Z MED | Decision 2703349
Date Published: Sep 28, 2017
OPPOSITION No B 2 703 349
‘Med Kataskevi endymaton-Esoroychon-Magio Emporoviomichaniki Anonymi Etairia’ diakritikos titlos ‘MED AEVE’, 9, Acheloou, str., 54628 Thessaloniki, Greece (opponent), represented by Konstantinos Kyriakou, 15, Komninon & Tsimiski str., 54626 Thessaloniki, Greece (professional representative)
a g a i n s t
IVF Distribution GmbH, Römerstraße 2, 6900 Bregenz, Austria (applicant), represented by Christoph Friedrich Jahn, Rothenburg 41, 48143 Münster, Germany (professional representative).
On 02/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 703 349 is partially upheld, namely for the following contested goods and services:
Class 3: Cosmetics
Class 5: Nutritional supplements; Medicine.
Class 44: Beauty care.
2. European Union trade mark application No 15 084 676 is rejected for all the above goods and services. It may proceed for the remaining 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 15 084 676. The opposition is based on European Union trade mark registration No 3 264 009. The opponent invoked Articles 8(1)(b) and 8(5) 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 on which the opposition is based are the following:
Class 3: Bleaching preparations and other substances for laundry use; Cleaning, polishing, scouring and abrasive preparations. Soaps. Perfumery, essential oils, cosmetics, hair lotions. Dentifrices.
Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes. Jewellery, precious stones. Horological and chronometric instruments.
Class 25: Clothing, shoes, headgear.
The contested goods and services are the following:
Class 3: Cosmetics.
Class 5: Nutritional supplements; Medicine.
Class 44: Physician services; Medical services; Beauty care.
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 3
Cosmetics are identically contained in both lists of goods.
Contested goods in Class 5
The contested nutritional supplements; medicine are similar to the opponent’s cosmetics. The opponent’s goods are preparations used to enhance and protect the appearance of the human body. These goods may have the same purpose as the contested nutritional supplements; medicine. Moreover they have the same distribution channels, target the same public and are often manufactured by the same companies. Therefore, these goods are similar.
Contested services in Class 44
The contested beauty care services are similar to the opponent’s cosmetics. These goods and services, although different in nature, have the same purpose, namely that of improving people’s appearance. They target the same public and they can also have the same distribution channels, as beauty salons often also offer cosmetic products. These goods and services can also be complementary, as it may be necessary to use the opponent’s goods to perform the contested services.
The contested physician services; medical services are services related to the maintenance or improvement of health via the diagnosis, treatment and prevention of disease, illness, injury and other physical and mental impairments in human beings. These services are dissimilar to the opponent’s goods in Classes 3, 14 and 25. They differ in their natures, methods of use, producers/providers and distribution channels. These services have nothing in common with the opponent’s goods in Classes 3, 14 and 25.
- 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 and similar are directed at the public at large and at business customers with specific professional knowledge or expertise.
It is apparent from the case-law that, insofar as pharmaceutical preparations are concerned, the relevant public’s degree of attention is relatively high, whether or not issued on prescription (15/12/2010, T-331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T-288/08, Zydus, EU:T:2012:124, § 36 and cited case-law).
In particular, medical professionals have a high degree of attentiveness when prescribing medicines. Non-professionals also have a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health.
The degree of attention will be average in relation to cosmetics in Class 3, but high in relation to beauty care services in Class 44 and medicine in Class 5.
- The signs
Earlier trade mark | Contested sign |
The relevant territory is the European Union.
The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).
The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the Estonian- and Finnish-speaking parts of the public, since the element ‘MED’ included in both marks conveys no meaning in either of those languages.
The earlier mark is a figurative sign composed of the word element ‘MED’ depicted in slightly stylised black upper case letters.
The contested sign is a figurative mark depicted in purple and comprising the word ‘MED’ depicted in standard characters. Above this element is a circle containing the letter ‘z’ in the middle, also depicted in purple. The distinctiveness of the letter ‘z’ is normal, as it does not directly describe or allude to any characteristics of the relevant goods and services. The circle and the colours are merely decorative and have a low degree of distinctive character.
The word element that the signs have in common, ‘MED’, has no meaning in Estonian or Finnish and is therefore distinctive; however, it cannot be excluded that, for part of the public, this element will be associated with ‘medical’. This element is weak in relation to the relevant beauty and healthcare goods and services, as it indicates to that part of the public that the goods and services offered may have healing properties.
Neither of the marks has any elements that could be considered more dominant (visually eye-catching) than other elements.
The comparison will continue in relation to the part of the relevant public for which ‘MED’ does not convey any meaning.
Visually, both signs under comparison include the letter sequence ‘MED’. However, they differ in the letter ‘z’ surrounded by a circle in the contested sign and in their colours. Considering that the signs have the verbal element ‘MED’ in common, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the word ‘MED’, present identically in both signs. The pronunciation differs in the sound of the letter ‘Z’, which has no counterpart in the earlier sign. Therefore, the signs are aurally similar to 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.
- 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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.
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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
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 covered are from the same or economically linked undertakings.
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 signs are visually and aurally similar to an average degree. The earlier mark has a normal degree of inherent distinctiveness. Furthermore, the goods are identical or similar.
The earlier mark’s verbal element is fully included in the contested sign. Although the contested sign contains an additional letter and is depicted in a different colour, these dissimilarities are not sufficient to counteract the similarities between the signs.
Considering the identity and similarity between the goods, the Opposition Division concludes that the differences between the signs are not sufficient to counteract the similarities. The Estonian- and Finnish-speaking consumers could believe that the goods and services designated by the contested sign are a product line coming from the same undertaking as the goods of the earlier mark.
Taking into account all the above, there is a likelihood of confusion on the part of the Estonian- and Finnish-speaking parts 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 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 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 services cannot be successful.
REPUTATION – ARTICLE 8(5) EUTMR
According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.
It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.
According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.
According to Rule 19(2)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
In the present case the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.
On 07/06/2016 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 02/10/2016.
The opponent did not submit any evidence concerning the reputation of the trade mark on which the opposition is based.
Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as this ground is concerned.
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
Carmen SÁNCHEZ PALOMARES | Liina PUU | Loreto URRACA LUQUE |
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.