, he will break it down into elements which, for him, suggest a specific meaning or which resemble words known to him (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57). In the present case, the word ‘SAFE’ will be understood by part of the relevant public (e.g. English-speaking consumers) as not causing physical harm or danger and is therefore considered weak for the relevant goods and for part of the relevant public that understands it. The word ‘GAMMA’ may have many meanings depending on the context such as third letter in a Greek alphabet, the third of a group or series, a number indicating the degree of contrast between the darkest and lightest parts of a photographic image for, for example, English-speaking consumers but it is not descriptive, allusive or otherwise weak in the relevant territory and for the relevant goods. It is considered distinctive. The word ‘PIUMA’ means for example feather, plume in Italian but it is not descriptive, allusive or otherwise weak in the relevant territory and for the relevant goods. It is considered distinctive.

The three earlier word marks have no elements that could be considered dominant.

The contested sign is a word mark ‘ICOMFORT’ and has no elements that could be considered dominant. Again, although the average consumer normally perceives a mark as a whole, the vast majority of the relevant public will break the contested mark into two elements ‘I’ and ‘COMFORT’ due to the specific meaning of the word ‘COMFORT’ (a feeling of relief or well-being, a satisfying experience, one that gives or brings comfort). Due to its widespread use and due to the existence of similar words in different languages, the meaning of the word ‘COMFORT’ is perceived by the vast majority of the relevant consumers. For this part of the relevant public the word ‘COMFORT’ is non-distinctive since it may indicate that the goods at hand give or bring comfort, a feeling of relief or well being. The element ‘I’ may have many meanings and may be understood as referring to first person singular, internet, or intelligence by English-speaking consumers, or may have other meanings in other languages (for example and in Polish). It is however not descriptive, allusive or otherwise weak in the relevant territory and for the relevant goods.

Although it is very unlikely that the word ‘COMFORT’ will not be understood in the relevant territory, the Opposition Division cannot exclude the possibility that there exist part of the relevant public (e.g. part of the relevant public in Spain where the equivalent word for ‘COMFORT’ is comodidad) that does not grab any meaning in the word element ‘COMFORT’ (and as such the mark has no elements that could be considered more distinctive) and will not break the contested mark into two elements. As this part of the relevant public is more prone to confusion, the Opposition Division finds it appropriate to start the comparison of the signs in relation to the part of the public that does not perceive any meaning in the contested sign or its elements (whether or not they perceive any meaning in the earlier signs).

Conceptually, for those who perceive no meaning in the earlier signs, a conceptual comparison is not possible and the conceptual aspect does not influence the assessment of the similarity of the signs. For those who perceive a meaning in any of the earlier signs, the marks are not conceptually similar since one of the signs (the contested one) will not be associated with any meaning.

Visually and aurally, the signs coincide in ‘ICO’. They also share some additional letters such as the letter ‘M’ in the earlier mark ‘ICOGAMMA’ or ‘ICOPIUMA’ and the letter  ‘F’ in the earlier mark ‘ICOSAFE’ but as they appear in different positions and do not constitute independent elements within the signs, such coincidence cannot influence the assessment of similarity between the signs: since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will share some of them. Thus the signs differ in the remaining elements such as weak/non-distinctive ‘SAFE’ and ‘plus’, as well as ‘GAMMA’ and ‘PIUMA’ of the corresponding earlier marks and ‘MFORT’ of the contested sign. In case of the earlier trade mark No 14 281 281, the marks differ visually in the stylisation of the earlier sign and the element ‘(‘ which will not be pronounced.

While it is true that the beginning of the marks is the part that first catches the consumer’s attention, it must be recalled that that argument cannot hold in all cases and does not, in any event, cast doubt on the principle that the assessment of the similarity of marks must take account of the overall impression created by those marks. Indeed, the aforementioned general rule is not applicable in all cases and depends on the specific characteristics of the signs. Although there is a risk in relying too much on a mechanical quantitative evaluation, it is a fact that counting the total number of letters, identifying the amount of identical letters and comparing their order in the respective marks, can provide certain guidance. In the present case, the marks share only three letters while they consist of seven/eight letters (or elements as regards the earlier mark containing ‘(‘). The non-coinciding elements are thus longer and occupy more space and this makes them visually and aurally relevant. The additional letters, ‘MFORT vs. ‘SAFE’ ’( plus’, ‘GAMMA’ and ‘PIUMA’ contribute to a different visual and aural perception of the marks in dispute. Additionally, the vowel-consonant structure is different in the marks at hand: the differentiating element in the contested mark consists of one vowel only and finishes with a consonant. On the other hand the differentiating elements of the earlier marks contain two/three vowels and finish with a vowel (except the earlier mark No 14 281 281 which is however figurative and thus contain further differentiating elements). Moreover, the common element ‘ICO’ is a meaningless string of letters and forms only a part of the verbal element of each of the mark: it is not recognisable as such in the marks (except the earlier mark No 14 281 281 which is however figurative and thus contain further differentiating elements) and does not play an independent role in the overall impression of any of the marks.

Therefore, the signs are visually and aurally similar to a low degree for the part of the relevant pubic who does not perceive any meaning in the word ‘COMFORT’.

However, as explained above, the vast majority will perceive and understand the word ‘COMFORT’ and will break the word element of the contested mark into two: ‘I’ and ‘COMFORT’.

For this part of the relevant public, the marks are not conceptually similar, either because the relevant public will perceive a meaning only in the contested sign, or because they will perceive different meaning in any of the earlier sign and in the contested sign.

As regards visual comparison, consumers who perceive the element ‘COMFORT’ will break the mark into two elements ‘I’ and ‘COMFORT’ as explained above, and will therefore not perceive visually a common element ‘ICO’ as such in the contested mark. As such, the marks are visually similar to a low degree for this part of the relevant public.  Aurally, there are no significant differences in pronunciation of the marks between the part of the relevant public that does not see any meaning in the contested mark taken as a whole or its elements and part of the relevant public that perceives the element ‘COMFORT’, although in case of the latter, letter ‘I’ perceived as a separate element may be additionally stressed. Thus, aurally the marks are similar to a low degree for this part of the relevant public.

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 marks

The distinctiveness of the earlier marks 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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks taken as a whole have no meanings for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal, despite the presence of non-distinctive/weak elements in the marks as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

In the present case, it has been assumed that the contested goods are identical to the opponent’s goods. The signs are visually and aurally similar to a low degree but differ clearly in the remaining parts of the marks.

However, the Opposition Division considers that although the beginning of the earlier signs is reproduced in the contested sign, there exist important differences between the signs in their remaining parts which will allow the consumers to distinguish between the marks.

Moreover, aural and visual similarities may be counteracted by conceptual differences which distinguish some of the marks under comparison. For there to be such a counteraction, at least one of the marks in question must have, from the point of view of the relevant public, a clear and specific meaning so that the public is capable of grasping it immediately (16/01/2008, T-112/06, Idea, EU:T:2008:10, § 76). In the case at hand, part of the relevant public will perceive meanings in the earlier signs which will contribute to further differentiating the signs on the conceptual level. Moreover, the verbal element ‘COMFORT’ of the contested sign possesses, for the vast majority of the relevant public, a specific semantic content, which the public is capable of grasping immediately. The fact that the public will perceive the word ‘COMFORT’ in the contested sign affects significantly the perception of the contested sign taken as a whole: the public will not anymore recognise the common element ‘ICO’ as such in the contested sign, but will rather see the mark as consisting of two elements ‘I’ and ‘COMFORT’.

Although the opponent does not explicitly refer to a ‘family of marks’ or ‘marks in a series’, it remains necessary to consider the opponent’s argument that the earlier trade marks are all characterised by the presence of the same word component ‘ICO’.

In fact, the concept of the family of marks was exhaustively analysed by the General Court in its judgment of 23/02/2006, T-194/03, Bainbridge, EU:T:2006:65.

When the opposition to a European Union trade mark is based on several earlier marks and those marks display characteristics which give grounds for regarding them as forming part of a single ‘series’ or ‘family’ a likelihood of confusion may be created by the possibility of association between the contested trade mark and the earlier marks forming part of the series. However, the likelihood of association described above may be invoked only if two conditions are cumulatively satisfied.

Firstly, the proprietor of a series of earlier registrations must furnish proof of use of all the marks belonging to the series or, at the very least, of a number of marks capable of constituting a ‘series’.

In the present case, the opponent failed to prove that it uses a family of ‘ICO’ marks, and moreover that it uses such a family in the same fields as those covered by the contested trade mark. The opponent did not file any evidence.

The opponent refers also to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the opponent are not relevant to the present proceedings because the marks under comparison are different; they have different length, and/or different number of coinciding elements.

Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

COSTS

According to Article 85(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 Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, 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

Katarzyna ZANIECKA

Anna BAKALARZ

Adriana VAN ROODEN

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.