OPPOSITION No B 2 041 211

Jerzy Petz, marsz.Józefa Piłsudskiego 20, 05-120 Legionowo, Poland (opponent), represented by LDS Łazewski Depo & Partners, ul. Okopowa 58/72, 01-042 Warsaw, Poland (professional representative)

a g a i n s t

Mediq N.V., Hertogswetering 159, 3543 As Utrecht, The Netherlands (holder), represented by Novagraaf Nederland B.V., Hoogoorddreef 5, 1101 BA Amsterdam, The Netherlands (professional representative).

On 27/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 041 211 is partially upheld, namely for the following contested services:

Class 41: Education; health club services; arranging and conducting of workshops (training); vocational guidance (education or training advice).

Class 44: Pharmacy advice; health care; nursing, medical; medical assistance; medical clinics; telemedicine services; physiotherapy; hygienic care for human beings; medical services.

2.        International registration No 1 097 819 is rejected for all the above services. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all of the services of international registration designating the European Union No 1 097 819 ‘MEDIQ’ (word mark). The opposition is based on Polish trade mark registrations No 190 975  and No 190 976, the Polish trade name ‘MEDIQ’ and ‘KLINIKA MEDIQ’ (word marks), the Polish non-registered trade marks ‘MEDIQ’ and ‘KLINIKA MEDIQ’ (word marks) and the Polish company name ‘Jerzy Petz Mediq Niepubliczny Zakład Opieki Zdrowotnej’. The opponent invoked Articles 8(1)(b) and 8(4) EUTMR.

PRELIMINARY REMARK On the scope of the Opposition

In the notice of opposition, filed 16/07/2012, the opponent indicated that it opposed all the goods and services in the contested sign, namely services in Classes 35, 41 and 44. Later, in its observations dated 13/07/2015, the opponent states that the contested sign should not be accepted with respect to the services in Classes 41 and 44 and no mention of any sort is made of the services in Class 35 in this or the opponent’s further correspondence. However, since the opponent did not limit the extent of the opposition in an unequivocally clear and unambiguous form, the examination must proceed on the basis that the opposition is against all the services of the contested sign. 

SUBSTANTIATION Polish trade mark registrations No 190 975 and No 190 976

According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party shall also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered – Rule 19(2)(a)(ii) EUTMIR.

According to Rule 19(3) EUTMIR, the information and evidence referred to in paragraphs 1 and 2 shall be in the language of the proceedings or accompanied by a translation. The translation shall be submitted within the time limit specified for submitting the original document.

In the present case, the notice of opposition was not accompanied by certificates and/or any translation as regards the earlier Polish trade mark registrations No 190 975 and No 190 976.

On 25/09/2012 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the required evidence and translations. This time limit expired, after suspension, on 12/07/2015, which being a Sunday, moved the deadline to the next working day, 13/07/2015.

On 13/07/2015, the opponent submitted evidence including printouts from the Polish Patent Office (RegisterPlus) for the two earlier rights (Enclosure 13 following the opponent’s indexing) and applications for the renewal of both trademarks (Enclosure 14).

Enclosure 13 is from an official source and whilst the headings of the data are in English, the actual data is not, as can be seen by the extract of one of the printouts below:

This printout does not, for example, provide a translation of the type of mark, the status, the goods and services covered, etc. Whilst a translation into the language of proceedings of the applications for the renewal of both trademarks (Enclosure 14) was provided, no such translation was provided for Enclosure 13 and there is necessary data from the trade mark which is not translated (for example the list of services).

According to Rule 19(4) EUTMIR, the Office shall not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office.

It follows that the evidence filed by the opponent cannot be taken into account.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition shall be rejected as unfounded.

The opposition must, therefore, be rejected as unfounded as far as it is based on the Polish trade mark registrations No 190 975 and No 190 976.

The examination of the opposition will now continue on the basis of the remaining earlier marks, namely the Polish trade name ‘MEDIQ’ and ‘KLINIKA MEDIQ’ (word marks), the Polish non-registered trade marks ‘MEDIQ’ and ‘KLINIKA MEDIQ’ (word marks) and the Polish company name ‘Jerzy Petz Mediq Niepubliczny Zakład Opieki Zdrowotnej’.

NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR

The opponent based the opposition on the Polish trade name ‘MEDIQ’ and ‘KLINIKA MEDIQ’ (word marks), the Polish non-registered trade marks ‘MEDIQ’ and ‘KLINIKA MEDIQ’ (word marks) and the Polish company name ‘Jerzy Petz Mediq Niepubliczny Zakład Opieki Zdrowotnej’. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Polish non-registered trade mark ‘MEDIQ’ (word mark).

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a)        rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b)        that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

• the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

• pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

• the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non-registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

a) Prior use in the course of trade of more than mere local significance

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights. Furthermore, such use must indicate that the sign in question is of more than mere local significance.

It must be recalled that the object of the condition laid down in Article 8(4) EUTMR relating to use in the course of trade of a sign of more than mere local significance is to limit conflicts between signs by preventing an earlier right which is not sufficiently definite — that is to say, important and significant in the course of trade — from preventing registration of a new European Union trade mark. A right of opposition of that kind must be reserved to signs with a real and actual presence on their relevant market. To be capable of preventing registration of a new sign, the sign relied on in the opposition must actually be used in a sufficiently significant manner in the course of trade and its geographical extent must not be merely local, which implies, where the territory in which that sign is protected may be regarded as other than local, that the sign must be used in a substantial part of that territory. In order to ascertain whether that is the case, account must be taken of the duration and intensity of the use of the sign as a distinctive element for its addressees, namely purchasers and consumers as well as suppliers and competitors. In that regard, the use made of the sign in advertising and commercial correspondence is of particular relevance. In addition, the condition relating to use in the course of trade must be assessed separately for each of the territories in which the right relied on in support of the opposition is protected. Finally, use of the sign in the course of trade must be shown to have occurred before the date of the application for registration of the European Union trade mark (29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 157, 159, 160, 163 and 166).

In the present case, the contested trade mark was filed on 08/12/2011. Therefore, the opponent was required to prove that the sign on which the opposition is based was used in the course of trade of more than local significance in Poland prior to that date. The evidence must also show that the opponent’s sign has been used in the course of trade for the goods and services for which the opponent claimed protection, namely: healthcare services; medical services; medical diagnostics; medical treatment; surgery; one-day surgery; nursing services; diagnostics; optician services and optician shops; medical clinics; rehabilitation; ophthalmological services; dental services; plastic surgery; laboratory; prosthetic services; trainings in medical services; trainings in nursing; trainings in orthopedics; trainings in orthopedic equipment; clinical studies.

The opponent filed the following evidence to prove use of its non-registered signs (only the evidence which is related to proving use in the course of trade of more than mere local significance is listed):

Enclosure 2: Printout from the Polish Register of Medical Practitioners website (http://rpwdl.csioz.gov.pl) dated 09/07/2015 for the medical entity Jerzy Petz, in Polish with an English translation. It shows that from 12/10/1998 the medical entity had an enterprise entitled MEDIQ NZOZ Hospital for “stationary and 24 hour hospital services”. Further entries for different medical services are listed with the last item before the filing date of the contested sign being an entry for a daily rehabilitation centre dated 24/01/2011.

Enclosure 3: Copies of seven contracts made between the Polish Nation Health Fund and MEDIQ NZOZ for the provision of various healthcare services. The items are in Polish with English translations and are dated between January 2009 and February 2010. The value of the services provided is in the hundreds of thousands of euros.  

Enclosure 4: Nineteen page agreement between an insurance company, Allianz, and the Private Healthcare Centre MEDIQ (in Polish with translations into English) of which some parts of the agreement are redacted. Dated 25/02/2009 the agreement shows that the healthcare provider performs for the insured a wide range of medical services (listed in an attachment) from 0700 to 2200, 6 days a week, in Legionowo.

Enclosure 5: One page printout from the Allianz system for searching partner clinics showing the opponent’s hospital in Legionowo. The document is undated (although a copyright notice from 2015 can been seen) and is in Polish with a partial English translation.

Enclosure 6: Fifty pages of invoices with some data redacted (with English translations) dated from 07/12/2009 to 30/03/2011. The amounts range from 600 PLN to 6,600 PLN (approximately EUR 143 to EUR 1,572) and are from the entity MEDIQ NZOZ and addressed to various locations across Poland (the intended addressees have been redacted). The figurative device appears at the top of the invoices. The services invoiced are described as ‘surgery’, ‘surgeries of varicose veins without saphenectomy’, ‘post-surgical facilitation – – 90 min’ ‘post-surgical facilitation – knee – 90 min’, ‘post-surgical facilitation – knee’ and ‘surgeries from the healthcare fund, donation’.

Enclosure 7: A series of extracts from the “Wprost” website (a Polish weekly magazine) and “Rzeczpospolita” (a Polish daily newspaper). They show MEDIQ ranked within the top ten or categorized as a finalist in independent rankings for private hospitals from across Poland for the years 2003, 2004, 2009, 2010 and 2011. The “Rzeczpospolita” ranking is created by the independent Polish Centre for Monitoring Quality in Healthcare.

Enclosure 10: Five advertisements taken from Polish press namely Gazeta Wyborcza (3 items, dated 02-08/04/2010, 04/02/2010 and 28/01/2009), Rzeczopspolita 20/10/2009 and an unnamed magazine 02-08/04/2010. They show the use of the sign  in relation to a health clinic and the term MEDIQ also appears in the text.

Enclosure 11: Undated Affidavit by Dr. Pawel Radzimowski, the proxy of the management board of Comesa Polska Sp. Z o.o. Dr. Radzimowski explaining that Comesa is Poland’s sole agent of Arthrex company, one of the world’s leaders in orthopaedics, and that they have worked with MEDIQ clinic since 2008 and that MEDIQ uses the newest treatment methods and has, at least, co-organised various medical trainings.

Enclosure 12: Affidavit of Tomasz Piechal, Frachise Unit Director, Depuy Synthes, Othopaedics, Johnson&Johnson Poland Sp. z o.o. dated 13/07/2013 stating that the company conducted at NZOZ Mediq a “number of nationwide trainings in regards to joints alloplasty”.

The evidence shows that the sign was used in Poland. This is evident as all the evidence is in Polish and the vast majority refers to that territory. The fact that the clinic is located in a town of 50,000 inhabitants could be seen as an issue for the requirement to prove use of more than mere local significance. However, the evidence as a whole and in particular the invoices (Enclosure 6) and the newspaper and magazine extracts (Enclosure 7) show that the significance of the use extends much further than the single town in which the activities are carried out. Indeed the extracts show that the operations carried out under the trade mark ‘MEDIQ’ are ranked together with other establishments throughout Poland and which come from much larger cities, as the extracts list establishments from Warsaw, Gdansk, Lubin, etc. Clearly, therefore, the mark whilst providing services from just one city, is present and creating an awareness of itself and the services it provides on a much larger and indeed national level.  

The evidence shows use before the relevant date with some evidence going back as far as 1998, but with the majority dated between 2009 and 2011. The Opposition Division can safely conclude that it was sufficiently demonstrated that the use was continuous as well as ongoing at the time of the filing of the contested sign.

The sign does appear in figurative form in some of the evidence (see listing above), however, this consists in the addition of the descriptive term ‘KLINIKA’ and some decorative figurative elements (two lines and an indistinct device inside the letter ‘Q’) and some slight stylization of typeface. However, these differences do not alter the distinctive character of the sign as a whole and therefore, it can be concluded that the sign was used as a word mark ‘MEDIQ’. For completeness, it must be mentioned that whilst the sign sometimes appears next to the element ‘NZOZ’, this is an abbreviation of the descriptive term “non-public health care facility”.

The holder claims that the evidence is insufficient. However, the holder’s claims are rather piecemeal with statements claiming that the individual pieces of evidence do not prove use of the non-registered trade mark, although not elaborating in precisely what manner they did not prove use. It is possible that the holder is claiming that the evidence, such as the contracts and extract from the register, show a company name or entity rather than trade mark use. This is possible, but this is evidently not the case for the other evidence, for example the advertisements, the invoices, the extracts from newspapers and magazine, the Affidavits. There it is clear that ‘MEDIQ’ was used in direct connection with the services of the opponent to identify their commercial origin and, thus, was used as a trade mark.

Therefore, given that no convincing arguments were put forward as to why the evidence in its totality does not prove use of the sign ‘MEDIQ’ as a non-registered trade mark and assessing the evidence in its totality, the Opposition Division considers that the non-registered sign ‘MEDIQ’ was used in the course of trade of more than mere local significance.

However, the evidence does not show use for all the services claimed by the opponent. Whilst the evidence shows that the opponent’s sign has been used in the course of trade for a wide range of healthcare services the evidence does not show sufficient evidence regarding the carrying out of training (as argued by the holder, and in this respect the Opposition Division is in complete agreement – the evidence shows that training took place, but not that it was carried out under the ‘MEDIQ’ sign) and clinical studies and optician shops for which no evidence was supplied.

Therefore, the Opposition Division considers that the non-registered sign was used for the following services:

Healthcare services; medical services; medical diagnostics; medical treatment; surgery; one-day surgery; nursing services; diagnostics; optician services; medical clinics; rehabilitation; ophthalmological services; dental services; plastic surgery; laboratory; prosthetic services.

b) The right under the applicable law

The opponent invoked Article 10 of the Polish Unfair Competition Law in relation to non-registered trademarks. The opponent submitted the Act of 16/04/1993 on suppression of unfair competition (Journal of Law 2003, No 153, Item 1503 as amended), hereafter “the Unfair Competition Law”, in Polish and with a translation of Article 10 into English. This states:

The holder replied that the articles invoked by the opponent do not contain any clear provision that would give the opponent the right to prohibit the use of subsequent trademarks.

The opponent refuted this interpretation:

Furthermore, the opponent in support of its arguments filed a complete copy of a decision of the Appeal Court in Cracow dated 20/02/2007 I ACa 27/07 in Polish with a partial translation into English, namely:

The Opposition Division found that the evidence submitted in support of Article 8(4) EUTMR proposes a line of argument that must, prima facie, be addressed. Furthermore, in light of recent case law, 28/10/2015, T-96/13, Macka, EU: T:2015:813, § 35-36, and the arguments presented by the opponent it was right in the present case to request further explanations. Specifically, the opponent was requested to file full translations into the language of proceedings of the copies of the Polish court decisions submitted previously.

The opponent filed the complete translation and the holder replied that the decision was not relevant especially as there seemed to be no explicit mentioning of non-registered trademarks.

However, the Opposition Division finds that the judgment of the Appeal Court of 20/02/2007 does support the opponent’s arguments regarding Article 10 of the Unfair Competition Law. The decision, whilst not specifically mentioning non-registered trade marks by name, shows that an earlier right does not need to be registered to be obtained and that use is sufficient for such a right to be acquired and, therefore, be protected. Furthermore, the decision also describes the scope of protection and the prohibition. Regarding the scope the decision states: “The literature emphasizes that for the acceptance of responsibility for an act of unfair competition is not necessary that (…) the act of misleading (which, in fact, is mentioned both in Art. 10 ACUC, as well as in Article 296 Industrial Property Law) actually took place. It is enough to create a danger of confusion.” (emphasis added) and regarding the prohibition it states: “The use of another's trademark is not permitted also when it leads to a misleading impression of the existence of economic links between the right holder and the entity using it in its operations.” (emphasis added). Therefore, a danger of confusion between signs allows the earlier right holder to prohibit the use of another sign.

So, the law qualifies under Article 8(4) EUTMR and is proven by the opponent.

c) The opponent’s right vis-à-vis the contested trade mark

The conditions laid down by the national law are the following:

– The right to the non-registered sign must be acquired before the filing of the opposed mark.

– The non-registered sign must have been used in the course of trade.

– There must be a danger of confusion between the signs.

The first two conditions are fulfilled as becomes evident from the assessment carried out above, which also includes the additional European Union requirement of the use being of more than mere local significance.

The sign was clearly used in the course of trade of more than mere local significance, as explained above, and the right to the sign was acquired prior to the date of application of the contested mark. Finally, it is also clear that the opponent is the proprietor of that sign as it is undoubtedly the entity that appears in the evidence as the one using and owning the sign.

The Opposition Division will proceed with the assessment of the remaining condition. Non-registered marks are generally protected against subsequent marks according to the same criteria that are applicable to conflicts between registered marks, namely identity or similarity between the signs, identity or similarity between the goods or services, and the presence of a likelihood of confusion. In these cases, the criteria developed by the courts and by the Office with regard to Article 8(1) EUTMR can be applied mutatis mutandis when examining Article 8(4) EUTMR.

1. The services

The opponent’s non-registered trade mark was used for:

Healthcare services; medical services; medical diagnostics; medical treatment; surgery; one-day surgery; nursing services; diagnostics; optician services; medical clinics; rehabilitation; ophthalmological services; dental services; plastic surgery; laboratory; prosthetic services.

The opposition is directed against the following services of the contested sign:

Class 35: Business administration; personnel recruitment and selection; personnel consultancy and intermediary services; payrolling; data searches in computer files (for others); computerized file management; collection and organisation of data in computer databases; employment agency (provision of personnel); temporary employment agencies; business management consultancy; office functions; outsourcing services (business assistance); outplacement; secondment of personnel.

Class 41: Education; health club services; physical education; providing on-line electronic publications (not downloadable); arranging and conducting of seminars and symposiums; correspondence educational services; correspondence courses; arranging and conducting of workshops (training); vocational guidance (education or training advice).

Class 44: Pharmacy advice; health care; nursing, medical; medical assistance; medical clinics; telemedicine services; physiotherapy; hygienic care for human beings; medical services.

Contested services in Class 35

The contested business administration; personnel recruitment and selection; personnel consultancy and intermediary services; payrolling; employment agency (provision of personnel); temporary employment agencies; outsourcing services (business assistance); outplacement; secondment of personnel are all services intended to help companies with the performance of business operations and, therefore, the interpretation and implementation of the policy set by an organisation’s board of directors. These services consist of organising people and resources efficiently so as to direct activities toward common goals and objectives. They include activities such as personnel recruitment, payroll preparation, drawing up account statements and tax preparation, since they enable a business to perform its business functions and are usually carried out by an entity that is separate from the business in question. They are rendered by, inter alia, employment agencies, auditors and outsourcing companies.

The contested business management consultancy is a service whereby the providers gather information and supply expertise to enable their customers to carry out their business or provide businesses with the information necessary support business decision making. The services include activities such as organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a business, such as advice on how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, market products, research consumer trends, launch new products, create a corporate identity, etc.

The contested office functions are the internal day-to-day operations of an organisation, including administration and support services in the ‘back office’. They mainly involve activities that assist in the running of a commercial enterprise. They include activities typical of secretarial services, such as shorthand and typing, compilation of information into computer databases, invoicing and administrative processing of purchase orders, as well as support services, such as the rental of office machines and equipment.

Finally, and bearing in mind what has just been said above, the contested data searches in computer files (for others); computerized file management; collection and organisation of data in computer databases are all specific IT services which fall under the broader category of office functions.

All these business and office-related services differ from the opponent’s services, which are all medical and healthcare services, as the abovementioned contested services target different publics and have different providers, distribution channels, methods of use and intended purposes. Therefore, all the contested services in Class 35 are dissimilar to the opponent’s services.

Contested services in Class 41

The contested education; arranging and conducting of workshops (training); vocational guidance (education or training advice) are, to a certain extent, related to the opponent’s medical clinics. It is true that these services have different purposes and are normally provided through different channels. However, it cannot be excluded that these services might have the same origin, since they can be rendered by the same institutions. Indeed, it is not uncommon for an enterprise which deals with healthcare to also offer a variety of services to both the staff that deliver the services or outside for professionals including education and training. Likewise, most medical universities are either located in or attached to medical facilities such as hospitals and clinics and mandatory internships for newly graduated doctors are often carried out in these same institutions. Consequently, as the services have this point in common, these services are deemed to be similar to a low degree.

Furthermore, the contested health club services can also have links to the opponent’s healthcare services as while health clubs are more usually linked to sporting activities as opposed to the strictly healthcare nature of the opponent’s services, both have a similar overall purpose (the enhancement and maintenance of good health) and both can provide similar treatments such as physiotherapy. Consequently, these services are deemed to be similar to a low degree.

However, the same links do not exist between the opponent’s services and the contested physical education; providing on-line electronic publications (not downloadable); arranging and conducting of seminars and symposiums; correspondence educational services; correspondence courses. These services are not directly related to medical services nor are they commonly performed or provide by medical centres. Furthermore, while links were found between education services as a broad category and the opponent’s medical clinics the very specific nature of these contested services means that those links do not exist; training hospitals do not train via correspondence courses, the whole point being to train staff by on the job training under supervision and thereby provide medical and health care. Therefore, these services are considered to be dissimilar.

Contested services in Class 44

Medical clinics; medical services are identically contained in both lists of services.

The contested pharmacy advice; health care; nursing, medical; medical assistance; telemedicine services; physiotherapy; hygienic care for human beings are included in, or overlap with, the broad category of the opponent’s medical services. Therefore, they are identical.

2. The signs

MEDIQ	MEDIQ
Earlier trade mark	Contested sign

The signs are identical.

3. Global assessment of the conditions under the applicable law

A danger 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 danger 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.

In the present case, it is evident that the danger of confusion exists (in addition to ‘double identity’ as regards some of the services) as the signs are identical and some of the services are either identical or similar to a low degree.

Consequently, all the conditions required by the Polish national law are fulfilled.

d) Conclusion

Considering all the above, the Opposition Division finds the opposition is partially well founded on the basis of the opponent’s earlier sign. Therefore, the contested trade mark must be rejected for all the contested services found identical or similar to a low degree.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the danger of confusion between the signs, the opposition based on this earlier right and the national law invoked by the opponent cannot be successful for these services.

The opponent has also based its opposition on the following earlier rights for which the opponent invoked Article 8(4) EUTMR:

• Polish non-registered trade mark ‘KLINIKA MEDIQ’ (word mark)

• Polish trade name ‘MEDIQ’ (word mark)

• Polish trade name ‘KLINIKA MEDIQ’ (word mark)

• Polish company name ‘Jerzy Petz Mediq Niepubliczny Zakład Opieki Zdrowotnej’ (word mark)

The scope of protection that the opponent claimed for these earlier rights is for exactly the same services used in the course of trade as have already been examined above for the earlier Polish non-registered trade mark ‘MEDIQ’. Furthermore, the evidence of use is the same for these earlier rights as the one already compared above, therefore, the subset of services for which use was proven is exactly the same as for the earlier Polish non-registered trade mark ‘MEDIQ’.

In the case of the earlier Polish non-registered trade mark, ‘KLINIKA MEDIQ’, the national law requirement is the same as already examined above in the other earlier Polish non-registered trade mark ‘MEDIQ’. Therefore, as similarity of services was found to be a necessary condition, then for this other Polish non-registered trade mark, governed by the same law and for the same services, the same conclusion will be reached, namely there is no danger of confusion as the services are dissimilar.

For the earlier trade names and company name the opponent stated that Article 5 of the Polish Unfair Competition Law says that “an act of unfair competition shall be any designation of the enterprise which may mislead the customer as to its identity”. Furthermore, the opponent stated that Article 43 of the Polish Civil Code says that “a company name infringement takes place when: … 3) it takes place in the same market”. Both these definitions lead to the conclusion that there must be a likelihood of confusion (or in other words a misleading of the customer) and that similarity of goods and services is a necessary condition (it takes place in the same market). This is further supported by the opponent’s arguments which state that the services are either identical or similar and which at no point does the opponent submit evidence or arguments to show that the national law functions so as to prohibit dissimilar goods and services.

Consequently, as similarity of goods and services is also a necessary condition for these earlier rights, and given that the services for which they have protection are the same as have already been compared, the opposition cannot be successful for those services found dissimilar.

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 will decide a different apportionment of costs.

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

The Opposition Division

Chantal VAN RIEL

Ric WASLEY

Vita VORONECKAITĖ

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 shall be filed in writing at the Office within two months of the date of notification of this decision. It shall 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 shall 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.