OPPOSITION No B 2 696 832

MÉDIS – Companhia Portuguesa De Seguros De Saúde, S.A., Av. Dr. Mário Soares (Tagus Park). Edifício 10, Piso 1, 2744 Porto Salvo, Portugal (opponent), represented by Gastão Da Cunha Ferreira, LDA., Rua dos Bacalhoeiros, nº. 4, 1100-070 Lisboa, Portugal (professional representative)

a g a i n s t

Medis Associated B.V., Schuttersveld 9, 2316 XG Leiden, The Netherlands (applicant), represented by Algemeen Octrooi- En Merkenbureau B.V., John F. Kennedylaan 2,  5612 AB Eindhoven, The Netherlands (professional representative).

On 21/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 696 832 is upheld for all the contested goods and services.

2.        European Union trade mark application No 14 985 725 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 985 725. The opposition is based on, inter alia, on European Union trade mark registration No 6 647 093 and Portuguese trade mark registration No 548 083. The opponent invoked Articles 8(1)(b) and 8(5) 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 6 647 093 and Portuguese trade mark registration No 548 083.

1. The goods and services

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

European Union trade mark registration No 6 647 093

Class 9:        Encoded credit and debit cards, magnetic, and encoded cards, magnetic, for banking operations and healthcare-related operations.

Class 16:        Printed publications, brochures, prospectuses, stationery used for banking and business operations, calendars and diaries, paper, cardboard and goods made from these materials, not included in other classes; printed matter; credit cards, not magnetic; printed matter, namely cards for use in bank transactions, magazines, periodicals.

Class 36:        Insurance underwriting and financial services including those provided via the Internet or via other means of telecommunications.

Class 38:        Telecommunications and electronic transmission in relation to financial matters.

Portuguese trade mark registration No 548 083

As far as the earlier goods covered by this trade mark are concerned the Opposition Division notices that the correct translation of the relevant goods in Class 9 is Software applications. Therefore, the earlier goods are the following:

Class 9:        Software applications.

The contested goods and services are the following:

Class 9:        Computer programs for the analysis of medical images, and parts and components.

Class 16:        Printed matter, including brochures, leaflets, books and handbooks; Printed publications relating to computer programs.

Class 42:        Design and programming of computer programs for analysis of medical images.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘including’, used in the applicant’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in the opponent’s list of goods and services of the earlier EUTM No 6 647 093 to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and services.

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.

Contested goods in Class 9

The contested computer programs for the analysis of medical images are included in the opponent’s broad category of software applications of the earlier Portuguese mark No 548 083. The contested goods refer to a collection of instructions that performs a specific task when executed by a computer during the analysis of medical images. The opponent’s software applications or programs are also designed to perform a group of coordinated tasks, or activities that enable functioning of the computer hardware (such as a word processor, a spreadsheet, an accounting application, a web browser, a media player, a console game or a photo editor). Therefore, they are identical. 

The contested parts and components of the computer programs for the analysis of medical images refer to various instructions that perform a specific task when executed by a computer and as such are similar to the opponent’s software applications of the earlier Portuguese  trade mark registration No 548 083. The above-mentioned parts and components are often produced by the same undertaking that manufactures the opponent’s end product. Furthermore, these goods are complementary.

Contested goods in Class 16

The contested printed matter, including brochures, leaflets, books and handbooks; Printed publications relating to computer programs are identical to the opponent’s printed publications of the earlier EUTM registration No 6 647 093. 

Contested services in Class 42

The contested design and programming of computer programs for analysis of medical images have some points of contact with the opponent’s software applications in Class 9 of the earlier Portuguese mark No 548 083. The contested services refer to programming and designing, namely to the writing and arranging of a computer program, which is a set of coded instructions to enable a machine, especially a computer, to perform a desired sequence of operations, in the case at hand for analysis of medical images.

Therefore, the contested services are closely linked to the opponent’s goods. This is because developers of software applications can also provide software-related services like for example in this case specific contested design and programming of computer programs for analysis of medical images.

Although the nature of the goods and services is not the same, both the relevant public and the usual producers/providers of the goods and services can coincide. Furthermore, these goods and services may be complementary. Therefore, they are considered similar.

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 and services found to be identical and similar are directed at the public at large and at business customers with specific professional knowledge or expertise. The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the purchased goods and services.

3. The signs

EUTM No 6 647 093

Portuguese trade mark No 548 083

MÉDIS	Medis
Earlier trade marks	Contested sign

The relevant territory is the European Union and Portugal. 

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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the Portuguese-speaking part of the public.

The Portuguese trade mark No 548 083 and the contested sign are word marks. In case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether the signs are represented in upper- or lowercase characters.

The earlier European Union trade mark registration No 6 647 093 is a figurative mark that shows a green, slightly stylised cross and below it the verbal element ‘Médis’, in white, slightly stylised title case letters, all depicted on a dark blue rectangle. There is an acute accent above the second letter ‘e’. The term ‘Médis’ present in the earlier marks does not convey any concrete meaning. However, it cannot be completely ruled out that the relevant public may perceive this word as allusive of something that is related to the medical field or to medicine, because this word shares a common root with the equivalent words in Portuguese, ‘medicina’, ‘medicamento’. The same analysis applies to the contested sign ‘Medis’. In the context of the relevant goods and services these elements may be associated by the relevant public, as analysed above, with something related to the medical field and, therefore, their distinctiveness per se will be below the average in relation to them. The figurative elements of the earlier EUTM No 6 647 093, namely the element of the cross in combination with the colour green are widely used throughout the relevant territory as a professional symbol for pharmacies and will be associated as such by the relevant public. Consequently, bearing in mind the relevant goods and services, these elements are non-distinctive in relation to them because they indicate  that the goods and services in question (software applications, printed matter) can be related to the pharmaceutical field.

Additionally, as regards the figurative elements of the earlier EUTM No 6 647 093 (the cross, slight stylisation of the letters, colour, etc.), account must be taken that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). Therefore, in view of the composition of the sign, the verbal element is the one that will be used to refer to it.

Finally, the marks in question have no elements that could be considered more dominant (visually eye-catching) than other elements.

Visually and aurally, the signs coincide in the letters forming the only element of the earlier Portuguese mark, ‘Médis’, and the only element of the contested sign, ‘Medis’. The element ‘Médis’ of the earlier EUTM is the only verbal element of the mark and its most distinctive and independent element. The signs differ visually and aurally in the way in which the shared letter ‘E’ is depicted in the marks, namely with or without an acute accent and consequently, their pronunciation will be slightly different in that respect. Consequently, bearing in mind the non-distinctive character of the figurative elements of the earlier EUTM No 6 647 093 (which do not play an aural role, as they will not be pronounced) it is considered that the signs are visually and aurally similar to a high degree.

Conceptually, as mentioned above, the terms ‘Médis’/Medis do not convey any concrete meaning. However, the relevant public may perceive them as allusive of something that is related to the medical field or to medicine, because they share a common root with the equivalent words in Portuguese, ‘medicina’, ‘medicamento’. Additionally, the impact of the figurative element of the earlier EUTM No 6 647 093 is reduced due to its non-distinctive character in relation to the goods and services for the relevant public in the relevant territory.

Therefore, taking into account the above-mentioned the marks are conceptually similar to a high degree.

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 mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier marks have been extensively used and enjoy an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the distinctiveness of the earlier marks as a whole is below the average in relation to the goods in question.  

5. Global assessment, other arguments and conclusion

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 goods and services at issue are identical and similar and they are directed at the public at large and the professional public. The degree of attention will vary from average to high.

The distinctiveness per se of the earlier trade marks as a whole is below the average.

Although the distinctive character of an earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, on the one hand, and a trade mark applied for which is not a complete reproduction of it, on the other, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (see judgment of 16/03/2005, T-112/03 ‘Flexi Air’).

While it is true that the more distinctive the earlier mark, the greater will be the likelihood of confusion, given the identity and similarity of the goods covered by the respective marks, combined with a visual and phonetic similarity of the signs they consist of, suffice to create a likelihood of confusion within the meaning of Article 8(1)(b) CTMR. Since likelihood of confusion is the specific prerequisite for protection of the earlier mark, that protection applies irrespective of whether the earlier mark has only weak distinctiveness (see judgment of 12/01/2006, T-147/03 ‘Quantum’).

In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (judgment of 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323). 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).

In the present case the signs are considered visually, aurally and conceptually similar to a high degree. In particular, the marks are similar to the extent that they include the element ‘MEDIS’ that is the only element of the contested sign and the earlier Portuguese mark, and the only verbal and the most distinctive and independent element of the earlier EUTM No 6 647 093. The difference in an acute accent above the letter ‘e’ in the earlier marks is not enough to dispel the existence of a strong similarity between the marks.  Moreover, as mentioned above, the figurative element of the earlier EUTM No 6 647 093 is considered non-distinctive in relation to the goods and services at issue.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the Portuguese-speaking part of the public and, therefore, the opposition is  well founded on the basis of the opponent’s European Union trade mark registration No 6 647 093 and Portuguese trade mark registration No 548 083. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier marks, there is no need to assess the enhanced degree of distinctiveness of the opposing marks due to their extensive use/reputation as claimed by the opponent. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

It follows that the contested trade mark must be rejected for all the goods and services found identical and similar to those of the earlier marks.

As the earlier EUTM No 6 647 093 and Portuguese trade mark No 548 083 lead to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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(5) EUTMR.

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 applicant 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 Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, 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

Gueorgui IVANOV

Monika CISZEWSKA

Robert MULAC

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.