CANCELLATION No 12226 C (INVALIDITY)

Médis – Companhia Portuguesa de Seguros de Saúde, S.A., Av. Dr. Mário Soares (Tagus Park). Edifício 10, Piso 1, 2744 Porto Salvo, Portugal (applicant), represented by Gastão da Cunha Ferreira Lda., Margarida Martinho do Rosário, Rua dos Bacalhoeiros, nº. 4, 1100-070 Lisboa, Portugal (professional representative)

a g a i n s t

Actavis Group PTC ehf, Reykjavikurvegi 76-78, Hafnarfirdi 220, Iceland (EUTM proprietor), represented by Arnason Faktor, Gudridarstig 2-4, Reykjavik 113, Iceland (professional representative).

On 17/02/2020, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is rejected in its entirety.

2. The applicant bears the costs, fixed at EUR 450.

REASONS

The applicant filed an application for a declaration of invalidity against all the services of European Union trade mark No 5 850 904 . The application is based on Portuguese trade mark registration No 339 011 . The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b) and 8(5) EUTMR.

On 30/01/2018 the Cancellation Division rendered a decision which resulted in the rejection of the cancellation application pursuant to Article 64(2) and (3) EUTMR on the grounds that the evidence submitted by the applicant was insufficient to prove that the earlier trade mark had been genuinely used during the second five-year reference period.

The decision was appealed and the Board of Appeal decided in case R 577/2018‑1 on 31/01/2019. The Board’s decision partially annulled the contested decision and remitted the case to the Cancellation Division for further prosecution. The Board considered that there is proof of use of the earlier mark for ‘health insurance’ in Class 36 and ‘healthcare services via a helpline service’ in Class 44 in both five-year reference periods. In particular, the Board considered that the evidence such as the surveys and awards, showed that the earlier mark had acquired a reputation in field of health insurance and that the use of the mark ‘Médis’ was therefore at a level that was extensive, also in the second five-year reference period.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that there is a likelihood of confusion between the marks at issue, due to the similarity of the signs and of the services they cover. Initially, the EUTM proprietor intended to cover Class 5 which according to the applicant is its core activity. While the mark was refused upon opposition for those goods, the services in Class 35 are allegedly still related to the healthcare sector in which the applicant is well-known and enjoys tremendous reputation.

The applicant also claims that even if the similarity between the services could be low, this is compensated by the enhanced distinctiveness acquired by its earlier mark.

It refers to an opposition decision that already found a likelihood of confusion between similar marks of the same parties in the reversed situation and which was confirmed by the Boards of Appeal (28/04/2014, B 1 451 790, “Médis”; 23/09/2015, R1613/2014-1 – MÉDIS (fig.) / MEDIS (fig.) et al. – submitted as Exhibit 2).

In any event, due to the reputation of the earlier mark in Portugal, the ground under Article 8(5) EUTMR would also apply even if the services were deemed to be dissimilar. Due to the nature of the services, the EUTM proprietor could easily take advantage of the reputation of the “Médis” trade mark in the healthcare sector. The EUTM would also be detrimental to the high reputation and distinctiveness of the earlier mark.

The applicant also submits proof of use of the earlier mark as requested by the EUTM proprietor which is listed in the following section.

The EUTM proprietor argues that there can be no likelihood of confusion since the differences between the signs are substantial and the services covered by the applicant’s mark are completely different from those covered by the contested EUTM. In this regard, the EUTM proprietor notes that the fact that Class 5 was initially included but then deleted from the EUTM has no bearing on the dissimilarity of the services at issue. The EUTM proprietor also objects to the claim that the earlier mark enjoys reputation in Portugal.

As regards the alleged lack of confusion, the EUTM proprietor also refers to a decision of the Second Board of Appeal refusing a likelihood of confusion between the signs and in relation to similar goods in Class 9. According to the EUTM proprietor the signs were considered sufficiently different, especially in light of the different stylization (12/12/2005, R1090/2004-2).

PROOF OF USE

According to Article 64(2) and (3) EUTMR (in the version in force at the time of filing of the invalidity application), if the EUTM proprietor so requests, the applicant shall furnish proof that, during the five-year period preceding the date of the application for a declaration of invalidity, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the applicant cites as justification for its application, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years. If, on the date of publication of the contested EUTM, the earlier mark had been registered for not less than five years, the applicant must submit proof that, in addition, the conditions set out in Article 47(2) EUTMR were satisfied on that date.

The same provision states that, in the absence of such proof, the application for a declaration of invalidity shall be rejected.

The EUTM proprietor requested the applicant to submit proof of use of the trade mark on which the application is based.

The request has been filed in due time and is admissible given that the earlier trade mark was registered more than five years prior to the date of the application for a declaration of invalidity.

The application for a declaration of invalidity was filed on 15/12/2015. The contested trade mark was published on 17/09/2007. The applicant was, therefore, required to prove that the trade mark on which the application is based was genuinely used in Portugal from 15/12/2010 to 14/12/2015 inclusive. Since the earlier mark was registered on 11/05/2000, i.e. more than five years prior to the date of publication of the contested mark, use of the earlier mark had to be shown also for the period from 17/09/2002 to 16/09/2007 inclusive.

Furthermore, the evidence must show use of the trade mark for the services on which the application is based, namely:

Class 36: Insurance.

Class 44: Healthcare, including the services of doctors, hospitals and other health care providers.

According to Article 19(2) EUTMDR in conjunction with Article 10(3) EUTMDR, the evidence of use must indicate the place, time, extent and nature of use of the earlier mark for the goods and services for which it is registered and on which the application is based.

On 21/07/2016 the applicant was given three months to submit proof of use.

On 21/10/2016 the applicant submitted evidence as proof of use.

The evidence to be taken into account is the following:

• An article from the study “Trusted Brands”, carried out by the Portuguese edition of the “Reader’s Digest” in 2015 and partially translated, in which methodology for the recognition of the Trusted Brands is set out and the “Médis” brand is mentioned as a trusted mark in Portugal (Evidence 1).

• Printouts from the applicant’s website on the internet, part summarizing the history of the “Médis” mark (1996-2013) and further printouts dating from 2002-2005. 2011 and 2012 showing various services being offered under the same (Evidences 2-6).

• Portuguese press article, dated April-June 2011, regarding a medical telephone service called “LINHA MÉDIS” (Evidence 7).

• Documents relating to the Healthcare Plan “Médis” with premium information for 2006, mentioning amongst others the medical telephone service marketed under “LINHA MÉDIS” (Evidence 8 and 9).

• Information on hospitals and clinics accepting “Médis” insurance, dated in 2005 (Evidence 10).

• Extracts from websites of several associations showing that they offer the Médis health insurance plan to their workers, dated between 2002 and 2007 (Evidence 11).

• Press article “Médis assina protocolos com duas unidades de saúde em Espanha” dated 27/02/2002 and published on www.jornaldenegocios.pt (Evidence 12).

• Extracts from a forum on http://foruns.pinkblue.com showing various posts dated 2002 and 2003 (Evidence 13).

• “Médis” magazine issued in September 2006 with articles on childbirth and “Médis” coverage in case of childbirth (Evidence 14).

• Two market surveys relating to the insurance sector in Portugal conducted in 2005 by the Portuguese (research) companies Causa e Efeito and Marktest (BASEF SEGUROS study) respectively (Evidence 15 and 16).

• A website extract from www.marktest.com with general information on the BASEF SEGUROS reference studies conducted by Marktest (Evidence 17).

• Information from Marktest about advertising and marketing campaigns carried out between 2004 and 2007 (Evidence 18, 19).

• Extracts from a “Médis” magazine dated April 2006 including an article relating to the healthcare sector and the programme of the congress “II CONGRESSO MÉDIS” scheduled for 01/06/2006 and a picture of a bill announcing that congress to be held in Lisboa, Portugal (Evidence 20)

• Websites extracts with information on the congress “II Congresso da Médis” on 01/06/2006 and on “Médis” being the main sponsor of the tennis competition “Copa Ibérica” for four consecutive years from 2008 to 2011 (Evidence 20, 21 and 22).

• Pocket Calendar that bears the sign and was distributed as promotional item in 2002 (Evidence 23).

In addition, the Cancelation Division will take into account, to the extent it could be relevant in order to prove the use of the earlier mark, the evidence of reputation submitted by the applicant together with its observations of 23/03/2016, which is the following:

• Market surveys conducted in 2005, 2009, 2014 and 2015 about Portuguese health insurance companies (Exhibit 3A-3D), in particular, the market surveys conducted by the magazine Marcas que Marcan ranking “MÉDIS” in the first position in Top of Mind awareness in the category of health insurances in the years 2014 and 2015 and a brand evaluation survey conducted in 2005 on health insurance companies by Causa e Efeito – Gabinete de Pesquisa de Mercado, Unipessoal, Lda.

• Copy of an article from the publication Marketeer No 175 dating from February 2011 and entitled ‘Médis launches its new magazine’ in which the figurative mark is displayed (Exhibit 4).

• Evidence of awards received by the applicant between 2006 and 2015 (Exhibit 5A-5G), particularly including

  • Extract from the publication Eurobest dated 29/06/2011 referring to the inclusion of “Médis” in the seventh edition of the book Superbrands 2011, as well as further extracts from Eurobest dated 29/09/2006 and 19/03/2008 as well as a printout from the website of briefing referring to the Superbrands awards conferred on “Médis” also in 2006, 2008 and 2010 (Exhibit 5A),

  • Reader’s Digest Selections publication on the Trusted Brands study 2015 (Exhibit 5C, also submitted as Evidence 1 (see above)),

  • the article from the applicant’s website on the award of Reader’s Digest Trusted Brand for five years running in 2013 and stating that it achieved 48% spontaneous replies in the category of health insurance (Exhibit 5D),

  • article from the cancellation applicant’s website on its first place in the Marktest Reputation Index in the insurance category in 2013 (Exhibit 5G).

• Extracts from the publication Mundo Médis particularly containing an interview with the director of AXA Portugal insurance company on his company’s collaboration with the applicant in the context of health insurance (Exhibit 6). It mentions an offer made in collaboration with “Médis” in a campaign that ran until 30/12/2011. The article also mentions that the applicant operates in the health insurance sector.

• Internet excerpts showing examples of digital and TV advertising as published on the website of “YouTube” in 2013 and 2014 (Exhibit 7).

• Evidence on events sponsored by the applicant in the years 2006-2015 (Exhibit 8).

• Several Portuguese Court decisions recognizing the reputation of the applicant’s trade marks in Portugal (Exhibit 10).

Having examined the material listed above, the Cancellation Division finds that the abovementioned evidence proves that the earlier trade mark has been genuinely used in the course of trade in relation to health insurance and healthcare services via a helpline service during the two relevant periods, namely from 17/09/2002 to 17/09/2007 (first period) and from 15/12/2010 to 14/12/2015 (second period).

Most of the evidence of use is dated within or concerns information of direct relevance to either the first period (at least Exhibits 3A, 5A and 10B, Evidences 8, 10, 12 and 14-17) or the second (at least Exhibits 3C, 3D, 4, 5A, 5C, 5D, 5G, 6 and 7, Evidences 4, 7 and 8).

The evidence concerning surveys, awards received, publications including press articles and the judgment show that the place of use is Portugal. This can be inferred from the language of the documents (Portuguese), the indicated reference territory for the surveys and awards or the territorial scope of agreements mentioned in publications (Portugal).

The earlier mark has also been used as registered or in an equivalent form. The use shown in the evidence either corresponds to the sign as registered or does not significantly alter its distinctive character. In relation to health insurance, the evidence shows the figurative sign as registered (or with slight variations in colour) or the verbal element “Médis” on its own, which is the most distinctive part of the earlier mark. The only slight stylization of that verbal element as well as the rectangular background are decorative and the cross device is not particularly distinctive for services in the healthcare sector. Thus, even the use of just the verbal element does not alter the distinctiveness of the earlier figurative sign. In relation to healthcare services via a helpline service, the evidence shows use of “LINHA MÉDIS” which does not alter the distinctive character of the earlier figurative mark either as the added element “LINHA” simply means “line” and therefore merely describes the particular kind of services (telephone (hot)line) offered.

As regards the extent of use, in particular the brand surveys, awards received and the court judgement confirming the well-known character of the earlier mark in Portugal show that during the two relevant periods the earlier mark enjoyed a reputation in the field of health insurance. As found by the Board of Appeal this implies that the use of the earlier mark during these periods was at a scale that was extensive. The same applies to the healthcare services via a helpline in relation to which the evidence shows longstanding use from 1996 to 2011.

As set out by the Board of Appeal (31/01/2018, R577/2018-1), health insurance and healthcare services via a helpline service are coherent subcategories of insurance and healthcare as registered in Classes 36 and 44 respectively.

Consequently, the evidence of use in its entirety sufficiently indicates the time, place as well as nature. In relation to extent, although the evidence is not exhaustive, it does reach the minimum level necessary to establish genuine use of use of the applicant’s trade mark during the relevant periods in the relevant territory for part of the services for which it is registered and on which the application is based, namely health insurance and healthcare services via a helpline service.

LIKELIHOOD OF CONFUSION — ARTICLE 60(1)(a) EUTMR IN CONNECTION WITH 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.

1. The services

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.

The services on which the application is based are the following:

Class 36: Health insurance.

Class 44: Healthcare services via a helpline service.

The contested services are the following:

Class 35: Advertising; business management; business administration; office functions.

Contested services in Class 35

The contested 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 enabling them to acquire a competitive advantage through publicity. In order to fulfil this target, many different means and products might be used. These services are typically provided by advertising agencies, which study their client’s needs, provide all the necessary information and advice for the marketing of their products and services, and create a personalized strategy regarding the advertising of their goods and services through newspapers, websites, videos, the internet, etc.

The contested business management services are intended to help companies manage their business by setting out the strategy and/or direction of the company. They involve activities associated with running a company, such as controlling, leading, monitoring, organizing, and planning. They are usually rendered by companies specialized in this specific field such as business consultants. They gather 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 their market share.

The contested business administration services are intended to help companies with the performance of business operations and, therefore, the interpretation and implementation of the policy set by an organization’s board of directors. These services consist of organizing people and resources efficiently so as to direct activities toward common goals and objectives. They include activities such as personnel recruitment, payroll preparation, drawing up account statements and tax preparation, since these enable a business to perform its business functions and are usually carried out by an entity that is separate from the business in question. They are rendered by, inter alia. employment agencies, auditors and outsourcing companies.

The contested office functions are the internal day-to-day operations of an organisation, including the administration and support services in the ‘back office’. They mainly cover activities that assist in the operation of a commercial enterprise. They include activities typical of secretarial services, such as shorthand and typing, compilation of information in computer databases, invoicing, and administrative processing of purchase orders, as well as support services, such as the rental of office machines and equipment.

These services are all services that are rendered by specialized entities such as business consultants or advertising agencies and which are intended to assist businesses in different ways. They have nothing in common with the applicant´s health insurance and healthcare services in Classes 36 and 44 which do not target businesses but the public at large and are rendered by companies specialized in insurance or healthcare.

The applicant’s health insurance services in Class 36 consist in accepting liability for certain risks and respective losses. Health insurers usually provide monetary compensation and/or assistance in the event that a specified contingency occurs, such as accident or sickness. The applicant’s healthcare services via a helpline service in Class 44 are medical services provided to the public at large by healthcare professionals, such as nurses or doctors. The purpose of these services is to improve or maintain the user´s health by providing support and advice over the phone, particularly in cases of sickness or accident.

The services under comparison have different natures and purposes and they are normally rendered by different undertakings through different distribution channels. The contested services aim at supporting or helping other businesses to do or improve their business. Consequently, they are professional business-to-business services with the aim of assisting other companies with their commercial activities. It is very unlikely that insurance companies and healthcare professionals and institutions would render such business-related services. Even if the contested services are related to the health care sector, as the applicant alleges by reference to the initial coverage of the EUTM at the time of filing, this is insufficient for a finding of similarity. The contested services may be rendered in the healthcare sector to hospitals or healthcare professionals, but they are neither in competition nor complementary in such a way that one would be indispensable or essential for the other. Therefore, the services under comparison are dissimilar.

The applicant refers to a previous decision of the Boards of Appeal to support a finding of at least low similarity between the services at issue. In that case, at first instance the Opposition Division considered business management to show certain connection to health care, including the services of doctors, hospitals and other health care providers. The Opposition Division reasoned that the health care services include, among others, certain services that relate to the planning, organizing and controlling in the medical field (such as maintaining patient records) which have the same nature as the contested business management, to the extent that the latter concern organizational management for medical practices/hospitals etc. Furthermore it considered that these services could be rendered to the same end users. Overall, they were considered similar to a low degree. These findings were neither disputed before the Board nor questioned by the Board in the decision referred to by the applicant.

The reasoning in relation to healthcare services in general is, however, not applicable to the present case where the applicant´s services are healthcare services via a helpline service. The term healthcare services via a helpline service describes specific type of healthcare services which is commonly understood to comprise, in particular, emergency medical assistance over the phone and the provision of general health information. Unlike health care in general, such medical helpline services do not usually require the maintaining of patient records as patients will only use the helpline punctually in case of an emergency. The applicant has failed to elaborate and it remains unclear how these particular medical helpline services may involve planning, organizing and controlling in the medical field to the extent that it could be considered even only lowly similar to business management. Therefore, the applicant´s argument must be dismissed.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the services are clearly dissimilar, one of the necessary conditions for establishing a likelihood of confusion is not fulfilled, and the application must be rejected inasmuch as it is based on Article 60(1)(a) in conjunction with Article 8(1)(b) EUTMR.

This finding would still be valid even if the earlier trade mark were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the services cannot be overcome by the highly distinctive character of the earlier trade mark, the evidence submitted by the opponent in this respect does not alter the outcome reached above.

REPUTATION — ARTICLE 60(1)(a) EUTMR IN CONNECTION WITH ARTICLE 8(5) EUTMR

Pursuant to Article 60(1)(a) EUTMR, a European Union trade mark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings where there is an earlier trade mark as referred to in Article 8(2) and the conditions set out in paragraph 5 of that Article are fulfilled;

According to Article 8(5) EUTMR, upon action 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 that 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.

It follows that for Article 8(5) EUTMR to apply the following conditions need be met (16/12/2010, T-345/08 & T-357/08, Botolist / Botocyl, EU:T:2010:529, confirmed 10/05/2012, C-100/11 P, Botolist / Botocyl, EU:C:2012:285):

• The applicant´s earlier registered mark must have a reputation in the relevant territory;

• There must be identity or similarity between the contested EUTM application and the earlier mark;

• There must be a risk of injury, i.e. the use of the sign applied for must be capable of taking an unfair advantage of, or being detrimental to, the distinctiveness or the repute of the earlier mark;

• Use must be without due cause.

These conditions are cumulative and failure to satisfy any one of them is sufficient to render that provision inapplicable (25/05/2005, T-67/04, Spa-Finders, EU:T:2005:179, § 30; 22/03/2007, T-215/03, Vips, EU:T:2007:93, § 34; 16/12/2010, T-345/08 & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41).

1. Reputation of the earlier trade mark

According to the applicant, the earlier trade mark has a reputation in Portugal.

Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case, the contested trade mark was filed on 23/04/2007. Therefore, the applicant was required to prove that the trade mark on which the application for declaration of invalidity is based had acquired a reputation in Portugal prior to that date and that it continues to enjoy such reputation at the time the decision on invalidity is taken. The evidence must also show that the reputation was acquired for the services for which the applicant has claimed reputation and proven use, namely:

Class 36: Health insurance.

Class 44: Healthcare services via a helpline service.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 23/03/2016 the opponent submitted the evidence already listed as Exhibits 3 to 10 in the “Proof of use” section above to prove the alleged reputation of the earlier mark.

The surveys conducted by the research companies Causa e Efeito in 2005 (Exhibit 3A) and Nielsen in 2009 (Exhibit 3B) already show high brand recognition figures for “Médis” in relation to health insurance (around 70% spontaneous and over 90% aided brand recognition) and that the vast majority of the interviewees perceived “Médis” as a market leader in relation to health insurance. This shows that the earlier mark had already acquired a reputation in the field of health insurance when the EUTM was filed in 2007.

Furthermore, the 2014 and 2015 surveys by the magazine Marcas que Marcan ranked the cancellation applicant in the first position in “Top of Mind awareness” in the category of health insurance in those years (Exhibits 3C and 3D). The extracts from the publication Eurobest dated 29/06/2011 refer to the inclusion of “Médis” in the seventh edition of the book Superbrands 2011. “Médis” was also included amongst Portuguese Superbrands in 2010 (Exhibit 5A). In 2013 it was listed amongst Reader´s Digest Trusted Brands for fifth time in a row, having achieved 48% of unaided brand recognition in relation to health insurance (Exhibits 5C and 5D). In 2013 “Médis” was also ranked number one in the Marktest Reputation Index in the insurance category (Exhibit 5G). Clearly, it has to be deduced from the results of these surveys and the awards received that the earlier mark has been continuously used in an extensive and successful way in the healthcare sector throughout the years until the filing of the application and that it thus still maintains its reputation.

In light of the above, the Cancellation Division concludes that the earlier mark’s enjoys a significant degree of reputation in respect of health insurance in Portugal.

However, it cannot be assumed that such reputation also extends to healthcare services rendered via a helpline service. While there is some evidence that refers to such services being offered by the applicant (particularly Evidences 7 and 8, submitted as part of the proof of use on 21/10/2016), it does not contain any information that enables the Cancellation Division to evaluate the consumer perception and degree of recognition in relation to the “Médis” trade mark for medical telephone services.

2. The signs

Earlier trade mark	Contested trade mark

The relevant territory is Portugal.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier sign is a figurative sign depicting the word element “Médis” in white italics below the symbol of a white cross against a black rectangular background. The element “Médis” will likely be perceived as deriving from “medico/a” which means medical in Portuguese and thus as an allusion to the healthcare sector. Accordingly, the verbal element’s distinctive character is considered to be below average for the relevant services. Despite its specific design, the cross device is not particularly distinctive for services in the field of health and the rectangular background as well as the slight stylization of the verbal element will be perceived as decorative.

In any event, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37; 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE, § 24; 13/12/2011, R 53/2011‑5, Jumbo (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

The contested sign is a figurative sign consisting of five letters which may be perceived as “MEDIS”. Whereas the two letters at the beginning and at the end of the sign are only slightly stylized and clearly legible, the letter in the middle is a triangle shape. As consumers tend to read signs, they may assume it is a highly stylized letter and, if so, perceive it as a “D”. Even so, the stylization of the verbal element will be perceived as rather decorative and in comparison to the verbal element as less distinctive. The verbal element may be perceived as a derivation of “medicina”, thereby alluding to the relevant services being rendered in the medical sector. Accordingly, the distinctiveness of the element is below average.

Visually, the similarity of the signs is limited to their verbal element’s first, fourth and fifth characters “M”, “I” and “S”, which are depicted in a similar way. Although the last two letters in the earlier sign are in lowercase, the difference to the uppercase version of the same letter i/I and s/S may pass unnoticed.

However, the signs clearly differ in all their remaining elements. While the second and third letters may represent the same characters, namely “E” and “D”, they share no visual similarities. There is already a clear visual difference between the uppercase and lowercase versions of these letters: E/e and D/d. Furthermore, in the earlier sign the “e” bears an accent mark and the “d” is fairly standard, whereas in the contested sign, there is no accent mark and the “D” is highly stylized as a triangle shape prominently featured in a central position. The different font used for the verbal elements, and the figurative elements of the earlier sign which have no correspondence in the contested sign add further to the differences. Overall, the signs are therefore considered to be dissimilar.

Aurally, the signs largely coincide in their pronunciation. The pronunciation of the elements “Médis” and “MEDIS” will vary only slightly due to the accent mark in the earlier sign. As there are no other verbal elements and the figurative elements will not be pronounced, the signs are phonetically highly similar.

Conceptually, for the reasons set out above, the verbal elements of both signs will be perceived as alluding to the healthcare sector. In the earlier mark, the impression is further strengthened by the figurative element of a cross evoking the same concept. Inasmuch as both signs allude to the same concept, the signs coincide conceptually. However, given that the concept is particularly weak for the services at issue which concern the healthcare sector or (inasmuch as the contested services are concerned) may be directed at healthcare professionals and healthcare organizations, this coincidence does not create significant similarities in the eyes of the relevant consumers.

3. The ‘link’ between the signs

As set out above, the earlier mark is reputed in relation to healthcare services and the signs are similar in some aspects. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed by several judgments (23/10/2003, C 408/01, Adidas, EU:C:2003:582, § 29, 31; 27/11/2008, C 252/07, Intel, EU:C:2008:655, § 66). It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C 252/07, Intel, EU:C:2008:655, § 42):

• the degree of similarity between the signs;

• the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

• the strength of the earlier mark’s reputation;

• the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

• the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

The applicant has argued, in essence, that due to the nature of the services, the EUTM proprietor could easily take advantage of the earlier mark´s reputation in the healthcare field and that it would also be detrimental to its high distinctiveness and reputation. However, these allegations are only general and rather vague. The applicant fails to elaborate on what exactly the nature of its services is and why, as a result, an image transfer or detriment to its earlier mark would be particularly likely.

While the detriment or unfair advantage may be only potential in accordance with the wording of Article 8(5) EUTMR, this does not mean that a mere possibility is sufficient for the purposes of Article 8(5) EUTMR. The risk of detriment or unfair advantage must be serious, in the sense that it is foreseeable (i.e. not merely hypothetical) in the ordinary course of events. Therefore, it is not enough to merely show that detriment or unfair advantage cannot be excluded in general, or that it is only remotely possible. The proprietor of the earlier mark must adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or of detriment (06/06/2012, T 60/10, Royal Shakespeare, EU:T:2012:348, § 53).

Thus, the applicant has to establish that the use of the contested mark for advertising, business management, business administration, office functions would take unfair advantage of the distinctive character of the earlier mark in the healthcare insurance sector or be detrimental thereto. However, the applicant in the present case failed to provide evidence or at least a coherent line of arguments in support of its claim that the mark applied for in relation to advertising, business management, business administration, office functions would take unfair advantage or be detrimental to the distinctive character or the reputation of the earlier mark for healthcare insurance.

The Cancellation Division notes that consumers who would be familiar with the earlier mark in respect of health insurance are most likely to remember these services as determined by their specific characteristics. These include, for example, the range of treatments which are covered, the possibility to include family members, cover for dental, optical and physiotherapy services etc. However, the contested mark is applied for in respect of advertising, business management, business administration, office functions. These services are completely different from the applicant’s services. They require different kind of expertise and only target professionals. It is unclear how any aspect of the earlier mark in respect of insurance services could be transferred to the contested services which are services meant to assist business customers in different ways.

Advertising services assist businesses in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing their position in the market and enabling them to acquire a competitive advantage through publicity. Business management services assist professionals in the management of their business by setting out the strategy and/or direction of the company. Business administration services assist businesses in the performance of their operations and, therefore, the interpretation and implementation of the policy set by an organisation’s board of directors. Office functions concern the internal day-to-day operations of a commercial enterprise. All these services are essentially of administrative, strategic or organisational nature and clearly different from the health insurance services for which the earlier mark is reputed which basically consist in accepting liability for certain risks and respective losses and in providing monetary compensation and/or assistance in the event that a specified contingency occurs.

While it may be argued that the contested services could be rendered to healthcare professionals or healthcare organizations, such a possible connection to ‘health care’ is not sufficient to establish a link. It remains unclear how – considering such different markets and the different knowledge and expertise required in each of these fields – a serious risk of an injury might occur.

In this regard, it must also be taken into account that even though the earlier mark enjoys a reputation, this reputation must compensate for the inherently only below average distinctive character. Furthermore, the elements “Médis” and “MEDIS” which give rise to (phonetic) similarity of the signs are evocative of the services concerned.

Against this background, it is insufficient for the applicant to only refer in general terms to an unfair advantage of the distinctive character or reputation of its earlier marks without submitting convincing evidence of actual detriment or cogent arguments establishing a serious, not merely hypothetical, potential risk of detriment. The applicant´s line of argument should demonstrate specifically how the alleged injury might occur. To this end, the submissions must take into account both marks as well as the services in question and all the relevant circumstances.

According to the case law, the proprietor of the earlier mark must prove that there is a serious risk that such an injury will occur in the future (27/11/2008, C 252/07, Intel, EU:C:2008:655, § 38; 07/12/2010, T-59/08, Nimei La Perla Modern Classic, EU:T:2010:500, § 33; 29/03/2012, T-369/10, You-Q v OHMI - Apple Corps (BEATLE), EU:T:2012:177, § 61). Such a finding may be established, in particular, on the basis of logical deductions made from an analysis of the probabilities and by taking account of the normal practice in the relevant commercial sector as well as all the other circumstances of the case (14/11/2013, C-383/12 P, Répresentation d’une tête de loup, EU:C:2013:741, § 42-43). Merely showing the reputation of the earlier mark and making a vague reference to the nature of the services, without further substantiation by way of evidence or further reasoning is not sufficient.

As the applicant failed to establish that there is a serious risk that injury might occur, one of the necessary conditions for applying Article 8(5) EUTMR is not met.

4. Conclusion

In light of the above, the Cancellation Division comes to the conclusion that the application must also be rejected inasmuch as it is based on Article 60(1)(a) in conjunction with 8(5) EUTMR.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the costs incurred by the EUTM proprietor in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the EUTM proprietor are the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Martin LENZ

Elena NICOLÁS GÓMEZ

Plamen IVANOV

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 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.