Convaec | Decision 2775453
Date Published: Oct 22, 2017
OPPOSITION No B 2 775 453
ConvaTec, Inc., 200 Headquarters Park Drive, Skillman New Jersey 08558, United States of America (opponent), represented by Bird & Bird LLP, 12 New Fetter Lane, City of London, EC4A 1JP, United Kingdom (professional representative)
a g a i n s t
Shenzhen Fenglin Technology Co.,Ltd, Building one&two, Mushuling Industrial Area, LiGuang Community, Guanlan Street, Longhua District, Shenzhen, People's Republic of China (applicant) represented by Casas Asin S.L., Av. San Francisco Javier, 9, Edificio Sevilla 2, 8ª Planta, Oficina 7, 41018 Sevilla, Spain (professional representative).
On 18/10/2017, the Opposition Division takes the following
1. Opposition No B 2 775 453 is upheld for all the contested goods and services.
2. European Union trade mark application No 15 566 987 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. All the references in this decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to the Regulations currently in force, except where expressly indicated.
The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 566 987, . The opposition is based on European Union trade mark registration No 10 817 691 ‘CONVATEC’. 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:
Class 10: Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; Orthopedic articles; Suture materials; ostomy appliances and devices, namely, pouches, flanges, collars, wafers, adhesive rings, filters, skin barriers, and parts and fittings therefor; collection devices for incontinent patients, namely, drainage containers, tubing, drainage control adapters and parts and fittings therefor; urinary and fecal incontinence devices, namely, drainage containers, pouches, tubing, drainage control adapters and parts and fittings therefor.
Class 44: Medical services; Veterinary services; Hygienic and beauty care for human beings or animals; Agriculture, horticulture and forestry services; providing information to physicians, health care professional and patients on the topic of health issues and health awareness.
The contested goods and services are the following:
Class 10: Hot air therapeutic apparatus; nursing appliances; esthetic massage apparatus; vaporizers for medical purposes; inhalers; massage apparatus; respirators for artificial respiration; aerosol dispensers for medical purposes; fumigation apparatus for medical purposes; physiotherapy apparatus.
Class 44: Health care; medical assistance; physiotherapy; nursing, medical; aromatherapy services; medical equipment rental; alternative medicine services; health spa services; Turkish bath services; beauty salon 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 ‘namely’, used in the opponent’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 10
The opponent´s medical apparatus and instruments are any instrument, apparatus, implement, machine, appliance, implant, reagent for in vitro use, software, material or other similar or related article, intended by the manufacturer to be used, alone or in combination, for human beings, for one or more of the specific medical purpose.
These goods and the contested goods may be used together, may target the same consumers and may have the same commercial origins and/or the same distribution channels. Therefore, the goods must be deemed similar.
Contested services in Class 44
Health care; medical assistance; physiotherapy; nursing, medical; alternative medicine services are included in the broad category medical services of the earlier mark. These services are, thus, identical.
The contested aromatherapy services; health spa services; Turkish bath services; beauty salon services are included in the broad category hygienic and beauty care for human beings or animals of the earlier mark. These services are, thus, identical.
The contested medical equipment rental is similar to a low degree to the opponent’s surgical, medical, dental and veterinary apparatus and instruments. They have the same purpose, they can be complementary and they target the same public.
- 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 directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention is considered to vary from average to high depending on the type of products and services in question, given that some of the goods and services require the intervention of a professional and have an impact on human health.
- The signs
Earlier trade mark
The relevant territory is the European Union.
The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).
The earlier mark is a word mark, ‘CONVATEC’, whereas the contested sign is a figurative mark consisting of the letters ‘CONVATEC’; as for the letter ‘T’ it consists of a figurative element depicting a stylised letter ‘T’.
The wording ‘CONVATEC’ is meaningless in the EU. The signs do not contain elements that could be considered clearly more distinctive or more dominant (visually eye-catching) than other elements.
Visually, the signs coincide in the letters ‘CONVA*EC’, although they differ in the stylisation of the contested sign. The letter ‘T’ of the earlier mark is represented in a stylised manner in the contested sign.
Therefore, the signs are visually highly similar.
Aurally, despite the stylisation of the letter ‘T’ of the contested sign, it will be read as a letter [t], therefore the marks are 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 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.
According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).
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
The goods and services are identical and similar to different degrees.
The differences between the signs have been fully analysed previously, where a high degree of visual similarity and aurally identity were found mainly on the basis of the fact that all the letters of the contested sign are fully included in the earlier mark.
The Court has set out the essential principle that 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 the present case, the low degree of similarity between some of the services, together with the high degree of visual and aural identity between the marks, will have to be taken into account when assessing the likelihood of confusion between the marks.
It is also well established case-law that the average consumer normally perceives a sign as a whole, and does not examine its individual details (27/06/2012, T-344/09, Cosmobelleza, EU:T:2013:40, § 52) and that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (16/7/2014, T-324/13, Femivia, EU:T:2014:672, § 48).
Even a high level of attention for some of the goods and services would not eliminate the likelihood that the consumer will think that the contested mark is in some way economically linked to the earlier mark, because the signs have the same distinctive element and refer to strictly related products and services, all belonging to the same specific field. In this respect, account should be taken of the fact that even consumers with a high level of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T- 443/12, Ancotel, EU:T:2013:605, § 54), given that only rarely would they have the chance to make a direct comparison between the different marks, but will often have to place their trust in the imperfect image of them that they have retained in their minds.
Considering all the above, there is a likelihood of confusion on the part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 10 817 691. It follows that the contested trade mark must be rejected for all the contested goods and services.
Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.
According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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
Loreto URRACA LUQUE
According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been 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 Article 109(8) EUTMR (former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be filed within one month of the date of notification of this fixation of costs and will be deemed to have been filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.