AQUAPRINT | Decision 2330374 - Dentsply DeTrey GmbH v. INTERNATIONAL DENTAL SUPPLY s.r.l.

Date Published: Sep 28, 2017

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OPPOSITION No B 2 330 374

Dentsply DeTrey GmbH, De-Trey-Strasse 1, 78467 Konstanz, Germany (opponent), represented by Berwin Leighton Paisner Llp, Adelaide House, London Bridge, London EC4R 9HA, United Kingdom (professional representative)

a g a i n s t

International Dental Supply s.r.l., Via Valletta S. Cristoforo 28/R /10, 17100 Savona, Italy (applicant), represented by Parini Andreolini Cupido Studio Legale Associato, Via Nino Bixio 45, 20129 Milano, Italy (professional representative).

On 05/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 330 374 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 12 272 407.

The opponent invoked Article 8(1)(b) and 8(5) EUTMR in relation to the following earlier rights:

• German trade mark registration No 1 141 674 for the word mark ‘AQUACEM’;
• Danish trade mark registration No 103 701 992 for the word mark ‘AQUACEM’;
• Irish trade mark registration No 128 740 for the word mark ‘AQUACEM’;
• UK trade mark registration No 1 363 906 for the word mark ‘AQUACEM’;
• International trade mark registration No 541 535 for the word mark ‘AQUACEM’ designating the Benelux countries, Germany, Spain, France, Italy, Austria and Portugal.

The opponent also invoked Article 8(4)(b) EUTMR and the following rights:

• the non-registered trade mark ‘AQUACEM’ used in the course of trade of more than mere local significance in the European Union, Belgium, the Czech Republic, Denmark, Germany, Spain, France, Italy, Latvia, the Netherlands, Austria, Finland, Sweden and the United Kingdom; and,
• the non-registered trade mark ‘AQUASIL’ used in the course of trade of more than mere local significance in the European Union, Bulgaria, Belgium, the Czech Republic, Denmark, Germany, Greece, Spain, France, Ireland, Italy, the Netherlands, Austria, Poland, Portugal, Finland and the United Kingdom.

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:

DE No 1 141 674:

Class 5: Chemical products for dentistry and/or dental technology, dental materials.

Class 10: Dental and dental apparatus and instruments, artificial teeth, crowns, bridges, dentures.

DK No 103 701 992 and IE No 128 740:

Class 5: Dental cement.

UK No 1 363 906:

Class 5: Preparations and substances for dental use; dental and bone cements; all included in Class 5.

IR No 541 535:

Class 5: Chemical products for dental and/or dental technology, dental materials.

Class 10: Instruments and devices for dental and/or dental technology, artificial teeth, crowns, bridges, dentures.

The contested goods are the following:

Class 1: Laboratory alginates for dental technology purposes; Silicones for dental implants.

Class 5: Chemical materials for dental impressions; Resins, cements, dental chalk, laboratory silicones and alginates and liquids for use in dental technology, orthodontics and dentistry; Sterilising and disinfecting liquids for use in dentistry and dental technology; Moulding wax for dentists.

Class 10: Impression holders of metal, for dental impressions; Syringes for injections of preparations for use in dentistry and dental technology and for orthodontics; Electric medical devices; Apparatus and handling equipment for dental cleaning; Orthodontic appliances, orthodontic attachments, orthodontic machines and instruments, orthodontic wire and orthodontic elastomers.

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 1

The contested laboratory alginates for dental technology purposes; silicones for dental implants are similar to the opponent’s chemical products for dental and/or dental technology, dental materials; preparations and substances for dental use in Class 5. These sets of goods have the same purpose and may coincide in producers and distribution channels.  

Contested goods in Class 5

The contested chemical materials for dental impressions; resins, cements, dental chalk, laboratory silicones and alginates and liquids for use in dental technology, orthodontics and dentistry; sterilising and disinfecting liquids for use in dentistry and dental technology; moulding wax for dentists are included in the broad category/ies of, or overlap with, the opponent’s preparations and substances for dental use; chemical products for dental and/or dental technology, dental materials. Therefore, they are identical.

Contested goods in Class 10

The contested impression holders of metal, for dental impressions; syringes for injections of preparations for use in dentistry and dental technology and for orthodontics; apparatus and handling equipment for dental cleaning; orthodontic appliances, orthodontic attachments, orthodontic machines and instruments, orthodontic wire and orthodontic elastomers are included in the broad category of the opponent’s instruments and devices for dental and/or dental technology; dental and dental apparatus and instruments. Therefore, they are identical.

The contested electric medical devices overlap with the opponent’s instruments and devices for dental and/or dental technology. 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 or similar are specialised goods and are directed primarily at business customers, such as dental professionals and dentists with specific professional knowledge or expertise. The degree of attention is likely to be relatively high in view of the specialised nature of the goods and, also since these goods affect, either directly or indirectly, the state of dental health.

3. The signs

AQUACEM	AQUAPRINT
Earlier trade marks	Contested sign

The relevant territory is Denmark, Ireland, the United Kingdom, the Benelux countries, Germany, Spain, France, Italy, Austria and Portugal.

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).

In addition, when assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

In the present case, both signs are word marks and, as such, have no element/s that could be considered clearly more dominant (visually eye-catching) than other elements. 

The words ‘AQUACEM’ and ‘AQUAPRINT’ are meaningless per se. However, in this context, the Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, when perceiving a word sign, he will break it down into elements which, for him, suggest a specific meaning or which resemble words known to him (13/02/2007, T-256/04, RESPICUR, EU:T:2007:46, § 57). In the present case, the relevant consumers will divide the word ‘AQUACEM’ into the elements ‘AQUA’ and ‘CEM’, and, likewise ‘AQUAPRINT’ into ‘AQUA’ and ‘PRINT’. This is because, the verbal element ‘AQUA’ contained in the beginning of both signs will be understood as ‘water’ by all the relevant consumers: it is a common Latin word, which will be readily known to the relevant dental professional consumer accustomed to the use of Latin-based terminology. In addition, ‘aqua’ is very close to the respective words for ‘water’ in some of the relevant territories, for example ‘agua’ in Portuguese and Spanish, and ‘acqua’ in Italian. Bearing in mind that the relevant goods are dental preparations and instruments and materials related to dentistry, it is considered that this element is not particularly strong for the relevant goods. This is because, depending on the specific product, this element may be perceived as a reference to characteristics/ properties of the goods. For example, that the goods are suitable for use when in contact with water or saliva, or in other words they are hydrophilic, compatible and/or efficient in water environment. In addition, the term may allude to the fact that the goods require mixing with water (such as dental cements), or contain or entail use of water (for example, apparatus for dental cleaning). Therefore, since this element has indicative, allusive or weak connotations in relation to the goods, it is considered that it is weak.  

As regards the term ‘print’ included in the contested sign, it should be mentioned that part of the relevant goods are related to dental impressions and related materials and instruments. Bearing in mind that a dental impression is a negative imprint of hard (teeth) and soft tissues in the mouth from which a positive reproduction (or cast) can be formed), it is considered that the element ‘print’ is not particularly strong in relation to the mentioned goods (undisputed by the applicant), as it may be seen as a reference to the fact that the goods are used to make dental impressions or to leave an imprint. Although this term is in English and some of the relevant territories are not English-speaking, it is considered that this element will be widely understood by the relevant professional public, which can be assumed to have at least some understanding of the relevant English terminology. Consequently, for the mentioned reasons, it is considered that this element is weak in relation to the mentioned goods.

Likewise, in view of the nature of some of the goods covered by the earlier marks (covering, inter alia, goods such as dental preparations and dental cement), at least part of the relevant public will associate the element ‘CEM’ with ‘cement’, in particular ‘dental cement’, which is used for a variety of dental and orthodontic applications, including use as luting agents, pulp-protecting agents or cavity-lining material. Therefore, this element is rather weak for at least part of the relevant goods and public.

As regards the remaining parts of the relevant goods for which the elements ‘cem’ and ‘print’ in the signs have no specific descriptive, allusive or otherwise weak meaning, their inherent distinctive character is normal.

Visually, the signs coincide in the verbal element ‘AQUA’, present in both marks, which is weak for the goods. The signs differ in the elements ‘CEM’ of the earlier mark and ‘PRINT’ of the contested sign, which are also weak, albeit in relation to part of the relevant goods and/or public. Although the coinciding element in both signs is visually noticeable because it is represented in the beginning of the signs, as pointed out above, this element is weak in relation to the relevant goods. Therefore, the impact of this coincidence will be lower and the consumers will also focus on the remaining differing elements, which are, in addition, at least for part of the goods, the more distinctive elements of the signs. Consequently, for all the above reasons, it is considered that the signs are visually similar but only to a low degree.

Following the same line of reasoning as in the visual comparison, it is considered that the signs are aurally similar to a low degree.

Conceptually, although the words ‘AQUACEM’ and ‘AQUAPRINT’ are meaningless per se, as mentioned above, the concept of ‘water’ (AQUA) will be perceived in both of them. Nevertheless, this element is weak in relation to the goods, and this overlap will have limited conceptual impact. Furthermore, as mentioned above both elements ‘CEM’ and ‘PRINT’ may be associated with a specific different meaning, which however may or may not be weak depending on the specific goods in question. Finally, it is possible that ‘CEM’ in the earlier marks is not associated with any specific meaning.    

Consequently, although the coinciding word ‘aqua’ will evoke the same concept, this element is weak in relation to the goods and has reduced capacity to indicate the commercial origin of any of the marks. The attention of the relevant public will be attracted by the additional verbal elements ‘cem’ and ‘print’. These two elements may be distinctive, depending on the goods, and in those cases, in which they are understood with a different meaning or only one has a meaning, they will bring about an important and relevant conceptual difference between the signs. While it is true that these elements may also be weak in relation to part of the goods and relevant public, it cannot be denied that they would still bring about a certain conceptual distance between the signs.

Consequently, in view of the above findings, it is considered that the signs are, at best, conceptually similar to a limited degree.

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 marks

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 trade marks (all for the sign ‘AQUACEM’) have a reputation and enjoy a high degree of distinctiveness as a result of their long standing and intensive use in Denmark, Ireland, the United Kingdom, the Benelux countries, Germany, Spain, France, Italy, Austria and Portugal in connection with all the goods for which they are registered. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted the following evidence:

A witness statement dated 29/07/2016 by Justin H. McCarthy II, in his capacity as deputy General Counsel/Assistant Secretary of Dentsply Sirona Inc., USA. In his witness statement, Mr. McCarthy explains that he is also authorized to act on behalf of the opponent company Dentsply DeTrey GmbH, which a fully owned subsidiary of Dentsply Sirona Inc.Statement. The witness statement refers to and is accompanied by the following exhibits:

• Exhibit JHM1 - A list of the names of a number of companies indicated to be European subsidiary companies of Dentsply Sirona Inc.

• Exhibit JHM2 - Dealer price lists of the opponent dated 1986, 1988 and 1989. The price lists are in German and show, inter alia, reference to ‘AQUACEM’ dental cement. The exhibit also includes a product catalogue in German dated 1996/1997 and refers to, inter alia, ‘AquaCem’ cement and ‘Aquasil Smart Wetting Abformmaterial’.

• Exhibit JHM3 - Extracts from the opponent’s ‘Product catalogue 2014/2015’ in English showing detailed information about various products, such as: ‘AquaCem’ powder-liquid cement (the product description indicates that ‘the powder is mixed with distilled water to produce a luting material’) and ‘Aquasil’ Smart Wetting silicone impression material and related parts/accessories, such as refills, automix guns, mixing tips and cartridges, ‘Aquasil’ bite registration material and related parts and accessories. The last page of the catalogue shows Dentsply offices and addresses in Germany, France, Italy, Spain, the United Kingdom, Austria and the Netherlands.

• Exhibit JHM4 - Extracts from the following opponent’s catalogues: ‘Produkt Katalog 2013’ in German, ‘Product catalogue 2007/2008’ in English and German, ‘Produkt Katalog 2009/2010’ in German, ‘Produkt Katalog 2011/2012’ in German, ‘Product catalogue 2009’ and ‘Product catalogue 2010’ in English, ‘Product catalogue 2011/2012’ in English and ‘Product catalogue 2013’ in English. The catalogues contain references to ‘AquaCem’ luting cement and various ‘Aquasil’ products (impression materials and related items).

 

• Exhibit JHM5 – Excerpts from two dealer catalogues, in particular of ‘Dental Union’ and of ‘Henry Schein’ distributors, dated 2013/2014 and 2013 showing, amongst other company’s products, the opponent’s ‘Aquacem’ cement and ‘Aquasil’ products.

• Exhibit JHM6 - Examples of Safety Data Sheets in Spanish, French, German, Italian, English, Dutch, etc. dated from 1993 - 2003 in relation to ‘AquaCem’ and ‘Aquasil’ goods.

• Exhibit JHM7 - Examples of Instructions for Use in multiple languages in relation to ‘Aquasil’ goods.

• Exhibit JHM8 – Extracts from price lists dated 1986, 1988, 2002 and 2007 in relation to, inter alia, ‘AquaCem’ cement and various ‘Aquasil’ goods.

• Exhibit JHM9 – Advertising examples, in particular:

-‘AquaCem’ advertising brochure in German dated 2000;

-Article in German published in ‘ZMK’ magazine in November 2009 about ‘Aquasil Ultra’ product.

-Article about ‘Aquasil Ultra’ in French. According to the opponent, the article is dated September 2009 and is extract from a Dentsply News magazine published by the opponent’s Benelux team and mailed to 5,000-10,000 dentists in Europe.

• Exhibit JHM10 – Table with sales figures (in Euros) for a number of European countries for the period 2008 - 2014 for sales of ‘Aquacem’ goods.

• Exhibit JHM11 - Table with sales figures (in Euros) for a number of European countries for the period 2008 - 2014 for sales of ‘Aquasil/Aquasil Ultra’ goods.

• Exhibit JHM12 – A set of invoices (approximately 20 invoices, the majority dated in 1996, 1999 and 2000 and two dated in 2004), issued to different EU-based clients (such as from Austria, Finland, Sweden, Spain, Germany, Portugal, the Netherlands, etc.) in relation to, inter alia, ‘Aquacem’ and ‘Aquasil’ products.

• Exhibits JHM13 and JHM14 - Copies of a statement signed in May 2015 by twenty-three dental practitioners from Germany and the corresponding English translation thereof of the text. The text of the statement basically says that the signee is aware that the company Dentsply Sirona Inc. uses ‘a range of trade marks in the European Union, in particular AQUACEM and AQUASIL, in respect of dental impression materials and trays as well as dental equipment, apparatus and instruments for use in respect of the application of dental impression materials’ and, additionally that ‘I therefore would recognise the prefix ‘AQUA’ when used in respect of dental impression materials as designating dental goods offered for sale by Dentsply Sirona Inc (formerly Dentsply International Inc).’

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use.

Although the opponent provided documents enabling to conclude that it has used its ‘AquaCem’ trade marks, the evidence in its totality is not sufficient to prove that the opponent’s mark has acquired a high degree of distinctiveness through its use or that it is reputed in the relevant territory. In fact, there are no documents enabling the Opposition Division to determine the degree of knowledge or recognition of the mark amongst the relevant public. The sales figures are provided by the opponent itself and they are insufficient, as they do not demonstrate the respective market share of the mark or that the earlier mark enjoys recognition among the relevant public. Although these figures are affirmed in the witness statement the probative value of statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.

However, this does not mean that such statements do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary, since such statements have to be considered as having less probative value than evidence originating from or corroborated by independent sources.

In the present case, the sales figures are not put into the context of the respective market and competitors and, therefore, the Opposition Division is unable to establish the market position of the opponent’s goods. Although the opponent filed other pieces of evidence (consisting of invoices, price lists, catalogues, safety sheets, instructions for product use and three advertisements), this evidence is still insufficient, as it shows that the goods have been offered for sale but does not contain any information in relation to the level of knowledge of the mark amongst the relevant consumers. The Opposition Division is unable to extract any information and any indication as regards the degree of recognition of the trade mark among the relevant public.

In relation to the statement (Exhibit 13) signed by twenty-three dental practitioners from Germany, it must be noted that it cannot be taken as strong evidence showing that the mark ‘Aqaucem’ is known by German dentists in general. First of all, the fact that all the signees were asked to sign the same pre-drafted text and send it back to the opponent itself, immediately reduces the persuasiveness and independent character of the statements. Secondly, it is not clear how these signees were selected and the way the text of the statement is formulated is somehow leading. Finally, the number of signees is not impressive taking into account the size of the German market.

Therefore, in the absence of any further evidence, such as surveys on the mark’s recognition, evidence showing the market share held by the mark, how intensive the use of the mark has been, the size of the investment made by the undertaking in promoting/advertising the mark, the proportion of the relevant section of the public which, because of the mark, identifies the goods/services as originating from a particular undertaking, statements from chambers of commerce and industry or other trade and professional associations, etc. (this list is not exhaustive), it is held that the opponent failed to prove that its trade mark has acquired a reputation and/or a high degree of distinctiveness through use.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier marks, all for the sign ‘AQUACEM’, must be seen as low for a part of the goods in question, namely dental cement; preparations and substances for dental use; dental and bone cements; chemical products for dental and/or dental technology, dental materials in Class 5 and for a part of the relevant territory, namely those consumers who would associate ‘Cem’ with ‘cement’. The mark has a normal degree of distinctiveness for the remaining goods and public in relation to which the earlier sign has no specific meaning, despite the presence of the weak element ‘Aqua’ in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The contested goods are partly identical and partly similar to the opponent’s goods. The relevant goods are directed at business customers with specific professional knowledge or expertise with a relatively high degree of attention.

Depending on the goods and the understanding of the relevant public, the inherent distinctiveness of the earlier marks is either low or normal (despite the presence of the weak element ‘AQUA’). The opponent claimed that its marks have a reputation and enjoy a high degree of distinctiveness, but failed to prove it.

The signs are visually and aurally similar to a low degree and, at best, conceptually similar to a limited degree. The similarities between the signs are due to the element ‘AQUA’, which is weak for the relevant goods and public. Although the different elements in the signs, ‘CEM’ vs. ‘PRINT’ may also be weak in relation to some goods/parts of the public, the Opposition Division considers that the circumstances of the case are such that the relevant public will not confuse the signs.

This is because the similarities between the signs are not particularly relevant and are counterbalanced by other crucial factors, such as the fact that the relevant public is a professional public with a higher degree of attention and in view of the differences of the remaining elements in the marks compared. The similarities between the signs at issue are confined to a weak element.

Consequently, it follows from the above that the public is not likely to believe that the goods come from the same undertaking or from economically-linked undertakings.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected insofar based on Article 8(1)(b) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. Reputation of the earlier trade marks

The evidence submitted by the opponent to prove the reputation and high distinctive character of the earlier trade marks has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

It was concluded that the evidence submitted by the opponent does not demonstrate that the earlier trade marks acquired a reputation.

Therefore, the opponent failed to prove that the earlier trade mark registrations DE No 1 141 674, DK No 103 701 992, IE No 128 740, UK No 1 363 906 and IR No 541 535 have a reputation. As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade marks have a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected on this ground.

NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR

The opponent invoked Article 8(4)(b) EUTMR in relation to the non-registered trade mark ‘AQUACEM’ and the non-registered trade mark ‘AQUASIL’ used in the course of trade of more than mere local significance in a number of EU countries (listed above in the ‘Reasons’ section of the decision) in relation to chemicals, preparations and substances for dental use; dental and bone cements in Class 5 and apparatus and instruments for dental use; artificial teeth in Class 10.

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a)        rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b)        that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

• the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

• pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

• the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non-registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

1. The right under the applicable law

According to Article 76(1) EUTMR, the Office will examine the facts of its own motion in proceedings before it; however, in proceedings relating to relative grounds for refusal of registration, the Office will restrict this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

According to Rule 19(2)(d) EUTMIR, if the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opposing party must provide evidence of its acquisition, continued existence and scope of protection.

Therefore, the onus is on the opponent to submit all the information necessary for the decision, including identifying the applicable law and providing all the necessary information for its sound application. According to case-law, it is up to the opponent ‘… to provide EUIPO not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application … but also particulars establishing the content of that law’ (05/07/2011, C-263/09 P, Elio Fiorucci, EU:C:2011:452, § 50). The evidence to be submitted must allow the Opposition Division to determine safely that a particular right is provided for under the law in question, as well as the conditions for acquisition of that right. The evidence must further clarify whether the holder of the right is entitled to prohibit the use of a subsequent trade mark, as well as the conditions under which the right may prevail and be enforced vis-à-vis a subsequent trade mark.

As regards national law, the opponent must cite the provisions of the applicable law on the conditions governing acquisition of rights and on the scope of protection of the right. The opponent must provide a reference to the relevant legal provision (article number, and the number and title of the law) and the content (text) of the legal provision either as part of its submission or by highlighting it in a publication attached to the submission (e.g. excerpts from an official journal, a legal commentary or a court decision). As the opponent is required to prove the content of the applicable law, it must provide the applicable law in the original language. If that language is not the language of the proceedings, the opponent must also provide a complete translation of the legal provisions invoked in accordance with the standard rules of substantiation.

Furthermore, the opponent must submit appropriate evidence of fulfilment of the conditions of acquisition and of the scope of protection of the right invoked, as well as evidence that the conditions of protection vis-à-vis the contested mark have actually been met. In particular, it must put forward a cogent line of argument as to why use of the contested mark would be successfully prevented under the applicable law. 

The above requirements also apply to European Union law, except that the opponent is not obliged to provide the content (text) of the law invoked. However, the opponent has to provide particulars proving the fulfilment of the conditions under the relevant provisions of European Union law.

In the present case, the opponent did not submit any information on the legal protection granted to the type of trade sign invoked by the opponent, namely the non-registered trade marks ‘AQUACEM’ in the European Union, Belgium, the Czech Republic, Denmark, Germany, Spain, France, Italy, Latvia, the Netherlands, Austria, Finland and Sweden, and ‘AQUASIL’ in the European Union, Bulgaria, Belgium, the Czech Republic, Denmark, Germany, Greece, Spain, France, Ireland, Italy, the Netherlands, Austria, Poland, Portugal and Finland. The opponent did not submit any information on the possible content of the rights invoked or the conditions to be fulfilled for the opponent to be able to prohibit the use of the contested trade mark under EU Law or the laws in each of the Member States mentioned by the opponent. That is, the opponent did not provide any evidence regarding the acquisition, continued existence and scope of protection of the earlier non-registered right in any of the territories/member states mentioned above.

Therefore, the opposition has to be rejected as unfounded also as far as it is based on the non-registered trade mark ‘AQUACEM’ used in the course of trade of more than mere local significance in the European Union, Belgium, the Czech Republic, Denmark, Germany, Spain, France, Italy, Latvia, the Netherlands, Austria, Finland, Sweden and the non-registered trade mark ‘AQUASIL’ used in the course of trade of more than mere local significance in the European Union, Bulgaria, Belgium, the Czech Republic, Denmark, Germany, Greece, Spain, France, Ireland, Italy, the Netherlands, Austria, Poland, Portugal and Finland in relation to which the opponent invoked Article 8(4) EUTMR.

The examination proceeds in relation to the non-registered trade marks ‘AQUACEM’ and ‘AQUASIL’ used in the course of trade of more than mere local significance in  the United Kingdom for goods in Classes 5 and 10.

The opponent claims to have the right to prohibit the use of the contested trade mark under the tort of passing off.

Non-registered marks are generally protected against subsequent marks according to the same criteria that are applicable to conflicts between registered marks, namely identity or similarity between the signs, identity or similarity between the goods or services, and the presence of a likelihood of confusion. In these cases, the criteria developed by the courts and by the Office with regard to Article 8(1) EUTMR can be applied mutatis mutandis when examining Article 8(4) EUTMR.

As argued by the opponent, a successful claim for passing off must satisfy three cumulative conditions. Failure to satisfy any one of them means that the claim cannot succeed. The conditions are:

Firstly, the opponent must prove that it enjoys goodwill or is known for specific goods under its mark. The evidence must show that the opponent’s mark is recognised by the public as distinctive for the opponent’s goods. For the purposes of opposition proceedings, goodwill must be proven to have existed before the filing date of the contested trade mark.

Secondly, the opponent must demonstrate that the applicant’s mark would be likely to lead the public to believe that the applicant’s goods originate from the opponent. In other words, the public would be likely to believe that goods put on the market under the contested trade mark are actually those of the opponent.

Thirdly, the opponent must show that it is likely to suffer damage as a result of the applicant’s use of the contested trade mark.

All three conditions to sustain a passing-off claim must be met for it to be successful. Therefore, the Opposition Division finds it appropriate to first examine the second condition, in particular misrepresentation.

2. The opponent’s right vis-à-vis the contested trade mark

The opponent must demonstrate that the applicant’s mark would be likely to lead the public to believe that the applicant’s goods originate from the opponent

The contested trade mark must be likely to lead the public to believe that goods or services to be offered by the applicant are the opponent’s goods or services. Therefore, it is necessary to examine whether, on a balance of probabilities, it is likely that a substantial part of the relevant public will be misled into purchasing the applicant’s goods or services in the belief that they are the opponent’s.

Therefore, a comparison of the signs is required.

Furthermore, the public is unlikely to be misled where the contested goods are dissimilar to those upon which the opponent’s goodwill has been built. Therefore, the contested goods must be compared to the goods for which the opponent has shown that it has acquired goodwill through use.

1.        The goods

The opponent claims that it uses its non-registered trade marks for: chemicals, preparations and substances for dental use; dental and bone cements in Class 5 and apparatus and instruments for dental use; artificial teeth in Class 10.

The opposition is directed against the following goods of the contested trade mark:

Class 1: Laboratory alginates for dental technology purposes; Silicones for dental implants.

Class 5: Chemical materials for dental impressions; Resins, cements, dental chalk, laboratory silicones and alginates and liquids for use in dental technology, orthodontics and dentistry; Sterilising and disinfecting liquids for use in dentistry and dental technology; Moulding wax for dentists.

Class 10:        Impression holders of metal, for dental impressions; Syringes for injections of preparations for use in dentistry and dental technology and for orthodontics; Electric medical devices; Apparatus and handling equipment for dental cleaning; Orthodontic appliances, orthodontic attachments, orthodontic machines and instruments, orthodontic wire and orthodontic elastomers.

These goods have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings.

2.        The signs

The signs ‘AQUACEM’ and ‘AQUAPRINT’ have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings.

Therefore, it remains necessary to compare the following signs:

AQUASIL	AQUAPRINT
Earlier sign	Contested sign

The relevant territory is the United Kingdom.

In the present case, both signs are word marks and, as such, have no element/s that could be considered clearly more dominant (visually eye-catching) than other elements. 

The words ‘AQUASIL’ and ‘AQUAPRINT’ are meaningless per se. However, in this context, the Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, when perceiving a word sign, he will break it down into elements which, for him, suggest a specific meaning or which resemble words known to him (13/02/2007, T-256/04, RESPICUR, EU:T:2007:46, § 57).

In the present case, the relevant consumers will detect the verbal element ‘AQUA’ contained in the beginning of both signs. It will be understood as ‘water’ by the relevant consumers: it is a common Latin word, which will be readily known to the relevant dental professional consumer accustomed to the use of Latin-based terminology. Bearing in mind that the relevant goods are dental preparations and instruments and materials related to dentistry, it is considered that this element is not particularly strong for the relevant goods. This is because, depending on the specific product, this element may be perceived as a reference to characteristics/ properties of the goods. For example, that the goods are suitable for use when in contact with water or saliva, or in other words they are hydrophilic, compatible and/or efficient in water environment. In addition, the term may allude to the fact that the goods require mixing with water (such as dental cements), or contain or entail use of water (for example, apparatus for dental cleaning). Therefore, since this element has indicative, allusive or weak connotations in relation to the goods, it is considered that it is weak.  

As regards the term ‘print’ included in the contested sign, it should be mentioned that part of the relevant goods are related to dental impressions and related materials and instruments. Bearing in mind that a dental impression is a negative imprint of hard (teeth) and soft tissues in the mouth from which a positive reproduction (or cast) can be formed), it is considered that the element ‘print’ is not particularly strong in relation to the mentioned goods (undisputed by the applicant), as it may be seen as a reference to the fact that the goods are used to make dental impressions or to leave an imprint. Consequently, for the mentioned reasons, it is considered that this element is weak in relation to the mentioned goods. As regards the remaining relevant goods for which the element ‘print’ has no specific descriptive, allusive or otherwise weak meaning, its inherent distinctive character is normal. The same goes for the element ‘SIL’ of the earlier sign, which has no specific meaning in relation to the goods and its distinctiveness is normal.

Visually, the signs are similar to the extent that they coincide in the verbal element ‘AQUA’, present in both marks, which is weak for the goods. The signs differ in the inherently distinctive element ‘SIL’ of the earlier mark and ‘PRINT’ of the contested sign, which is weak, albeit in relation to part of the relevant goods. Although the coinciding element in both signs is visually noticeable because it is represented in the beginning of the signs, as pointed out, this element is weak in relation to the relevant goods. Therefore, the impact of this coincidence will be lower and the consumers will also focus on the remaining differing elements, which are, in addition, the more distinctive elements of the signs (with a minor exception in relation to ‘print’ and part of the goods). Consequently, for all the above reasons, it is considered that the signs are visually similar but only to a low degree.

Following the same line of reasoning as in the visual comparison, it is considered that the signs are aurally similar to a low degree.

Conceptually, although the words ‘AQUASIL’ and ‘AQUAPRINT’ are meaningless per se, as mentioned above, the concept of ‘water’ (AQUA) will be perceived in both of them. Nevertheless, this element is weak in relation to the goods, and this overlap will have limited conceptual impact. Furthermore, as mentioned above the element ‘SIL’ is meaningless and ‘PRINT’ will be associated with a specific meaning, which however may or may not be weak depending on the specific goods in question.

Consequently, although the coinciding word ‘aqua’ will evoke the same concept, this element is weak in relation to the goods and has reduced capacity to indicate the commercial origin of any of the marks. The attention of the relevant public will be attracted by the additional verbal elements ‘sil’ and ‘print’, which are not conceptually similar. Consequently, in view of the above findings, it is considered that the signs are, at best, conceptually similar to a limited degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

3.        Global assessment of the conditions under the applicable law

Considering the differences between the marks in question (namely, between ‘Aquacem’ and ‘Aquasil’ and the contested ‘Aquaprint’) as well as the weak distinctive character of the element ‘AQUA’, use of the contested trade mark with its combination of different elements will not lead the public to believe that goods offered by the applicant are goods originating from the opponent.

The similarities between the signs in dispute are insufficient and the opponent’s professional customers with a high degree of attention are not likely to perceive the goods to be marketed under the contested trade mark as originating from the opponent.

Since all three conditions to sustain a passing-off claim must be met for it to be successful, the opposition is dismissed. Therefore, there is no need to consider the other conditions.

Therefore, the opposition is not well founded under Article 8(4) EUTMR.

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 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

Dorothée SCHLIEPHAKE

Liliya YORDANOVA

Gueorgui IVANOV

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.