Reboa Medical | Decision 2593179 - Rubimed AG v. Jan Erik Kirkeby

Date Published: Oct 1, 2017

OPPOSITION No B 2 593 179

Rubimed AG, Grossmatt 3, 6052 Hergiswil, Switzerland (opponent), represented by Manitz Finsterwald Patentanwälte PartmbB, Martin-Greif-Str. 1, 80336 München, Germany (professional representative)

a g a i n s t

Reboa Medical AS, Stiklaveien 200, 1866 Båstad, Norway (applicant), represented by Angelica Coppini, 137, Spinola Roard, St, Julians STJ3011, Malta (professional representative).

On 13/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 593 179 is upheld for all the contested goods, namely 

Class 10: Veterinary apparatus and instruments; medical apparatus and instruments related to endovascular haemorrhage control, radiology, vascular surgery and emergency medicine; all afore-mentioned goods not in the field of spinal implants and surgical instruments and apparatus for spinal surgery.

2.        European Union trade mark application No 14 350 631 is rejected for all the contested goods. It may proceed for the remaining goods and services.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 350 631, namely against all the goods in Class 10. The opposition is based on European Union trade mark registration No 924 746.  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

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

Class 10: Diagnostic apparatus for medical purposes.

After the limitation of the scope of protection of the contested sign by the applicant on 26/02/2016, the contested goods are the following:

Class 10: Veterinary apparatus and instruments; medical apparatus and instruments related to endovascular haemorrhage control, radiology, vascular surgery and emergency medicine; all afore-mentioned goods not in the field of spinal implants and surgical instruments and apparatus for spinal surgery.

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 10

The contested medical apparatus and instruments related to endovascular haemorrhage control, radiology, vascular surgery and emergency medicine; all afore-mentioned goods not in the field of spinal implants and surgical instruments and apparatus for spinal surgery can be used in diagnostics. Thus, they overlap with the opponent’s diagnostic apparatus for medical purposes. They are identical.

The contested veterinary apparatus and instruments; all afore-mentioned goods not in the field of spinal implants and surgical instruments and apparatus for spinal surgery can be used for diagnostic purposes and as such are similar to the opponent’s diagnostic apparatus for medical purposes. These goods have the same nature and purpose, namely that of aiding professionals in the conduct of their service in diagnosing humans and, in the case of the contested mark, animals. The method of use is also similar. lt is not uncommon for these products to originate from the same producer, or from economically linked producers.

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 found to be identical and similar are specialised good directed at customers with specific professional knowledge or expertise.

Considering the nature of the goods and the fact that they may be rather expensive and object of infrequent purchase, the degree of attention will be high.

3. The signs

Reba	Reboa Medical
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The earlier sign is a single word mark ‘REBA’. It has no meaning and no elements that could be considered clearly more distinctive or dominant than other elements.

The contested mark is a word mark consisting of two word elements ‘REBOA’ and ‘MEDICAL’. It has no elements that could be considered clearly more dominant than other elements. The element ‘MEDICAL’ is meaningful and will be understood by the relevant public throughout the European Union as relating to illness and injuries and to their treatment or prevention, because it is identical or close to the equivalent words in the official languages but also because professional public will understand this basic (in the field of medicine) English word. As such, it is considered non-distinctive for the goods at hand. The element ‘REBOA’ will be recognised but only by part of the relevant public, in particular English-speaking trauma surgeons or emergency medicine professionals, as meaning resuscitative endovascular balloon occlusion of the aorta. For this part of the relevant public, this word is weak in relation to all goods. However, for the other part of the public, it has no meaning and is distinctive, especially as REBOA is quite new and has been performed only for few years.

The Opposition Division will first examine the opposition in relation to the part of the public for which ‘REBOA’ has no meaning and has a normal degree of distinctiveness.

Visually and aurally, the signs coincide in ‘REB*A’. They differ in the additional letter ‘O’ and the word ‘MEDICAL’ of the contested sign. The latter is however considered non-distinctive for the goods at hand and thus plays a limited role in the comparison of the signs.

Therefore, the signs are visually and aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the word ‘MEDICAL’ is meaningful, its role is limited when comparing the signs as explained above. As both ‘REBA’ and REBOA’ will not be associated with any concept, a conceptual comparison is not possible, and the conceptual aspect does not influence the assessment of the similarity of the signs.

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

It has been established in the previous sections of the decision that the contested goods are identical and similar to the opponent’s goods. The signs under comparison are also considered to be visually and aurally highly similar inasmuch as they coincide in ‘REB*A’. 

The differences between the signs are confined to the letter ‘O’ and the element ‘MEDICAL’ of the contested sign, which is, however, non-distinctive for the goods. As the letter ‘O’ is placed in the middle of the contested mark, it can be overlooked despite high level of attention of the relevant public. It should be also recalled that the first parts of the conflicting marks are identical. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Consequently, the identical first elements of the marks at issue have to be taken into account when assessing the likelihood of confusion between the marks.

Due to the significant similarities found, which will definitively direct the consumer’s perception of them towards a general impression of strong resemblance which cannot be counterbalanced by the inconsequential dissimilarities between the signs, the Opposition Division finds that there is a likelihood of confusion on the part of the public for which ‘REBOA’ has no meaning. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 924 746. 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

Katarzyna ZANIECKA

Anna BAKALARZ

Begoña URIARTE VALIENTE

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.