FIRST EGG BANK | Decision 2679549 - OVAVIT, S.L v. Medicover Holding (Cyprus) Limited
Date Published: Sep 28, 2017
OPPOSITION No B 2 679 549
Ovavit, S.L, Avda. Severo Ochoa, S/N, 29600 Marbella, Spain (opponent), represented by A2 Estudio Legal, Calle Hermosilla, 59 Bajo izquierda, 28001 Madrid, Spain (professional representative)
a g a i n s t
Medicover Holding (Cyprus) Limited, Arch. Makariou III, 197 Gala Tower, Flat/Office 301, 3030 Limassol, Cyprus (applicant), represented by Patpol Sp. Z.O.O., Nowoursynowska 162 J, 02-776 Warszawa, Poland (professional representative).
On 18/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 679 549 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against all the services of European Union trade mark application No 14 966 428. The opposition is based on Spanish trade mark registration No 3 081 574. 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 services
The services on which the opposition is based are the following:
Class 44: Medical services; veterinary services; treatments of hygiene and beauty for people or animals; services of agriculture, horticulture and forestry.
The contested services are the following:
Class 44: Egg cell banks services; medical services, namely in vitro fertilization.
An interpretation of the wording of the list of services is required to determine the scope of protection of these services.
The term ‘namely’, used in the applicant’s list of services to show the relationship of individual services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed services.
The contested egg cell banks services; medical services, namely in vitro fertilization are included in the broad category of the opponent’s medical services. Therefore, they are identical.
- 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 services found to be identical are directed at the public at large. Taking into account the nature of the services in question, their high medical complexity and price, the degree of attention will be high.
- 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 a figurative sign containing a large, stylised representation of the word ‘OVO’ in light blue, bold, slightly cursive letters. Underneath, the conjoined words ‘eggBank’ are depicted in much smaller, light blue, fairly standard typeface. Using a fanciful combination of the lower and upper case lettering, the word appears in lower case except for the capital letter ‘B’ which stands out in the middle.
The word ‘OVO’ is the dominant (most eye-catching) element of the earlier mark as it overshadows the other element, ‘eggBank’, by virtue of its central position and size. However, given that this word means ‘egg’ in Latin and that, in Spanish, there are words derived therefrom, such as ‘ovulación’ (ovulation), ‘óvulo’ (ovule), ‘ovario’ (ovary), the word ‘OVO’ alludes to the kind of the medical services covered by the earlier mark, in the sense that consumers will associate the semantic content related to ovulation, ovules etc. with assisted reproduction treatments. Additionally, the figurative stylisation of this element which may resemble the ovary underlines the meaning of the word. Consequently, it is considered that this element is weak for the services in question.
The contested figurative sign consists of the words ‘FIRST EGG BANK’, written over three lines in grey upper case standard typeface, and a figurative element in a form of a pink and dark pink dotted sphere placed beside the word elements. The element ‘FIRST’ of the contested sign has no meaning for the relevant public and is distinctive for the services at issue. Given the sizes and the specific arrangement of the elements in the contested sign, there are no elements that could be considered clearly more dominant than others.
Neither the conjoined words ‘eggBank’ of the earlier mark, nor the words ‘EGG BANK’ in the contested sign exist as such in Spanish. However, it can be reasonably assumed that the relevant public, who intend to use the services at issue and will have the necessary background information regarding assisted reproduction, is likely to understand these verbal elements as referring to a repository for female gametes and egg donation in general as part of assisted reproduction treatment. It follows that these elements are weak in the context of the services at issue, rendering the signs similar to a low degree conceptually.
It is important to bear in mind that consumers generally pay greater attention to the beginning of a mark than to the end (07/09/2006, T-133/05 ‘Pam-Pim’s Baby-Prop’, EU:T:2006:247, § 51 and of 28/10/2010, T-131/09, ‘Botumax’ EU:T:2010:458, § 35).
Visually, the signs coincide in the words ‘EGG BANK’, notwithstanding the fact that they are represented as a coalesced verbal element in the earlier mark. However, the signs clearly differ in the dominant element ‘OVO’ of the earlier mark, albeit weak for the services, the distinctive element ‘FIRST’ of the contested sign and its figurative element, and the stylisations of the marks as described above.
The opponent argues that verbal elements usually have a stronger impact than figurative elements in signs, and invokes case-law to support its arguments. Although the Opposition Division accepts that this indeed is the general principle, each case has to be examined on its merits taking into account the overall impressions produced by the signs in light of the case-law quoted above.
Considering that the visual coincidence concerns only the weak elements, the signs are visually similar to a low degree.
Aurally, the pronunciation of the signs coincides in the sound of the words ‛EGG BANK’, since the fact that these words are conjoined in the earlier mark has no audible difference vis-à-vis the two separate words in the contested sign. The pronunciations clearly differ in the sounds of the word ‛OVO’ of the earlier mark, albeit weak for the services, and that of the distinctive word ‘FIRST’ of the contested sign.
The aural coincidence in the words ‘EGG BANK’, given their final position and the weak character, cannot be considered sufficient to offset the difference in the initial words. Therefore, the signs are aurally similar at most 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.
- 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 below average for the services at issue.
- Global assessment, other arguments and conclusion
Although, the services covered by the trade marks in dispute are identical, the earlier mark is only endowed with inherent distinctiveness that is below average. Furthermore, those factors have to be weighed in with the other relevant aspects that influence the assessment of likelihood of confusion, particularly the low degree of the similarity between the signs and the high degree of attention that the relevant public will display when choosing the services at issue.
The opponent invokes the interdependence principle which implies that 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). However, as explained in detail in section c) of this decision, the similarities between the signs concern elements which are weak within the overall impression given by the signs. Therefore, even considering the identity of the services and contrary to the opponent’s arguments, the visual and aural differences between the signs are sufficient, in the present case, to exclude any likelihood of confusion and to enable the public to safely distinguish between them, bearing also in mind the high degree of attention that the relevant public will pay when choosing the services at issue.
In its observations, the opponent implies that the differentiating element of the contested sign, ‘FIRST’, is non-distinctive within the meaning of Article 7(1)(b) EUTMR and asserts that the contested sign is misleading, since the opponent is the undertaking which is ‘the first European egg bank’. In that regard, the Opposition Division notes that for the purposes of assessing the existence of likelihood of confusion within the meaning of Article 8(1)(b) EUTMR, any considerations under Article 7 EUTMR are irrelevant. Therefore, the opponent’s arguments are dismissed.
Considering all of the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
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
Solveiga BIEZA | Arkadiusz GORNY | Judit NÉMETH |
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.