MiMeDiS | Decision 2650144

Date Published: Sep 24, 2017

OPPOSITION No B 2 650 144

Médis - Companhia Portuguesa de Seguros de Saúde, S.A., Av. Dr. Mário Soares (Tagus Park), Edifício 10, Piso 1, 2744 Porto Salvo, Portugal (opponent), represented by Gastão da Cunha Ferreira, Lda., Rua dos Bacalhoeiros, nº. 4  1100-070 Lisboa, Portugal (professional representative)

a g a i n s t

Mimedis AG, Hochbergerstrasse 60c, 4057 Basel, Switzerland (holder), represented by Leonore Hornig, Basler Strasse 115, 79115 Freiburg, Germany (professional representative).

On 22/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 650 144 is partially upheld, namely for the following contested goods and services:

Class 5: Surgical implants (living tissues); biological implants; biological tissue for implantation; surgical implants comprising living tissue.

Class 9: Software development tools; computer software; software products; computer hardware and software; application software.

Class 10: Spinal implants made from artificial materials; dental implants; orthopedic implants made from artificial materials; medical implants made from artificial materials; artificial orthopaedic implants; intraocular lens implants implanted in the eye; lenses (intraocular prostheses) for surgical implantation; artificial bone parts to be implanted in natural bones; artificial bones for implantation; ocular implants made from artificial materials; bone implants made from artificial materials; orthopedic joint implants.

Class 42: Maintenance of computer software; testing of computer hardware and software; technical support services relating to software; software development services; software development services; software as a service (SaaS); software engineering; configuration, installation, fault diagnosis, repair, upgrading and maintenance of software; services provided by consultants and research relating to software; research relating to the development of computer programs and software; research in the field of computer hardware and software; troubleshooting of software problems [technical support]; research, development, design and upgrading of software; debugging of software for others; provision of temporary use of web-based software; research and development services relating to software; design, upgrading and rental of software; design and writing of software; design and development of software architecture; design and development of software for evaluation and calculation of data; design and development of software for reading, transmitting and organizing data; design and development of computers and software; design and development of computer hardware, software and databases; design and updating of software; design, programming and maintenance of software; design, installation, updating and maintenance of software; design, development and programming of software; design, development and updating of software; design, development, installation and maintenance of software; software development services; software development services; development of computer programs; development of computer hardware and software; development of software application solutions; development and maintenance of software; development and maintenance of computer database software; development and testing of computing methods, algorithms and software; development and updating of software; creation, maintenance, and updating of software; duplication of software; diagnosis of computer hardware problems through the use of software; diagnosis of software problems; software development (design); design of computer hardware and software; design of computer hardware, software and computer peripherals; design and rental of software; design and development of computers and software; design, maintenance, rental and updating of software; design, maintenance and updating of software; design, maintenance and updating of software; installation and maintenance of software; research in the field of software; software development services; design and development of computers and software; software consultancy; computer programming and software design; rental of computers and software; provision of technical information relating to computers, software and computer networks; provision of software on computer networks (particularly the Internet), telecommunication networks and mobile data services (provision of hosted applications); provision of software (Software as a service, SaaS); provision of information concerning design and development of computer software, networks and systems; provision of information about the design and development of computer hardware and software; provision of information in the field of software design; provision of temporary use of online non-downloadable software for importing and managing data; provision of temporary on-line use of non-downloadable software for Web site development; services provided by consultants relating to the updating of software; services provided by consultants relating to software for communication systems; services provided by consultants and information services relating to software design; consultancy and information services relating to software maintenance; consultancy and information services relating to the design, programming and maintenance of software; consultancy and information services relating to software rental; provision of advice and services provided by consultants relating to software; services provided by consultants relating to software program design and development; services provided by consultants relating to computer hardware and software architecture design and development; consultancy relating to the design, programming and maintenance of computer software; services provided by consultants relating to the design, development and use of computer hardware and software; services provided by consultants relating to software maintenance; services provided by consultants in the field of software design; updating of software relating to computer security and prevention of computer risks; design, updating and rental of software; maintenance and updating of software; updating of software; services provided by consultants in the field of security software; provision of information in the field of software development; provision of temporary use of non-downloadable software applications accessible via a website; application service provider (ASP) services; provision of online information relating to the design and development of computer hardware and software; design and development of software.

2.        International registration No 1 243 861 is refused protection in respect of the European Union for all of the above goods and services. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of international trade mark registration No 1 243 861 designating the European Union for the figurative mark . The opposition is based on, inter alia, European Union trade mark registration No 6 647 093 for the figurative mark  and Portuguese trade mark registration No 519 701 for the word mark ‘MÉDIS’. The opponent invoked Article 8(1)(b) EUTMR in respect of both marks and Article 8(5) EUTMR in respect of the Portuguese registration only.

PRELIMINARY REMARKS

In the notice of opposition, the opponent bases its opposition on three earlier rights, namely, European Union trade mark registrations No 6 656 466 and No 6 647 093, and Portuguese trade mark registration No 519 701. In the documents subsequently filed by the opponent to substantiate its opposition, the registration certificates for two further Portuguese registrations are filed. It should be observed that the notice of opposition has to be filed in writing and must contain, in order to be admissible, the indications and elements laid down in Rule 15(1), (2) (a)-(c) EUTMIR (inter alia, a clear identification of the earlier mark or earlier right on which the opposition is based). Furthermore, it must be noted that the opponent can only complete or extend the notice of opposition, on its own initiative, during the three-month opposition period which starts six months after the first republication of the international registration designating the European Union. In this case, the opposition period ended on 04/02/2016. The opponent filed the certificates for the other Portuguese rights on 22/12/2016. Since these other earlier marks were not claimed as a basis of the opposition during the three-month opposition period, and given that the opposing party cannot extend the basis of the opposition once the opposition period has expired, the opposition must be rejected as inadmissible, as far as it is based on these earlier marks.

Furthermore, the Opposition Division notes that the parties requested to change the language of proceedings to English and filed an agreement to this change, signed by both parties, on 13/05/2016. This request was filed before the date on which the opposition proceedings were deemed to commence according to Rule 18(1) EUTMIR. The Office granted the change of language to English by letter to both parties on 23/05/2016.  

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 European Union trade mark registration No 6 647 093 and Portuguese trade mark registration No 519 701.

1. The goods and services

The goods and services on which the opposition is based are the following:

European Union trade mark registration No 6 647 093

Class 9: Encoded credit and debit cards, magnetic, and encoded cards, magnetic, for banking operations and healthcare-related operations.

Class 16: Printed publications, brochures, prospectuses, stationery used for banking and business operations, calendars and diaries, paper, cardboard and goods made from these materials, not included in other classes; printed matter; credit cards, not magnetic; printed matter, namely cards for use in bank transactions, magazines, periodicals.

Class 36: Insurance underwriting and financial services including those provided via the Internet or via other means of telecommunications.

Class 38: Telecommunications and electronic transmission in relation to financial matters.

Portuguese trade mark registration No 519 701

Class 5: Pharmaceutical and veterinary products, hygienic products for medical purposes; dietetic substances for medical purposes; food for babies; plasters; material for dressings; material for stopping teeth para for dental printing; disinfectants.

Class 10: Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopedic articles; suture materials.

Class 36: Insurance; financial, credit, investment and insurance services, including those provided via the Internet or via other means of telecommunications.

Class 44: Health care, including the services of doctors, hospitals and other health care providers.

The contested goods and services are the following:

Class 5: Surgical implants (living tissues); biological implants; biological tissue for implantation; surgical implants comprising living tissue.

Class 9: Virtual reality software; software development tools; software for satellite navigation systems; computer software; downloadable software for remote monitoring and analysis; software products; computer hardware and software; bioinformatics software; application software for mobile telephones; application software.

Class 10: Spinal implants made from artificial materials; dental implants; orthopedic implants made from artificial materials; medical implants made from artificial materials; artificial orthopaedic implants; intraocular lens implants implanted in the eye; lenses (intraocular prostheses) for surgical implantation; artificial bone parts to be implanted in natural bones; artificial bones for implantation; ocular implants made from artificial materials; bone implants made from artificial materials; orthopedic joint implants.

Class 42: Maintenance of computer software; testing of computer hardware and software; technical support services relating to software; software development services; software development services; software as a service (SaaS); software engineering; configuration, installation, fault diagnosis, repair, upgrading and maintenance of software; services provided by consultants and research relating to software; research relating to the development of computer programs and software; research in the field of computer hardware and software; troubleshooting of software problems [technical support]; research, development, design and upgrading of software; debugging of software for others; provision of temporary use of web-based software; temporary provision online of non-downloadable software for inventory management; research and development services relating to software; design, upgrading and rental of software; design and writing of software; design and development of virtual reality software; design and development of software architecture; design and development of software for logistics; design and development of software for supply chain management; design and development of software; design and development of game and virtual reality software; design and development of software for evaluation and calculation of data; design and development of software for reading, transmitting and organizing data; design and development of software for use in the framework of medical technology; design and development of computer hardware and software for use in the medical field; design and development of computer hardware and software for industrial applications; design and development of computers and software; design and development of computer hardware, software and databases; design and development of operating software used for accessing and using a cloud computing network; design and updating of software; design, programming and maintenance of software; design, installation, updating and maintenance of software; design, development and programming of software; design, development and updating of software; design, development, installation and maintenance of software; software development services; software development services; development of computer programs and game software; development of computer hardware and software; development of software application solutions; development and maintenance of software; development and maintenance of computer database software; development and testing of computing methods, algorithms and software for processing telecommunication and navigation signals; development and testing of software, algorithms and computing methods for generating data relating to telecommunications and navigation; development and testing of computing methods, algorithms and software; development and updating of software; creation, maintenance, and updating of software; duplication of software; diagnosis of computer hardware problems through the use of software; diagnosis of software problems; software development (design); design of computer hardware and software; design of computer hardware, software and computer peripherals; design and rental of software; design and development of computers and software; development of operating software for accessing and using a cloud computer network; design, maintenance, rental and updating of software; design, maintenance and updating of software; design, maintenance and updating of software; installation and maintenance of software; research in the field of software; software development services; design and development of computers and software; software consultancy; computer programming and software design; rental of computers and software; provision of technical information relating to computers, software and computer networks; provision of software on computer networks (particularly the Internet), telecommunication networks and mobile data services (provision of hosted applications); provision of software (Software as a service, SaaS); provision of information concerning design and development of computer software, networks and systems; provision of information about the design and development of computer hardware and software; provision of information in the field of software design; provision of temporary use of on-line non-downloadable software for use in broadcast monitoring applications; provision of temporary use of online non-downloadable software for importing and managing data; provision of temporary on-line use of non-downloadable software for Web site development; providing temporary use of on-line non-downloadable software for language translation; services provided by consultants relating to the updating of software; services provided by consultants relating to software for communication systems; services provided by consultants and information services relating to software design; consultancy and information services relating to software maintenance; consultancy and information services relating to the design, programming and maintenance of software; consultancy and information services relating to software rental; provision of advice and services provided by consultants relating to software; services provided by consultants relating to software program design and development; services provided by consultants relating to computer hardware and software architecture design and development; consultancy relating to the design, programming and maintenance of computer software; services provided by consultants relating to the design, development and use of computer hardware and software; services provided by consultants relating to software maintenance; services provided by consultants in the field of software design; updating of software relating to computer security and prevention of computer risks; design, updating and rental of software; maintenance and updating of software; updating of software; services provided by consultants in the field of security software; provision of information in the field of software development; provision of temporary use of non-downloadable software applications accessible via a website; provision of temporary use of on-line non-downloadable operating software for accessing and using a cloud computer network; application service provider (ASP) services; provision of online information relating to the design and development of computer hardware and software.

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

Insofar as the contested goods in Class 5 are used for therapeutic purposes, they fall under the broader term pharmaceutical products of the earlier Portuguese registration and are, therefore, deemed to be identical. The holder claims that the earlier goods are made available in pharmacies and to ‘normal’ consumers, whereas the contested goods are much more specialised and will only be made available in hospitals and clinics and by doctors. Therefore, the goods at issue are distributed through different channels and are produced by different companies. While the Opposition Division agrees that the contested goods are specialised, it cannot see why the earlier goods have been deemed by the holder not to encompass specialised pharmaceutical products as well. The earlier expression pharmaceutical products is broad enough to include both over-the-counter products and highly specialised articles such as those produced by the holder. This argument must therefore be dismissed.

Contested goods in Class 9

The contested software development tools; computer software; software products; computer hardware and software; application software are types of software and hardware or software development tools of a general nature. Earlier European Union trade mark registration No 6 647 093 covers, inter alia, telecommunications and electronic transmission in relation to financial matters in Class 38. Since the contested goods are expressed in a broad manner and may include types of software and hardware used in the provision of telecommunications and electronic transmission in relation to financial matters, the purpose of these goods and services may coincide. There is also complementarity between the goods and services, since the earlier services may require the applicant’s goods in order to function properly. These goods and services may also be distributed through the same channels and aimed at the same consumers. Therefore, the contested goods are similar to the earlier services.

The remaining contested virtual reality software; software for satellite navigation systems; downloadable software for remote monitoring and analysis; bioinformatics software; application software for mobile telephones are very specific types of software designed to be used in particular areas, namely, the world of virtual reality, satellite navigation, remote monitoring and analysis, bioinformatics and mobile communications. The earlier services in Class 38 are restricted to the financial field. Therefore, there is no reason to believe that the contested goods may be used in the provision of the earlier services. There is no complementarity between them, they serve different purposes, will be provided by different companies and offered through different channels. They are also aimed at different consumers and are not in competition with one another. Therefore, these goods and services are dissimilar.

The earlier marks are also protected for pharmaceutical, dietetic and hygienic goods in Class 5, surgical, medical, dental and veterinary goods in Class 10,  magnetic and encoded cards in Class 9, some printed publications and paper and cardboard goods in Class 16, insurance and financial services in Class 36 and, finally, health care related services in Class 44. The remaining contested goods in Class 9 do not have anything in common with these earlier goods and services. They serve different purposes, will be provided by different companies and aimed at different consumers. They are not complementary or in competition with one another either. Therefore, the contested goods are also deemed dissimilar to all the remaining goods and services of the opponent.

Contested goods in Class 10

The contested intraocular lens implants implanted in the eye; lenses (intraocular prostheses) for surgical implantation; ocular implants made from artificial materials are covered by the earlier goods artificial eyes protected under the earlier Portuguese registration. These goods are therefore identical.

The contested dental implants are covered by the earlier goods artificial teeth protected under the earlier Portuguese registration. These goods are, therefore, identical.

The remaining contested goods, namely, spinal implants made from artificial materials; orthopedic implants made from artificial materials; medical implants made from artificial materials; artificial orthopaedic implants; artificial bone parts to be implanted in natural bones; artificial bones for implantation; bone implants made from artificial materials; orthopedic joint implants are at least similar to the earlier goods artificial limbs, orthopedic articles protected under the earlier Portuguese registration. These goods share a similar nature, may derive from the same companies, be distributed through the same channels and aimed at the same consumers.

The holder argues that its implants are generally dissimilar to the artificial limbs, eyes and teeth protected by the earlier mark because they are much smaller parts which have to be implanted in different parts of the body. While the Opposition Division agrees that the holder may be producing smaller parts than the opponent, this does not mean that the goods are dissimilar. The holder’s goods and the opponent’s goods both fulfil the role of replacing or substituting a body part, be it an entire limb or a much smaller part of a joint in the body, for example. So the purpose of the goods is certainly similar, as explained above, as well as other factors which the goods have in common.

Contested services in Class 42

The contested:

Maintenance of computer software; testing of computer hardware and software; technical support services relating to software; software development services; software development services; software as a service (SaaS); software engineering; configuration, installation, fault diagnosis, repair, upgrading and maintenance of software; services provided by consultants and research relating to software; research relating to the development of computer programs and software; research in the field of computer hardware and software; troubleshooting of software problems [technical support]; research, development, design and upgrading of software; debugging of software for others; provision of temporary use of web-based software; research and development services relating to software; design, upgrading and rental of software; design and writing of software; design and development of software architecture; design and development of software for evaluation and calculation of data; design and development of software for reading, transmitting and organizing data; design and development of computers and software; design and development of computer hardware, software and databases; design and updating of software; design, programming and maintenance of software; design, installation, updating and maintenance of software; design, development and programming of software; design, development and updating of software; design, development, installation and maintenance of software; software development services; software development services; development of computer programs; development of computer hardware and software; development of software application solutions; development and maintenance of software; development and maintenance of computer database software; development and testing of computing methods, algorithms and software; development and updating of software; creation, maintenance, and updating of software; duplication of software; diagnosis of computer hardware problems through the use of software; diagnosis of software problems; software development (design); design of computer hardware and software; design of computer hardware, software and computer peripherals; design and rental of software; design and development of computers and software; design, maintenance, rental and updating of software; design, maintenance and updating of software; design, maintenance and updating of software; installation and maintenance of software; research in the field of software; software development services; design and development of computers and software; software consultancy; computer programming and software design; rental of computers and software; provision of technical information relating to computers, software and computer networks; provision of software on computer networks (particularly the Internet), telecommunication networks and mobile data services (provision of hosted applications); provision of software (Software as a service, SaaS); provision of information concerning design and development of computer software, networks and systems; provision of information about the design and development of computer hardware and software; provision of information in the field of software design; provision of temporary use of online non-downloadable software for importing and managing data; provision of temporary on-line use of non-downloadable software for Web site development; services provided by consultants relating to the updating of software; services provided by consultants relating to software for communication systems; services provided by consultants and information services relating to software design; consultancy and information services relating to software maintenance; consultancy and information services relating to the design, programming and maintenance of software; consultancy and information services relating to software rental; provision of advice and services provided by consultants relating to software; services provided by consultants relating to software program design and development; services provided by consultants relating to computer hardware and software architecture design and development; consultancy relating to the design, programming and maintenance of computer software; services provided by consultants relating to the design, development and use of computer hardware and software; services provided by consultants relating to software maintenance; services provided by consultants in the field of software design; updating of software relating to computer security and prevention of computer risks; design, updating and rental of software; maintenance and updating of software; updating of software; services provided by consultants in the field of security software; provision of information in the field of software development; provision of temporary use of non-downloadable software applications accessible via a website; application service provider (ASP) services; provision of online information relating to the design and development of computer hardware and software; design and development of software.

all fall under the broad description of IT services. These are services provided by computing companies in order to assist with all the activities connected with software and hardware, such as updating, maintenance, programming, development, testing, trouble-shooting and consulting, to name but a few. These services are deemed to be similar to telecommunications and electronic transmission in relation to financial matters in Class 38 of the earlier EUTM. There is a degree of complementarity between them because telecommunications companies clearly depend on and make extensive use of all sorts of software and hardware in order to provide their services. Therefore, they will require all the corresponding IT services as well. The services have similar purposes too and may be provided by the same companies and through the same channels. The fact that the earlier services are limited to telecommunications in relation to financial matters does not alter the fact that such companies will require IT services in order to operate properly.

The remaining contested services, namely:

Temporary provision online of non-downloadable software for inventory management; design and development of virtual reality software; design and development of software for logistics; design and development of software for supply chain management; design and development of game and virtual reality software; design and development of software for use in the framework of medical technology; design and development of computer hardware and software for use in the medical field; design and development of computer hardware and software for industrial applications; design and development of operating software used for accessing and using a cloud computing network; development of game software: development and testing of computing methods, algorithms and software for processing telecommunication and navigation signals; development and testing of software, algorithms and computing methods for generating data relating to telecommunications and navigation; development of operating software for accessing and using a cloud computer network; provision of temporary use of on-line non-downloadable software for use in broadcast monitoring applications; providing temporary use of on-line non-downloadable software for language translation; provision of temporary use of on-line non-downloadable operating software for accessing and using a cloud computer network.

are various types of IT services focused on specific areas of activity, such as the field of virtual reality, the medical field, or language translation. As explained above, the earlier services in Class 38 focus on financial matters. It is unlikely that there will be any crossover between these different areas of activity due to the specific wording of the services in each case. The contested services are aimed at very concrete areas. Therefore, they cannot be said to be complementary to telecommunications services in the financial field. These services will be provided by different companies, via different channels and aimed at different consumers. They are not in competition with one another either. These services are therefore deemed dissimilar.

The earlier marks are also protected for pharmaceutical, dietetic and hygienic goods in Class 5, surgical, medical, dental and veterinary goods in Class 10,  magnetic and encoded cards in Class 9, some printed publications and paper and cardboard goods in Class 16, insurance and financial services in Class 36 and, finally, health care related services in Class 44. The remaining contested services in Class 38 do not have anything in common with these earlier goods and services. They serve different purposes, will be provided by different companies, and aimed at different consumers. They are not complementary or in competition with one another either. Therefore, the contested services are also deemed dissimilar to all the remaining goods and services of the opponent.

2. 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 found to be identical or similar are targeted both the public at large and some are more specialised goods and services directed at business customers with specific professional knowledge or expertise, such as medical professionals or computer experts.

The degree of attention will be high owing to the highly specialised nature of the goods and services, the price to be paid for them and the fact that they are purchased and provided on a relatively infrequent basis. Also, since some of the goods and services are directly related to health, a high degree of attention will inevitably be paid by consumers due to the long-term consequences which may stem from using these goods and services.

3. The signs

EUTM No 6 647 093 MÉDIS Portuguese registration No 519 701
Earlier trade mark	Contested sign

The relevant territory is the European Union and Portugal.

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 element ‘Médis/MÉDIS’ contained in the earlier marks has no concrete meaning in the relevant territories. Nevertheless, and as pointed out by the holder, some members of the relevant public may see it as alluding to ‘medical’. However, despite the allusiveness of this element, it is held to be distinctive overall, as it is actually an invented word. The earlier EUTM also contains a stylised green cross device. Since green crosses are almost universally used to indicate pharmacies, this symbol will bring to mind the idea of something connected with pharmacies or the medical world. The green cross will also be seen as reinforcing the idea of something medical for those consumers who see an allusion to medical/medicine in the word ‘Médis’. The green cross is distinctive, however, when viewed in conjunction with the particular goods and services protected under the earlier EUTM, which does not include pharmaceuticals, medicine or any related services. Even though some of the services, such as those in Class 38, state that they relate to the medical field, the nature of the services themselves is not medical or pharmaceutical.

In terms of the distinctiveness of the earlier EUTM, ‘Médis’ will be attributed more trade mark significance than the figurative elements, not only because of their simplicity (the cross) and/or merely decorative role (the dark blue rectangle), but also since in signs consisting of both verbal and figurative components, it is, in principle, the verbal component that usually has a stronger impact on consumers given that they 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;

Regarding the contested mark, it is a figurative sign consisting of the word ‘MiMedis’. Before this word, there is a device element of a grey circle containing a white capital letter ‘M’. In the Opposition Division’s view, the word ‘Medis’ is clearly distinguishable in the contested sign due to the fact that it appears with a capital letter ‘M’ after the initial ‘Mi’. Many consumers, such as the Portuguese and Spanish consumers, will perceive ‘Mi’ as a possessive pronoun meaning ‘My’, either because it exists as such or will be associated with a similar word e.g. ‘minha’ in Portuguese. The same considerations regarding the word ‘Médis’ in the earlier marks also apply to ‘Medis’ in the contested sign. The absence of an accent over the letter ‘e’ in the contested sign has no bearing on this. ‘Mi’ will be seen as merely referring to possession or as having no particular meaning. In any event, it will not impede ‘Medis’ from being perceived in the contested sign. The device element will merely be viewed as a stylised letter ‘M’ and has a normal degree of distinctiveness. The Opposition Division does not agree with the holder’s claim that it will be seen as a crown and as referring to the ‘royal’ quality of its goods and services. It reproduces exactly the same shape as the letter ‘M’s which appear twice in the contested sign. Therefore, the relevant consumer will naturally perceive it as a letter ‘M’.  

None of the marks have an element which is more visually dominant than the others.

Visually, the signs coincide in the letters ‘*-*-M-E-D-I-S’, either in uppercase or lowercase. The earlier marks bear an accent over the letter ‘e’. However, this is a small, almost imperceptible difference with respect to the same sequence of letters in the contested sign. The earlier EUTM differs in its figurative layout and device elements and the contested sign differs in its stylisation, different initial letters ‘M-i’ and the initial device element, the latter having less impact as pointed out before.

Therefore, the earlier Portuguese mark and the contested sign are deemed to be highly similar, while the earlier EUTM displays an average degree of visual similarity to the contested sign on account of the figurative elements it contains.

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 ‘*-*-MEDIS’, present identically in all of the signs. The inclusion of an accent in the earlier marks will not substantially affect their pronunciation. The pronunciation differs in the first two letters, ‘Mi’, of the contested mark. It is highly unlikely that the initial device element in the contested sign will be pronounced owing to its stylisation.

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning by some members of the relevant public who will see an allusion to ‘medical/medicine’, the signs are similar to an average degree. There are conceptual differences in the signs conveyed by the green cross in one of the earlier marks and the stylised letter ‘M’ in the contested sign as well as ‘Mi’, for those members of the relevant public who see a meaning in those two letters.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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.

According to the opponent, the earlier marks have been extensively used and enjoy an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the goods and services in question from the perspective of the public in the relevant territories. Therefore, the distinctiveness of the earlier marks must be seen as normal, despite the fact there is an allusion to ‘medical/medicine’ as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The goods and services at issue have been found partially identical, partially similar and partially dissimilar. The marks have been found visually similar to an average or high degree, depending on the earlier mark in question, aurally highly similar and conceptually similar to an average degree.

In the Opposition Division’s view, the contested sign will at least be associated with the earlier marks, leading to a likelihood of confusion in connection with similar or identical goods or services. Although ‘Medis/Médis’ is allusive to ‘medicine/medical’, as explained in detail above, it is distinctive as such, contrary to claims made by the holder in its observations. This means that the entire earlier Portuguese mark and the most memorable element of the earlier EUTM are fully included in the contested sign. As pointed out by the opponent, many members of the relevant public, including the Portuguese, will understand ‘Mi’ at the beginning of the contested sign as indicating the possessive ‘my’. So the contested sign could be seen as a personalised or tailor made sub-brand of the parent brand ‘Médis’. Even for those consumers who do not understand ‘Mi’ in this way, ‘Medis’ is easily deciphered in the contested sign due to the use of an initial capital ‘M’. It seems highly probable that consumers, even displaying a high degree of attention, will link the contested sign with the earlier marks and confuse them when faced with identical or similar goods and services. Although there are visual, aural and conceptual differences between the marks, they are not sufficient to overcome the similarities. For example, the accent used in the earlier marks over the letter ‘e’ will most likely go unnoticed and the initial device element in the contested sign will simply be seen as reinforcing the letter ‘M’s in the word element.

Finally, 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.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier marks, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

In its observations, the holder argues that the earlier trade marks have a low distinctive character given that there are many trade marks that include ‘Medis’. In support of its argument the holder refers to several trade mark registrations in the EU which include ‘Medis’.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘Medis’. Under these circumstances, the holder’s claims must be set aside.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and, therefore, the opposition is partly well founded on the basis of the opponent’s European Union and Portuguese trade mark registrations.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to those of the earlier trade marks.

The rest of the contested goods and services are dissimilar. 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 and services cannot be successful.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier marks, there is no need to assess the enhanced degree of distinctiveness of the opposing marks due to their extensive use or reputation as claimed by the opponent and in relation to identical and similar goods and services. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing marks in relation to dissimilar goods and services, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

The opponent has also based its opposition on the following earlier trade mark:

• European Union trade mark registration No 6 656 466 for the word mark ‘e-Medis’.

Since this mark is almost the same as those compared above (it just contains an ‘e’ before the distinctive and common element ‘Medis’) and covers the same or a narrower scope of goods and services, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.

REPUTATION – ARTICLE 8(5) EUTMR

Article 8(5) EUTMR was raised in respect of Portuguese registration No 519 701 only.

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 holder establishes due cause for the use of the contested trade mark.

In the present case, the holder 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.

1. The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

2. Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in Portugal.

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 EU was designated in the contested international registration on 01/12/2014. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in Portugal 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, namely:

Class 5: Pharmaceutical and veterinary products, hygienic products for medical purposes; dietetic substances for medical purposes; food for babies; plasters; material for dressings; material for stopping teeth para for dental printing; disinfectants.

Class 10: Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopedic articles; suture materials.

Class 36: Insurance; financial, credit, investment and insurance services, including those provided via the Internet or via other means of telecommunications.

Class 44: Health care, including the services of doctors, hospitals and other health care providers.

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.

The opponent submitted evidence to support this claim. As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. The evidence consists of the following documents:

• Market surveys: the results of three market surveys are attached.

• Survey carried out in 2005 by the Portuguese company ‘Causa e Efeito’. Gabinete de Pesquisa de Mercado, Unipessoal, Lda. regarding health insurance companies. The opponent’s mark is viewed by Portuguese consumers as a reliable trade mark and it also ranks first in the section on client satisfaction.

• Survey conducted in 2009 by the company A.C. Nielsen Portugal – Estudos de Mercado, Unipessoal, Lda. The survey confirms that the opponent is a leading company in the market of health insurance.

• Market survey conducted in 2014, named -’Marcas que Marcam‘ by the Magazine ‘Marcas que Marcam’ In the category of health insurance, the opponent’s mark ranked first in terms of spontaneous awareness with a very significant difference to other trade marks.

• Samples of a magazine: the opponent produces a magazine called ‘Mais Médis’ about health and well-being. It has a circulation of approximately 11 000 and is sent to clients for free.

• Awards:

• ‘Portuguese Superbrand’ award granted by the International Organization Superbrands in 2006-2015.

• ‘Reliable Trademark’ awarded by Readers Digest Selections in 2011-2015.

• ‘CONSUMERCHOICE’ awarded by Centro de Avaliação da Satisfação do Consumidor in 2014.

• First place in Marktest Reputation Index in 2013.

• Opinions of professionals in the field: Health professional and general insurance companies consider also Médis as a trade mark with a reputation and they believe that the association with such a famous brand always adds an incredible value. Supported by an interview with the director of AXA Portugal and an interview with Mr Pedro Mateus, main director of a health clinic in Portugal called ‘Parque dos Poetas’.

• Advertising: some Youtube videos reflecting advertising campaigns in 2013 and 2014. In addition, some invoices dated in 2013 and 2015 are filed reflecting the high amounts spent on advertising.

• Sponsorship activities: evidence of sponsorship by the opponent of various educational and sporting activities in Portugal.

• Social responsibility activities carried out by the opponent.

The abovementioned evidence indicates that the earlier trade mark has been used for a substantial period of time. Although the opponent has not submitted any sales figures or invoices for services carried out, the Opposition Division finds the market surveys to be significant and the awards received over the years by the opponent paint a picture of a mark which is well known in its market sector. Furthermore, it is clear that the opponent has made efforts to advertise its mark. Overall, the evidence suggests that the trade mark has a consolidated position in the market. Under these circumstances, the Opposition Division finds that, taken as a whole, the evidence indicates that the earlier trade mark enjoys a certain degree of recognition among the relevant public, which leads to the conclusion that the earlier trade mark enjoys some degree of reputation. Whether the degree of recognition is sufficient for Article 8(5) EUTMR to be applicable depends on other factors relevant under Article 8(5) EUTMR such as, for example, the degree of similarity between the signs, the inherent characteristics of the earlier trade mark, the type of goods and services in question, the relevant consumers, etc.

However, the evidence does not succeed in establishing that the trade mark has a reputation for all the goods and services on which the opposition is based and for which reputation has been claimed. The evidence mainly relates to the field of medical insurance, whereas there is no or little reference to the remaining goods and services.

Therefore, the Opposition Division considers that the opponent has succeeded in proving a reputation for:

Class 36: Insurance, namely medical insurance; including those provided via the Internet or via other means of telecommunications.

3. The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar. 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.

To recall, the remaining contested goods and services are the following:

Class 9:        Virtual reality software; software for satellite navigation systems; downloadable software for remote monitoring and analysis; bioinformatics software; application software for mobile telephones.

Class 42:        Temporary provision online of non-downloadable software for inventory management; design and development of virtual reality software; design and development of software for logistics; design and development of software for supply chain management; design and development of game and virtual reality software; design and development of software for use in the framework of medical technology; design and development of computer hardware and software for use in the medical field; design and development of computer hardware and software for industrial applications; design and development of operating software used for accessing and using a cloud computing network; development of game software: development and testing of computing methods, algorithms and software for processing telecommunication and navigation signals; development and testing of software, algorithms and computing methods for generating data relating to telecommunications and navigation; development of operating software for accessing and using a cloud computer network; provision of temporary use of on-line non-downloadable software for use in broadcast monitoring applications; providing temporary use of on-line non-downloadable software for language translation; provision of temporary use of on-line non-downloadable operating software for accessing and using a cloud computer network.

While the relevant section of the public for the goods or services covered by the conflicting marks overlaps to some extent (software for mobile telephones, for example, may be aimed at the same consumers as medical insurance services), those goods or services are so different that the later mark is unlikely to bring the earlier mark to the mind of the relevant public.

The earlier mark has a reputation in the area of providing medical insurance. The nature and purpose of medical insurance services consist of covering the risks incurred by a person with medical expenses. It is provided by dedicated companies to all sorts of consumers. The contested goods are very specific types of software designed to be used in particular areas, namely, the world of virtual reality, satellite navigation, remote monitoring and analysis, bioinformatics and mobile communications. The contested services are various types of IT services focused on specific areas of activity, such as the field of virtual reality, the medical field, or language translation.

However, even if the relevant section of the public for the goods or services for which the conflicting marks are registered overlaps to some extent, those goods or services may be so dissimilar that the later mark is unlikely to bring the earlier mark to the mind of the relevant public. The huge differences in usage between the goods and services in dispute and the services for which a reputation has been proven make it very unlikely that the public will make a link between the signs in dispute, which is essential for the application of Article 8(5) EUTMR and for unfair advantage to be taken of the distinctive character or repute of the earlier mark. The goods and services at issue will not be provided through the same distribution channels either. Fundamentally, it is extremely unlikely that a company providing medical insurance would ever branch out into such specialised areas of software and IT services as those provided under the contested mark. The contested goods and services will be provided on a fairly infrequent basis to very select consumers. Even though the contested services make mention of design and development of software for use in the framework of medical technology; design and development of computer hardware and software for use in the medical field, by no stretch of the imagination can these services be considered a neighbouring market to medical insurance, which is essentially a financial service. The reputed services and the contested goods and services are not complementary or in competition with one another either.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them. Therefore, the opposition is not well founded under Article 8(5) EUTMR and 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. 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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Chantal VAN RIEL

Lucinda CARNEY

Vanessa PAGE

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.