CRG | Decision 2697913
Date Published: Oct 11, 2017
OPPOSITION No B 2 697 913
Fundació Centre De Regulació Genòmica, c/ Doctor Aiguader, 88 - Edifici PRBB, 6a. planta 08003 Barcelona, Spain (opponent), represented by Consulpi Propiedad Industrial, S.L., Rambla Badal, 137-139-Esc B-Ent.1, 08028 Barcelona, Spain (professional representative)
a g a i n s t
Johnson Matthey Plc, 5th Floor, 25 Farringdon Street, London, United Kingdom (holder), represented by Sarah Dixon, Gate 20, Johnson Matthey PLC, Orchard Road, Royston, Hertfordshire SG8 5HE, United Kingdom (professional representative).
On 28/03/2017, the Opposition Division takes the following
1. Opposition No B 2 697 913 is upheld for all the contested services.
2. International registration No 1 260 309 is entirely refused protection in respect of the European Union.
3. The holder bears the costs, fixed at EUR 620.
The opponent filed an opposition against all the services of international registration designating the European Union No 1 260 309. The opposition is based on, inter alia, Spanish trade mark registration No 2 903 054. 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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Spanish trade mark registration No 2 903 054.
- The services
The services on which the opposition is based are the following:
Class 42: Scientific investigations for medical purposes; Bacteriological, biological and chemical research; Chemical analysis; Scientific and technological services and related research and design services; Industrial analysis and research services; Design and development of computer hardware and software, all the aforesaid relating in particular to the field of biomedicine, in the areas of genomics and proteomics.
The contested services are the following:
Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services.
Despite some different wording, the contested services are identically contained in the list of the opponent’s services.
- 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 relevant consumer, who is part of the general public, will decide to purchase certain services covered by the marks in question – in particular those that are expensive or aim to meet a particular technological need, such as scientific and technological services. In those circumstances, the degree of attention of the relevant consumer will be higher than average for those services.
- The signs
Earlier trade mark
The relevant territory is Spain.
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 verbal elements ‘Centre de Regulació Genòmica’ in the earlier mark, which are Catalan words and very similar to the Spanish equivalents, will be understood by the relevant public as meaning ‘Centre of Genomic Regulation’. These elements will be non-distinctive for the services in question, as they describe their nature.
Moreover, the earlier mark is composed of the distinctive verbal element ‘CRG’ and of figurative elements that are less distinctive, as they are purely decorative. Therefore, the verbal element ‘CRG’ is more distinctive than the figurative elements. Furthermore, the element ‘CRG’ and the figurative element are dominant elements, as they are the most eye-catching.
The contested sign is a word mark and so, by definition, has no dominant elements.
Visually, the signs are similar to the extent that they coincide in the sequence of letters ‘CRG’. This sequence of letters is the sole verbal element of the contested sign and is the most dominant and distinctive element of the earlier mark. The signs differ in the additional elements of the earlier mark, its stylisation and its colours.
Therefore, the signs are similar visually to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛CRG’, present in both signs. The pronunciation differs in the sound of the additional ‘Centre de Regulació Genòmica‘ which are non-distinctive.
Therefore, the signs are similar aurally to an average degree.
Conceptually, although the public in the relevant territory will perceive the meaning of some elements in the earlier mark, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.
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 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 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, despite the presence of a non-distinctive element in the mark as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
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 identity between the services, coupled with the average degree of visual and aural similarity between the marks, will have to be taken into account when assessing the likelihood of confusion between the marks.
Account should be 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 (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).
The similarity between the signs relates to the fact that the entire contested mark is encompassed in the earlier mark, the letters ‘CRG’ being the most dominant and distinctive element within the earlier sign.
Considering all the above, there is a likelihood of confusion.
Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 2 903 054. It follows that the contested trade mark must be rejected for all the contested services. As this earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
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 holder 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
Cristina CRESPO MOLTÓ
José Antonio GARRIDO OTALOA
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.