CUSMED | Decision 2467333 - CAS Medical Systems, Inc. v. Ossaware Biotech Co., Ltd.
Date Published: Sep 28, 2017
OPPOSITION DIVISION
OPPOSITION No B 2 467 333
CAS Medical Systems, Inc., 29 Business Park Drive, Branford, Connecticut 06405, United States of America (opponent), represented by KSNH Patentanwälte Klunker/Schmitt-Nilson/Hirsch, Destouchesstr. 68, 80796 München, Germany (professional representative)
a g a i n s t
Ossaware Biotech Co. Ltd., No. 51, Xinggong Rd., Shengang Township, Changhua County 509, Taiwan (applicant), represented by Viering Jentschura & Partner mbB, Grillparzerstraße 14, 81675 München, Germany (professional representative).
On 09/12/2016, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 467 333 is upheld for all the contested goods, namely:
Class 10: Test equipment for medical use; surgical instruments and apparatus; medical apparatus and instruments; diagnostic imaging apparatus for medical use.
2. European Union trade mark application No 13 286 133 is rejected for all the
contested goods. It may proceed for the remaining goods and services.
3. The applicant bears the costs, fixed at EUR 650.
REASONS:
The opponent filed an opposition against some of the goods and services of European Union trade mark application No 13 286 133, namely against some of the goods in Class 10. The opposition is based on European Union trade mark registration No 5 342 308. The opponent invoked Article 8(1)(b) EUTMR.
PROOF OF USE
In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.
According to the same provision, in the absence of such proof the opposition must be rejected.
Decision on Opposition No B 2 467 333 page: 2 of 15
The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based.
The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the publication of the contested application.
The contested application was published on 31/10/2014. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 31/10/2009 to 30/10/2014 inclusive. Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:
Class 9: Software for surgical and medical apparatus.
Class 10: Surgical and medical apparatus and instruments; apparatus for measuring and/or monitoring clinical parameters, like blood pressure, hart rate, respiration and oxygen saturation; cerebral oximeters, pulse oximeters; apnea detection apparatus; blood testing apparatus; electro cardiographs; diagnostic apparatus for medical purposes; diagnostic lasers for measuring clinical parameters; automated blood pressure monitoring apparatus; blood pressure cuffs; blood oxygenation monitoring apparatus; vital signs monitors; non-invasive blood pressure measuring apparatus; droppers for medical purposes; dropper bottles for medical purposes; infusors; pressure infusors; pressure infusor cuffs; x- ray translucent accessories for medical use; x-ray translucent supports; x-ray translucent baby nests; limb boards and x-ray translucent limb boards; x-ray translucent cushions; x-ray translucent diapers; electrodes for medical use; electrode retainer belts.
According to Rule 22(3) EUTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.
On 17/09/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 29/11/2015 to submit evidence of use of the earlier trade mark. On 27/11/2015, within the time limit, the opponent submitted evidence of use.
The evidence to be taken into account is the following:
Affidavit (Exhibit 1) signed by the Director of Operations of the opponent, Mr George Brocksieper, dated 25/11/2015, stating that the earlier EUTM has been genuinely used in European Union countries including Austria, Belgium, Denmark, France, Germany, Greece, Hungary, Italy, the Netherlands, Poland, Portugal, Romania, Spain, Sweden and the United Kingdom.
Attached to the affidavit, an internal document shows a table listing quantities of units and parts (with their part numbers) sold in the above countries, during the period 2009-2014, of products such as:
Decision on Opposition No B 2 467 333 page: 3 of 15
- Fore-Sight monitors and parts - Fore-Sight sensors - Neoguard limboard - Neogard Temp Pro - infant electrodes - Neo electrodes - reflectors - MaxIQ - vital signs monitors - UltraCheck reusable BP cuffs.
The affidavit provides further information on the attached list of exhibits, as well as some information on the invoices enclosed (Exhibits 2-19).
Invoices: Exhibits 2-19 are invoices that, despite not referring to the earlier mark, contain product references (item numbers) and descriptions. They are all dated within the relevant period, they were issued by the opponent and they demonstrate sales of products as follows: in 2009, to customers, inter alia - in Italy (of, inter alia, UltraCheck reusable BP cuffs, Neoguard limboards) - in Spain (of, inter alia, reflectors) - in the Netherlands (of, inter alia, Neoguard limboard parts) - in Portugal (of, inter alia, reflectors, UltraCheck reusable BP cuffs) in 2010, to customers, inter alia - in Sweden (of, inter alia, Fore-Sight sensors) - in Belgium (of, inter alia, Fore-Sight monitors) - in Germany (of, inter alia infant and Neo electrodes) in 2011, to customers, inter alia - in Italy (of, inter alia, Neoguard limboard parts) - in Portugal (of, inter alia, UltraCheck reusable BP cuffs, reflectors) in 2012, to customers, inter alia - in Austria (of, inter alia, Fore-Sight sensors) - in Spain (of, inter alia, reflectors and Neoguard limboard parts) in 2013, to customers, inter alia - in Germany (of, inter alia, Fore-Sight monitors and Fore-Sight sensors) - in the Netherlands (of, inter alia, Neoguard limboard parts) in 2014, to customers, inter alia - in the United Kingdom (of, inter alia, Fore-Sight sensors) - in Poland (of, inter alia, MaxIQs).
Images of products (Exhibits 20-72) bearing the earlier mark, in particular, of:
- Fore-Sight monitors - packaging of Fore-Sight sensors and sensor kits - packaging of Neoguard limboard products and parts - packaging of reflectors - packaging of Neo electrodes - packaging of MaxIQ software provided to customers purchasing MaxIQ
modules.
In some of the images, products are designated with item numbers that match the item numbers used in the invoices above.
A table (Exhibit 73) listing the commercial product names each exhibit filed.
Decision on Opposition No B 2 467 333 page: 4 of 15
On 20/07/2016, during the second round of observations but after the expiry of the time limit for filing proof of use, the opponent submitted the following additional evidence as proof of use:
- an internal document, without a date or information to which year it refers, listing, for each product name and part number, the numbers of customers in various countries receiving shipments;
- a supplementary affidavit from Mr Brocksieper, dated 19/07/2016, explicitly stating some information included in the table attached to the first affidavit, in particular that, in the period from 01/10/2009 to 01/10/2014, at least 7 792 products were sold in the European Union. In addition, this affidavit clarified the fact that the abovementioned internal document, filed on 20/07/2016, referred to sales during the period from 01/10/2009 to 01/10/2014.
Preliminary remarks
Firstly, in relation to the additional evidence submitted during the second round of observations, the Opposition Division notes that, even though the EUTM proprietor has to submit proof of use within a time limit set by the Office, this cannot be interpreted as preventing additional evidence from being taken into account where new factors emerge (12/12/2007, T-86/05, Corpo livre, EU:T:2007:379, § 50). In the present case, the issue of whether or not the Office may exercise the discretion conferred on it by Article 76(2) EUTMR to take into account the additional evidence submitted on 20/07/2016 can remain open, as the evidence submitted within the time limit is sufficient to prove the required genuine use of the earlier EUTM for some of the goods for which it is registered.
As far as the affidavit is concerned, Rule 22(4) EUTMIR expressly mentions written statements referred to in Article 78(1)(f) EUTMR as admissible means of proof of use. Article 78(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, as correctly stated by the applicant, 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 will depend on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources.
Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence submitted on time.
Decision on Opposition No B 2 467 333 page: 5 of 15
The applicant argues that it cannot be determined whether different customers were provided with the goods or only one customer. However, even if this were the case, use of the mark by a single client can be sufficient to demonstrate that such use is genuine, as long as the trade mark is used publicly and outwardly and not solely within the undertaking which owns the earlier trade mark or within a distribution network owned or controlled by that undertaking (see, for example, 27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50, § 24 et seq.; 08/07/2004, T-203/02, Vitafruit, EU:T:2004:225, § 50; 8/10/2014, T-300/12, Fairglobe, EU:T:2014:864, § 36). Therefore, this argument of the applicant is to be set aside.
Furthermore, the applicant argues that it is not clear how often single products were sold and that the numbers and references do not match. However, there is no exact threshold for proof of genuine use, and whether or not use is sufficient is subject to an evaluation by the Office in an overall assessment. All the circumstances of the specific case have to be taken into account and all the materials submitted must be assessed in conjunction with each other. Therefore, although items of evidence may be insufficient in themselves to prove the use of an earlier trade mark, they may contribute to proving use in combination with other documentation and information. In addition, when the items of evidence are read in conjunction with each other, the references to the products in the invoices do match those listed in the affidavit and the table and shown in some of the images provided, and therefore they demonstrate use of the mark for the specific goods listed above.
In addition, the applicant argues that since the opponent did not present any sales figures, the documents submitted could refer to free samples, and the goods may not necessarily have been offered for sale.
In this regard, it has to be evaluated whether or not, in view of the market situation in the particular industry or trade concerned, it can be deduced from the material submitted that the owner has seriously tried to acquire a commercial position in the relevant market. The trade mark has to be used for goods or services already marketed or about to be marketed and for which preparations by the undertaking to secure customers are under way, particularly in the form of advertising campaigns (11/03/2003, C-40/01, Minimax, EU:C:2003:145, § 37). This does not mean that the opponent has to reveal the total volume of sales or turnover figures.
Even where the opponent does not provide any sales figures, in certain circumstances the items of evidence, read in conjunction, may be enough to prove genuine use of the trade mark (see 28/10/2002, R 0681/2001-1, BLUME). Furthermore, use need not always be quantitatively significant for it to be deemed genuine, as that depends on the characteristics of the goods or service concerned on the corresponding market (11/03/2003, C-40/01, Minimax, EU:C:2003:145, § 39; 08/07/2004, T-203/02, Vitafruit, EU:T:2004:225, § 42).
The applicant’s arguments are based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.
Assessment of evidence – factors
Decision on Opposition No B 2 467 333 page: 6 of 15
Place of use
The affidavit and invoices show that the place of use is the European Union, in particular Italy, Spain, the Netherlands, Portugal, Sweden, Belgium, Germany, Austria, the United Kingdom and Poland.
This can be clearly inferred from the locations of the customers to which the invoices submitted were issued. Therefore, the evidence relates to the relevant territory.
Time of use
The evidence must show genuine use of the European Union trade mark within the relevant period. Although some of the evidence is not dated, all of the evidence that is dated, in particular the invoices, is dated within the relevant period. Therefore, the evidence of use filed by the EUTM proprietor contains sufficient indications concerning the time of use.
Extent of use
As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use and its commercial volume, duration and frequency.
Use of the mark need not be quantitatively significant for it to be deemed genuine. In the present case, this is particularly relevant taking into account the nature of the goods (specialised equipment) and the specific market.
Although the evidence submitted does not contain any sales figures, in its entirety it shows use of the EUTM in several Member States (namely Italy, Spain, the Netherlands, Portugal, Sweden, Belgium, Germany, Austria, the United Kingdom and Poland). Furthermore, as regards the duration and frequency of use, there are invoices for each of the years of the relevant period, so they demonstrate regular use over a long period of time.
Taking all these factors into account, the Opposition Division concludes that the evidence of use clearly proves the extent of use of the earlier mark to a sufficient degree.
Nature of use
In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.
Decision on Opposition No B 2 467 333 page: 7 of 15
Nature of use: use as a trade mark
Nature of use requires, inter alia, that the contested European Union trade mark is used as a trade mark, that is, for identifying origin, thus making it possible for the relevant public to distinguish between goods and services of different providers.
In the present case, the evidence of use, and in particular the images provided, when read in conjunction with the invoices and the product reference data sheets, in the view of the Opposition Division, and contrary to what the applicant states, clearly show the use of the sign as a trade mark, because, taken as a whole, the evidence submitted shows that the earlier sign was used in such a way as to establish a clear link with the goods. In view of the above, the Opposition Division considers that the evidence shows use of the sign as a trade mark.
Nature of use: use of the mark as registered
‘Nature of use’ in the context of Rule 22(3) EUTMIR further requires evidence of use of the mark as registered, or of a variation thereof which, pursuant to Article 15(1) (a) EUTMR, does not alter the distinctive character of the contested European Union trade mark.
In the present case, the evidence shows use of the trade mark on the abovementioned goods in a slightly stylised form (in a bold black font with the letter
M having a longer descender on the left-hand side,
, namely on the invoices and in the images of some the goods), while in some documents (in particular in the images of some of the goods) it also appears in a white font, on a
green or blue background,
, or in red or light blue. The Opposition Division considers that, in this case, these additional elements are decorative and do not alter the distinctive character of the EUTM as registered.
Consequently, the evidence shows use of the sign as registered within the meaning of Article 15 EUTMR.
Nature of use: use of the mark in relation to the registered goods and services
According to case-law, when applying the abovementioned provision the following should be considered:
...if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and
Decision on Opposition No B 2 467 333 page: 8 of 15
narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.
Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories.
(14/07/2005, T-126/03, Aladin, EU:T:2005:288).
In the present case, the evidence shows genuine use of the trade mark for at least the following items of medical apparatus and instruments for measuring and monitoring clinical parameters:
- UltraCheck reusable BP cuffs - Neoguard limboards - thermal reflectors - Neoguard limboard parts - Fore-Sight sensors - Fore-Sight monitors - infant and Neo electrodes - MaxIQs.
These goods belong to the following category in the specification: apparatus for measuring and/or monitoring clinical parameters, like blood pressure, hart rate, respiration and oxygen saturation. As the opponent is not required to prove all the conceivable variations of the category of goods for which the earlier mark is registered and as the goods for which use has been proved do not constitute a coherent subcategory within the broad category in the specification to which they belong, the Opposition Division considers that the evidence shows genuine use of the trade mark for apparatus for measuring and/or monitoring clinical parameters, like blood pressure, hart rate, respiration and oxygen saturation.
Overall assessment
Decision on Opposition No B 2 467 333 page: 9 of 15
The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).
When the documents filed are read in conjunction with each other and taken into account in their entirety, they provide the Opposition Division with sufficient information concerning the extent, the nature, the territorial scope and the duration of use for at least the following goods:
Class 10: Apparatus for measuring and/or monitoring clinical parameters, like
blood pressure, hart rate, respiration and oxygen saturation.
The Opposition Division considers it appropriate to proceed with the present proceedings on the basis of the above goods. If necessary, the Opposition Division will later examine genuine use for the remaining goods. Therefore, the Opposition Division will at this point consider only the abovementioned goods in its further examination of the opposition.
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.
a) The goods
The goods on which the opposition is based, and for which genuine use has been proven, are the following:
Class 10: Apparatus for measuring and/or monitoring clinical parameters, like
blood pressure, hart rate, respiration and oxygen saturation.
The contested goods are the following:
Class 10: Test equipment for medical use; surgical instruments and apparatus; medical apparatus and instruments; diagnostic imaging apparatus for medical use.
Decision on Opposition No B 2 467 333 page: 10 of 15
As a preliminary remark, an interpretation of the wording of the opponent’s list of goods is required to determine the scope of protection of these goods.
The term ‘like’, used by the opponent in its list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.
Contested goods in Class 10
The contested test equipment for medical use and diagnostic imaging apparatus for medical use overlap with the opponent’s apparatus for measuring and/or monitoring clinical parameters, like blood pressure, hart rate, respiration and oxygen saturation. Therefore, they are identical.
The contested medical apparatus and instruments include, as a broader category, the opponent’s apparatus for measuring and/or monitoring clinical parameters, like blood pressure, hart rate, respiration and oxygen saturation. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
The contested surgical instruments and apparatus are similar to a high degree to the opponent’s apparatus for measuring and/or monitoring clinical parameters, like blood pressure, hart rate, respiration and oxygen saturation, as they are used in the context of medical – either human or animal – health care and have the same purpose. They can coincide in producers, end users and distribution channels, and they may be used in combination.
b) Relevant public — degree of attention
The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.
In the present case, the goods found to be identical or highly similar are specialised goods, mainly directed at specialised customers with specific professional knowledge or expertise in relation to medical equipment, although it cannot be excluded that some of the contested goods (falling within the broad category of ‘medical apparatus and instruments’, e.g. fever thermometers or aerosol dispensers for medical use) could also be directed at the general public.
Considering that the relevant goods in any event relate to, or affect, people’s state of health, the degree of attention will be higher than average.
Decision on Opposition No B 2 467 333 page: 11 of 15
c) The signs
CASMED
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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.
The earlier mark is a word mark composed of a single six-letter word, ‘CASMED’.
The contested sign is a figurative mark, composed of a verbal element (comprising six letters), ‘CUSMED’, in a slightly stylised grey typeface, and preceded by a figurative device in shades of light and dark grey.
Although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57). Bearing in mind that the relevant goods are medical or medical- related products, it is reasonable to assume that the relevant public will perceive the letters ‘MED’ as a separate element referring to ‘medical’ and thus as being of limited distinctiveness for the relevant goods.
In both the earlier mark and the contested sign, the first elements, ‘CAS’ and ‘CUS’, respectively, do not have any meaning from the perspective of the relevant public. As a consequence, they have a normal degree of distinctiveness. Contrary to the applicant’s argument, in the view of the Opposition Division the device in the contested mark will not be perceived as a double letter ‘O’ (‘oo’) but will be seen as a figurative device that resembles an infinity symbol which will, however, be attributed less trade mark significance than the verbal element of the mark, because, 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.
Decision on Opposition No B 2 467 333 page: 12 of 15
In this regard, in its observations, the applicant argues that the suffix ‘MED’ is purely descriptive and, in support of its argument, refers to the Office trade mark database, which includes 235 pages of trade marks including ‘MED’ in Class 10. However, the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. In any event, the applicant submitted no evidence whatsoever to support this claim, so it must be set aside.
Visually, the signs coincide in their three last letters, ‘MED’, as well as in their first and third letters, ‘C’ and ‘S’. However, they differ in their second letter (‘A’ in the earlier mark and ‘U’ in the contested sign), as well as in the figurative elements of the contested mark.
However, as explained above, 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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).
The verbal parts of the conflicting marks are highly similar, differing only in their second letters, the vowels ‘A’ and ‘U’, respectively. Therefore, the signs are visually similar at least to an average degree.
Aurally, the pronunciation of the marks coincides in the sound of the letters /C*SMED/, present identically in both signs, and to that extent the marks are aurally similar. The pronunciation differs only in the sound of the vowel ‘A’ of the earlier mark versus the sound of the vowel ‘U’ in the contested sign.
In addition, the signs are of an identical length and have the same number of syllables.
Therefore, the signs are aurally highly similar.
Conceptually, the signs as a whole do not have any meaning for the public in the relevant territory; however, the element ‘MED’, included in both signs, will be associated with ‘medical’. Since the coincidence is in an element of limited distinctiveness, the signs are conceptually similar, if at all, only to a low degree.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
d) Distinctiveness of the earlier mark
The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.
Decision on Opposition No B 2 467 333 page: 13 of 15
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 for which genuine use has been proven from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of an element in the mark with limited distinctiveness as stated above in section c) of this decision.
e) Global assessment, other arguments and conclusion
The likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
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).
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.
The goods are identical or highly similar and the signs are visually similar and aurally highly similar to the extent that they both include the identical string of letters ‘C*SMED’. The signs contain five letters that are the same (out of six letters in total in both marks) in the same order, and the only differences between the signs lie in the different vowels in the second position and in the figurative elements of the contested sign.
Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).
The earlier mark, ‘CASMED’, as a whole, enjoys an average degree of distinctiveness. Contrary to the applicant’s arguments, the scope of protection of the earlier mark is not limited to the first three letters, ‘CAS’. The comparison of the signs is carried out based on the overall impressions they create, and, in the present case, the Opposition Division is of the opinion that the differences in the second letters and in the figurative elements of the contested sign are not sufficient to safely dispel a likelihood of confusion on the part of the relevant public.
Decision on Opposition No B 2 467 333 page: 14 of 15
As regards the applicant’s argument that the actual use of the marks at issue emphasises their differences, it should be noted that the signs have to be compared in the form in which they are registered and the assessment must be based on the signs as registered (09/04/2014, T-623/11, Milanówek cream fudge, EU:T:2014:199, § 38).
Furthermore, the applicant also refers to previous General Court decisions to support its arguments. However, the previous cases referred to by the applicant are not relevant to the present proceedings and differ in their circumstances. In particular, the case of 25/06/2008, T-224/06 (L’Altra Moda, EU:T:2008:221), relates to two figurative marks that were found to be visually, aurally and conceptually dissimilar, with a totally different layout, lack of visual similarity and only limited aural and conceptual similarities. The case of 17/02/2011, T-10/09 (F1-Live, EU:T:2011:45), relates to two figurative marks, with a totally different layout, lack of visual similarity and only limited aural and conceptual similarities, while the case of 19/05/2011, T-81/10 (Air Force, EU:T:2011:229) relates to two marks that were found to be visually and aurally dissimilar. It must be emphasised that each case must be examined on its own individual merits. Indeed, the outcome of any particular case depends on specific criteria applicable to the facts of that particular case.
Given all the foregoing, and despite the higher degree of attention of the relevant public, the Opposition Division is of the opinion that a likelihood of confusion cannot be ruled out. Indeed, the degree of attention of the relevant public alone cannot be relied upon to prevent confusion in the present case. Taking into account the identity or high degree of similarity between the goods and the similarity between the signs, the relevant public could believe that the goods came from the same undertaking or economically-linked undertakings. The differences between the marks at issue are not sufficient to overcome the similarities between the signs or to prevent a likelihood of confusion.
Bearing in mind all the above, the Opposition Division considers that there is a likelihood of confusion at least 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.
Since the opposition is successful on the basis of the goods for which the use has been proven, an examination of whether or not use has been proven for the remaining goods on which the opposition is based would be redundant.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 5 342 308. It follows that the contested trade mark must be rejected for all the contested goods.
Decision on Opposition No B 2 467 333 page: 15 of 15
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
Christian RUUD
Edith VAN DEN EEDE
Denitza STOYANOVA- VALCHANOVA
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.