ROVI | Decision 2590084 - Karl Storz GmbH & Co. KG v. LABORATORIOS FARMACEUTICOS ROVI, S.A.

Date Published: Sep 22, 2017

OPPOSITION No B 2 590 084

Karl Storz GmbH & Co. KG, Mittelstr. 8, 78532 Tuttlingen, Germany (opponent), represented by Witte, Weller & Partner Patentanwälte mbB, Phoenixbau Königstr. 5, 70173 Stuttgart, Germany (professional representative)

a g a i n s t

Laboratorios Farmacéuticos Rovi S.A., C/ Julián Camarillo n° 35, 28037 Madrid, Spain (applicant), represented by Balder IP Law S.L., Paseo de la Castellana 93, 28046 Madrid, Spain (professional representative).

On 08/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 590 084 is partially upheld, namely for the following contested goods and services:

Class 5:        Pharmaceutical and veterinary products; plasters, materials for dressings; disinfectants; antibiotics; analgesics; anesthetics; amino acids for medical purposes; antiseptics; tranquillizers; digestives for pharmaceutical purposes; laxatives; narcotics; chemical products for medical or veterinary purposes; chemico-pharmaceutical products; soporifics; serums; suppositories; vaccines; syringes, carpules and ampoules for medical purposes [containing pharmaceuticals]; oncology preparations; preparations for the treatment of diseases of the central nervous system, for the treatment of the skin, thrombosis, coagulation diseases, infections, flu, pain and inflammations.

Class 9:        Scientific research apparatus for medical, veterinary, and pharmaceutical purposes; scientific laboratory apparatus for the clinical sector.

Class 10:        Surgical, medical and dental apparatus and instruments; orthopedic articles; suture materials; syringes for medical purposes and for injections; systems for injection; one-dose injectable devices; implant materials; injectable carpules and ampoules; vials.

Class 40:        Custom manufacture of surgical, medical, dental and veterinary apparatus and instruments.

2.        European Union trade mark application No 14 250 617 is rejected for all the above goods and service. 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 European Union trade mark application No 14 250 617 for a figurative trade mark . The opposition is based on German trade mark registration No 39 964 290 for a word trade mark ‘RoBi’. The opponent invoked Article 8(1)(b) EUTMR.

Preliminary remark regarding substantiation

The applicant argues that the opponent did not substantiate the trade mark on which the opposition is based since it did not provide the registration certificate but most importantly its translation into the language of the proceeding within the time limit set by the Office. The Opposition Division notes that the time limit given to the opponent in order to furnish further facts, evidence or arguments for the purpose of substantiation of the opposition has been aligned with the time limit to submit the proof of use. This was notified to both parties on 14/10/2016, where the relevant part was highlighted in yellow. Hence, the original deadline to submit the required documents has been extended until 26/12/2016. The opponent submitted the relevant documents on 20/12/2016 and 21/12/2016, thus within the set time limit. Consequently, the opposition is substantiated with regards to the German trade mark No 39 964 290 on which the opposition is based.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely German trade mark No 39 964 290.

The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The contested application was published on 07/07/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Germany from 07/07/2010 to 06/07/2015 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 10:        Bipolar surgical instruments, with the exception of cutlery.

According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 14/10/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 26/12/2012 to submit evidence of use of the earlier trade mark. On 21/12/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is, in particular, the following:

• Several undated photographs of a few types of bipolar instruments, bearing the trademark ‘RoBi’; the opponent’s name, indication ‘Germany’ as well as a reference numbers 38151, 38161, 38121 (see A1).

• Affidavit signed by Mr Michael Tröndle, head of the finance and tax department of Karl Storz GmbH & Co. KG (opponent), stating that one of the company’s core products is a bipolar surgical instrument consisting of a handle, a sheath and an insert, such as a forceps, scissors, and scalpel, bearing the mark ‘RoBi’. The affidavit shows sales turnover in Germany for 2011 to 2015 as follows:

Jahr/Year	2011	2012	2013	2014	2015
Umsätze/ Turnovers	>EUR 1.250.000	>EUR 1.200.000	>EUR 1.170.000	>EUR 1.850.000	>EUR 1.780.000

(see A 2.2)

• Copy of an instruction manual for the bipolar instrument with scalpel in German, English and Spanish for models with reference numbers 66351 DN/66451 DN. The manual includes the mark RoBi followed by the sign ®, a photo of an instrument, which is bearing the mark ‘RoBi’, information about the opponent, its address and contact details and a date, which is 06/2013 (see A3).

• Copy of an instruction manual for RoBi® instruments, different models with reference numbers i.a. 38151, 3881 ON. The manual is in German, English and Spanish, includes a photo of an instrument, which is bearing the mark ‘RoBi’, information about the opponent, its address and contact details and a date, which is 08/2015 (see A3).

• Copy of an instruction manual for RoBi® instruments, different models with reference numbers i.a. 38121/38122, 38310, 38161, 38210, 38610. The manual is in German, English and Spanish, includes a photo of an instrument, which is bearing the mark ‘RoBi’, information about the opponent, its address and contact details and a date, which is 07/2013 (see A3).

• Undated advertisement leaflet in German, including a trade mark RoBi followed by the sign ®, a photo of an instrument bearing the same mark, the opponent’s name, indication ‘Germany’ as well as a reference number 38151. The opponent’s contact details are also included (see A4).

• Advertisement leaflet in English for ‘Rotating Bipolar Instruments’/ for ‘Rotating Bipolar Grasping Forceps and Scissors’ including a trade mark RoBi followed by the sign ®, a photo of an instrument bearing the same mark, the opponent’s name, indication ‘Germany’ as well as a reference number 38151. This leaflet includes the opponent’s contact details in Germany, the United States of America and Canada and it is dated in the following form 08/2013/A-E.

• A number of copies of invoices, in German, covering period between October 2011 and February 2016 (see A6.1 until A6.6), in particular the invoices 91159105 from 22/11/2012, 91193704 from 04/02/2013, 91200949 from 20/02/2013, 91206183 from 28/02/2013, 91216097 from 20/03/2013, 91183565 from 15/01/2013, 91337893 from 19/11/2013, 91399638 from 05/03/2014, 91741874 from 25/09/2015.

• Extracts from a few journals, for example from ‘EndoGramm’, issues 05/2012, 07/2015, from ‘EndoWorld’, issues 05/2013, 06/2015. These documents are in German, include the trade mark ‘RoBi’, the photos of different instruments and their parts i.a. also instruments bearing the opponent’s trade mark, the description of the relevant instruments, their reference numbers as well as the opponent’s contact details in Germany and Austria (see A8). According to the opponent, the relevant journals were provided to health care professionals in the territory of Germany in the relevant time period.

The applicant argues that the opponent did not submit translations of some of the evidence of use and that therefore this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Rule 22(6) EUTMIR).

It is true that the submitted invoices are only in German and that a large amount of them include not only the opponent’s trade mark but also a text in German which seems to refer to the reparation of the goods bearing the opponent’s mark. Nevertheless, several submitted invoices, as listed above, refer only to the relevant goods. Albeit the description of these goods is in German also on those invoices, there is no additional text there, the relevant mark is depicted before the said description and the reference number of each product is clearly perceptible. Taking into account the foregoing, which, in connection with other evidence, allows to clearly identify the relevant goods as well as the nature of the remaining information on the invoices, which have not been translated and are considered relevant for the present proceedings, e.g. addresses, dates, amounts and their self-explanatory character, the Opposition Division considers that there is no need to request a translation of the submitted invoices.

The applicant further argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods for which the earlier mark is registered.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

As far as the above mentioned affidavit is concerned, Rule 22(4) EUTMIR expressly mentions written statements referred to in Article 78(1)(f) EUTMR as admissible means of proof of use. Article 78(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.

However, this does not mean that such statements do not have any probative value at all.

The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources.

Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.

Place of use

The evidence must show that the earlier mark has been genuinely used in Germany. Contrary to the applicant, the Opposition Division is of the opinion that the documents submitted show without any doubt that the place of use is Germany. This can be inferred from the language of the above cited documents as well as from the addresses mentioned in the invoices since all of those are in Germany. Although, some of the evidence submitted is in other languages, e.g. in English, this does not change the fact that sufficient amount of the convincing evidence is submitted in German and that the addresses in the invoice prove the commercialization of the relevant goods in Germany. Therefore, the evidence relates to the relevant territory.

Time of use

A substantial part of the evidence is dated within the relevant period. Although some of the relevant evidence, for instance the photos of the products, the advertisement leaflet are undated, it has to be noted that, when assessed in its entirety the evidence contains sufficient proof that the goods bearing the trade mark ‘RoBi’ were distributed within the relevant period.

Some of the evidence refers to use made outside the relevant timeframe. In general this kind of evidence is disregarded unless it contains conclusive indirect proof that the mark must have been put to genuine use as well during the relevant period of time. Events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50).

In the case at hand, the undated evidence as well as the evidence referring to use outside the relevant period, in particular the photos and the journals gives an indication that the opponent’s mark was used within the relevant period. This is because some of the reference numbers included in some of the invoices (cited above and issued within the relevant period) correspond to reference numbers depicted on the products on the photos and in the mentioned journals.

Nature of use

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

In the present case, almost all the evidence submitted show clearly the earlier German trade mark ‘RoBi’ is affixed to surgical bipolar instruments. This was also acknowledged by the opponent in its arguments.

Extent of use

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The exact decisive threshold proving genuine use cannot be defined out of context. The turnover and volume of sales of the product must always be assessed in relation to all the other relevant factors, such as the volume of business, production or marketing capacity or the degree of diversification of the undertaking using the trade mark and the characteristics of the products or services on the relevant market. Use need not always be quantitatively significant for it to be deemed genuine, as that depends on the characteristics of the goods or service concerned on the corresponding market (judgments of 11/03/2003, C-40/01, Minimax, EU:C:2003:145, § 39; 08/07/2004, T-203/02, Vitafruit, EU:T:2004:225, § 42).

Low turnover and sales, in absolute terms, of a medium- or low-priced product might support the conclusion that use of the trade mark in question is not genuine. However, with regard to expensive goods or an exclusive market, low turnover figures can be sufficient (decision of 04/09/2007, R 0035/2007-2, Dinky, § 22). It is, therefore, always necessary to take the characteristics of the market in question into account (judgment of 08/07/2004, T-334/01, Hipoviton, EU:T:2004:223, § 51).

The documents filed, in particular the invoices, supported by the instruction manuals, the photos of the products and the extracts from the journals, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration and the frequency of use.

The main information as regards the extent of the opponent’s activities comes from the invoices, which demonstrate sales during five years within the relevant period. The fact that the majority of the invoices are non-consecutive and cover an extensive period, from 2011 to 2016, must be also taken into consideration. It allows the inference that the invoices have been submitted merely as examples of sales and do not represent the total sales of goods under the earlier mark realised by the opponent during the relevant period. Hence, the submitted invoices in combination with the instruction manuals, the journals and the photos of the products bearing the earlier mark, whereas some of the reference numbers in the invoices correspond to the reference numbers in these manuals and the photos, provide the Opposition Division sufficient information regarding the commercial activities of the opponent throughout the relevant period and proves that use of the mark has been more than mere token use.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier mark.

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory, namely Germany.

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

Class 10:        Bipolar surgical instruments, with the exception of cutlery.

The contested goods and services are the following:

Class 1:        Chemical raw materials for cosmetic and pharmaceutical purposes; chemicals used in the manufacture of personal care, cosmetic, pharmaceutical, household and industrial products.

Class 3:        Bleaching preparations and other substances for laundry use; cleaning, polishing, degreasing and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices; cleaning preparations for sanitary and therapeutic purposes.

Class 5:        Pharmaceutical and veterinary products; sanitary and hygienic products for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; products for destroying vermin; fungicides, herbicides; antibiotics; analgesics; anesthetics; amino acids for medical purposes; antiseptics; tranquillizers; eye-wash; digestives for pharmaceutical purposes; laxatives; narcotics; chemical products for medical or veterinary purposes; chemico-pharmaceutical products; tonics (medicine); soporifics; serums; suppositories; vaccines; syringes, carpules and ampoules for medical purposes [containing pharmaceuticals]; oncology preparations; preparations for the treatment of diseases of the central nervous system, for the treatment of the skin, thrombosis, coagulation diseases, infections, flu, pain and inflammations.

Class 9:        Scientific research apparatus for medical, veterinary, and pharmaceutical purposes; scientific laboratory apparatus for the clinical sector; computer software and computer programs for storing and analysing experimental and other data for scientific, research, laboratory, medical, veterinary, clinical diagnosis, biological and pharmaceutical purposes.

Class 10:        Surgical, medical and dental apparatus and instruments; orthopedic articles; suture materials; syringes for medical purposes and for injections; systems for injection; one-dose injectable devices; implant materials; injectable carpules and ampoules; vials.

Class 16:        Printed matter, except those relating to school supplies; instructional and teaching material (except apparatus) in the scientific, medical, sanitary, biological and pharmaceutical fields.

Class 21:        Household or kitchen utensils and containers; combs and sponges; brushes (except paint brushes); brushmaking materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes.

Class 35:        Advertising, business management, business administration in particular for the biotechnology and pharmaceutical fields; business consultancy relating to medical and pharmaceutical development; import services, export and agency services of medicinal products and cosmetics except over-the-counter medicines; retail store services and via global computer networks of pharmaceutical preparations, cosmetics, food and dietetic beverages, infusions.

Class 39:        Storage, supply, distribution, packaging and transport of medicines for human and veterinary purposes, medicinal substances, likely to form part of the medicine prepared by a pharmaceutical laboratory, and the other pharmaceutical, sanitary, para-pharmaceutical and orthopaedic products, and any others that can be sold in pharmacies except over-the-counter medicines; Storage, supply, distribution, packaging and transport of dietetic, cosmetic and perfumery products and any others that can be sold in pharmacies except over-the-counter medicines.

Class 40:        Custom manufacture of pharmaceutical and veterinary preparations, sanitary preparations for medical purposes, food supplements for human beings and animals, plasters, materials for dressings, material for stopping teeth, dental wax, disinfectants, surgical, medical, dental and veterinary apparatus and instruments, and artificial limbs, eyes and teeth, orthopedic articles, suture materials; Processing of chemicals; Microencapsulating services provided for others.

Class 41:        Education in the scientific, medical, sanitary, biological and pharmaceutical fields; providing of training in the scientific, medical, sanitary, biological and pharmaceutical fields; arranging and conducting of training conferences, seminars, training workshops and symposiums in the scientific, medical, sanitary, biological and pharmaceutical fields.

Class 42:        Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; research and development of new goods (for others); cosmetic, bacteriological, biological, geological, chemical, technical research; quality control services; chemical analysis; scientific research in the field of pharmacy; pharmaceutical research and development; testing of products; conduct of clinical trials; quality control of manufactured products; consultancy pertaining to pharmacology; pharmaceutical product evaluation.

Class 44:        Medical services; Veterinary services; Hygienic and beauty care for human beings or animals; Agriculture, horticulture and forestry services.

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 ‘in particular’, used in the applicant’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

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 1, 3, 16 and 21

The contested goods in Class 1 are chemicals (mainly raw materials) for use in industry, whereas the goods in Class 3 are either goods intended for treating and cleaning laundry and household or they are beauty and body care products, which purpose is taking care of, and improving, one’s personal appearance and hygiene. They are sold in drug stores and special aisles of the department stores or of supermarkets.

The applicant’s Class 16 includes printed materials, especially those used for teaching and education purposes, while Class 21 includes mainly containers and small hand-operated utensils and apparatus for household and kitchen use.

Considering the foregoing, all these goods differ in their nature, purpose, distribution channels as well as their usual origins. Moreover, these goods have different methods of use. As regards as possible complementary character of the goods at issue, in general, goods are complementary if there is a close connection between them, in the sense that one is indispensable (essential) or important (significant) for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking. In the present case, the contested goods in Class 1,3,16 and 21 (as listed above) are not complementary to the opponent’s bipolar surgical instruments, with the exception of cutlery because the use of the contested goods is not indispensable or important for the use of the opponent’s goods, and vice versa.

Therefore, all the above mentioned goods are clearly dissimilar to the opponent’s goods.

Contested goods 5

The contested pharmaceutical and veterinary products; antibiotics; analgesics; anesthetics; amino acids for medical purposes; tranquillizers; chemical products for medical or veterinary purposes; chemico-pharmaceutical products; digestives for pharmaceutical purposes; laxatives; narcotics; soporifics; serums; suppositories; vaccines; syringes, carpules and ampoules for medical purposes [containing pharmaceuticals]; oncology preparations; preparations for the treatment of diseases of the central nervous system, for the treatment of the skin, thrombosis, coagulation diseases, infections, flu, pain and inflammations can coincide in end user and distribution channels. Therefore, they are similar to a low degree to the opponent’s goods.

The contested plasters, materials for dressings; disinfectants; antiseptics and the opponent’s goods can coincide in end user and distribution channels. Furthermore they are complementary. Therefore, they are similar to a low degree.

However, the contested sanitary and hygienic products for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; material for stopping teeth, dental wax; eye-wash; tonics (medicine); products for destroying vermin; fungicides, herbicides and the opponent’s goods are dissimilar as they clearly differ in their ultimate purpose and methods of use. Furthermore, the manufacture of the opponent’s goods requires a technical know-how and expertise that is different from the know-how necessary to produce the applicant’s goods. 

Contested goods 9

When it comes to the contested goods in Class 9, these are broadly speaking various apparatus and instruments for scientific or research purposes, information technology and audiovisual equipment.

The opponent’s bipolar surgical instruments, with the exception of cutlery and the contested scientific research apparatus for medical, veterinary, and pharmaceutical purposes; scientific laboratory apparatus for the clinical sector can coincide in producer, end user and distribution channels. Therefore, they are considered similar to a low degree.

However, the contested computer software and computer programs for storing and analysing experimental and other data for scientific, research, laboratory, medical, veterinary, clinical diagnosis, biological and pharmaceutical purposes and the opponent’s goods have no relevant points in common. They clearly differ in their nature, purpose and methods of use. Furthermore, they are not produced by the same companies and they would not be presented or sold together in the market as they are distributed through different, specialised distribution channels. Moreover, these goods are neither in competition with each other nor complementary. Therefore, these goods are considered dissimilar.

Contested goods 10

The contested surgical, medical apparatus and instruments include, as broader categories or overlap with the opponent’s bipolar surgical instruments, with the exception of cutlery. Therefore, they are identical.

The contested suture materials are similar to a high degree to the opponent’s bipolar surgical instruments, with the exception of cutlery as they have the same purpose. They can coincide in producer, end user and distribution channels. Furthermore they are complementary.

The contested dental apparatus and instruments are similar to the opponent’s bipolar surgical instruments, with the exception of cutlery since they have a similar purpose, they can coincide in producer, end user and distribution channels.

The contested orthopedic articles; syringes for medical purposes and for injections; systems for injection; one-dose injectable devices; implant materials; injectable carpules and ampoules; vials and the opponent’s goods can coincide in producer, end user and distribution channels. Therefore, they are similar to a low degree.

Before proceeding to the comparison of the opponent’s goods and the contested services, the Opposition Division finds it useful to note that by their nature services are generally dissimilar to goods. Their nature is different, since goods are tangible whereas services are intangible. They will be provided by different manufacturers and providers whilst targeting different publics via different channels. Furthermore, they are neither complementary nor in competition.  

Contested services in Class 35

The advertising services in Class 35 consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, who study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc.

Advertising services are fundamentally different in nature and purpose from the manufacture of goods. The fact that some goods may appear in advertisements is insufficient for finding similarity. Therefore, advertising is dissimilar to the goods or services being advertised.

The business management services in Class 35 are usually rendered by companies specialising in this specific field such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. The services involve activities such as business research and appraisals, cost price analysis and organisation consultancy. These services also include any ‘consultancy’, ‘advisory’ and ‘assistance’ activity that may be useful in the ‘management of a business’, such as how to allocate financial and human resources efficiently, how to improve productivity, how to increase market share, how to deal with competitors, how to reduce tax bills, how to develop new products, how to communicate with the public, how to do marketing, how to research consumer trends, how to launch new products, how to create a corporate identity, etc.

Import, export and agency services in Class 35 relate to the movement of goods and normally require involvement of customs authorities in both the country of import and the country of export. These services are often subject to import quotas, tariffs and trade agreements. They relate to business administration.

Business consultancy services cover providing of expert knowledge to a third party for a fee. Consulting is most often used when a company needs an outside, expert opinion regarding a business decision.

Business administration services in Class 35 consist of organising people and resources efficiently so as to direct activities toward common goals and objectives. They include activities such as personnel recruitment, payroll preparation, drawing up account statements and tax preparation.

It follows from the above, that the opponent’s goods and the contested services advertising, business management, business administration in particular for the biotechnology and pharmaceutical fields; business consultancy relating to medical and pharmaceutical development; import services, export and agency services of medicinal products and cosmetics except over-the-counter medicines have a different nature and purpose. They are not complementary nor in competition. They have different distribution channels and sales outlets. It is not usual that the same kinds of undertakings are involved in the production or the provision of these goods and services. Therefore, they are dissimilar.

Moreover, the Opposition Division points out that the contested retail store services and via global computer networks of pharmaceutical preparations, cosmetics, food and dietetic beverages, infusions and the opponent’s bipolar surgical instruments, with the exception of cutlery are not similar. Apart from being different in nature, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of said goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue (pharmaceutical preparations, cosmetics, food and dietetic beverages, infusions and bipolar surgical instruments, with the exception of cutlery) are not identical.

Contested services in Class 39

Class 39 includes mainly services for the transport of people, animals or goods from one place to another (by rail, road, water, air or pipeline) and services necessarily connected with such transport, as well as services relating to the storing of goods in a warehouse or other building for their preservation or guarding.

Transport services are provided by specialist transport companies whose business is not the manufacture and sale of the goods that are transported. The services differ from the goods in terms of their nature, purpose and method of use. They do not have the same distribution channels and are not in competition. Therefore, they are dissimilar.

Packaging and storage services refer to services whereby a company’s merchandise is packed and kept in a particular place for a fee. Those services are not similar to the opponent’s goods which could be packed or stored. The nature, purpose and method of use of these services and goods are different. They do not have the same providers/producers or distribution channels and are not in competition.

Therefore, the contested storage, supply, distribution, packaging and transport of medicines for human and veterinary purposes, medicinal substances, likely to form part of the medicine prepared by a pharmaceutical laboratory, and the other pharmaceutical, sanitary, para-pharmaceutical and orthopaedic products, and any others that can be sold in pharmacies except over-the-counter medicines; storage, supply, distribution, packaging and transport of dietetic, cosmetic and perfumery products and any others that can be sold in pharmacies except over-the-counter medicines are dissimilar to the opponent’s goods

Contested services in Class 40

The contested custom manufacture of surgical, medical, dental and veterinary apparatus and instruments and the opponent’s goods are considered similar to a low degree since they can coincide in end user and distribution channels.

However, the remaining services in this Class, namely custom manufacture of pharmaceutical and veterinary preparations, sanitary preparations for medical purposes, food supplements for human beings and animals, plasters, materials for dressings, material for stopping teeth, dental wax, disinfectants and artificial limbs, eyes and teeth, orthopedic articles, suture materials as these  concern different types of goods and there are no relevant points in common between these services and the opponent’s goods. The same applies to the processing of chemicals; microencapsulating services provided for others. Hence, all these services and the opponent’s goods are of different nature and purpose. Furthermore, they have different distribution channels and sales outlets and they are neither complementary nor in competition. They are, therefore, dissimilar.

Contested services in Class 41

The contested services covers services which purpose is mainly to educate, to train or to arrange and conduct of conferences, seminars, trainings workshops and symposiums.  These services and the opponent’s goods have a different nature and purpose. They have different distribution channels and sales outlets. It is not usual that the same kinds of undertakings are involved in the production or the provision of these goods and services. Furthermore, they are neither complementary nor in competition. The contested services in this Class, namely education in the scientific, medical, sanitary, biological and pharmaceutical fields; providing of training in the scientific, medical, sanitary, biological and pharmaceutical fields; arranging and conducting of training conferences, seminars, training workshops and symposiums in the scientific, medical, sanitary, biological and pharmaceutical fields, are, therefore, dissimilar to the opponent’s goods.

Contested services in Class 42

The contested services in this Class are all kinds of scientific and technology-related activities which are concerned with research and experimental development and contribute to the generation, dissemination and application of scientific and technical knowledge. These services include mainly services provided by persons, individually or collectively, in relation to the theoretical and practical aspects of complex fields of activities; such services are provided by members of professions such as chemists, physicists, engineers, computer programmers etc. Considering that the opponent’s goods are very specific goods used in the surgical procedures, these goods and all the contested services in this Class are considered different from each other as they have a different nature and purpose. Therefore, these services are also different to the goods of the earlier marks. They are not complementary nor in competition. They have different distribution channels and sales outlets. It is not usual that the same kinds of undertakings are involved in the production or the provision of these goods and services. They are, therefore, dissimilar.

Contested services in Class 44

The contested medical and veterinary services concern activities that provide actual medical care to either humans or animals. Although the opponent’s goods are used during a surgery or similar medical treatment, it does not make these goods similar to the mentioned services. The opponent’s bipolar surgical instruments, with the exception of cutlery and these services are targeted at very different consumers, namely the very specialised public handling the apparatus and instruments of the earlier mark (surgeons, veterinary surgeons, medical practitioners, nurses etc.) and the public asking for the medical and veterinary services. Moreover, it is very unlikely that the producers of the surgical instruments and apparatus also provide medical and/or veterinary services to patients, or at least, since the end consumers of the goods and services at issue are so different, they will rarely make the link between the undertaking origins of the goods. They are, therefore, dissimilar. The nature and purpose of the contested hygienic and beauty services for human and beings or animals are self-explanatory, while agriculture, horticulture and forestry services are those services provided in relation to the occupation of cultivating land and rearing crops and livestock, cultivating gardens or plating and caring for trees respectively. There are no relevant points in common under the already abovementioned criteria between these services and the opponent’s goods. They are clearly dissimilar.

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 various degree are specialised and are directed mainly at business customers with specific professional knowledge or expertise (such as professionals in the medical field). The degree of attention will be higher than average, due to their specialised nature and to their direct effects on the state of health of the patients/users.

3. The signs

RoBi
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 contested mark is a figurative mark composed of the verbal element ‘ROVI’ written in standard upper case white letters placed on a grey rectangular background whereas the earlier mark is a word mark, formed of the single verbal element ‘RoBi’. In the case of word marks, it is the words as such that are protected and not their written form. Therefore, it is irrelevant whether they are presented in upper or lower case letters, or in a combination thereof.

Neither the signs have a meaning in the relevant territory; therefore, the Opposition Division considers that both the earlier mark and the contested sign, will be perceived as fanciful terms by the relevant consumers and consequently are distinctive in relation to the goods at issue.

Considering that the square background is of a purely decorative nature, it is a less distinctive element in the contested sign.

Visually, the signs coincide in the sequence of the letters ‘RO*I’. However, they differ in the third letter ‘V/B’ respectively and in the grey square background and a graphic representation of the contested sign.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

Furthermore, it should be noted that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Therefore, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘RO*I’, present identically at the beginning and end of each sign and differ in the third letters ‘B’, ‘V’ respectively. However, due to the fact that both consist of two syllables, of which one will be pronounced identically, the other one highly similar; they have the same rhythm, melody and intonation.

Therefore, the signs are similar to at least an average degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

Furthermore, evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

The goods and services at issue are partly identical, partly similar to various degrees and partly dissimilar.

The similarities between the signs result from the coincidence of the three letters ‘RO*I’, placed identically at the beginning and the end of each sign. The differences are only in the slight stylisation of the contested sign and in the signs’ third letter, ‘B’ and ‘V’ respectively. In addition, the difference between the sounds of these signs when pronounced is not striking due to the identical beginning and ending. Moreover, none of the signs has a meaning that could help to differentiate them.

Furthermore, consumers only rarely have the chance to make a direct comparison between the different marks but must place their trust in the imperfect picture of them that they have kept in their mind (judgment of 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323). Even consumers who pay 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 view of the foregoing, the Opposition Division considers that the differences between the signs are not sufficient to enable the consumers to safely distinguish between the marks at issue and therefore they are likely to believe that the goods originate from the same undertaking or from economically related undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the relevant public and therefore the opposition is partly well founded on the basis of the opponent’s German trade mark registration No 39 964 290.

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 mark.

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.

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

Julia SCHRADER

Renata COTTRELL

Claudia MARTINI

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.