Dentsply Sirona | Decision 2714692
Date Published: Oct 1, 2017
OPPOSITION No B 2 714 692
Dentsply Sirona Inc., Susquehanna Commerce Center, 221 West Philadelphia Street, York, Pennsylvania 17401-2991, United States of America (opponent), represented by Bristows LLP, 100 Victoria Embankment, London EC4Y 0DH, United Kingdom (professional representative)
a g a i n s t
Dentsply Sirona Limited, Unit 04,7/F, Bright Way Tower No.33 Mong Kok RD, KL, Hong Kong Special Administrative Region of the People’s Republic of China (applicant), represented by Al & Partners S.R.L., Via C. Colombo ang. Via Appiani (Corte del Cotone), 20831 Seregno (MB), Italy (professional representative).
On 07/06/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 714 692 is upheld for all the contested goods.
2. European Union trade mark application No 15 231 764 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 15 231 764. The opposition is based on, inter alia, European Union trade mark registrations No 15 169 642 and No 15 169 659. The opponent invoked Article 8(1)(a) and (b), 8(4), 8(5) EUTMR.
REPUTATION – ARTICLE 8(5) EUTMR
For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier European Union trade mark registrations No 15 169 642 and No 15 169 659, for which the opponent claimed repute in the EU.
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.
- The signs
DENTSPLY SIRONA
| |
Earlier trade mark | Contested sign |
The relevant territory is the European Union.
Earlier mark No 15 169 642 is a word mark comprising the two-word phrase ‘DENTSPLY SIRONA’. Earlier mark No 15 169 659 is a figurative mark that depicts a dark-grey round shape crossed by a curved white line.
The contested sign is figurative and features the same device as earlier mark No 15 169 659 and the same words, ‘DENTSPLY SIRONA’, as earlier mark No 15 169 642, written on two lines in standard lower case typeface, except for their first letters, ‘D’ and ‘S’, which are upper case.
Visually, the contested sign is a combination of the figurative earlier mark No 15 169 659 and the two words of earlier mark No 15 169 642.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory the pronunciation of the signs is identical.
Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.
Taking into account the abovementioned visual and aural coincidences, the contested trade mark is highly similar to the word and figurative elements of the earlier trade marks.
- Reputation of the earlier trade mark
According to the opponent, the earlier trade marks have a reputation in the European Union.
Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.
In the present case the contested trade mark was filed on 18/03/2016. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, which are, inter alia, the following:
Class 3: Preparations and substances for cleaning dental apparatus and instruments; dental cleaning and polishing preparations including for teeth; dental care preparations including for teeth (non-medicated); preparations and substances for use in dental hygiene (non-medicated); preparations and substances for the care of teeth (non-medicated); dental bleaching gel; non-medicated dental rinse; tooth paste; tooth polish; teeth whitening preparations.
Class 5: Pharmaceutical preparations; preparations, compounds, substances and materials for dental use; dental restorative material, dental filling material, dental impression material, dental ceramic material, dental cements, dental putty material, dental varnishes, dental gel, glass ionomers for dental purposes, alloys for dental purposes, bonding material for dental purposes, dental adhesives.
Class 10: Dental instruments, devices, equipment, and apparatus; orthodontic instruments, devices, equipment, and apparatus; instruments, devices, equipment and apparatus for use in dentistry; instruments, devices, equipment and apparatus for use in endodontic procedures; artificial teeth; dental intra-oral cameras; cameras for capturing dental and oral images; parts and fittings for the aforesaid goods.
Class 44: Dentistry; dental services; endodontic services.
In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.
On 16/12/2016, the opponent submitted the following evidence:
A witness statement dated 13/12/2016, made by Justin H. McCarthy II as Deputy General Counsel/Assistant Secretary of the opponent, Dentsply Sirona Inc. It states that the opponent is the world’s largest manufacturer of professional dental products and technologies. The opponent has operations in more than 40 countries worldwide and distributes its dental products in over 120 countries. It further states that around 600 000 dental professionals use one of the opponent’s products every day. The current company is the result of a merger in 2015 between Dentsply International Inc. (originally founded in 1899 in the USA) and Sirona Systems Inc. (originally founded in 1877 in Germany). The opponent has operations in Europe, particularly in Germany, France, the United Kingdom, Italy, Sweden, Austria, Benelux and Spain. The opponent is listed on the NASDAQ stock exchange and has acquired other companies in the dentistry sector. Some of the documents submitted to confirm the above are the following:
- Exhibit 1: a list of Dentsply International Inc.’s 77 European subsidiaries and offices, dated 21/11/2014;
- Exhibit 5: 11 articles from news websites reporting the merger of Dentsply International Inc. and Sirona Systems Inc. on 15/09/2015;
- Exhibit 6: a European Commission press release of 25/02/2016 on the merger approval;
- Exhibits 8 to 13: the opponent’s logo and documents attesting to the process of its creation, starting in January 2016 (memos setting out potential logo directions, the designer’s first proposals, shape and colour developments, and the final form of the logo, dated 19/02/2016);
- Exhibit 17: six press articles, dated from August 2009 to May 2014, in specialised online publications from the UK;
- Exhibit 18: samples of product packages, information on product use and technical specifications;
- Exhibit 22: annual reports, dated 2012 to 2015, for Dentsply International Inc., including the turnover and sales figures for the relevant goods and services in the EU market;
- Exhibits 23 to 32: screenshots and printouts of websites testifying to four awards received by the opponent as one of the best employers in Germany in 2016, in the USA in 2015 and in China in 2014 and 2015, as well as several awards for product design in 2009, 2014, 2015 and 2016;
- Exhibit 33: a printout from the Dentistry.co.uk website reporting on the 2016 Irish Dentistry Awards, which were sponsored by the opponent.
On the basis of the above the Opposition Division concludes that the earlier trade marks have a reputation in the European Union for all the goods and services for which the opponent has claimed reputation.
In the articles reporting on the opponent’s merger on 15/09/2015 (Exhibit 5), there are extracts such as: ‘creating a giant in dental supplies and equipment’; ‘creating the world’s largest dental equipment maker’; ‘the world’s largest maker of dental products and technologies’; and ‘world’s largest dental manufacturer’.
In Exhibit 6, the European Commission defines the merging companies as follows: ‘Dentsply designs, develops, manufactures and markets a broad range of consumable dental products for the professional dental market and other consumable medical devices. Sirona manufactures dental equipment and is focused on developing, manufacturing and marketing innovative solutions for dentists’.
The press articles in Exhibit 17 and Exhibits 23 to 33 provide sufficient indications of the degree of recognition of the earlier trade marks as a result of the prestige associated with the merging companies and their long-standing presence in the market. The opponent’s trade marks are seen as clear leading trade marks in the dentistry field.
It is clear from the evidence that the earlier trade marks have been subject to intensive use and are generally known in the relevant market, where they enjoy a consolidated position among the leading brands, as has been attested by diverse independent sources. The sales figures, marketing expenditure and market share shown by the evidence and the various references in the press to the opponent’s success all unequivocally show that the marks enjoy a high degree of recognition among the relevant public.
- The ‘link’ between the signs
As seen above, the earlier marks are reputed and the signs are highly similar, almost identical. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.
Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 42):
∙ the degree of similarity between the signs;
∙ the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;
∙ the strength of the earlier mark’s reputation;
∙ the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;
∙ the existence of likelihood of confusion on the part of the public.
This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.
The contested goods are:
Class 8: abrading instruments [hand instruments]; hand tools, hand-operated; garden tools, hand-operated; harpoons; beard clippers; razor cases; razor blades; razors, electric or non-electric; manicure sets, electric; cutting tools [hand tools]; perforating tools [hand tools]; tweezers; blades [hand tools].
Class 21: containers for household or kitchen use; glass flasks [containers]; ceramics for household purposes; china ornaments; drinking vessels; electric combs; toothbrushes, electric; floss for dental purposes; cosmetic utensils; insulating flasks.
Class 24: cotton fabrics; adhesive fabric for application by heat; wall hangings of textile; felt; sanitary flannel; towels of textile; face towels of textile; cloths for removing make-up; bed blankets; bed covers; marabouts [cloth]; banners.
The contested goods in Class 8 are hand-operated implements, cutting tools and razors that are used in different professions as tools with the same general purpose as the opponent’s surgical instruments in Class 10. These goods are made of the same material and can have the same manufacturers.
The contested goods in Class 21 are household utensils, containers and cleaning brushes which are indispensable for the use of the opponent’s cleaning and polishing preparations in Class 3, pharmaceutical substances for dental use in Class 5 and the equipment and apparatus for use in dentistry in Class 10. They can have the same producers, end users and distribution channels.
Finally, the contested goods in Class 24 are textiles and bed covers that can be used in dentistry establishments such as those for the provision of the opponent’s services in Class 44 and in conjunction with the opponent’s goods in Classes 3, 5 and 10.
Therefore, all the contested goods may have some relevant connection with the opponent’s reputed goods and services.
The Court of Justice has noted that certain marks may have acquired such a reputation that it goes beyond the relevant public as regards the goods or services for which those marks were registered. In such a case, it is possible that the relevant section of the public as regards the goods or services for which the later mark is registered will make a connection between the conflicting marks, even though that public is wholly distinct from the relevant section of the public as regards goods or services for which the earlier mark was registered (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 51 and 52.)
In the present case, the relevant sections of the public for each of the goods and services covered by the trade marks in dispute overlap to some extent, as the contested goods may also be offered to professionals of other sectors. Those professionals or the general public will notice the near identity between the signs and could establish a link between the goods and services.
Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that when encountering the contested sign the relevant consumers will be likely to associate it with the earlier marks, that is to say, establish a mental ‘link’ between the signs.
However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T-301/09, Citigate, EU:T:2012:473, § 96).
- Risk of injury
Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:
∙ it takes unfair advantage of the distinctive character or the repute of the earlier mark;
∙ it is detrimental to the repute of the earlier mark;
∙ it is detrimental to the distinctive character of the earlier mark.
Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 53).
It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.
The opponent claims that the applicant can have no genuine reason to register the combination of the words ‘DENTSPLY’ and ‘SIRONA’ and the opponent’s logo other than to attempt, in bad faith, to trade off the opponent’s company reputation and rights.
In other words, the opponent claims that use of the contested trade mark would take unfair advantage of the repute of the earlier trade marks and be detrimental to the repute of the earlier trade marks.
Unfair advantage (free-riding)
Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free-riding on the coat-tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 48, and 22/03/2007, T-215/03, Vips, EU:T:2007:93, § 40).
The opponent bases its claim on the following arguments:
- Earlier trade marks ‘DENTSPLY SIRONA’ and were first revealed to the general public on 29/02/2016, when the companies Dentsply International Inc. and Sirona Systems Inc. merged. The new company used a branding agency to design a new logo that combines the letter ‘D’ from ‘DENTSPLY’ and the letter ‘S’ from ‘SIRONA’. This design process is documented in Exhibits 8 to 13.
- There is no doubt that the contested sign is a copy of the earlier marks. Furthermore, it was applied for only 18 days after the announcement of the merger. Therefore, it is clear that it was applied for to take advantage of the reputation of the trade marks ‘DENTSPLY’ and ‘SIRONA’.
- The use of the contested sign would take unfair advantage of the opponent’s reputation by riding on the coat tails of the earlier marks and the brand image built up through significant investment.
- The use of the contested sign would confer a commercial advantage on the applicant, which would benefit from the significant marketing effort expended by the opponent.
On the basis of the above, the Opposition Division concludes that the contested sign is likely to take unfair advantage of the distinctive character or the repute of the earlier trade marks.
Other types of injury
The opponent also argues that use of the contested sign would be detrimental to the repute of the earlier trade marks.
As seen above, the existence of a risk of injury is an essential condition for Article 8(5) EUTMR to apply. The risk of injury may be of three different types. For an opposition to be well founded in this respect it is sufficient if only one of these types is found to exist. In the present case, as seen above, the Opposition Division has already concluded that the contested trade mark would take unfair advantage of the repute of the earlier trade marks. It follows that there is no need to examine whether other types also apply.
- Conclusion
Considering all the above, the opposition is well founded under Article 8(5) EUTMR. Therefore, the contested trade mark must be rejected for all the contested goods.
Given that the opposition is entirely successful under Article 8(5) EUTMR it is not necessary to examine the remaining grounds and earlier rights on which the opposition was based.
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
Fabian GARCIA QUINTO | Loreto URRACA LUQUE | 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.