OPPOSITION No B 2 722 273

Leukocare AG, Am Klopferspitz 19, 82152 Martinsried/München, Germany (opponent), represented by Vossius & Partner Patentanwälte Rechtsanwälte Mbb, Siebertstr. 3, 81675 München, Germany (professional representative)

a g a i n s t

Attila Kuti, Budapest, Somogyi út 27. 2. em. 1., 1115 Hungary (applicant), represented by Dr. Németh András Róbert Ügyvédi Iroda, Budapest, Lágymányosi utca 12. fszt. 2., 1111, Hungary (professional representative).

On 21/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 722 273 is upheld for all the contested goods, namely:

Class 5:         Dietary supplements and dietetic preparations.

Class 10:         Orthopedic and mobility aids; Medical and veterinary apparatus and instruments; Physical therapy equipment.

2.        European Union trade mark application No 15 336 118 is rejected for all the contested goods. It may proceed for the remaining goods.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 336 118, namely against all the goods in Classes 5 and 10. The opposition is based on European Union trade mark registration No 11 022 415. 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 is based are the following:

Class 5: Pharmaceutical and veterinary preparations, namely composite solutions for stabilizing pharmaceutical biomolecules for medical application; substances adapted for medical or veterinary use, namely composite solutions for stabilizing pharmaceutical biomolecules for medical application; Adjuvants for medical purposes, namely for use in composite solutions for stabilizing pharmaceutical biomolecules for medical application; all aforementioned goods not in connection with cell, tissue or organ preservation, diagnosis, transport, transplantation, treatment or repair.

Class 10: Artificial limbs, eyes and teeth; Orthopedic articles; Suture materials; Acupuncture needles; Artificial respiration (Apparatus for -); X-rays (Apparatus and installations for the production of -), for medical purposes; Deafness (Apparatus for the treatment of -); Microdermabrasion apparatus; Respirators for artificial respiration; Teething rings; Trusses; Artificial breasts; Thread, surgical; Cutlery [surgical]; Suture needles; Sponges (Surgical -); Mirrors for surgeons; Suture materials; Defibrillators; Insufflators; Bandages, elastic; Electric acupuncture instruments; Electrocardiographs; Tips for crutches for invalids; Finger guards for medical purposes; Feeding bottle teats; Burs (Dental -); Galvanic belts for medical purposes; Galvanic therapeutic appliances; Gastro-scopes; Uterine syringes; Cattle (Obstetric apparatus for -); Obstetric apparatus; Forceps; Hearing protectors; Physiotherapy apparatus; Plaster bandages for orthopaedic purposes [casts (Am.)]; Belts, electric, for medical purposes; Belts for medical purposes; Orthopedic belts; Hair prostheses; Gloves for medical purposes; Urinals [vessels]; Urethral probes; Urethral syringes; Invalids’ hoists; Blankets, electric, for medical purposes; Pads (Heating -), electric, for medical purposes; Hot air vibrators for medical purposes; Heart pacemakers; Hearing aids for the deaf; Ear trumpets; Corsets for medical purposes; Corn knives; Inhalers; Incubators for babies; Douche bags; Enema apparatus for medical purposes; Castrating pincers; Catgut; Pads [pouches] for preventing pressure sores on patient bodies; Soporific pillows for insomnia; Stockings for varices; Ambulance stretchers; Draw-sheets for sick beds; Crutches; Artificial eyes; Artificial jaws; Lenses [intraocular prostheses] for surgical implantation; Artificial teeth; Lamps for medical purposes; Fleams; Lasers for medical purposes; Abdominal belts; Abdominal corsets; Air pillows for medical purposes; Air cushions for medical purposes; Air mattresses, for medical purposes; Masks for use by medical personnel; Massage apparatus; Esthetic massage apparatus; Gloves for massage; Childbirth mattresses; Medical guidewires; Physical exercise apparatus, for medical purposes; Spoons for administering medicine; Knives for surgical purposes; Breast pumps; Umbilical belts; Commode chairs; Needles for medical purposes; Anaesthetic apparatus; Anaesthetic masks; Contraceptives, non-chemical; Ear picks; Ear plugs [ear protection devices]; Clothing especially for operating rooms; Ophthalmometers; Opthalmoscopes; Arch supports for footwear; Supportive bandages; Knee bandages, orthopedic; Orthopedic footwear [shoes]; Orthopedic soles; Pessaries; Balling guns; Condoms; Quartz lamps for medical purposes; Radiological apparatus for medical purposes; Fumigation apparatus for medical purposes; X-ray apparatus for medical purposes; X-ray photographs for medical purposes; X-ray tubes for medical purposes; Radiology screens for medical purposes; Radium tubes for medical purposes; Saws for surgical purposes; Babies’ bottles; Feeding bottle valves; Scissors for surgery; Splints, surgical; Teats; Cupping glasses; Supports for flat feet; Protection devices against X-rays, for medical purposes; Armchairs for medical or dental purposes; Love dolls [sex dolls]; Scalpels; Beds, specially made for medical purposes; Furniture especially made for medical purposes; Spirometers [medical apparatus]; Spittoons for medical purposes; Bed pans; Stents; Stethoscopes; Boots for medical purposes; Radiotherapy apparatus; Traction apparatus for medical purposes; Elastic stockings for surgical purposes; Suspensory bandages; Hot air therapeutic apparatus; Thermal packs for first aid purposes; Filters for ultraviolet rays, for medical purposes; Ultraviolet ray lamps for medical purposes; Maternity belts; Incontinence sheets; Hypogastric belts; Abdominal pads; Urological apparatus and instruments; Vaginal syringes; Bed vibrators; Vibromassage apparatus; Water beds for medical purposes; Brushes for cleaning body cavities; Dental apparatus; Dental apparatus, electric; Mirrors for dentists; Dentists’ armchairs; Dentures; Orthodontic appliances; Pins for artificial teeth; Tongue scrapers; Strait jackets; all afore-mentioned goods not in connection with hip and knee prostheses and not in connection with cell, tissue or organ preservation, diagnosis, transport, transplantation, treatment or repair.

Class 42: Scientific and technological services and research and design relating thereto for adapting specific composite solutions for stabilizing pharmaceutical biomolecules for medical application; Industrial analysis and research services relating to composite solutions for stabilizing pharmaceutical biomolecules for medical application; all aforementioned services not in connection with hip and knee prostheses and not in connection with cell, tissue or organ preservation, diagnosis, transport, transplantation, treatment or repair.

The contested goods are the following:

Class 5: Dietary supplements and dietetic preparations.

Class 10: Orthopedic and mobility aids; Medical and veterinary apparatus and instruments; Physical therapy equipment.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘namely’, used in the opponent’s list of goods in Class 5 to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods. Likewise, the wording ‘all aforementioned goods/services not in connection with’ clearly excludes from the earlier mark’s scope of protection goods or services relating to cell, tissue or organ preservation, diagnosis, transport, transplantation, treatment or repair (for all the goods and services covered) and/or relating to hip and knee prostheses (for goods in Class 10 and services in Class 42).

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 5

The contested dietary supplements and dietetic preparations are substances prepared for special dietary requirements, with the purpose of treating or preventing diseases. Bearing this in mind, their purpose is similar to that of the opponent’s pharmaceutical preparations, namely, composite solutions for stabilizing pharmaceutical biomolecules for medical application; all aforementioned goods not in connection with cell, tissue or organ preservation, diagnosis, transport, transplantation, treatment or repair, insofar as they are all substances used to improve a patient’s medical condition. Therefore, they have the same general purpose. Furthermore, their relevant publics coincide and the goods generally have the same distribution channels. Therefore, these goods are considered similar.

Contested goods in Class 10

As regards the contested orthopedic and mobility aids, the Opposition Division observes that the earlier mark covers, in the same class, orthopedic articles and particular items that fall under the broad category of mobility aids, such as artificial limbs.

The contested orthopaedic aids are identical to the opponent’s orthopedic articles, since they are synonyms.

The contested mobility aids is a broad category that includes the opponent’s artificial limbs. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical.

Likewise, the contested medical apparatus and instruments is a broad category that includes, inter alia, the opponent’s obstetric apparatus or radiological apparatus for medical purposes and medical guidewires. Since the Opposition Division cannot dissect ex officio the broad category of the contested medical apparatus and instruments, it has to be concluded that these goods are identical.

The contested veterinary apparatus and instruments is a broad category that covers the opponent’s dental apparatus in Class 10, since the treatment of animals includes dental care. Bearing in mind that the Office cannot dissect ex officio the broad category of the contested veterinary apparatus and instruments, these goods are considered identical.

Finally, as regards the contested physical therapy equipment, it is noted that the earlier mark is registered for physical exercise apparatus for medical purposes in Class 10. As the contested physical therapy equipment includes, as a broad category, the opponent’s physical exercise apparatus and bearing in mind that the Office cannot dissect ex officio this broad category, these goods are considered identical.

Moreover, such conclusions are not affected by the exclusion of, on the one hand, hip and knee prostheses and, on the other hand, cell, tissue or organ preservation, diagnosis, transport, transplantation, treatment or repair from the earlier mark’s scope of protection.

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 or similar are directed both at the public at large and at health professionals.

It is apparent from the case-law that, insofar as pharmaceutical preparations in Class 5 are concerned, the relevant public’s degree of attention is relatively high, whether or not issued on prescription (15/12/2010, T-331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T-288/08, Zydus, EU:T:2012:124, § 36 and cited case-law).

In particular, medical professionals have a high degree of attentiveness when prescribing medicines. Non-professionals also have a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health.

Moreover, the same holds true for the goods at issue in Class 10, the selection of which also requires a precise and informed choice and, therefore, a heightened degree of attention (04/02/2013, T-504/11, DIGNITUDE, EU:T:2013:57, § 31).

Therefore, the degree of attention of the whole of the relevant public is considered high.

3. The signs

SPS
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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).

In the present case, taking into account that the contested sign includes English words, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

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 consisting of the letters ‘SPS’. It does not have any element that could be considered more distinctive or dominant (visually eye-catching) than other elements. Moreover, the combination of letters ‘SPS’ has no meaning for the relevant public in relation to the relevant goods. It is, therefore, distinctive.

The contested sign is a compound mark made up of the verbal element ‘SPS’ written in a standard typeface in bold red upper case letters, with the letter ‘P’ situated lower than the two letters ‘S’. The letters ‘SPS’ are displayed in the centre of a seal or stamp-like device with a white background and a gold outline. Within the gold outline, at the bottom, are the word elements ‘HIGHER STANDARD’ in a standard typeface in red upper case letters smaller than those of the verbal element ‘SPS’. According to the opponent, the letters ‘SPS’ dominate the overall impression produced by the contested mark.

As a preliminary remark, it should be noted that, when a trade mark is composed of verbal and figurative elements, the consumer is likely to focus primarily on the verbal element as a point of reference (18/02/2004, T-10/03, Conforflex, EU:T:2004:46, § 45). Besides, it is well-established case-law that the verbal elements of a mark are, in principle, more distinctive than the figurative elements because the average consumer will more easily refer to the goods in question by quoting their name than by describing the figurative element of the trade mark (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

There is no reason that this principle would not apply in the present case, given the fact that the figurative elements of the contested sign, consisting of the stylisation of the words and the seal or stamp-like device, will be perceived as merely decorative and not as indicating the commercial origin of the goods (15/12/2009, T-412/08, Trubion, EU:T:2009:507, § 45 and the case-law cited therein).

Therefore, the word elements of the contested sign are more distinctive than its figurative elements. Besides, among such word elements, ‘SPS’ is clearly more distinctive than ‘HIGHER STANDARD’.

As stated above, the combination of letters ‘SPS’ has no meaning and, therefore, it is distinctive from the perception of the English-speaking public, while, as the opponent rightly points out, the element ‘HIGHER STANDARD’ of the contested sign will be understood as a statement underlining the ‘greater level of quality’ of the contested goods (definitions of ‘high’ and ‘standard’ extracted from Cambridge Dictionary and 19/08/2005, B 662 850, HOMELIFE / HOMELIFE HIGHER STANDARDS, page 4, § 3). Taking account of such laudatory content, this expression is considered descriptive of the quality of the goods in question and, therefore, as non-distinctive for the relevant goods.

With regard to the assessment of the dominant character of one or more given components of a complex trade mark, the Opposition Division recalls that, in accordance with settled case-law, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the complex mark (13/07/2005, T-40/03, Julián Murúa Entrena, EU:T:2005:285, § 54).

Moreover, according to the same line of case-law, the public will not generally regard a descriptive element forming part of a compound mark as the distinctive and dominant element of the overall impression conveyed by that mark (07/07/2005, T-385/03, Biker Miles, EU:T:2005:276, § 44 and the case-law cited).

In that connection, it is observed that the element ‘HIGHER STANDARD’ is displayed in small light-weight letters within the gold outline of the seal or stamp-like device, underneath the element ‘SPS’, which is displayed in the centre of the sign in bold large letters.

Therefore, the overall impression of the earlier mark is clearly dominated by the sequence of letters ‘SPS’ as such.

Visually, the signs coincide in the combination of letters ‘SPS’, which, as stated above, dominates the overall impression produced by the contested sign and forms the entire earlier mark. However, they differ in the expression ‘HIGHER STANDARD’ in the contested sign, to which the relevant public will not give any trade mark significance due to its promotional and laudatory content. They also differ in the various figurative elements of the contested sign, which have no counterparts in the earlier mark. However, due to their decorative purpose, such elements will not be given any trade mark significance either.

As the signs visually differ in only insignificant aspects and the earlier mark in its entirety forms the contested sign’s dominant element, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛SPS’, present identically in both signs. The pronunciation differs in the sound produced by the secondary word elements ‘HIGHER STANDARD’ of the contested sign, which have no counterparts in the earlier mark.

Although, as rightly pointed out by the opponent, it is likely that, due to its laudatory content, its small size and its position at the bottom of the sign, part of the relevant public will not pronounce this word element (07/02/2013, T-50/12, Metro Kids Company, EU:T:2013:68, § 42; 30/11/2011, T-477/10, SEc Sports Equipment, EU:T:2011:707, § 55), this cannot be assumed for a significant part of the relevant public.

In any event, since English-speaking consumers will perceive this element as a promotional message, even if it is pronounced, little attention will be paid to it.

Therefore, the signs are aurally highly similar.

Conceptually, it is recalled that the combination of letters ‘SPS’, which forms the entirety of the earlier mark and the contested sign’s dominant element, has no meaning from the perception of the relevant public. Although the English-speaking public will perceive the meaning of the expression ‘HIGHER STANDARD’ in the contested sign, it remains that it will not give to it any trade mark significance but instead will consider it as a promotional message. Since it has no impact in the public’s perception, the semantic content of this element will not have the effect of allowing the public to distinguish between the signs from a conceptual point of view.

In the light of the above, it is considered that the conceptual comparison has no impact on the similarity between the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of the 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 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).

In the present case, the contested goods are identical or similar to the opponent’s goods in Classes 5 and 10, the distinctiveness of the earlier mark is average and the signs are visually and aurally highly similar. Moreover, the conceptual comparison has no impact on the similarity between the signs.

Bearing in mind that, in addition, the differences between the signs are confined to non-distinctive and/or secondary elements and aspects of the contested sign and taking into account their arrangement within the contested sign, it is reasonable to consider, as alleged by the opponent, that the contested sign will most probably be perceived as a special or new line of the opponent’s ‘SPS’ products, corresponding to a ‘HIGHER STANDARD’ than the line of products it already commercialises.

Moreover, since 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), the high degree of attention of the relevant public in the present case is not likely to call this conclusion into question.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. 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 11 022 415. It follows that the contested trade mark must be rejected for all the contested goods.

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

Carmen SÁNCHEZ PALOMARES

Marine DARTEYRE

Marianna KONDÁS

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.