DVC | Decision 2793845
Date Published: Oct 15, 2017
OPPOSITION DIVISION
OPPOSITION No B 2 793 845
Planet ID GmbH, Hauptstraße 5-9, 45219 Essen, Germany (opponent), represented
by Grosse Schumacher Knauer Von Hirschhausen, Frühlingstr. 43ª, 45133 Essen,
Germany (professional representative)
a g a i n s t
Tecniplast S.p.A., Via I Maggio, 6, 21020 Buguggiate, Italy (applicant), represented
by Notarbartolo & Gervasi S.p.A., Corso di Porta Vittoria, 9, 20122 Milano, Italy
(professional representative).
On 03/10/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 793 845 is partially upheld, namely for the following
contested goods:
Class 9: Scientific apparatus and equipment; laboratory apparatus and
instruments; laboratory instruments [other than for medical use];
heat and movement detection apparatus, not for medical or
veterinary purposes; laboratory instrument for the detection of
pathogens and toxins in a biological sample for research use.
2. European Union trade mark application No 15 121 429 is rejected for all the
above goods. It may proceed for the remaining goods.
3. Each party bears its own costs.
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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 otherwise.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark
application No 15 121 429 for the figurative mark . The opposition is
based on European Union trade mark registration No 13 717 962 for the word mark
‘DVC’. 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
Decision on Opposition No B 2 793 845 page: 2 of 7
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.
a) The goods and services
The goods and services on which the opposition is based are the following:
Class 9: Scientific, signalling and checking (supervision) apparatus and
instruments, namely radio communications apparatus, radio frequency
detection apparatus and transponders; recording apparatus,
accumulation, transmission and reproduction of data, namely radio
communications apparatus, animal transponders and readers for
animal transponders; apparatus for reading in and reading out data for
radio communications apparatus and transponders; magnetic and
digital information carriers, namely implantable animal transponders;
software for contactless data detection and data verification
concerning data contained on animal transponders; software
packages for contactless data detection and data verification
concerning data contained on animal transponders; data
communications software; computer software for enabling and
authorising access to searchable databases containing information
and data.
Class 35: Advertising; business management; business administration; office
functions; providing business information, including by means of a
computer database, in the fields of medicine, livestock husbandry and
agriculture; management, updating and maintenance of data in
databases and data archives in the fields of medicine, livestock
husbandry and agriculture; collection, management and systemisation
of identification and control data on computer databases and on the
internet; computer-aided data storage and retrieval relating to
information and data in the fields of medicine, livestock husbandry and
agriculture (office functions).
Class 42: Scientific, technological and information technology services and
research relating to transponder technology in the fields of medicine,
livestock and agriculture; industrial analysis and research services
relating to animal transponders; device, development and
implementation of computer software and systems for data processing
and data storage for use in the medical, livestock husbandry and
agricultural sectors; design and development of computer databases
for animal detection; updating of databases and memory banks
containing animal detection data (computer software); rental of
computer software relating to animal detection using radio
communication data and transponders; data conversion and data
coding in connection with animal detection data; information and
consultancy relating to veterinary and agricultural matters;
technological and scientific development in the field of transponder
technology in the medical, livestock and agricultural sectors; providing
of searchable information databases containing animal detection data,
including on the internet (computer software); providing of information
and databases (computer software), including via the internet, for
Decision on Opposition No B 2 793 845 page: 3 of 7
identifying and verifying animals using transponders in the veterinary
and agricultural sectors.
Class 44: Medical and veterinary analysis and consultancy relating to the
identification of animals using animal transponders; providing
historical and diagnostic information and data relating to medical
processes and developments for use in livestock husbandry and
agriculture; information and consultancy relating to veterinary and
agricultural matters, namely relating to animal detection using
transponders; providing of information and data, including in
databases and on the internet, for identifying animals in the veterinary
and agricultural sectors.
The contested goods are the following:
Class 9: Scientific apparatus and equipment; laboratory apparatus and
instruments; furniture specially made for laboratories; laboratory
countertops; laboratory instruments [other than for medical use]; heat
and movement detection apparatus, not for medical or veterinary
purposes; laboratory instrument for the detection of pathogens and
toxins in a biological sample for research use.
Class 19: Equipment for laboratory animals, in particular cages, not of metal, for
laboratory animals, shelving for the storage of cages for laboratory
animals, parts and fittings therefor; aquaria for laboratory animals.
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 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 the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
However, the term ‘namely’ used in the opponent’s list of goods and services 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 and services.
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 9
The contested scientific apparatus and equipment include, as a broader category, the
opponent’s scientific apparatus and instruments, namely radio communications
apparatus, radio frequency detection apparatus and transponders. Since the
Opposition Division cannot dissect ex officio the broad category of the contested
goods, they are considered identical to the opponent’s goods.
Decision on Opposition No B 2 793 845 page: 4 of 7
The contested laboratory apparatus and instruments; laboratory instruments [other
than for medical use] overlap with, the opponent’s scientific apparatus and
instruments, namely radio communications apparatus, radio frequency detection
apparatus and transponders insofar as radio communications apparatus and
instruments can be used in laboratories for research purposes and as such constitute
laboratory apparatus and instruments. Therefore, they are identical.
The contested heat and movement detection apparatus, not for medical or veterinary
purposes are devices that detect moving objects or animals. The sensor technologies
for these devices include passive infrared or microwaves, which are essentially radio
waves. Consequently, the contested heat and movement detection apparatus, not for
medical or veterinary purposes overlap with the opponent’s opponent’s scientific
apparatus and instruments, namely radio frequency detection apparatus. Therefore,
they are identical.
The contested laboratory instrument for the detection of pathogens and toxins in a
biological sample for research use are devices that can be used in medical diagnosis
or food safety to test multiple pathogens. The opponent’s providing historical and
diagnostic information and data relating to medical processes and developments for
use in livestock husbandry and agriculture services in Class 44 encompass a wide
range of services provided by specialised companies which include the detection of
pathogens and toxins. The goods and services share the same distribution channels.
In addition, these goods and services can coincide in their producers/providers and
they are of interest to the same relevant public. Therefore, these goods and services
are similar to a low degree.
The opponent’s goods in Class 9 mainly include radio communications apparatus,
radio frequency detection apparatus, transponders and related computer software
packages which are specialised products allowing the identification and traceability of
animals through contactless data detection and data verification. These goods are
produced by very specific companies.
The contested furniture specially made for laboratories; laboratory countertops are
furniture products designed for laboratories. The purpose of these goods is to
support human activities to work in a laboratory, such as tables or countertops. The
nature and purpose of these goods is different from the opponent’s goods. They have
no relevant commonalities as they originate from different undertakings, they do not
target the same relevant public and do not use the same distribution channels.
Furthermore, they are neither complementary nor in competition.
The opponent’s services in Class 35 include advertising, business management and
office function services.
‘Advertising services’ consist of providing others with assistance in the sale of their
goods and services by promoting their launch and/or sale, or of reinforcing the
client’s position in the market and acquiring competitive advantage through publicity.
In order to fulfil this target, many different means and products might be used. These
services are provided by specialised companies which study their client’s needs and
provide all the necessary information and advice for the marketing of their products
and services, and create a personalised strategy regarding the advertising of their
goods and services through newspapers, web sites, videos, the internet, etc.
‘Business management services’ are services usually rendered by companies
specialised in this specific field such as business consultants. They gather
Decision on Opposition No B 2 793 845 page: 5 of 7
information and provide tools and expertise to enable their customers to carry out
their business or to provide businesses with the necessary support to acquire,
develop and expand market share. They 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 efficiently allocate financial and human
resources; 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.
‘Office function services’ are aimed at performing day-to-day operations that are
required by a business to achieve its commercial purpose. They mainly cover
activities that assist in the working of a commercial enterprise. They include activities
typical to secretarial services, such as shorthand and typing, as well as support
services, such as the rental of office machines and equipment.
The opponent’s services in Classes 42 are mainly scientific, technological,
information technology and related design and development of computer software
and databases services in the area of transponders technologies.
The opponent’s services in Class 44 are mainly medical and veterinary analysis and
consultancy relating to the identification of animals using animal transponders. These
services are usually rendered by companies specialised in this specific area of
knowledge.
The opponent’s services in Classes 35, 42 and 44 have no relevant commonalities
with the contested goods furniture specially made for laboratories; laboratory
countertops. There is a fundamental difference in the nature and purpose. Moreover,
the opponent’s services are provided by specialised companies. They neither target
the same public nor move through the same distribution channels. Furthermore,
there is no complementarity or interchangeability either.
The Opposition Division notes that the opponent has not adduced any specific
arguments or evidence as to why these contested goods would be similar other than
them being used in a laboratory, however, as seen above, in this specific case the
opponent’s goods are very specific items and there is no similarity. Therefore the
contested goods furniture specially made for laboratories; laboratory countertops are
dissimilar to all the opponent’s goods and services in Classes 9, 35, 42 or 44.
Contested goods in Class 19
The contested equipment for laboratory animals, in particular cages, not of metal, for
laboratory animals, shelving for the storage of cages for laboratory animals, parts
and fittings therefor; aquaria for laboratory animals include structures and
transportable buildings such as aquaria or cages for laboratory animals.
The opponent’s goods and services in Classes 9, 35, 42 and 44 have no relevant
commonalities with the contested goods. There is a fundamental difference in the
nature and purpose and indeed reference is made to the previous assertions on the
goods and services protected by the earlier mark. Moreover, the opponent’s goods
and services are provided by specialised companies. They neither target the same
public nor move through the same distribution channels. Furthermore, there is no
complementarity or interchangeability either.
Decision on Opposition No B 2 793 845 page: 6 of 7
Therefore, the contested equipment for laboratory animals, in particular cages, not of
metal, for laboratory animals, shelving for the storage of cages for laboratory
animals, parts and fittings therefor; aquaria for laboratory animals are dissimilar to all
the opponent’s goods and services in Classes 9, 35, 42 or 44.
b) The signs
DVC
Earlier trade mark Contested sign
The signs are identical.
Following the judgment of 20/03/2003, C-291/00, Arthur et Félicie, EU:C:2003:169, §
50-54, the EUTM application should be considered identical to the earlier trade mark
‘where it reproduces, without any modification or addition, all the elements
constituting the trade mark or where, viewed as a whole, it contains differences so
insignificant that they may go unnoticed by an average consumer’. Even considering
that the earlier mark is a word mark and the contested sign is figurative, the only
differences between the signs are extremely insignificant, namely the bold lettering
and a typeface that is slightly bigger but very standard. Indeed, these are not
differences that will be noticed by the relevant consumer and will only be perceptible
upon an analytical examination of the marks side by side, an exercise that the
average consumer does not normally indulge in.
c) Global assessment, other arguments and conclusion
The signs are identical and some of the contested goods are identical to those on
which the opposition is based, namely:
Class 9: Scientific apparatus and equipment; laboratory apparatus and
instruments; laboratory instruments [other than for medical use]; heat
and movement detection apparatus, not for medical or veterinary
purposes.
Therefore, the opposition must be upheld under Article 8(1)(a) EUTMR for these
goods.
Furthermore, some of the contested goods are similar to a low degree to those
covered by the earlier mark, namely:
Class 9: Laboratory instrument for the detection of pathogens and toxins in a
biological sample for research use.
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).
Decision on Opposition No B 2 793 845 page: 7 of 7
Given that the identity between the signs offsets the low degree of similarity between
the goods, there is a likelihood of confusion within the meaning of Article 8(1)
(b) EUTMR and the opposition must also be upheld for these goods.
It follows from the above that the contested trade mark must be rejected for the
goods mentioned above.
The rest of the contested goods 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.
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, both parties
have succeeded on some heads and failed on others. Consequently, each party has
to bear its own costs.
The Opposition Division
Vanessa PAGE Jorge ZARAGOZA
GOMEZ
Richard BIANCHI
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.