OPPOSITION No B 2 517 319

WindStar Medical GmbH, Am Joseph 15, 61273 Wehrheim, Germany (opponent), represented by Zdarsky Wirtschaftsrecht, August-Schanz-Str. 8 Eing. B, 60433 Frankfurt am Main, Germany (professional representative)

a g a i n s t

SOS Health Oü, Maakri 36-43, Tallinn, 10145 Tallinn, Estonia (applicant), represented by Lasvet Patendibüroo Oü, Suurtüki 4a, 10133 Tallinn, Estonia (professional representative).

On 14/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 517 319 is upheld for all the contested goods.

2.        European Union trade mark application No 13 688 536 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 13 688 536 . The opposition is based on European Union trade mark registration No 9 558 073 . 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

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

Class 5: Pharmaceutical products and health-care products; nutritional additives for medical purposes; food supplements for medical purposes; vitamin preparations; all the aforesaid goods included in class 5; including in the form of effervescent tablets; confectionery for pharmaceutical purposes; dietetic preparations adapted for medical use; materials for dressings; bandages for use as dressings; plasters; solvents for removing adhesive plasters, medicines for medical purposes; test strips for medical purposes; tissues impregnated with pharmaceutical lotions; disinfectants; chemical preparations for medical purposes; freeze sprays for medical purposes.

After a limitation by the applicant dated 18/08/2015, the contested goods are the following:

Class 5: Dietary supplements for humans and animals; vitamins, minerals, amino acids; preparations including vitamins, minerals, amino acids and preparations including combinations thereof; magnesium preparations; all afore mentioned preparations in liquid, powdered, capsule or tablet form.

The contested dietary supplements for humans and animals; vitamins, minerals, amino acids; preparations including vitamins, minerals, amino acids and preparations including combinations thereof; magnesium preparations; all afore mentioned preparations in liquid, powdered, capsule or tablet form are included in, or overlap with, the opponent’s food supplements for medical purposes. Therefore, they are identical.

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 found to be identical are directed at the public at large as well as professionals working in the medical or nutritional field. Professionals have a high degree of attentiveness when prescribing dietetic substances. As far as the end consumers are concerned, their degree of attention is also likely to be relatively high, since these goods affect their state of health, even though dietetic substances are sold without prescription (23/01/2014, T-221/12, Sun Fresh, EU:T:2014:25, § 64).

3. The signs

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.

Since the element ‘HEALTH’ of the contested sign is meaningful in English, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The earlier mark is a figurative mark consisting of the letters ‘S-O-S’ written in a stylised typeface in white. The letters are separated by short white dashes and a black cross is depicted inside the letter ‘O’. All of these elements are depicted within a black rectangular background with rounded edges and a thin grey border.

The earlier mark has no elements that could be considered clearly more dominant than other elements.

The contested sign consists of the verbal element ‘SOS’ written in bold slightly stylised upper case letters. A black dot is depicted inside the letter ‘O’ and the word ‘HEALTH’ is depicted below the letters ‘SOS’ in smaller letters. Due to its size and position, the verbal element ‘SOS’ is the dominant element of the sign.

Even though the letters ‘S-O-S’ of the earlier mark are separated by dashes whereas the letters ‘SOS’ of the contested sign constitute one plain word, in both signs these elements will be perceived as referring to the word ‘SOS’, which means ‘an international code signal of extreme distress, used especially by ships at sea; an urgent appeal for help; a message broadcast to an untraceable person in an emergency’ (information extracted from Oxford Dictionary on 07/09/2017 at https://en.oxforddictionaries.com). Since this word has no clear and direct meaning in relation to the relevant goods, it is distinctive.

As well as being visually less dominant than the other element, the word ‘HEALTH’ of the contested sign is also a non-distinctive element that refers to medical care and to the health sector, to which the goods in question belong.

Regarding the figurative elements of the signs, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

In the present case, the figurative elements of the signs are secondary and/or weak elements. The rectangular background of the earlier mark and the dot inside the letter ‘O’ of the contested sign are mainly decorative elements. The dashes of the earlier mark are mere punctuation marks. Furthermore, the cross inside the letter ‘O’ of the earlier mark is likely to be perceived as a medical cross (inside a square with rounded corners) and, in relation to the relevant goods (food supplements for medical purposes), it is a rather weak element that evokes the medical/health sector, to which the goods belong.

Visually, the signs coincide in the letters ‘SOS’. They differ in their stylisation and figurative elements (including the dashes of the earlier mark), as well as in the verbal element ‘HEALTH’ of the contested sign. Taking into account the above considerations about the distinctive and dominant elements of the signs, the signs are considered visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛SOS’, present identically in both signs. Indeed, even though in the contested sign these letters are depicted as one word, they are pronounced separately as /es-o-es/. The pronunciation of the signs differs in the sound of the element ‘HEALTH’ of the contested mark, which has no counterpart in the earlier sign. However, since this element is neither distinctive nor dominant, it is probable that the relevant public will refer to the contested sign simply as ‘SOS’, which enhances the similarity between the signs (03/07/2013, T-206/12, LIBERTE american blend, EU:T:2013:342, § 43-44; 03/07/2013, T-243/12, Aloha 100% natural, EU:T:2013:344, § 34). Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs are conceptually highly similar, given that they coincide in the concept of the element ‘SOS’.

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.

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.

5. Global assessment, other arguments and conclusion

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 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).

The goods are identical. The earlier mark has an average degree of distinctiveness.

The signs are visually, aurally and conceptually highly similar on account of the coinciding, distinctive, element ‘SOS’, which is also the dominant element of the contested sign. Although the signs include further elements, these additional elements are not sufficient to differentiate the signs. Therefore, the Opposition Division considers that the differences between the signs are not sufficient to counteract their similarities, in particular taking into account the fact that the goods are identical.

In addition, likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. In the present case, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public, even though it displays a high degree of attention. 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 9 558 073. 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 extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

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

Martina GALLE

Frédérique SULPICE

Begoña URIARTE VALIENTE

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.