OPPOSITION No B 2 630 187
Dentalica S.p.A., Via Rimini, 22, 20142 Milano, Italy (opponent), represented by Fumero S.r.l., Via Sant’Agnese, 12, 20123 Milano, Italy (professional representative)
a g a i n s t
Dreve Dentamid GmbH, Max-Planck-Str. 31, 59423 Unna, Germany (applicant), represented by Patentanwälte Köchling, Döring PartG mbB, Fleyer Str. 135, 58097 Hagen, Germany (professional representative).
On 20/01/2017, the Opposition Division takes the following
1. Opposition No B 2 630 187 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
The opponent filed an opposition against all the goods of European Union trade mark application No 14 505 771. The opposition is based on European Union trade mark registration No 280 479. 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
The goods on which the opposition is based are the following:
Class 5: Products and materials for use by dental surgeons and dental technicians, such as in particular, cements, resins, gutta-percha, amalgams, dental wax, material for stopping teeth.
The contested goods are the following:
Class 5: Dental filling compounds and dental impression materials.
An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.
The term ‘such as in particular’, used in the opponent’s list of goods, indicates that the specific goods 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 (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
The contested dental filling compounds are materials inserted into a prepared tooth cavity, usually gold, amalgam, cement or a synthetic resin, and the contested dental impression materials are materials used for dental impressions (negative imprints of hard (teeth) and soft tissues in the mouth from which a positive reproduction (or cast) can be formed), most often sodium alginate, polyether and silicones – both condensation-cured silicones and addition-cured silicones, such as polyvinyl siloxane; both categories of the contested goods are used in restorative dentistry. They are included in the broader category of, or overlap with, the opponent’s products and materials for use by dental surgeons and dental technicians, which clearly cover, inter alia, materials for a dental restoration. Considering all the above, the goods under comparison are identical.
- 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 identical are directed at dental professionals such as dental surgeons or dental technicians. The relevant public will display a relatively high degree of attention when purchasing the goods at issue, since they are highly specialised goods that imply a high degree of sophistication and professional knowledge on the part of the consumers.
- The signs
Earlier trade mark
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 earlier mark is a word mark composed of one word, ‘PRECISION’.
The contested sign is a word mark consisting of one verbal element, ‘PreciSil’.
The word ‘PRECISION’ of the earlier mark, being an English word, will be understood by dental professionals throughout the relevant territory as meaning ‘the quality, condition, or fact of being exact and accurate’ (information extracted from Oxford English Dictionary at https://en.oxforddictionaries.com/definition/precision). This is justified by the fact that the level of comprehension of English among professionals in the field of medicine and health care is generally high, as English is considered their working language. In addition, the word ‘PRECISION’ has similar equivalents with the same meaning in many languages of the EU, for instance in Spanish (precisión), French (précision), Danish (præcision), German (Präzision), Italian (precisione), Portuguese (precisão), Dutch (precisie), Romanian (precizie), Polish (precyzja), Czech (preciznost), Slovak (precíznosť), Hungarian (precíziós), Croatian (preciznost) and Latvian (precizitāte). Bearing in mind that the relevant goods are products and materials for use by dental surgeons and dental technicians, this verbal element will, in all likelihood, be perceived as alluding to their characteristics, namely their quality and intended purpose (meaning that these goods are made with accuracy, or that they are intended to enable accuracy in dental works). Therefore, the inherent distinctiveness of the word ‘PRECISION’ for the relevant goods is very low in the perception of the relevant public.
The contested sign, ‘PreciSil’, taken as a whole, has no clear meaning in the relevant territory. It will be seen as an invented word. However, even though the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, it can be reasonably assumed that the relevant public will perceive it as being composed of two elements, ‘Preci’ and ‘Sil’. This is because the word ‘Sil’ starts with an upper case letter, which visually splits the expression ‘PreciSil’ into separate elements. Moreover, the relevant public may attach certain semantic contents to them. In particular, the element ‘Preci’ may evoke the concept of ‘precision’, while the element ‘Sil’, for a part of the public, may indicate ‘silicone’, which is a material commonly used in dentistry, or may lack any clear meaning for the remaining public.
As regards the contested sign’s element ‘Preci’, its inherent distinctiveness is weak insofar as it alludes to objective or desirable characteristics of the goods at issue, similarly to the word ‘PRECISION’ of the earlier mark. Although the word ‘precision’ (or its equivalents in other relevant languages) is not included in the sign in its entirety, the letter string ‘Preci’ is sufficient to trigger that semantic association.
Where the public recognises the contested sign’s element ‘Sil’ as referring to ‘silicone’ and associates it with the material of which the relevant goods, namely dental filling compounds and dental impression materials, are made, the element’s distinctiveness is weak. However, for the remaining public, that element is fanciful and has an average degree of distinctiveness.
Being composed merely of verbal elements, neither of the signs has any elements that could be considered more dominant (visually eye-catching) than other elements.
Visually, the signs coincide in the sequence of the letters ‘PRECISI’. However, the letter string ‘PRECI(SI)’ has only limited distinctiveness for the reasons explained above.
In contrast, the signs differ in the last two letters of the earlier mark, ‘ON’, and in the final letter of the contested sign, ‘L’.
In its submissions of 16/05/2016, the opponent emphasises the impact of the identical beginning of the conflicting signs, namely ‘PRECISI’, on the consumer’s perception. Although the opponent was correct in stating that there is an established legal practice according to which it is considered that consumers pay more attention to the beginning of a mark, this consideration cannot prevail in all cases and cannot, in any event, undermine the principle that an examination of the similarity of the signs must take account of the overall impression produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details (27/06/2012, T-344/09, Cosmobelleza, EU:T:2013:40, § 52).
Considering all the above, since the signs coincide in a weak element, they are visually similar to a low degree.
Aurally, for reasons given above, it can be reasonably assumed that a significant part of the relevant public, even the non-English-speaking parts (e.g. Czech, Slovak, Polish, Hungarian, Croatian, Estonian and Latvian consumers), will pronounce the earlier mark as in English. To that extent, the signs have in common the sounds corresponding to their first two syllables ‘PRE/CI’, but they differ in their third syllables, namely ‘SION’ in the earlier mark (as in the word ‘television’) and ‘SIL’ in the contested sign (as in the word ‘tonsil’).
However, and especially where the equivalents of the word ‘precision’ in the respective native languages are almost identical to the English word (e.g. in French or Spanish), it is more likely that the earlier mark will be pronounced in accordance with the pronunciation rules of that respective language. In that case, the signs coincide in the sound of the letters ‘PRECISI’ and differ in the phonemes ‘ON’ of the earlier mark and ‘L’ of the contested sign.
Where the earlier mark is pronounced according to English rules, the middle part of the word will be stressed. That will constitute a difference in comparison with the contested sign’s pronunciation, wherein the stress is likely to be put on the beginning of the word. For the remaining part of the public, for instance the French- or Spanish-speaking public, the emphasis in the pronunciation of the earlier mark will be on its ending. That results in diverging intonations and rhythms of the signs.
In the light of the foregoing, since the signs coincide in the sound of the syllables that form a weak element, they are aurally similar to a low degree.
Conceptually, reference is made to the meanings of the signs and their particular elements given above. Both signs will be associated with a concept that has limited distinctiveness in the context of the relevant goods. Therefore, they are conceptually similar to a low degree.
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 in the notice of opposition that its mark is particularly distinctive by virtue of intensive use or reputation. However, in its subsequent submissions of 16/05/2016, the opponent asserts that the earlier mark is well known to the public in the relevant territory. The opponent also states that it has defended its trade mark against a number of similar trade marks in the past. However, since the opponent did not submit any evidence that would support the claim of enhanced distinctiveness of the earlier mark, the above arguments are unfounded.
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all of the goods in question.
- 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 (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).
As concluded above, the contested goods are identical to the opponent’s goods and they target dental professionals with a high degree of attention. The earlier trade mark has only a low degree of inherent distinctiveness for the relevant goods, and the opponent has not demonstrated, by means of convincing evidence, that the earlier mark has enhanced distinctiveness.
Overall, the conflicting signs, ‘PRECISION’ and ‘PreciSil’, are similar to a low degree, given that the similarities result from a letter string that has limited distinctiveness, as explained in detail in section c) of this decision. According to settled case-law, if trade marks have identical parts that are weak or devoid of distinctive character, the differences between the signs are to be given more importance in the overall assessment of the signs (18/03/2002, R 0814/2001-3, ALL-DAY AQUA / Krüger All Days, § 50; and 14/05/2001, R 0257/2000-4, e plus / PLUS, § 22).
The differences established between the signs, albeit not particularly striking, are still readily perceptible and are sufficient to enable the public to safely distinguish between them. When encountering the conflicting signs, the relevant public, which displays a heightened degree of attention and sophistication in the field of dental supplies, will not pay so much attention to the weak elements in each sign, and will mentally register the differences, even though they reside in the endings of each sign. That substantially reduces the likelihood of confusion between conflicting trade marks to the extent that it can be safely ruled out, despite the identity of the goods at issue.
It is concluded that the average consumer will neither directly confuse the conflicting signs nor perceive them as coming from the same undertaking or from economically linked undertakings.
In its submissions of 16/05/2016, the opponent refers to several previous disputes in which it has claimed its trade mark rights to the sign ‘PRECISION’ against other similar trade mark registrations. More specifically, the opponent mentions the trade marks ‘MODILAC PRÉCISION’, ‘PRECISIO’ and ‘Precision’, which it has attacked in the past. With respect to this argument, the Opposition Division notes that the deliberations on likelihood of confusion are restricted to the comparison of the conflicting signs and goods/services as registered and applied for. Therefore, in the absence of any further information and evidence that would demonstrate an enhanced distinctive character of the earlier mark, the opponent’s argument must be set aside.
Considering all the above, 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.
The Opposition Division
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.