DentixPro | Decision 2671231
Date Published: Oct 1, 2017
OPPOSITION No B 2 671 231
Dentoestetic Centro de Salud y Estetica Dental, S.L., C/Ribera del Loira, 56-58. 3ª planta, 28042 Madrid, Spain (opponent), represented by Abance Patentes y Marcas, S.L., Paseo de Eduardo Dato, nº 16, 28010 Madrid, Spain (professional representative)
a g a i n s t
Weber & Weber Sp. z o.o., Puncow ul Cieszynska 229, Cieszyn, Poland (applicant), represented by Kancelaria Rzecznika Patentowego Andrzej Rygiel, ul. Bohaterów Warszawy 26. Lok. F, Bielsko-Biała, Poland (professional representative).
On 12/04/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 671 231 is partially upheld, namely for the following contested goods:
Class 10: Apparatus for infusion, In particular instruments for infusion.
2. European Union trade mark application No 14 737 291 is rejected for all the above goods. It may proceed for the remaining goods.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 14 737 291. The opposition is based on, inter alia, Spanish trade mark registration No 3 562 791 and European Union trade mark registration No 11 591 741. 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.
The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Spanish trade mark registration No 3 562 791 and European Union trade mark registration No 11 591 741.
- The goods and services
The services on which the opposition is based are the following:
Spanish trade mark registration No 3 562 791
Class 44: Medical services provided by dental clinics; dentistry; cosmetic surgery; dentistry and health consultancy and assessment services; rent of medical equipment.
EU trade mark registration No 11 591 741
Class 35: Advertising and business management and franchising relating to dental clinics; Office functions.
Class 40: Services of a dental technician.
Class 44: Medical services provided by dental clinics; Dentistry; Cosmetic surgery.
The contested goods are the following:
Class 5: Dressings [medical].
Class 10: Disposable medical articles for use by doctors, in particular of plastic and/or fabric, namely surgical sheets and sterile sheets, Apparatus for infusion, In particular instruments for infusion; Gloves for medical purposes; Synthetic plasters; Sterile paper towels for medical purposes; Synthetic plasters; Sterile sheets of paper and non-sterile sheets of paper for use by doctors and patients.
Class 16: Paper, in particular hygienic paper.
An interpretation of the wording of the list of goods is required to determine the scope of protection.
The term ‘in particular’, used in the applicant’s 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 the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
However, the term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.
The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.
Contested goods in Class 5
The contested dressings (medical) are placed on wounds to protect them and to avoid infection so that healing is ensured. To that extent, they are related to most areas of medical services, including those of the opponent. However, it is unlikely that an undertaking providing dentistry or surgery also manufactures these goods. Usually, specialist companies produce dressings, which are then distributed through channels different from those of the opponent’s services. In particular, the contested goods are available at pharmacies and even at larger department stores, since they are also purchased and used by private individuals. These goods and services under comparison have different natures and methods of use. They are neither in competition nor complementary. For these reasons, they are dissimilar. The contested goods are also dissimilar to the opponent’s services in Class 35, since the latter include advertising and office services, which are sufficiently different from the contested goods in Class 5.
Contested goods in Class 10
The contested disposable medical articles for use by doctors, in particular of plastic and/or fabric, namely surgical sheets and sterile sheets; gloves for medical purposes; synthetic plasters; sterile paper towels for medical purposes; synthetic plasters; sterile sheets of paper and non-sterile sheets of paper for use by doctors and patients are goods that are usually used while providing medical or dentistry services. However, the conclusions reached above in relation to dressings apply here too, as these goods are manufactured by specialist undertakings and sold through distribution channels different from those of the opponent’s services. Therefore, customers would not think that the contested goods in question originated from the provider of the opponent’s services. There is, therefore, dissimilarity between the contested goods and the opponent’s services.
On the other hand, the contested apparatus for infusion, in particular instruments for infusion are goods used for medical purposes and also during surgery or medical interventions, which means that they are used within the same context as the opponent’s medical services provided by dental clinics; dentistry; cosmetic surgery (covered by both earlier rights). The goods and services have the same general purpose, they target the same public and are complementary. In summary, the goods and services at issue are similar to a low degree.
Contested goods in Class 16
The contested paper, in particular hygienic paper is a broad category covering paper goods that are used in many areas for different purposes. Although this wide scope of use of paper products logically includes medical services and office functions, for which the earlier marks are registered, this link is not sufficiently clear to find any similarity between them, since their natures, origins and distribution channels are usually different. Overall, these goods are dissimilar to all of the opponent’s services.
For reasons of procedural economy, since some of the contested goods were found to be similar to services for which both earlier marks are registered, whereas the dissimilar goods have already been compared with services covered by both earlier marks, the comparison will proceed on the basis of only Spanish trade mark registration No 3 562 791.
- 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 opponent’s services target the general and a professional public and the contested goods target a professional public exclusively. Therefore, the relevant public for assessing likelihood of confusion will be the professional public only (14/07/2005, T-126/03, Aladin, EU:T:2005:288, § 81).
The degree of attention is considered to be higher than average, since the selection and use of the relevant goods and services can be of great importance during or after a medical intervention.
- The signs
Earlier trade mark | Contested sign |
The relevant territory is Spain.
The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).
The earlier mark is composed of a rather fanciful depiction of the word ‘DENTIX’ against a purple background. The inside of its initial letter ‘D’ is filled with a darker colour. The verbal element is an invented word. However, it will be perceived as alluding to the idea of ‘dentist’, given its similarity to the relevant word in Spanish, ‘dentista’. Therefore, the earlier mark’s verbal element is weak in the context of the relevant dental services and, insofar as plastic surgery concerns improving the appearance of teeth, also cosmetic surgery.
The contested sign also includes the word ‘Dentix’, in orange, and in combination with the word ‘Pro’ in white, placed in an orange square. Neither of these elements is more dominant or eye-catching than the other. The findings in the preceding paragraph in relation to the perception of the word ‘dentix’ apply here too. The additional word ‘Pro’ is non-distinctive, since it will be understood by the public as a laudatory element deriving from the English word ‘professional’, widely used in trade and marketing.
The figurative elements of both signs are purely decorative.
Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.
Visually, the signs coincide in the verbal element ‘Dentix’ and differ in their colours, in the contested sign’s additional verbal element and in their graphical depictions, especially in the earlier mark’s initial letter. As explained above, the coinciding verbal elements are weak. However, the differing verbal element ‘Pro’ is non-distinctive and customers will pay little or no attention to it.
Based on all the above, and also on the fact that the earlier mark’s sole verbal element is entirely incorporated in the beginning of the contested sign, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the syllables [Den-tix], present identically in both signs, albeit having a lower than average degree of distinctiveness. The pronunciation differs in the syllable [Pro] of the contested mark, which has no counterpart in the earlier sign but is non-distinctive. As the earlier mark is entirely reproduced at the beginning of the contested sign, and as the differing element could even be ignored for its lack of distinctiveness, the signs must be considered aurally highly similar.
Conceptually, reference is made to the previous assertions concerning the semantic content alluded to by the marks. Given the fact that the signs will be associated with the same meaning, and that their differing element ‘Pro’ is non-distinctive, the signs are conceptually highly similar.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for the relevant services.
- Global assessment, other arguments and conclusion
Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
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 signs were found to be similar in all aspects of the comparison and some of the contested goods are similar to a low degree to some of the opponent’s services. In particular, the signs convey the same concept, which is related to the goods and services that were found to be similar. This must be viewed in combination with the aural and visual similarities. The differences between the signs are confined to non-distinctive and decorative elements and aspects.
Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49), since it is rather common to add the word ‘pro’ to a product name to emphasise that it is another, professional, version of the original one.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion and therefore the opposition is partially well founded on the basis of the opponent’s Spanish trade mark registration No 3 562 791.
It follows from the above that the contested trade mark must be rejected for the goods found to be similar, even if only to a low degree, to the services of the earlier trade mark.
The rest of the contested goods are dissimilar to the opponent’s services. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.
It is unnecessary to proceed to a further assessment based on earlier EUTM No 11 591 741, since the comparison of goods and services does not depend on linguistic factors and the outcome of the opposition would be the same in relation to the remaining part of the public in the European Union outside Spain.
The opponent has also based its opposition on earlier Spanish trade mark No 3 101 097 . Since this mark covers the same list of services as the earlier Spanish mark examined above, the same conclusions would have been drawn and the same outcome would have been reached if this mark had been compared with the contested sign.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.
Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
Marianna KONDÁS | Ferenc GAZDA | Solveiga BIEZA |
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.