OPPOSITION No B 2 756 255

Sound Surgical Technologies Llc, 357 South McCaslin Boulevard, Suite 100, Louisville, Colorado 80027-2932, United States of America (opponent), represented by Marqu Brands & Trademarks Bv, Zuid-Hollandlaan 7, 2596 Al Den Haag, The Netherlands (professional representative)

a g a i n s t

Urmed d.o.o., Ul. bratov Ucakar 132,  1000 Ljubljana, Slovenia (applicant).

On 08/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 756 255 is upheld for all the contested goods, namely 

Class 10:        Apparatus for the application of laser radiation for medical purposes; Laser light treatment instruments for medical use; Lasers for medical purposes; Laser instruments for medical use; Medical skin enhancement apparatus using lasers; Medical instruments incorporating lasers.

2.        European Union trade mark application No 15 441 215 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 15 441 215 , namely against some of the goods in Class 10. The opposition is based on European Union trade mark registration No 1 457 233 ‘VASER’. 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 the following:

Class 10:        Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopedic articles; suture materials.

The contested goods are the following:

Class 10:        Apparatus for the application of laser radiation for medical purposes; Laser light treatment instruments for medical use; Lasers for medical purposes; Laser instruments for medical use; Medical skin enhancement apparatus using lasers; Medical instruments incorporating lasers.

All the contested apparatus for the application of laser radiation for medical purposes; laser light treatment instruments for medical use; lasers for medical purposes; laser instruments for medical use; medical skin enhancement apparatus using lasers; medical instruments incorporating lasers are included in the broad category of the opponent’s medical apparatus and instruments. 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 specialised public in the medical field with specific professional knowledge and expertise. The degree of attentiveness will be higher than average, due to their specialised nature and to their direct effect on the state of health of the patients.

3. The signs

VASER
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the Bulgarian-, Swedish- and Danish-speaking part of the public for which the letters ‘S’ of the earlier mark and ‘C’ of the contested sign will be pronounced identically.

The earlier mark is a word mark ‘VASER’.

The contested sign is a figurative sign composed of the verbal element ‘VICER’, written in rather standard uppercase letters in bold. The majority of the letters are written in black apart from the letter ‘E’, which is slightly stylised and written in blue.

In general, 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. In the present case, the slight stylisation of the letters within the contested sign, in particular the letter ‘E’, will not be able to divert the attention of the public from the verbal element ‘VICER’.

Since the earlier mark is a word mark, it has no elements that could be considered clearly more dominant (visually eye-catching) than other elements. Likewise, the contested sign has also no elements that could be considered clearly more dominant (visually eye-catching) than other elements.

Both signs are meaningless for the relevant pubic and, therefore, their inherent distinctiveness is normal in relation to the relevant goods.

Visually, the signs coincide in the majority of their letters, namely three letters out of five ‘V- *- *-E-R’, which include their respective first letter and this factor will have a strong impact on the relevant public. The signs coincide also in their endings. They differ in two letters ‘A-S’ versus ‘I-C’, which are placed in the middle of the signs. The remaining visual differences are limited to the slight stylisation of the contested sign, which does not have much impact on the overall impression conveyed by the sign since it is less distinctive than its verbal element. Therefore, the signs are visually similar to an average degree.

Aurally, considering that letters ‘S’ and ‘C’ are pronounced identically by the Bulgarian -, Swedish – and Danish -speaking part of the public on which the comparison of the signs is focused, the pronunciation of the signs coincides in the sound of the letters ‘V- *- S/C-E-R’. Consequently, the pronunciation merely differs in the sound of one letter, namely ‘A’ of the earlier mark versus ‘I’ of the contested sign. Both signs are composed of two syllables and, therefore, their rhythm and intonation are also similar. Therefore, the signs are aurally similar to an average degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

The applicant argues in its observations filed with the Office on 18/03/2017 that the contested sign has been created starting from the word ‘ICE’ and, therefore, it refers to this concept. However, taking into account the structure of the contested sign and, in particular, the letters placed at the begging and at the end of the sign, the Opposition Division is of the opinion that this argument is insufficient to consider the element ‘VICER’ is conceptually linked with the term ‘ICE’. Therefore, the applicant’s argument must be put aside.

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 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 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 at issue are identical.

The earlier mark and the contested sign are visually and aurally similar to an average degree and neither of them have any meaning, which could assist the relevant consumers in distinguishing between the marks. Therefore, the conceptual aspect does not influence the assessment of the similarity of the signs.

The signs in dispute coincide visually in the majority of their letters, in particular their respective first letters are identical and this fact will have an impact on the relevant public when assessing a likelihood of confusion. Furthermore, the signs have identical endings ‘ER’. From the aural perspective, as mentioned above, the similarity of the signs is also clear because the only difference is limited to the sound of their second letters (‘A’ of the earlier mark versus ‘I’ of the contested sign), which, although these letters have different sounds, is however clearly insufficient to overweigh the coincidence in the rest of the sounds of the letters placed in identical position.

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). This principle applies to the case at hand because the conflicting goods are identical.

In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (judgment of 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323). 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 Opposition Division considers that the visual and aural similarities between the signs are sufficient to lead to a likelihood of confusion between the marks on the part of the Bulgarian-, Swedish- and Danish-speaking part of the public for identical goods, even considering that the degree of attention of the relevant consumers in relation to the goods at issue will be higher than average.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 1 457 233. 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 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

Gueorgui IVANOV

Monika CISZEWSKA

Sandra KASPERIŪNAITĖ

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.