OPPOSITION No B 2 713 181

Intelclinic Sp. z o.o., ul. Niegolewskiego 17/1, 01570 Warszawa, Poland (opponent), represented by WTS Rzecznicy Patentowi – Witek, Śnieżko i Partnerzy, Weigla 12,  53-114 Wrocław, Poland (professional representative)

a g a i n s t

Osypka Medical GmbH, Albert-Einstein-Str. 3, 12489 Berlin, Germany (applicant)

On 22/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 713 181 is upheld for all the contested goods and services.

2.        European Union trade mark application No 15 153 224 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 15 153 224.  The opposition is based on European Union trade mark registration No 13 681 408. 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.

1. The goods and services

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

Class 9: Gauges; Measuring devices, electric; Regulating apparatus, electric; Measuring apparatus; Dial gauge instruments; Gauges with digital readout; Printed circuit boards; Silicon chips; Hybrid integrated circuits; Integrated electronic circuits; Chips [integrated circuits]; Silicon wafers; Silicon chips [electronic components]; Printed electrical circuits; Printed electronic circuits; Electrical circuits and circuit boards; Ceramic wafers bearing printed circuits; Computer software, recorded; Computer operating programs, recorded; Data processing apparatus; Temperature logging apparatus; Distance recording apparatus; Sound recording apparatus; Time recording apparatus; Image capturing and developing devices; Data loggers and recorders; Encoded identification bracelets, magnetic; Photoelectric sensors; Vibration sensors; Electro-optical sensors; Bio-sensors; Electronic sensors; Electrical remote control apparatus; Multifunctional remote controls; Diagnostic apparatus, not for medical purposes; Electrodes; Electro-dynamic apparatus for the remote control of signals; Software; none of the above-mentioned products being in relation to aerospace engineering.

Class 10: Diagnostic apparatus for medical purposes; Electrophysiology electrodes; Electrodes for medical use; Electrodes for picking up biological parameters; Electrodes for picking up electrophysiological parameters; Electrodes for use with medical apparatus; Test electrodes for medical use; Medical and veterinary apparatus and instruments; Probes for medical purposes; Masks for use by medical personnel; Medical instruments; Tools for medical diagnostics; Electromagnetic medical apparatus; Respiratory monitors [medical]; Medical imaging apparatus; Testing apparatus for medical purposes; Electronic heart rate monitors [for medical use].

Class 42: Scientific services and research relating thereto; Surveying and exploration; Medical research; Research relating to computer programming; Computer software research; Physics [research]; Research relating to computers; Research in measurement technology; Research in the area of semiconductor processing technology; Research on the subject of pharmaceuticals; Scientific and industrial research; Scientific research in the field of social medicine; Research, development, design and upgrading of computer software; Project studies relating to software; Research and consultancy services relating to computer software; Clinical research; Research laboratories; Scientific research; Research services; Research relating to data processing; Biochemistry research services; Biological research; Biological research, clinical research and medical research; Research relating to biotechnology; Chemical research; Technical research; Technical consultation and research; Industrial design; Styling [industrial design]; Biological analysis; Computer software consultancy; Consultancy in the field of software design; Computer hardware and software consultancy; Consultancy and advice on computer software and hardware; Advice relating to the design of computer hardware; Consultancy in the design and development of computer hardware; Website design services; Website development services; Computer website design; Designing and developing webpages on the internet; Technical engineering; Designing of electronic systems; Design of information systems; Design of measurement systems; Computer system design; Design services for data processing systems; Textile testing; Packaging design; Packaging design for others; Designing of packaging and wrapping materials; Technical project studies; Technical project studies in the field of computer hardware and software; Research and development of new products for others; Computer software design; Software design and development; Computer software design and updating; Design and writing of computer software; Design, maintenance and up-dating of computer software; Software design for others; Design and development of computer hardware and software; Design, maintenance, rental and updating of computer software; Design, maintenance, development and updating of computer software; Creating and maintaining web sites for others; none of the above-mentioned services being in relation to aerospace engineering.

The contested goods and services are the following:

Class 9: Data processors; Signal processing apparatus.

Class 10: Medical apparatus and instruments.

Class 42: Scientific and technological services.

All the contested goods and services are found identical to the opponent’s goods and services, because:

• The opponent’s data processing apparatus, none being in relation to aerospace engineering in Class 9 overlap with the contested data processors and signal processing apparatus. 

• Medical apparatus and instruments are identically reproduced in both lists in Class 10.

• The opponent’s scientific services, none being in relation to aerospace engineering are included in the broad category of the opponent’s scientific services in Class 42.

• The opponent’s technical project studies, none being in relation to aerospace engineering, amongst others, are services in the field of technology that are included in the applicant’s broad category of technological services in Class 42 and the Opposition Division cannot dissect ex office the applicant’s services.

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 that are found identical are mainly specialised goods and services directed at specialist customers with specific professional knowledge or expertise. In this case the relevant public for assessing likelihood of confusion is the professional public only.

The degree of attention is considered to be high given that the medical apparatus and instruments, IT and scientific goods and services in question are technically highly sophisticated.

3. The signs

Neuroon	NEURON
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).

Both marks are word marks ‘neuroon’ and ‘NEURON’. It must be noted that, in the case of word marks, it is the word itself that is protected and not its written form. Consequently, the fact that the earlier mark is written with one capital letter and the rest in small letters has no impact in the examination of likelihood of confusion.

For the fast majority of the relevant public the word ‘NEURON’ forms part of their vocabulary and as such understood as meaning ‘a nerve cell’. Due to its identity or high resemblance to the existing word in other languages, for example: ‘neuron’ in Dutch and Polish, ‘neurone’ in French, ‘Neuron’ in German, ‘neurone’ in Italian, ‘neurona’ in Spanish, it can be assumed that the relevant public will perceive the earlier mark as a misspelling of ‘neuron’ and will therefore be understood in the same way.  

Bearing in mind that part of the relevant goods and services, inter alia, such as medical apparatus and instruments and scientific services, could be specifically for treating nerve cells, it is considered that the marks under comparison are weak for these types of goods as they allude to the characteristics of those goods or services.

The analysis below will focus on the part of the relevant public that perceives the word ‘Neuroon’ as having the same meaning as the word ‘NEURON’.

Visually, the signs coincide in ‘NEURO*N’, which makes up entirely the contested mark. They only differ in the repetition of the letter ‘o’ in the earlier sign.

Therefore, the signs are highly similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘N-E-U-R-O-*-N’. The pronunciation differs only in the in the sound of the sixth letter ‛o’ of the earlier sign, which has no counterpart in the contested mark. Each mark will be pronounced in two syllables, reason why they have the same rhythm.

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be associated with the same meaning of ‘a nerve cell’, the signs are, to that extent, conceptually highly similar.

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 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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The appreciation of the 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 (recital 8 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).

The goods and services are identical and the marks are visually and aurally highly similar. Conceptually they are also highly similar departing from the fact that the vast majority of the relevant public will merely perceive the earlier sign as a misspelling of the word ’neuron’.

Therefore, even considering that the degree of attention that the relevant public will display the goods and services at issue may be higher than average, the differences between the signs are not sufficient to offset the similar overall impressions created by the marks in the minds of consumers. Even consumers with 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).

Consequently, it is considered that the similarities between the signs are sufficient to lead to a likelihood of confusion between the marks for the relevant public in the relevant territory.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 13 681 408. It follows that the contested trade mark must be rejected for all the contested goods and services.

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

Zuzanna STOJKOWICZ

Cynthia DEN DEKKER

Julie GOUTARD

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.