OPPOSITION DIVISION
OPPOSITION No B 2 752 833
MicroVention, Inc., 1311 Valencia, Tustin, California 92780, United States
(opponent), represented by Dr. Kunz-Hallstein Rechtsanwälte, Galeriestr. 6A,
80539 München, Germany (professional representative)
a g a i n s t
France New Resplendence Inte Home Furnishing Industry Limited, Room 5,7/F
Ho King Commercial Centre,2-16 Fa Yuen Street, Mongkok, Kowloon, Hong Kong
People’s Republic of China (applicant), represented by Beetz & Partner,
Steinsdorfstr. 10, 80538 München, Germany (professional representative).
On 04/01/2018, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 752 833 is partially upheld, namely for the following
contested goods and services:
Class 10: Thermometers for medical purposes; galvanic therapeutic
appliances; orthopaedic articles; suture materials.
Class 35: Retail or wholesale services for medical supplies.
2. European Union trade mark application No 15 378 111 is rejected for all the
above goods and services. It may proceed for the remaining services.
3. Each party bears its own costs.
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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.
REASONS
The opponent filed an opposition against some of the goods and services of
European Union trade mark application No 15 378 111 , namely against part
of the goods in class 10 and part of the services in class 35. The opposition is based
on international trade mark registration No 1 182 084 ‘SOFIA’ designating the
European Union. The opponent invoked Article 8(1)(b) EUTMR.
Decision on Opposition No B 2 752 833 page: 2 of 6
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.
a) The goods and services
The goods on which the opposition is based are the following:
Class 10: Access and guiding catheters for neurovascular use.
The contested goods and services are the following:
Class 10: Thermometers for medical purposes; galvanic therapeutic appliances;
orthopaedic articles; suture materials.
Class 35: Retail or wholesale services for pharmaceutical, veterinary and sanitary
preparations and medical supplies.
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 10
The contested thermometers for medical purposes; galvanic therapeutic appliances;
suture materials and the opponent access and guiding catheters are all medical
instruments. They have a similar broad purpose to help doctors to accomplish their
task and are therefore addressed to the same public. They come from the same
manufacturers and are distributed through the same undertakings. Therefore, they
are highly similar.
The contested orthopaedic articles are similar to a low degree to access and guiding
catheters as they can coincide in producer and end user. Furthermore they are
complementary.
Contested services in Class 35
Similarity between retail services of specific goods covered by one mark and specific
goods covered by another mark can only be found where the goods involved in the
retail services and the specific goods covered by the other mark are identical.
Furthermore, retail services concerning the sale of particular goods are similar to a
low degree to those particular goods. Although the nature, purpose and method of
use of these goods and services are not the same, they have some similarities, as
they are complementary and the services are generally offered in the same places
Decision on Opposition No B 2 752 833 page: 3 of 6
where the goods are offered for sale. Furthermore, they target the same public. The
same principle applies to wholesale services.
Therefore, the contested retail or wholesale services for medical supplies are similar
to a low degree to the opponent’s access and guiding catheters.
However, the identity condition is not fulfilled for the remaining contested services in
Class 35 since access and guiding catheters are not pharmaceutical, veterinary and
sanitary preparations, the goods involved in the retail and wholesale services of the
contested sign.
Therefore, the contested retail or wholesale services for pharmaceutical, veterinary
and sanitary preparations and the opponent’s access and guiding catheters are not
similar. Apart from being different in nature, since services are intangible whereas
goods are tangible, they serve different needs. Retail services consist in bringing
together, and offering for sale, a wide variety of different products, thus allowing
consumers to conveniently satisfy different shopping needs at one stop. Wholesale is
the sale of commodities in quantity, usually for resale. This is not the purpose of the
opponent's goods. Furthermore, goods and services have different methods of use
and are neither in competition nor complementary.
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 and services found to be similar to varying degrees
are directed at the public at large in the case of the retail services and at business
customers with specific professional knowledge or expertise, in particular in the case
of the goods in Class 10.
The degree of attention may vary from average to high, depending on the specialised
nature of the goods, the frequency of purchase and their price.
c) The signs
SOFIA
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).
Decision on Opposition No B 2 752 833 page: 4 of 6
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.
In certain territories, such as in those territories where French is spoken, ‘SOFIA’ in
the earlier mark and ‘SOPHIA’ in the contested sign are pronounced identically.
Consequently, the Opposition Division finds it appropriate to focus the comparison of
the signs on the French-speaking part of the public.
Both ‘SOFIA’ in the earlier mark and ‘Sophia’ in the contested sign are variations of
the same common female first name which are both widely used in the territory under
analysis. Since they have no meaning in relation to the goods and services in
question, they are distinctive.
Visually, the signs coincide in the letters ‘SO**IA’. However, they differ in the letter ‘F’
placed in the third position of the earlier mark and in the letters ‘PH’ placed in third
and fourth position of the contested sign. The signs also differ in the typeface used in
the contested sign which, in any case, is not particularly elaborate or sophisticated
and it will not lead the consumer’s attention away from the elements it seems to
embellish. Considering that the earlier mark is almost entirely reproduced in the
contested sign, the signs are visually highly similar.
Aurally, as mentioned above, the pronunciation of the signs is identical since the
only differing letters, ‘F’ in the earlier mark and ‘PH’ in the contested sign, are
pronounced as ‘F’.
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
female first name, the signs are conceptually identical.
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.
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.
Decision on Opposition No B 2 752 833 page: 5 of 6
e) Global assessment, other arguments and conclusion
According to settled case-law, the likelihood of confusion on the part of the public
must be appreciated globally, taking into account all factors relevant to the
circumstances of the case (29/09/1998, C-39/97, Canon, EU:C:1998:442, §16).
According to the same line of case-law, 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).
Moreover, for the purposes of that global appreciation, the average consumer of the
category of products concerned is deemed to be reasonably well-informed and
reasonably observant and circumspect.
In the present case, the goods and services are similar to varying degrees and the
signs are aurally and conceptually identical and visually similar to a high degree.
Indeed, the similarities between the signs are overwhelming and the elements that
could help the consumer to differentiate the signs are not sufficient.
Account should be taken of the fact that the average consumer only rarely has the
chance to make a direct comparison between the different marks but must place his
trust in the imperfect picture of them that he has kept in his mind.
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 11
of the EUTMR). It must be appreciated globally, taking into account all factors
relevant to the circumstances of the case (22/06/1999, C342/97, Lloyd Schuhfabrik,
EU:C:1999:323, § 18; 11/11/1997, C251/95, Sabèl, EU:C:1997:528, § 22).
Considering all the above, the Opposition Division finds that there is a likelihood of
confusion on the part of the French-speaking part of the public and therefore the
opposition is partly well founded on the basis of the opponent’s international trade
mark registration No 1 182 084 designating the European Union. 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.
It follows from the above that the contested trade mark must be rejected for the
goods and services found to be similar to varying degrees to those of the earlier
trade mark.
The rest of the contested services are dissimilar. As similarity of goods and services
is a necessary condition for the application of Article 8(1) EUTMR, the opposition
based on this Article and directed at these services cannot be successful.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party. According to Article 109(3)
EUTMR, where each party succeeds on some heads and fails on others, or if
reasons of equity so dictate, the Opposition Division will decide a different
apportionment of costs.
Decision on Opposition No B 2 752 833 page: 6 of 6
Since the opposition is successful for only some of the contested goods and
services, both parties have succeeded on some heads and failed on others.
Consequently, each party has to bear its own costs.
The Opposition Division
Martina GALLE Sandra IBAÑEZ Katarzyna ZANIECKA
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.