OPPOSITION No B 2 699 570
Novico Medica S.A., 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
Mi.Co.Medical, Via Sampolo 3/d, 90143 Palermo, Italy (applicant).
On 31/03/2017, the Opposition Division takes the following
1. Opposition No B 2 699 570 is rejected in its entirety.
2. The opponent bears the costs.
The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 082 175, namely against all the goods and services in Classes 10 and 44. The opposition is based on Spanish trade mark registration No 646 545. The opponent invoked Article 8(1)(b) EUTMR.
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.
- The goods and services
The goods on which the opposition is based are the following:
Class 10: Surgical, medical, dental, orthopedic and veterinary instruments and apparatus, pediatric nursing utensils and items, surgical, medical, hygienic and babies' feeding (except foodstuffs) instruments, apparatus, utensils and articles and instruments, apparatus, utensils and articles for babies' medical, sanitary and hygienic care; feeding bottles, feeding bottle teats, babies' pacifiers, teething rings; syringes and needles for injections, syringes for medical purposes, self-injection medicines, water bags for medical purposes, ice bags for medical purposes, umbilical belts, incubators for babies, first-aid kits.
The contested goods and services are the following:
Class 10: Medical and veterinary apparatus and instruments; physical therapy equipment.
Class 44: Human healthcare services.
Some of the contested goods and services 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 and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark.
- 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 assumed to be identical are directed partly at the public at large, for example human healthcare services in Class 44, and partly at both average and professional customers with specific knowledge or expertise in the medical field, for example medical apparatus in Class 10.
The public’s degree of attentiveness, irrespectively of whether the general public or the professional public is concerned, is high; this is because the goods and services in Classes 10 and 44 can have severe consequences for a person’s health, and their price can be very high.
- The signs
Earlier trade mark
The relevant territory is Spain.
The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).
The earlier mark is a word mark composed of the term ‘ICOMEDICAL’. In case of word marks, the words themselves are protected, not their written form. Therefore, it is irrelevant whether a word mark is represented in lower or upper case or a combination of those letters.
The contested sign is a figurative one composed of a device which represents a grey robot with a blue heart shaped face and a stethoscope hanging from its neck, placed on the left hand side and followed by the verbal elements ‘Mi’, ‘Co’ and ‘Medical’ separated by full stops written in a fairly standard light blue (‘Mi’, ‘Co’) and dark blue (‘Medical’) typeface respectively. Even though these elements are written together, they are not only separated by full stops and presented in two colours which clearly divide the first two elements ‘Mi’ and ‘Co’ from the term ‘Medical’, but also each of them starts with a capital letter and is followed by lower case letters. The said verbal sequence is followed by a perpendicularly presented verbal element ‘SRL’ written in much smaller fairly standard dark blue upper case typeface. The latter element is followed by a relatively small and hardly legible blue registered trademark symbol ®. Underneath all the abovementioned verbal elements appear the words ‘ELETTROMEDICALI E MONOUSO’, in much smaller, fairly standard grey upper case letters.
The earlier mark has no element which could be considered clearly more dominant (visually eye-catching). However, regarding the contested sign, the figurative element in the form of a robot and the verbal sequence ‘Mi.Co.Medical’, are the most dominant elements, compared to the rest, which are not only in a secondary position, mainly at the bottom part, but are also written in a much smaller typeface.
It should be stressed that the Court has held 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 sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words they know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57). Regarding the earlier mark, the public would split it into two elements ‘ICO’ and ‘MEDICAL’. The element ‘MEDICAL’ can clearly be separated from the remaining part, since it will be clearly understood by the relevant public as its close equivalent of the Spanish word ‘médico’/’médica’. This Latin-based word stems from medicus/medicina and is a widespread used term. Therefore, it is expected to be generally understood by the relevant public, as indicating that the goods and services at stake belong to the medical field and, therefore, it is considered to be non-distinctive. The first element ‘ICO’ does not have any meaning and so it will be perceived as the most distinctive element of the earlier mark.
Insofar as the contested sign is concerned, even though the figurative element in the form of a robot with a heart and a stethoscope might be perceived as slightly allusive by a part of the relevant public in relation to medical goods and services, it cannot be ignored that the device is fanciful and constitutes an element that will be remembered by the relevant public as an effective distinguishing feature. The verbal element ‘Medical’ of the contested sign is considered as non-distinctive, for the same reasons as set forth above. The elements ‘SRL’ and ‘ELETTROMEDICALI E MONOUSO’ are of a minor impact and may remain unnoticed due to their relatively small size and secondary position, mainly at the bottom, in the contested sign, which make them even hardly legible. Consequently, the elements ‘Mi.Co.’ and the figurative element in the form of a robot will be perceived as the most distinctive elements of the contested sign.
Visually, the signs are similar to the extent that they coincide in the sequence of letters ‘-I-C-O-M-E-D-I-C-A-L’. Nonetheless, the common element ‘MEDICAL’ is non-distinctive, as pointed out above. It should be stressed that the earlier mark starts with the letter ‘I’, while the contested sign starts with the letter ‘M’. Furthermore, after each of the first two verbal elements of the contested sign, i.e. ‘MI’ and ‘CO’, there is a full stop. Thus, when comparing ‘ICO’ vs ‘MI.CO.’, i.e. the most distinctive elements of the signs at hand, the differences concerning the beginnings of these short elements are of a greater importance within the overall impression given by the signs especially since the length of these elements influence the effect of the differences between them. In respect of short elements, case-law states that small differences may even lead to a different overall impressions (15/03/2012, T-288/08, Zydus, EU:T:2012:124, § 52). Moreover, it is recalled that, the beginning of a sign is the part to which consumers normally attach more importance (17/03/2004, T-183/02 & T-184/02, Mundicor, EU:T:2004:79, § 81; 26/01/2006, T-317/03, Variant, EU:T:2006:27, § 50; 23/05/2007, T-342/05, Cor, EU:T:2007:152, § 42). This is justified by the fact that 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. Therefore, depending on the specific circumstance of the case, a single letter may be sufficient to rule out a high visual (and aural) similarity between the signs (see judgments of 16/01/2008, T-112/06, Idea, EU:T:2008:10, § 54, and 20/04/2005, T-273/02, Calpico, EU:T:2005:134, § 39 and the case-law cited therein).
The marks differ in the additional elements of the contested mark, such as the fanciful device which depicts a robot, being a distinctive and one of the co-dominant elements of it, the elements ‘SRL’, ‘ELETTROMEDICALI E MONOUSO’ and the graphic stylization.
In the present case, the relevant public will more easily note the differences between the signs in question – namely, the different beginnings of the distinctive elements of the marks, different amount of letters, additional graphic representation including a fanciful robot – which make the marks easily distinguishable.
Therefore, the signs, overall, are visually similar to a low degree.
Aurally, the same reasoning can be applied. The pronunciation of the marks coincides in the sound of the letters /I-C-O-M-E-D-I-C-A-L/, present identically in both signs, and to that extent the signs are aurally similar. The use of the dots in the contested sign will have no bearing on the pronunciation. It is, however, important to mention that the element ‘MEDICAL’ is non-distinctive and has therefore no or a very limited impact in the comparison. The pronunciation differs in the sound of the first letter ‘M’ of the contested sign which gives the beginning of the marks, where the consumer normally focuses more, a quite different sound /I-CO/ versus /MI-CO/. The letters placed at the beginning of each of the signs are clearly different letters aurally, and therefore the letter ‘M’ at the beginning of the contested sign is capable of adding a clear distinction between the signs. The resulting difference in the pronunciation may even prevail over the similarities (14/09/2011, T-485/07, O-live, EU:T:2011:467, § 33-36). The verbal elements ‘SRL’ and ‘ELETTROMEDICALI E MONOUSO’ will not be pronounced in the contested sign, because they are written in smaller letters and are placed in a secondary position.
Thus, the signs are aurally similar to an average degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Having said that, neither of the signs has a meaning as a whole. Although the coinciding element ‘MEDICAL’ will evoke a concept, it is not sufficient to establish any conceptual similarity, as this element is non-distinctive and cannot indicate the commercial origin of any of the marks. The public will, however, perceive the figurative element in the contested sign as being a robot. Therefore, the marks 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.
- Distinctiveness of the earlier mark
The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.
The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a non-distinctive element in the mark as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (eighth recital of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 18; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22).
Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, ‘Lloyd Schuhfabrik’, § 20; ‘Sabèl’, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).
The goods and services at issue have been assumed to be identical and the level of attention is high, meaning that consumers will be more informed and observant. This will help them to even better distinguish between the marks in conflict under which the goods and services are being offered and to prevent them from mistakenly believing that the goods and services come from the same or economically-linked undertakings.
The marks have been found visually similar to a low degree, aurally similar to an average degree and the marks are conceptually not similar.
Although the signs coincide in some letters, comparing the marks in overall terms, the Opposition Division finds that there are sufficient differences, additional letters, graphic elements and verbal elements that are not shared by the marks, to outweigh the similarities between them. Moreover, as stated above, consumers generally pay greater attention to the beginning of a mark than to the end (17/03/2004, T-183/02 and 17/03/2004, T-183/02 & T-184/02, Mundicor, EU:T:2004:79, § 51; 05/10/2011, T-421/10, Rosalia de Castro, EU:T:2011:565, § 38). Considering the differences at the beginning of the distinctive elements of the marks under comparison, even a single letter may be sufficient to rule out a high visual and aural similarity between the signs (see judgments of 16/01/2008, T-112/06, Idea, EU:T:2008:10, § 54, and 20/04/2005, T-273/02, Calpico, EU:T:2005:134, § 39 and the case-law cited therein; 08/07/2009, T 240/08, Oli, EU:T:2009:258, § 33-36). This is even reinforced by the fact that in the present case the relevant public’s level of attention in relation to the goods and services at hand is high.
Consequently, the differences are sufficient to safely exclude a likelihood of confusion, taking into account the high degree of attention of the relevant public in relation to the goods and services at stake.
For the sake of completeness, it should be mentioned that the opponent refers 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).
Considering all the above, even assuming that the goods and services are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
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. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.
The Opposition Division
Chantal VAN RIEL
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.