GEORGE CLINICAL | Decision 2739376
Date Published: Oct 1, 2017
OPPOSITION No B 2 739 376
Sozialwerk St. Georg E.V., Emscherstraße 62, 45891 Gelsenkirchen, Germany (opponent), represented by Siebeke - Lange – Wilbert, Cecilienallee 42, 40474 Düsseldorf, Germany (professional representative)
a g a i n s t
George Clinical Pty Ltd, Level 5, 1 King Street, Newtown NSW 2042, Australia, (holder), represented by Norton Rose Fulbright Llp, Taunustor 1, (TaunusTurm), D-60310 Frankfurt am Main, Germany, (professional representative).
On 28/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 739 376 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 and services of international registration designating the European Union No 1 270 397 . The opposition is based on international trade mark registration No 1 063 881’ Sozialwerk St. Georg’ designating the European Union. 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 goods and services
The goods and services on which the opposition is based are the following:
Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.
Class 41: Education; providing of training; entertainment; sporting and cultural activities.
Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; advice on assistive technology for people with a disability.
Class 44: Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services; nursing services; health counseling.
The contested goods and services are the following:
Class 9: Computer software including downloadable software, computer programs and recording discs related to the conduct, management, reporting, development, education and analysis of clinical research and diagnostics, consumer health and medicine; downloadable software applications (apps) in the fields of clinical research, consumer health and medicine.
Class 16: Printed matter for the conduct, management, reporting, development, education and analysis of clinical research, consumer healthcare and medicine including publications, reports, instructional, educational, teaching and training material.
Class 35: Provision of administration services in the field of clinical research, consumer health and medicine; placement of personnel usually engaged in or associated with the clinical research industry, consumer health and medicine, including all associated personnel management consulting; information, consultancy and advisory services relating to the aforementioned services.
Class 41: Provision of training and education related to the conduct, management, reporting, development and analysis of clinical research, consumer health and medicine; information, consultancy and advisory services relating to the aforementioned services.
Class 42: Scientific and technological research, design and analysis services related to the conduct, management, reporting, development, education and analysis of clinical research, consumer health and medicine; provision of management, coordination and consultancy services in the field of clinical research; design and development of computer software and hardware for the conduct, management, reporting, development, education and analysis of clinical research, consumer health and medicine; information, consultancy and advisory services relating to the aforementioned services.
Class 44: Provision of management, coordination and consultancy services in the field of consumer health and medicine information; medical analysis services; medical treatment services, medical referral services; information, consultancy and advisory services relating to the aforementioned services.
Some of the contested goods and services are identical to goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark.
- 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 and services assumed to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise.
The degree of attention ranges from average to higher than average depending on the technical and specific nature of the goods and services.
- The signs
Sozialwerk St. Georg | |
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 earlier mark is a word mark. It contains a word, Sozialwerk, referring in German, to a generic form of an institution doing social work or providing social services. Therefore, this conjoined word (Sozial+werk)is considered to have less distinctive character, by the German speaking public, when seen together with the goods and services offered. For the remaining public who do not perceive any meaning, this word is distinctive.
The following words ‘St. Georg’ refer to ‘Sankt Georg’ as in Saint George, a saint. It can also refer to a surname St. George or meaningless letters St., and a name GEORG. The word GEORGE is a male first name, perceived as such throughout the relevant territory, either as present in their language or a foreign name. No matter whether they are understood or not the elements St. and Georg have no meaning in regard to the relevant goods and services and are distinctive.
The contested mark is a figurative mark. It contains a device element depicting a downward pointing semi open triangle and two wavy lines above it. The mark also contains two words GEORGE CLINICAL. The word GEORGE is a male first name, perceived as such throughout the relevant territory, either as present in their language or a foreign name. As the elements GEORGE and the figurative element are not descriptive, allusive or otherwise weak for the relevant goods and services, they are distinctive.
The mark also contains a word CLINICAL. It is an English word. It means involving or relating to the direct medical treatment or testing of patients (19/09/2017 Collins English dictionary, https://www.collinsdictionary.com/dictionary/english/clinical). Considering that the goods and services in the contested mark are related to healthcare, it is considered that this word is weak for the English- speaking public.
Contrary to the opponent’s arguments, this word is not considered to be a basic English word which would be understood throughout the relevant territory. As the opponent demonstrated, there are words remotely resembling it present nearly in all European languages, yet, due to the specific meaning of the word in the present case, it can not be assumed (and there are no proper arguments for assuming it) that the general and professional public would perceive its meaning, as they will merely consider it a meaningless foreign word. Even when perceived as a reference to a corresponding word in the respective language, the element ‘clinical’ would not directly represents the exact word in this language, but it would be rather an allusion to it. Therefore, the element ‘CLINICAL’, although it could allude to the purpose of the relevant goods and services, is at worst allusive, if not distinctive, for the relevant goods and services for the non-English speaking part of the relevant public.
The contested mark has no element that can be considered more dominant element than others.
Moreover, with reference to the verbal elements, differences are immediately recognisable at the beginnings of the signs. In that regard, the Opposition Division recalls that the consumer generally pays greater attention to the beginning of a mark than to the end (25/03/2009, T 109/07, Spa Therapy, ECLI:EU:T:2009:81, § 90).
Visually, the signs coincide in the letter strings GEORG. However, they differ in that there is an additional letter E added to that string in the contested mark. Furthermore, these strings of letters are placed in different position in the marks, which also contain additional word and device elements placed around the coinciding letters. Account is taken of the conclusion above regarding the distinctiveness of the signs and the perception of the relevant public regarding the beginning of the signs.
Therefore, the signs are visually similar to a low degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters GEORG, present in both signs. The pronunciation differs in all the remaining letters Sozialwerk St. / CLINICAL, that will be pronounced and have no counterpart in the other mark as well as in the letter ‘E’ of the element ‘GEORGE’ of the contested sign (when pronounced).
Moreover, the sequence of syllables, rhythm and intonation of the signs is different. The mere coincidence in GEORG between the signs is not sufficient to outweigh the differences in the beginning of the signs thus the overall impression created by the signs is that of phonetic similarity of a low degree at best.
Conceptually, the marks are conceptually similar to a low degree for the public that would perceive the meaning of all elements in one mark and only one element in the other mark. This would be the case of German speaking public who would perceive the whole earlier mark and only the name in the contested mark, or the English speaking public who will perceive the contested mark as containing two meaningful words and the earlier mark as containing only a meaningful word combination St. Georg.
Reference is also made to the previous assertions concerning the semantic content conveyed by the marks. Both signs coincide conceptually only as far as they refer to a name with a common root (GEORG/GEORGE). To that extent, the signs are conceptually similar to an average 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. In the present case, the earlier trade mark as a whole has no meaning for any of the goods and services in question 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 a less distinctive element (for part of the public) in the mark as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
The goods and services have been assumed identical. The comparison of the marks has been done above.
The signs are similar to the extent that they share the sequence of letters GEORG, placed in different positions in the signs. However, the abovementioned coincidences alone are not sufficient for finding a likelihood of confusion. The various other elements in the marks and their meanings have been described previously. The considerable differences between the signs caused by the additional and/ different verbal elements are particularly relevant when assessing the likelihood of confusion between them.
The beginnings of the signs are different. 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. Even if the German- speaking public perceives a slightly descriptive meaning in the first element of the contested sign as described, the word remains with sufficient distinctiveness pointing to a social institution, a concept of which is perceived clearly and which differs clearly of that of the contested mark considering also the endings of the signs are different, in addition to the device element, which will not go unnoticed. Similar conclusion can be made in respect of the English speaking public who will perceive the contested mark as containing two meaningful words and the earlier mark as containing only a meaningful word combination St. Georg.
These differences create visual, aural and conceptual distance between the signs at issue. The conceptual similarity, albeit average for a part of the public, is not sufficient for a finding of likelihood of confusion with regard to even identical goods and services, since the signs display only low visual or aural similarities, and also taking into account that the degree of attention of the relevant public is considered to vary from average to higher, the signs clearly differ in their beginnings, and that the earlier sign has an average degree of distinctiveness. The Opposition Division considers that, despite the assumed identity of the goods and services at issue, even persons with only an average level of attention will not confuse the marks.
Considering all the above, even assuming that the goods and services are identical, 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 holder 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 holder are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Birgit FILTENBORG | Erkki MÜNTER | Irina SOTIROVA |
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.