OPTILANCE | Decision 2705716

Date Published: Sep 22, 2017

OPPOSITION No B 2 705 716

B. Braun Melsungen AG, Carl-Braun-Str. 1, 34212 Melsungen, Germany (opponent), represented by Patentanwälte Ruff, Wilhelm, Beier, Dauster & Partner mbB, Kronenstr. 30, 70174 Stuttgart, Germany (professional representative)

a g a i n s t

Leadway (HK) Limited, Unit 6501-02, The Center, 99 Queen’s Road, Central Hong Kong, Hong Kong Special Administrative Region of the People’s Republic of China (applicant), represented by Kilburn & Strode LLP, 20 Red Lion Street, London WC1R 4PJ, United Kingdom (professional representative)

On 11/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 705 716 is partially upheld, namely for the following contested goods and services:

Class 5: Medical and surgical dressings; medicated cotton wipes, tissues and swabs for medical use.

Class 10: Medical apparatus and instruments; Medical apparatus and instruments, namely instruments used for puncturing patient’s skin for taking blood samples for diagnostic purposes, lancets, puncturing devices, lancing systems, insulin pens and pen needles, drug delivery devices, apparatus for dispensing of medicines, needles for medical purposes.

Class 44: Surgical care for human beings.

2.        European Union trade mark application No 14 957 823 is rejected for all the above goods and services. It may proceed for the remaining goods, namely sanitary preparations for medical purposes, in Class 5.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 957 823 ‘OPTILANCE’ (word mark). The opposition is based on European Union trade mark registration No 9 560 244 ‘Omnilance’ (word mark). 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.

1. The goods and services

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

Class 10: Surgical, medical, dental and veterinary instruments, apparatus and devices; Lancetting devices.

After the partial refusal in opposition decision No B 2 693 052, of which the parties have been duly informed, the contested goods and services are the following:

Class 5: Sanitary preparations for medical purposes; medical and surgical dressings; medicated cotton wipes, tissues and swabs for medical use.

Class 10: Medical apparatus and instruments; Medical apparatus and instruments, namely instruments used for puncturing patient’s skin for taking blood samples for diagnostic purposes, lancets, puncturing devices, lancing systems, insulin pens and pen needles, drug delivery devices, apparatus for dispensing of medicines, needles for medical purposes.

Class 44: Surgical care for human beings.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

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

The contested medical and surgical dressings; medicated cotton wipes, tissues and swabs for medical use are similar to a low degree to the opponent’s surgical, medical, instruments, apparatus and devices, as they are complementary, have the same distribution channels and can target the same consumers.

The contested sanitary preparations for medical purposes are goods for maintaining good hygiene and eradicating germs, in this case specified to be for medical-related purposes, and target the public at large.

The opponent’s surgical, medical, dental and veterinary instruments, apparatus and devices are meant to be used by professionals in the surgical, medical, dental or veterinary field. The opponent’s lancetting devices are small pen-shaped lancing systems for the delivery of insulin, used for medical purposes only.

According to these definitions, the contested sanitary preparations for medical purposes are dissimilar to the opponent’s goods. They differ in nature, purpose, method of use, distribution channels and points of sale. They are neither complementary nor in competition, do not target the same consumers and are not likely to come from the same kinds of undertakings.

Contested goods in Class 10

The contested medical apparatus and instruments are identically included in the opponent’s list of goods.

The contested medical apparatus and instruments, namely instruments used for puncturing patient’s skin for taking blood samples for diagnostic purposes, lancets, puncturing devices, lancing systems, insulin pens and pen needles, drug delivery devices, apparatus for dispensing of medicines, needles for medical purposes are all (as indicated above in relation to the use of ‘namely’) included in the broader category preceding them in the list, namely medical apparatus and instruments. They are therefore included in the same category of the opponent’s goods in Class 10, to which they are identical.

Contested services in Class 44

The contested surgical care for human beings is similar to a low degree to the opponent’s surgical instruments, apparatus and devices. These goods and services have the same purpose and are complementary.

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 to a low degree are directed mainly at professionals, who will pay a high degree of attention during their purchase. However, some of these goods and services are also purchased by non-professional consumers (e.g. insulin pens; surgical care for human beings), who will also pay a high degree of attention during the purchase, due to the impact that the choice of these goods and services can have on their health.

3. The signs

Omnilance	OPTILANCE
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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The Opposition Division finds it appropriate to focus the comparison of the signs on part of the public in the relevant territory, namely the French-speaking consumers. The reason is that, as explained in the following paragraphs, the concepts that these consumers will perceive the marks as conveying will lead to the best-case scenario for likelihood of confusion to arise.

The words ‘Omnilance’ and ‘OPTILANCE’ forming the marks are invented terms. However, the abovementioned part of the public will perceive concepts in them.

The contested mark, ‘OPTILANCE’, is likely to be perceived as formed by two linked but independent parts, namely ‘OPTI’ and ‘LANCE’. This is because ‘OPTI’ is widely known and used as an abbreviation for ‘optique’ in French, to indicate, inter alia, that something is ‘related to vision’ (optical-related). The ending, ‘LANCE’, is also known and used in French to refer to a long wooden weapon.

The earlier mark, ‘Omnilance’, will be perceived by this part of the public as formed by the prefix ‘Omni’ and the ending ‘lance’. This is because ‘Omni’ will be perceived by these consumers as the Latin prefix meaning ‘all’ or ‘universal’, frequently integrated in words, such as in the French word ‘omniprésent’; and because ‘lance’ is identified as an independent element within the mark, having the meaning referred to above.

Regarding the distinctiveness of the elements forming the marks, ‘Omni’ in the earlier mark and ‘lance’ in both signs have no meanings in relation to the goods and services in question, and they are therefore of average distinctive character.

The element ‘OPTI’ (‘related to vision’) is at least allusive of the characteristics of the goods and services in question, since they can be related to the treatment or cure of vision-related problems. Therefore, this element is of lower than average distinctive character.

According to the above, the earlier mark is perceived as having no elements that are more distinctive than others, and the contested sign is perceived as formed by the distinctive element ‘LANCE’ and the less distinctive element ‘OPTI’.

Visually, since both signs are word marks, the word as such is protected and not the way in which it is written (in upper or lower case letters). It is therefore irrelevant for the following comparison whether the signs are written in upper or lower case letters.

The signs coincide in some of the letters forming them, which occupy the same position in both marks. Reading from left to right, they coincide in their first letter, ‘O’, and in their ending sequence, ‘ILANCE’. The signs differ in their second and third letters, namely ‘mn’ in the earlier mark and ‘PT’ in the contested mark.

The marks are visually similar to a high degree.

Aurally, the pronunciation of the signs coincides in the sounds of the coinciding letters referred to above, namely ‘o’ and ‘ilance’. These coincident sounds include the same vowel sequence and the same number of syllables, /om/ni/lance/ versus /op/ti/lance/ (i.e. three syllables). Therefore, the signs coincide in rhythm and intonation.

The marks differ in the sound of the letters ‘mn’ in the earlier mark and ‘PT’ in the contested mark. However, these differing sounds are preceded and followed by the coinciding sounds referred to above, which will contribute to diluting the impact of the differing sounds.

The marks are aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The marks differ in the concepts of ‘optical’ (of lower than average distinctive character) in the contested mark and ‘OMNI’ in the earlier mark. They have in common the concept of the word ‘LANCE’ described above, which is a distinctive element in both signs and is the most distinctive part of the contested mark.

It is considered that 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.

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.

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.

5. Global assessment, other arguments and conclusion

The goods and services are partly identical, partly similar to a low degree and partly dissimilar.

The signs under comparison are visually and aurally similar to a high degree, and conceptually similar to an average degree.

The marks coincide in their first letter, ‘O’, and in the sequence of letters ‘ILANCE’, which constitutes the middle part and ending of both marks. As explained above, the signs differ visually and aurally in two letters, occupying the second and third positions within both marks. These differing letters are therefore preceded and followed by the coinciding letters referred to above, which contributes to the dilution of their aural and visual impact.

The goods and services target both average and professional consumers, and the attention paid by them is deemed high.

Account should be 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). Even consumers with a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

In addition, having regard to the principle of interdependence, the fact that the signs have significant visual, aural and conceptual similarities, together with the fact that the similar signs cover identical and similar (even if to a low degree) goods and services, might lead consumers to think that those goods and services come from the same or economically-linked undertakings. Even if the degree of attention might be high in relation to the goods and services involved, this will not be enough to avoid such confusion and/or association under the present circumstances.

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

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical to those of the earlier trade mark. The opposition is also successful insofar as the goods and services that are similar to a low degree are concerned. The reason for this is that the similarities between the marks described above are clearly enough to outweigh the low degree of similarity of those goods and services.

The rest of the contested goods 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 cannot be successful.

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

Eva Inés PÉREZ SANTONJA

María del Carmen SUCH SANCHEZ

Vít MAHELKA

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.