OPPOSITION DIVISION
OPPOSITION No B 2 809 229
Innovaciones Hospitalarias Idd Holding S.L., Rector Ubach, 9, 08021 Barcelona,
Spain (opponent), represented by Asociados Pymark S.L., Londres, 67, 2º, 3º,
08036 Barcelona, Spain (professional representative)
a g a i n s t
IQC Vertriebs GmbH, Im Eichgrund 16, 64354 Reinheim, Germany (holder).
On 22/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 809 229 is upheld for all the contested services, namely:
Class 44: Advisory services relating to medical instruments.
2. International registration No 1 303 597 is refused protection in respect of the
European Union for all of the contested services. It may proceed for the
remaining services.
3. The holder bears the costs, fixed at EUR 620.
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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 some of the services of international
registration designating the European Union No 1 303 597,
, namely against some of the services in
Class 44. The opposition is based on Spanish trade mark registration No 3 040 151,
Decision on Opposition No B 2 809 229 page: 2 of 6
. The opponent invoked Article 8(1)(a) and
(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.
a) The goods and services
The goods on which the opposition is based are the following:
Class 10: Medical and surgical instruments and apparatus; prostheses.
The contested services are the following:
Class 44: Advisory services relating to medical instruments.
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 contested advisory services relating to medical instruments can have the same
end users and distribution channels as the opponent’s medical instruments.
Furthermore, they are complementary. Therefore, the contested services are similar
to a low degree to the opponent’s goods.
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.
Decision on Opposition No B 2 809 229 page: 3 of 6
In the present case, the services found to be similar to a low degree are directed at
the public at large and at business customers with specific professional knowledge or
expertise.
The degree of attention may vary from average (e.g. for a syringe) to high, depending
on the specialised nature of the goods, the frequency of purchase and their price.
c) The signs
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).
Both marks are figurative.
The earlier mark contains the verbal element ‘iQc’ depicted in white letters on a dark
green rectangle. The letter ‘Q’ has its interior coloured blue and is depicted in upper
case, while the other letters are lower case. Below this element, the verbal element
‘INNOVACIONS QUIRÚRGIQUES DE CATALUNYA’ is depicted in upper case letters.
The contested sign contains the verbal element ‘IQC’ depicted in grey upper case
letters, the letter ‘Q’ also having light green and light blue parts. Below this element,
the verbal element ‘INTERNATIONAL QUALITY CONSULTING’ is depicted in
smaller, lighter grey upper case letters.
The coinciding element ‘IQC’ of the marks has no meaning for the relevant public and
is, therefore, distinctive.
The verbal element ‘INNOVACIONS QUIRÚRGIQUES DE CATALUNYA’ of the earlier
sign, although it is in Catalan, will be perceived as ‘surgical innovations of Catalonia’,
as it is very close to the Spanish version of this phrase, namely ‘innovaciones
quirúrgicas de Cataluña’. Bearing in mind that the relevant goods are medical
instruments, including surgical ones, the combination ‘INNOVACIONS
QUIRÚRGIQUES’ is non-distinctive for these goods, as is the combination ‘DE
Decision on Opposition No B 2 809 229 page: 4 of 6
CATALUNYA’, which is weak for all the opponent’s goods, as it may indicate their
geographical origin.
The verbal element ‘INTERNATIONAL QUALITY CONSULTING’ of the contested
mark is likely to be understood as such by the relevant public, as it is composed of
basic English words used in the business sector. Bearing in mind that the relevant
services are advisory services, this element is non-distinctive for all the contested
services.
The coinciding element in both signs, ‘IQC’, is the dominant element as it is the most
eye-catching.
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.
Visually, the signs coincide in the element ‘IQC’, the most distinctive element in both
signs. However, they differ in the additional verbal elements, ‘INNOVACIONS
QUIRÚRGIQUES DE CATALUNYA’ of the earlier sign and ‘INTERNATIONAL
QUALITY CONSULTING’ of the contested mark, which are weak or non-distinctive as
detailed above and therefore have only a limited effect on the visual comparison. The
signs also differ in the colours and the stylisations of the signs, as well as in the dark
green rectangle of the earlier mark.
Therefore, the signs are visually highly similar.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛IQC’, the
most distinctive element in both signs, present identically in both signs. The
pronunciation differs in the sound of the letters of the additional verbal elements,
‘INNOVACIONS QUIRÚRGIQUES DE CATALUNYA’ of the earlier sign and
‘INTERNATIONAL QUALITY CONSULTING’ of the contested mark, which are weak
or non-distinctive as detailed above and therefore have only a limited effect on the
aural comparison.
Therefore, the signs are aurally highly similar.
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks. As the signs will be associated with dissimilar
meanings, the signs are conceptually not similar.
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
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
Decision on Opposition No B 2 809 229 page: 5 of 6
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, despite the presence of some non-distinctive or weak elements in the mark,
as stated above in section c) of this decision.
e) Global assessment, other arguments and conclusion
The contested services are similar to a low degree to the opponent’s goods and
target the public at large and business customers with specific professional
knowledge or expertise. The degree of attention will vary from average to high.
From the point of view of the relevant public, the signs are visually and aurally highly
similar, inasmuch as they have in common the verbal element ‘IQC’, which is the
most dominant and distinctive element in both marks and is placed at the beginning
of the signs. As mentioned above, consumers generally tend to focus on the
beginning of a sign when they encounter a trade mark. The signs differ in the
additional verbal elements ‘INNOVACIONS QUIRÚRGIQUES DE CATALUNYA’ of the
earlier sign and ‘INTERNATIONAL QUALITY CONSULTING’ of the contested mark,
which are weak or non-distinctive as detailed above, and in the colours and the
stylisations of the signs.
In addition, 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 (22/06/1999, C-342/97, Lloyd Schuhfabrik,
EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to
rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel,
EU:T:2013:605, § 54).
Evaluating likelihood of confusion implies some interdependence between the
relevant factors and, in particular, a similarity between the marks and between the
goods or services. Therefore, a lesser degree of similarity between goods and
services may be offset by a greater degree of similarity between the marks and vice
versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
In the present case, the visual and aural highly similarity between the signs offsets
any lesser degree of similarity between the contested services and the opponent’s
goods.
Moreover, likelihood of confusion covers situations where the consumer directly
confuses the trade marks themselves, or where the consumer makes a connection
between the conflicting signs and assumes that the goods/services covered are from
the same or economically linked undertakings. Indeed, it is highly conceivable that
the relevant consumer will perceive the contested mark as a sub-brand, a variation of
the earlier mark, configured in a different way according to the type of goods or
services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).
Considering all the above, there is a likelihood of confusion on the part of the public
because the differences between the signs are confined to non-distinctive, weak or
secondary elements and aspects.
Therefore, the opposition is well founded on the basis of the opponent’s Spanish
trade mark registration No 3 040 151. It follows that the contested sign must be
rejected for all the contested services.
Decision on Opposition No B 2 809 229 page: 6 of 6
Since the opposition is fully successful on the basis of the ground of Article 8(1)
(b) EUTMR, there is no need to further examine the other ground of the opposition,
namely Article 8(1)(a) EUTMR.
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 holder is the losing party, it must bear the opposition fee as well as the
costs incurred by the opponent in the course of these proceedings.
According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the
costs to be paid to the opponent are the opposition fee and the costs of
representation, which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
María Clara
IBÁÑEZ FIORILLO
Francesca DRAGOSTIN Francesca CANGERI
SERRANO
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.