OPPOSITION DIVISION
OPPOSITION No B 2 759 077
Biologische Heilmittel Heel GmbH, Dr.-Reckeweg-Str. 2-4, 76532 Baden-Baden,
Germany (opponent), represented by MW Trade Marks Ltd., 88 Kingsway, London
WC2B 6AA, United Kingdom, United Kingdom (professional representative)
a g a i n s t
Smiths Medical ASD Inc, 6000 Nathan Lane North, Plymouth, Minnesota 55442,
United States of America (applicant), represented by Jonathan Flint, Smiths
Medical, 21 Lammas Park Road, Ealing, London W5 5JD, United Kingdom
(professional representative).
On 21/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 759 077 is upheld for all the contested goods.
2. European Union trade mark application No 15 400 781 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 of European Union trade mark
application No 15 400 781 for the word mark ‘NEOHEEL’. The opposition is based
on, inter alia, European Union trade mark registration No 1 454 487 for the word
mark ‘Heel’. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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.
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
Decision on Opposition No B 2 759 077 page: 2 of 6
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 1 454 487.
a) The goods
The goods on which the opposition is based are the following:
Class 5: Pharmaceutical, veterinary and sanitary substances; infants’ and
invalids’ foods; plasters, material for bandaging; material for stopping
teeth, dental wax; disinfectants; preparations for killing weeds and
destroying vermin.
The contested goods are the following:
Class 10: Apparatus and instruments for taking blood samples; lancets; and
parts and fittings therefor.
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 apparatus and instruments for taking blood samples; lancets; and
parts and fittings therefor are medical apparatus and instruments (and their parts and
fittings) are specially designed tools or devices used for performing specific actions
or producing desired effects during a surgery or for the sake of taking blood samples
so to monitor, for instance, the state of health of patients. These contested goods can
coincide in relevant public and distribution channels with the opponent’s
pharmaceutical substances in Class 5, which are any kind of medicine, i.e. a
substance or combination of substances for treating or preventing disease in human
beings or animals. Furthermore, despite their different nature, they share a similar
purpose (i.e. the prevention or curing of diseases, injuries or disabilities) and a
degree of complementarity. Hence, they are considered to be similar to a low degree.
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. In the present case, the
goods found to be similar to a low degree are directed at business customers with
specific professional knowledge or expertise, namely professionals in the field of
healthcare.
Since the goods affect the health or care of patients, the degree of attention of the
relevant public is high for certain goods such as lancets and relatively high, for other
goods, whether or not the goods in question are issued on prescription in the case of
pharmaceutical substances (15/12/2010, T-331/09, Tolposan, EU:T:2010:520, § 26;
and 15/03/2012, T-288/08, Zydus, EU:T:2012:124, § 36).
Decision on Opposition No B 2 759 077 page: 3 of 6
c) The signs
Heel NEOHEEL
Earlier trade mark 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).
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). Therefore, a likelihood of confusion for only part of the
relevant public of the European Union is sufficient to reject the contested application.
The common elements ‘heel’ is not meaningful in certain territories, for example in
those countries where English is not understood. Consequently, the Opposition
Division finds it appropriate to focus the comparison of the signs on, for instance, the
Italian-speaking part of the public.
The earlier mark is a word mark consisting of the word ‘Heel’. The contested mark is
also a word mark. It consists of the word ‘NEOHEEL’.
For the sake of clarity, it must be pointed out that word marks are marks consisting of
letters, numbers and other signs (e.g. ‘+’, ‘@’, ‘!’) reproduced in the standard
typeface used by the respective office. This means that they do not claim any
particular figurative element or appearance. Where both marks are registered as
word marks, the typeface actually used by the respective office in the official
publication (e.g. the EUTM Bulletin) is immaterial. Differences in the use of lower or
upper case letters are immaterial, even if lower case and upper case letters alternate.
Word marks are identical if they coincide exactly in the string of letters or numbers.
The element ‘heel’ of the earlier mark has no meaning for the relevant public and is,
therefore, distinctive.
As regards the contested sign, it cannot be excluded that the consumers will attribute
to the first three letter ‘NEO’ the meaning of a prefix that in Italian serves to indicate,
as in English, something that is new, recent, or a new or modern form or
development. In this case, this element is considered to be non-distinctive for all the
goods while the meaningless element ‘HEEL’ is distinctive.
Visually and aurally, the signs coincide in the sequence of letters ‘HEEL’, which as
seen above form an element of normal distinctiveness in both signs. However, they
differ in the first three letters ‘NEO’ of the contested sign, which form a recognizable
element which is of limited distinctiveness.
Therefore, the signs are highly similar both form a visual and aural perspective.
Decision on Opposition No B 2 759 077 page: 4 of 6
Conceptually, neither of the signs has a meaning as a whole. Although the element
‘NEO’ of the contested sign will evoke a concept, it is not sufficient to establish any
conceptual dissimilarity, as this element is non-distinctive and cannot indicate the
commercial origin. The attention of the relevant public will be attracted by the
additional fanciful verbal elements, which have no meaning. Since a conceptual
comparison is not possible, the conceptual aspect does not influence the assessment
of the similarity of the signs.
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.
According to the opponent, the earlier mark has been extensively used and enjoys 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 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.
e) Global assessment, other arguments and conclusion
The goods covered by the trade marks in dispute have been found similar to a low
degree. These goods are directed at professionals in the field of healthcare, who are
expected to pay a high degree of attention.
The marks have been found highly similar both from a visual and aural point of view.
In fact, the earlier mark ‘Heel’ is fully included within the contested mark ‘NEOHEEL’.
The contested mark contains three letters that will be recognized as forming a
common prefix which due to its meaning must be considered devoid of distinctive
character.
Account is 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).
Also, it is true that the goods have been found only similar to a low degree. However,
the marks are overall similar to a high degree. Account must be taken on the fact
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
Decision on Opposition No B 2 759 077 page: 5 of 6
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).
It is then a consequence of these circumstances that even considering the higher
level of attention paid by professionals when purchasing goods in Class 10, there is a
likelihood of confusion on the part of the public who speaks Italian. This is because
the differences between the signs are confined to non-distinctive elements and the
remaining elements of the marks possess a normal degree of distinctiveness, since
the word ‘Heel’ is not likely to be understood by the part of the public who, like the
Italian part of the public, is not familiar with English language. 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.
Therefore, the opposition is well founded on the basis of the opponent’s European
Union trade mark registration No 1 454 487. It follows that the contested trade mark
must be rejected for all the contested goods.
Since the opposition is successful on the basis of the inherent distinctiveness of the
earlier mark, there is no need to assess the enhanced degree of distinctiveness of
the opposing mark due to its reputation as claimed by the opponent. The result would
be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.
As the earlier European Union trade mark registration No 1 454 487 leads to the
success of the opposition and to the rejection of the contested trade mark for all the
goods 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(1)(5) 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 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 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.
Decision on Opposition No B 2 759 077 page: 6 of 6
The Opposition Division
Francesca CANGERI
SERRANO
Andrea VALISA Edith Elisabeth
VAN DEN EEDE
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.