SPECCs | Decision 2270281 - MSI Holdings LLC v. CETICS Healthcare Technologies GmbH
Date Published: Oct 10, 2017
OPPOSITION No B 2 270 281
MSI Holdings LLC, 203 Norcross Avenue, Metuchen, New Jersey 08840, United States of America (opponent), represented by Wilson Gunn, 5th Floor Blackfriars House The Parsonage, Manchester M3 2JA, United Kingdom (professional representative)
a g a i n s t
Cetics Healthcare Technologies GmbH, Schelztorstr. 54-56, 73728 Esslingen, Germany (applicant), represented by Gleiss Große Schrell und Partner mbB, Leitzstr. 45, 70469 Stuttgart, Germany (professional representative).
On 15/03/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 270 281 is upheld for all the contested goods and services, namely
Class 1: Chemicals used in science and (scientific) diagnosis, namely for qualitative and quantitative analysis of substances, namely for use in analysis methods based on infrared, namely infrared spectroscopy, and fluorometric analysis methods, namely fluorescence spectroscopy, for use in the beverage and food industry, in the medical, diagnostic and pharmaceutical sector, in the field of process technology, toxicology and cell culture technology, and for determining the constituents and quantity thereof in samples, namely process samples, environmental samples, oil samples, samples of genetic material, chemicals, pharmaceuticals, cosmetics, foodstuffs and beverages, and samples of plant, animal, microbial or human origin.
Class 5: Reagents for use in analysis, namely microbiological analysis, for medical, microbiological and veterinary purposes, namely for qualitative and quantitative analysis of substances, namely for use in analysis methods based on infrared, namely infrared spectroscopy, and fluorometric analysis methods, namely fluorescence spectroscopy, for use in the beverage and food industry, in the medical, diagnostic and pharmaceutical sector, in the field of process technology, toxicology and cell culture technology, and for determining the constituents and quantity thereof in samples, namely process samples, environmental samples, oil samples, samples of genetic material, chemicals, pharmaceuticals, cosmetics, foodstuffs and beverages, and samples of plant, animal, microbial or human origin.
Class 9: Apparatus for scientific research and laboratories, spectrometers, namely FTIR spectrometers, infrared spectometry measuring apparatus; fluorimeters, namely spectrofluorometers; teaching apparatus and simulators; software; computer servers; notebook and laptop computers; computers and computer hardware; testing apparatus not for medical purposes; all of the aforesaid goods for qualitative and quantitative analysis of substances, namely for use in analysis methods based on infrared, namely infrared spectroscopy, and fluorometric analysis methods, namely fluorescence spectroscopy, for use in the beverage and food industry, in the medical, diagnostic and pharmaceutical sector, in the field of process technology, toxicology and cell culture technology, and for determining the constituents and quantity thereof in samples, namely process samples, environmental samples, oil samples, samples of genetic material, chemicals, pharmaceuticals, cosmetics, foodstuffs and beverages, and samples of plant, animal, microbial or human origin.
Class 10: Apparatus for use in medical analysis; analysers for medical use, namely apparatus for use in spectrometric analysis and apparatus for analysing bacteria in biological samples; all of the aforesaid goods for qualitative and quantitative analysis of substances, namely for use in analysis methods based on infrared, namely infrared spectroscopy, and fluorometric analysis methods, namely fluorescence spectroscopy, for use in the beverage and food industry, in the medical, diagnostic and pharmaceutical sector, in the field of process technology, toxicology and cell culture technology, and for determining the constituents and quantity thereof in samples, namely process samples, environmental samples, oil samples, samples of genetic material, chemicals, pharmaceuticals, cosmetics, foodstuffs and beverages, and samples of plant, animal, microbial or human origin.
Class 42: Writing of computer programs for medical applications; research and development of computer hardware and computer software; computerised food analysis services; computerised analysis of data; chemical analysis, all of the aforesaid services for qualitative and quantitative analysis of substances, namely for use in analysis methods based on infrared, namely infrared spectroscopy, and fluorometric analysis methods, namely fluorescence spectroscopy, for use in the beverage and food industry, in the medical, diagnostic and pharmaceutical sector, in the field of process technology, toxicology and cell culture technology, and for determining the constituents and quantity thereof in samples, namely process samples, environmental samples, oil samples, samples of genetic material, chemicals, pharmaceuticals, cosmetics, foodstuffs and beverages, and samples of plant, animal, microbial or human origin.
Class 44: Medical analysis, all of the aforesaid services for qualitative and quantitative analysis of substances, namely for use in analysis methods based on infrared, namely infrared spectroscopy, and fluorometric analysis methods, namely fluorescence spectroscopy, for use in the beverage and food industry, in the medical, diagnostic and pharmaceutical sector, in the field of process technology, toxicology and cell culture technology, and for determining the constituents and quantity thereof in samples, namely process samples, environmental samples, oil samples, samples of genetic material, chemicals, pharmaceuticals, cosmetics, foodstuffs and beverages, and samples of plant, animal, microbial or human origin.
2. European Union trade mark application No 12 011 888 is rejected for all the contested goods and services. It may proceed for the remaining goods and services in Classes 10, 42 and 44.
3. The applicant bears the costs, fixed at EUR 650.
REASONS:
The opponent filed an opposition against some of the goods and services of European Union trade mark application No 12 011 888, namely against all the goods in Classes 1, 5 and 9 and some of the goods and services in Classes 10, 42 and 44. The opposition is based on European Union trade mark registration No 9 709 486 and European Union trade mark registration No 10 965 044. The opponent invoked Article 8(1)(b) EUTMR.
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.
- The goods and services
The goods and services on which the opposition is based are the following:
European Union trade mark registration No 9 709 486
Class 1: Chemicals, chemical reagents, chemical reagents including chemical standards for x-ray fluorescence and atomic absorption analysis systems, for scientific research and industrial use; chemical and biotechnology products used as reference materials and setting-up-samples for scientific and industrial use and research; organic and inorganic standards used as reference materials and setting-up-samples for scientific and industrial use and research, for forensic science; diagnostic and analytical preparations, reagents, substances and chemicals; preparations, reagents, controls, reference samples, substances, primers, all for polymerase chain reactions and DNA profiling.
Class 5: Chemical reagents, preparations and substances for medical purposes, particularly for analytical, testing and diagnostic purposes.
Class 9: Software (recorded programs) for use in the field of analysis for diagnostic purposes; computer software for use in sample preparation systems, for legal services and analytical science; analyzers consisting of computers and computer programs for use in sample preparation, sample tracking, databases, reference information; analyzers consisting of computers and computer programs for use in blood analysis for diagnostic purposes; electronic blood analyzers; all the aforesaid goods excluding in the field of defence and security.
European Union trade mark registration No 10 965 044
Class 9: Scientific, analytical and laboratory instruments and equipment including, spectrophotometers, monochromators, micrometers, diffraction gratings, spectrometers, spectrographs, spectrophotometers, phosphorimeters, colorimeters, monochromators, spectrofluorometers and parts thereof, laser microprobe for obtaining information on molecular structure of matter, micro spectrophotometers and imaging instruments, vacuum instruments including ultrahigh vacuum chambers and parts thereof, surface analysis instruments and parts thereof, thin film deposition units, gas analysis testers, mechanical property testers, pipette washer and dryer, and apparatus for processing samples in preparation for analysis, including, presses and grinders; electronically controlled automated hydraulic laboratory presses; and optical analysis instrumentation incorporating linear diode detection arrays; sample preparation equipment for laboratory and industrial use; software (recorded programs) for use in the field of analysis for diagnostic purposes; computer software for use in forensic science, legal services and analytical science; analyzers consisting of computers and computer programs for use in blood analysis for diagnostic purposes; all the aforesaid goods excluding in the field of defence and security.
After a limitation filed by the applicant on 21/09/2015, the contested goods and services are the following:
Class 1: Chemicals used in science and (scientific) diagnosis, namely for qualitative and quantitative analysis of substances, namely for use in analysis methods based on infrared, namely infrared spectroscopy, and fluorometric analysis methods, namely fluorescence spectroscopy, for use in the beverage and food industry, in the medical, diagnostic and pharmaceutical sector, in the field of process technology, toxicology and cell culture technology, and for determining the constituents and quantity thereof in samples, namely process samples, environmental samples, oil samples, samples of genetic material, chemicals, pharmaceuticals, cosmetics, foodstuffs and beverages, and samples of plant, animal, microbial or human origin.
Class 5: Reagents for use in analysis, namely microbiological analysis, for medical, microbiological and veterinary purposes, namely for qualitative and quantitative analysis of substances, namely for use in analysis methods based on infrared, namely infrared spectroscopy, and fluorometric analysis methods, namely fluorescence spectroscopy, for use in the beverage and food industry, in the medical, diagnostic and pharmaceutical sector, in the field of process technology, toxicology and cell culture technology, and for determining the constituents and quantity thereof in samples, namely process samples, environmental samples, oil samples, samples of genetic material, chemicals, pharmaceuticals, cosmetics, foodstuffs and beverages, and samples of plant, animal, microbial or human origin.
Class 9: Apparatus for scientific research and laboratories, spectrometers, namely FTIR spectrometers, Infrared spectometry measuring apparatus; fluorimeters, namely spectrofluorometers; teaching apparatus and simulators; software; computer servers; notebook and laptop computers; computers and computer hardware; testing apparatus not for medical purposes; all of the aforesaid goods for qualitative and quantitative analysis of substances, namely for use in analysis methods based on infrared, namely infrared spectroscopy, and fluorometric analysis methods, namely fluorescence spectroscopy, for use in the beverage and food industry, in the medical, diagnostic and pharmaceutical sector, in the field of process technology, toxicology and cell culture technology, and for determining the constituents and quantity thereof in samples, namely process samples, environmental samples, oil samples, samples of genetic material, chemicals, pharmaceuticals, cosmetics, foodstuffs and beverages, and samples of plant, animal, microbial or human origin.
Class 10: Apparatus for use in medical analysis; analysers for medical use, Namely apparatus for use in spectrometric analysis and apparatus for analysing bacteria in biological samples; all of the aforesaid goods for qualitative and quantitative analysis of substances, namely for use in analysis methods based on infrared, namely infrared spectroscopy, and fluorometric analysis methods, namely fluorescence spectroscopy, for use in the beverage and food industry, in the medical, diagnostic and pharmaceutical sector, in the field of process technology, toxicology and cell culture technology, and for determining the constituents and quantity thereof in samples, namely process samples, environmental samples, oil samples, samples of genetic material, chemicals, pharmaceuticals, cosmetics, foodstuffs and beverages, and samples of plant, animal, microbial or human origin.
Class 42: Writing of computer programs for medical applications; research and development of computer hardware and computer software; computerised food analysis services; computerised analysis of data; chemical analysis, all of the aforesaid services for qualitative and quantitative analysis of substances, namely for use in analysis methods based on infrared, namely infrared spectroscopy, and fluorometric analysis methods, namely fluorescence spectroscopy, for use in the beverage and food industry, in the medical, diagnostic and pharmaceutical sector, in the field of process technology, toxicology and cell culture technology, and for determining the constituents and quantity thereof in samples, namely process samples, environmental samples, oil samples, samples of genetic material, chemicals, pharmaceuticals, cosmetics, foodstuffs and beverages, and samples of plant, animal, microbial or human origin.
Class 44: Medical analysis, all of the aforesaid services for qualitative and quantitative analysis of substances, namely for use in analysis methods based on infrared, namely infrared spectroscopy, and fluorometric analysis methods, namely fluorescence spectroscopy, for use in the beverage and food industry, in the medical, diagnostic and pharmaceutical sector, in the field of process technology, toxicology and cell culture technology, and for determining the constituents and quantity thereof in samples, namely process samples, environmental samples, oil samples, samples of genetic material, chemicals, pharmaceuticals, cosmetics, foodstuffs and beverages, and samples of plant, animal, microbial or human origin.
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 ‘particularly’ and ‘including’, used in the opponent’s list of goods indicates that the specific goods 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 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
However, the term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.
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
The contested chemicals used in science and (scientific) diagnosis, namely for qualitative and quantitative analysis of substances, namely for use in analysis methods based on infrared, namely infrared spectroscopy, and fluorometric analysis methods, namely fluorescence spectroscopy, for use in the beverage and food industry, in the medical, diagnostic and pharmaceutical sector, in the field of process technology, toxicology and cell culture technology, and for determining the constituents and quantity thereof in samples, namely process samples, environmental samples, oil samples, samples of genetic material, chemicals, pharmaceuticals, cosmetics, foodstuffs and beverages, and samples of plant, animal, microbial or human origin are included in the broad category of the opponent’s chemicals covered by European Union trade mark registration No 9 709 486. Therefore, they are identical.
Contested goods in Class 5
The contested reagents for use in analysis, namely microbiological analysis, for medical, microbiological and veterinary purposes, namely for qualitative and quantitative analysis of substances, namely for use in analysis methods based on infrared, namely infrared spectroscopy, and fluorometric analysis methods, namely fluorescence spectroscopy, for use in the beverage and food industry, in the medical, diagnostic and pharmaceutical sector, in the field of process technology, toxicology and cell culture technology, and for determining the constituents and quantity thereof in samples, namely process samples, environmental samples, oil samples, samples of genetic material, chemicals, pharmaceuticals, cosmetics, foodstuffs and beverages, and samples of plant, animal, microbial or human origin overlap with the opponent’s chemical reagents covered by European Union trade mark registration No 9 709 486. Therefore, they are identical.
Contested goods in Class 9
The contested apparatus for scientific research and laboratories, spectrometers, namely FTIR spectrometers, Infrared spectometry measuring apparatus; fluorimeters, Namely spectrofluorometers; testing apparatus not for medical purposes; teaching apparatus and simulators; all of the aforesaid goods for qualitative and quantitative analysis of substances, namely for use in analysis methods based on infrared, namely infrared spectroscopy, and fluorometric analysis methods, namely fluorescence spectroscopy, for use in the beverage and food industry, in the medical, diagnostic and pharmaceutical sector, in the field of process technology, toxicology and cell culture technology, and for determining the constituents and quantity thereof in samples, namely process samples, environmental samples, oil samples, samples of genetic material, chemicals, pharmaceuticals, cosmetics, foodstuffs and beverages, and samples of plant, animal, microbial or human origin are included in the broad categories of, or overlap with, the opponent’s scientific, analytical and laboratory instruments and equipment; all the aforesaid goods excluding in the field of defence and security. Therefore, they are identical.
The contested software; all of the aforesaid goods for qualitative and quantitative analysis of substances, namely for use in analysis methods based on infrared, namely infrared spectroscopy, and fluorometric analysis methods, namely fluorescence spectroscopy, for use in the beverage and food industry, in the medical, diagnostic and pharmaceutical sector, in the field of process technology, toxicology and cell culture technology, and for determining the constituents and quantity thereof in samples, namely process samples, environmental samples, oil samples, samples of genetic material, chemicals, pharmaceuticals, cosmetics, foodstuffs and beverages, and samples of plant, animal, microbial or human origin is related to the opponent’s software (recorded programs) for use in the field of analysis for diagnostic purposes; all the aforesaid goods excluding in the field of defence and security covered by both earlier trade marks. Although these goods may have a different specific intended purpose, they have, on the contrary, the same nature, origin and distribution channels. For these reasons, they are deemed to be similar.
The same reasoning is valid for the contested computer servers; notebook and laptop computers; computers and computer hardware; all of the aforesaid goods for qualitative and quantitative analysis of substances, namely for use in analysis methods based on infrared, namely infrared spectroscopy, and fluorometric analysis methods, namely fluorescence spectroscopy, for use in the beverage and food industry, in the medical, diagnostic and pharmaceutical sector, in the field of process technology, toxicology and cell culture technology, and for determining the constituents and quantity thereof in samples, namely process samples, environmental samples, oil samples, samples of genetic material, chemicals, pharmaceuticals, cosmetics, foodstuffs and beverages, and samples of plant, animal, microbial or human origin with respect of analyzers consisting of computers for use in sample preparation, sample tracking, databases, reference information; all the aforesaid goods excluding in the field of defence and security. These goods may have a different specific intended purpose, but, on the other hand, they have the same nature, origin and distribution channels. For these reasons, they are deemed to be similar.
Contested goods in Class 10
The contested apparatus for use in medical analysis; analysers for medical use, namely apparatus for use in spectrometric analysis and apparatus for analysing bacteria in biological samples; all of the aforesaid goods for qualitative and quantitative analysis of substances, namely for use in analysis methods based on infrared, namely infrared spectroscopy, and fluorometric analysis methods, namely fluorescence spectroscopy, for use in the beverage and food industry, in the medical, diagnostic and pharmaceutical sector, in the field of process technology, toxicology and cell culture technology, and for determining the constituents and quantity thereof in samples, namely process samples, environmental samples, oil samples, samples of genetic material, chemicals, pharmaceuticals, cosmetics, foodstuffs and beverages, and samples of plant, animal, microbial or human origin are related to the opponent’s scientific, analytical and laboratory instruments and equipment including, spectrophotometers, monochromators, micrometers, diffraction gratings, spectrometers, spectrographs, spectrophotometers, phosphorimeters, colorimeters, monochromators, spectrofluorometers and parts thereof, laser microprobe for obtaining information on molecular structure of matter, micro spectrophotometers and imaging instruments, vacuum instruments including ultrahigh vacuum chambers and parts thereof, surface analysis instruments and parts thereof, thin film deposition units, gas analysis testers, mechanical property testers, pipette washer and dryer, and apparatus for processing samples in preparation for analysis, including, presses and grinders; all the aforesaid goods excluding in the field of defence and security in Class 9 covered by the earlier European Union trade mark registration No 10 965 044. All of these goods are aimed at the scientific analysis. These goods have the same nature. Also, it is clear that the production of these apparatus basically requires the same expertise. Hence, they might share the same origin. Also, they can be distributed through the same distribution channels. Thus, these goods are deemed to be similar.
Contested services in Class 42
The contested writing of computer programs for medical applications; research and development of computer hardware and computer software share some points of contact with the opponent’s software (recorded programs) for use in the field of analysis for diagnostic purposes; analyzers consisting of computers and computer programs for use in sample preparation, sample tracking, databases, reference information; all the aforesaid goods excluding in the field of defence and security in Class 9. These goods and services can coincide in producer, relevant public and distribution channels. Furthermore they are complementary. Thus, they are deemed to be similar.
The contested computerised food analysis services; computerised analysis of data; chemical analysis, all of the aforesaid services for qualitative and quantitative analysis of substances, namely for use in analysis methods based on infrared, namely infrared spectroscopy, and fluorometric analysis methods, namely fluorescence spectroscopy, for use in the beverage and food industry, in the medical, diagnostic and pharmaceutical sector, in the field of process technology, toxicology and cell culture technology, and for determining the constituents and quantity thereof in samples, namely process samples, environmental samples, oil samples, samples of genetic material, chemicals, pharmaceuticals, cosmetics, foodstuffs and beverages, and samples of plant, animal, microbial or human origin also share some points of contact with the opponent’s scientific, analytical and laboratory instruments and equipment including, spectrophotometers, monochromators, micrometers, diffraction gratings, spectrometers, spectrographs, spectrophotometers, phosphorimeters, colorimeters, monochromators, spectrofluorometers and parts thereof, laser microprobe for obtaining information on molecular structure of matter, micro spectrophotometers and imaging instruments, vacuum instruments including ultrahigh vacuum chambers and parts thereof, surface analysis instruments and parts thereof, thin film deposition units, gas analysis testers, mechanical property testers, pipette washer and dryer, and apparatus for processing samples in preparation for analysis, including, presses and grinders. These goods and services have a different nature. Neither are they complementary or in competition. However, they can coincide in producer/provider, relevant public and distribution channels. For these reasons, they must be considered similar to a low degree.
Contested services in Class 44
The contested medical analysis, all of the aforesaid services for qualitative and quantitative analysis of substances, namely for use in analysis methods based on infrared, namely infrared spectroscopy, and fluorometric analysis methods, namely fluorescence spectroscopy, for use in the beverage and food industry, in the medical, diagnostic and pharmaceutical sector, in the field of process technology, toxicology and cell culture technology, and for determining the constituents and quantity thereof in samples, namely process samples, environmental samples, oil samples, samples of genetic material, chemicals, pharmaceuticals, cosmetics, foodstuffs and beverages, and samples of plant, animal, microbial or human origin are related to the opponent’s chemical reagents, preparations and substances for medical purposes, particularly for analytical, testing and diagnostic purposes. It is true that these goods and services have a different nature. Neither are they in competition or complementary. Nonetheless, they can coincide in producer/provider, relevant public and distribution channels. In view of all the foregoing, they are deemed to be similar to a low degree.
- 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 degrees are specialised goods and services directed at business customers with specific professional knowledge or expertise. The degree of attention is expected to vary from average to high, considering that some of the goods and services may involve health issues and regards rather expensive items, the purchase of which can be quite infrequent.
- The signs
SPEX | SPECCs |
Earlier trade marks | Contested sign |
The relevant territory is the European Union.
The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).
The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
The Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public for whom the marks in dispute are meaningless and are pronounced in an identical manner, such as the Dutch-, Italian- and Spanish-speaking part of the public.
The marks are word marks which do not possess any meaning. They have no elements that could be considered clearly more distinctive or more dominant than other elements.
Visually, the signs coincide in their first three letters ‘SPE-‘. However, they differ in the last letter ‘X’ of the earlier marks and in the last three letters ‘-CCs’ of the contested sign. Therefore, the signs are visually similar to an average degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory now taken into account, the pronunciation of the signs is identical, since, a part of the first three letters ‘SPE-‘ which are common to both signs, they do coincide in the manner in which the letters ‘X’ on one hand and ‘CCs’ on the other are pronounced. Therefore, the signs are aurally identical.
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.
- Distinctiveness of the earlier marks
The distinctiveness of the earlier marks 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 marks are particularly distinctive by virtue of intensive use or reputation.
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 territory. Therefore, the distinctiveness of the earlier marks must be seen as normal.
- Global assessment, other arguments and conclusion
The goods and services covered by the trade mark sin dispute have been found partly identical, partly similar and partly similar to a low degree. The signs are similar to an average degree from a visual perspective and they are aurally identical. The conceptual aspect does not influence the assessment of the similarity of the signs since a conceptual comparison between ‘SPEX’ and ‘SPECCs’ is not possible.
Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).
The level of attention is deemed to be expected as varying form average to high. However, 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).
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).
In present case, the fact that some of the goods and services have been found partly similar only to a low degree is counterbalanced by the overall high level of similarity between the signs, which derives after balancing their aural identity and their visual similarity to an average degree.
Form all the foregoing it follows that, due to the visual similarity, the aural identity and the absence of any dominant or non-distinctive elements in the signs, there is a likelihood of confusion on the Dutch-, Italian- and Spanish-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
It must be also kept in mind that 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.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registrations No 9 709 486 and No 10 965 044. It follows that the contested trade mark must be rejected for all the contested goods and services.
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
Angela DI BLASIO | Andrea VALISA | Edith Elisabeth VAN DEN EEDE |
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.