MegaDent | Decision 2713835
Date Published: Sep 28, 2017
OPPOSITION No B 2 713 835
Megadenta Dentalprodukte GmbH, Carl-Eschebach Str, 1A, 01454 Radeberg, Germany (opponent), represented by Boehmert & Boehmert Anwaltspartnerschaft mbB - Patentanwälte Rechtsanwälte, Hollerallee 32, 28209 Bremen, Germany (professional representative)
a g a i n s t
Дритон Сюлеймани, ул. 1-ва 91, местн. Ексиноград, 9000 Варна, Bulgaria (applicant), represented by N. Kolev & Kolev, 102, Kniaz Boris I Str., 1000 Sofia, Bulgaria (professional representative).
On 19/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 713 835 is upheld for all the contested goods.
2. European Union trade mark application No 15 404 288 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 15 404 288. The opposition is based on European Union trade mark registration No 12 415 171. 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
The goods on which the opposition is based are the following:
Class 5: Pharmaceutical preparations for health care.
The contested goods are the following:
Class 3: Cosmetic body scrubs; lip protectors [cosmetic].
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.
The contested cosmetic body scrubs; lip protectors [cosmetic] in Class 3 are cosmetic products and as such are similar to the opponent’s pharmaceutical preparations for health care in Class 5. The purpose of the goods may coincide, that is to improve the appearance and health of the body, those goods with purely cosmetic function belonging in class 3 and the medicated versions belonging in Class 5. Distribution channels and relevant public often coincide and these products may be produced by the same company.
- 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 similar are directed at the public at large and at a professional medical with specific professional knowledge or expertise.
The degree of attention is considered to vary from average, for cosmetics, to high. It is apparent from the case-law that, insofar as pharmaceutical preparations are concerned, the relevant public’s degree of attention is high, whether or not issued on prescription (15/12/2010, T-331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T-288/08, Zydus, EU:T:2012:124, § 36 and cited case-law). Medical professionals have a high degree of attentiveness when prescribing medicines. Non-professionals also have a high degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health.
Given that the non-professional general public with an average degree of attentiveness is more prone to confusion, the examination will proceed on this basis.
- The signs
MegaDent | |
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
The common element ‘DENT’ is not meaningful in certain territories, for example, in those countries where Greek is spoken. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Greek-speaking part of the public where likelihood of confusion is greatest.
The contested sign is the word mark ‘MegaDent’. As regards word marks, it should be recalled that they should not be dissected visually based on the alternation of upper case and lower case letters, since in the case of word marks the use of mixed cases is irrelevant. Notwithstanding this, the Court has held that, 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 word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (judgment of 13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).
‘Mega’ will be understood by the Greek-speaking general public as meaning ‘great’ or ‘big’. This will be perceived as laudatory and weak in relation to the goods at hand. ‘Dent’ has no meaning in Greek is therefore distinctive in relation to the relevant goods.
The earlier mark is a figurative mark made up of the word ‘MEGADENTA’ in a dark grey standard capital font. Underneath the word element is a blue line that ends forming a semicircle shape. Underneath, a second line forms another blue semicircle almost completing the circle and continues towards the right with a shorter line. A round pearl-like sphere is superimposed on the left side of the top semicircle.
The above considerations regarding ‘MEGA’ apply also to this mark. ‘DENTA’ has no meaning for Greek-speakers and so is distinctive for the goods at hand. The figurative device is made up of simple geometric shapes. The pearl-like sphere may be perceived by some as a tablet or a pill which is weak in relation to the pharmaceutical goods at issue. For those who don’t perceive a tablet it is simply a sphere. Therefore, the figurative aspect has a low degree of distinctive character. No element can be considered more dominant than another in this sign.
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).
Visually, the signs coincide in ‘MEGADENT’ at the start of signs, which is the contested sign in its entirety and is distinctive for Greek speakers. The verbal elements of the signs only differ in the last letter of the earlier mark ‘A’ which has no counterpart in the contested sign. The figurative aspect of the earlier mark as described above is another differentiating factor but the figurative elements in question are weak and have a limited impact. Therefore, the signs are visually highly similar.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛MEGADENT, present identically in both signs and distinctive for the goods at issue. The pronunciation differs only in the sound of the last letter of the earlier mark ‘A’ which has no counterpart in the contested sign. Therefore, the signs are aurally highly similar.
Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the element ‘MEGA’, included in both signs, will be associated with the meaning explained above. The pearl-like sphere in the contested sign may also be perceived as a tablet by some as mentioned. As ‘MEGA’ is laudatory and weak, the signs are similar to at most 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. In the present case, the earlier trade mark as a whole has no meaning for any of the goods 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 some weak elements in the mark as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (eighth recital of the CTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 18; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22).
In the present case the goods are similar; the signs are aurally and visually highly similar and conceptually similar to a low degree at most. The level of attention of the relevant public, the Greek-speaking general public, will vary from average to high. The earlier mark has a normal degree of distinctive character for this part of the public.
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).
Given that the contested sign is included in its entirety in the earlier mark and the differences are limited to the last additional letter and the weak figurative elements in the earlier mark, it can only be concluded that there is a likelihood of confusion on the part of the relevant public with an average level of attention in respect of all the contested goods, which have been found to be similar.
Considering all the above, there is a likelihood of confusion on the part of the Greek-speaking general public with an average degree of attention. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining 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.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 12 415 171. It follows that the contested trade mark must be rejected for all the contested goods.
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
Sigrid DICKMANNS | Lynn BURTCHAELL | Alexandra APOSTOLAKIS |
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.