OPPOSITION No B 2 368 655

Scheu-Dental GmbH, Am Burgberg 20, 58642 Iserlohn, Germany (opponent), represented by Schneiders & Behrendt, Huestr. 23, 44787 Bochum, Germany (professional representative)

a g a i n s t

Global D., 118 avenue Marcel Mérieux - Zone Industrielle de Sacuny, 69530 Brignais, France (applicant), represented by Cabinet Benech, 146-150, avenue des Champs-Elysees, 75008 Paris, France (professional representative).

On 23/11/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 368 655 is partially upheld, namely for the following contested goods and services:

Class 5: Dental wax.

Class 10: Artificial dental implants, prosthetic components and surgical instruments for the fitting thereof.

Class 41: Provision of tuition, providing of training in the dental field, fitting of implants and dental prostheses.

2. European Union trade mark application No 12 524 815 is rejected for all the above goods and services. It may proceed for the remaining goods.

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 12 524 815. The opposition is based on European Union trade mark registration No 6 089 676, German trade mark registration No 30 703 412, German trade mark registration No 30 650 141, German trade mark registration No 30 651 739, German trade mark registration No 30 426 759 and German trade mark registration No 30 426 758. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years preceding the date of publication of the contested trade mark, 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 in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.

According to the same provision, in the absence of such proof the opposition must be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based, namely European Union trade mark No 6 089 676 ‘TWINSTAR’, German trade mark No 30 703 412 ‘TWINSTAR’, German trade mark No 30 650 141 ‘TWIN’, German trade mark No 30 651 739 ‘TWIN-BASE’, German trade mark No 30 426 759 ‘TWIN-FLEX’ and German trade mark No 30 426 758 ‘TWIN-DUR’.

The request was submitted in due time and is admissible given that the earlier trade marks were registered more than five years prior to the publication of the contested application.

The contested application was published on 11/03/2014. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in the European Union (as regards earlier European Union trade mark No 6 089 676) or in Germany (as regards earlier German trade marks No 30 703 412, No 30 650 141, No 30 651 739, No 30 426 759 and No 30 426 758) respectively from 11/03/2009 to 10/03/2014 inclusive. Furthermore, the evidence must show use of the trade marks for the goods on which the opposition is based, namely the following:

European Union trade mark No 6 089 676 ‘TWINSTAR’

Class 7: Deep drawing presses being tools used in goldsmithery.

Class 10: Deep drawing presses for dental technology applications (dental medical apparatus and instruments); filling, moulding and grinding machines for dental purposes; deep drawing presses being tools used in dental laboratories.

Class 17: Thermoplastic plastic foils (other than for packaging), artificial resins and synthetic resins being semi-finished products; elastic threads and yarns, not for textile purposes; foils of regenerated cellulose for use in dental medicine (other than for packaging);plastics, semi-processed, for use in dental medicine.

German trade mark No 30 703 412 ‘TWINSTAR’

Class 7: Filling, moulding and abrading machines for dentistry; swaging machines being tools for use in dental laboratories; swaging machines being tools for use in goldwork.

Class 10: Swaging machines for use in dentistry (dental apparatus and instruments).

Class 17: Thermoplastic plastic foils (other than for packaging), artificial resins and synthetic resins being semifinished products; elastic yarns and threads, not for textile use; foils of regenerated cellulose for dental use (other than for packaging); semi-processed plastics for dental use.

German trade mark No 30 650 141 ‘TWIN’

Class 5: Plastics for the manufacture of dentures and dental prostheses.

Class 10: Dental prostheses; bite splints.

German trade mark No 30 651 739 ‘TWIN-BASE’

Class 1: Unprocessed plastics for the manufacture of dentures and dental prostheses.

Class 10: Dental prostheses; bite splints.

German trade mark No 30 426 759 ‘TWIN-FLEX’

Class 1: Plastics for the manufacture of dentures and dental prostheses.

Class 10: Dental prostheses; bite splints.

German trade mark No 30 426 758 ‘TWIN-DUR’

Class 1: Plastics for the manufacture of dentures and dental prostheses.

Class 10: Dental prostheses; bite splints.

According to Rule 22(3) EUTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 10/07/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 15/09/2015 to submit evidence of use of the earlier trade marks. At the request of the opponent, this time limit was extended with two months.

On 16/11/2015, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Enclosures 1-5: Extracts from product catalogues in English dated between 2009 and 2014, showing the indications ‘Scheu’ or ‘Scheu Dental Technology’ at their covers. The catalogues show, inter alia, pressure and vacuum moulding machines for dental application in the thermos moulding technique referred to as and . The goods are also indicated by article codes, namely article codes 3140, 3141 and 3138 for the models indicated as ‘TWINSTAR P’ and article codes 3142, 3143 and 3139 for those indicated as ‘TWINSTAR V’.

• Enclosures 6-8: Product brochures in German with translations in English by Scheu-Dental GmbH (the opponent) with an address in Germany, dated March 2007, July 2010 and May 2014. The brochures contain descriptions and technical characteristics of moulding machines for dental application (those shown in the product catalogues) with the indications and .

• Enclosure 9: A photograph of product packaging, showing the signs and and representation of the moulding machines shown in the product catalogues and brochures.

• Enclosures 10-39: A set of 30 non-consecutive invoices, dated between 12/03/2009 and 28/02/2014, issued by the company Scheu-Dental GmbH (the opponent) with an address in Germany to different clients. The invoices concern different goods indicated as, inter alia, ‘3140.1 TWINSTAR P’ or ‘3142.1 TWINSTAR V’ and followed by additional indications of characteristics of the goods, namely ‘230 V’. The quantities of sales vary between one to five pieces of goods with the mark ‘TWINSTAR’ per invoice, each with a price between EUR 740 and EUR 987.

• Enclosure 40: An affirmation in Lieu of an Oath, signed on 16/11/2015 by Mr Christian Scheu, managing director of Scheu-Dental GmbH (the opponent), in which he declares that the opponent has marketed thermoforming machines with the mark ‘TWINSTAR’ between March 2009 and March 2014 in, inter alia, the European Union.

Assessment of genuine use - earlier German trade mark No 30 650 141 ‘TWIN’, German trade mark No 30 651 739 ‘TWIN-BASE’, German trade mark No 30 426 759 ‘TWIN-FLEX’ and German trade mark No 30 426 758 ‘TWIN-DUR’

Having examined the material listed above, the Opposition Division finds that the evidence is insufficient to establish genuine use of German trade mark No 30 650 141 for the word mark ‘TWIN’, German trade mark No 30 651 739 for the word mark ‘TWIN-BASE’, German trade mark No 30 426 759 for the word mark ‘TWIN-FLEX’ and German trade mark No 30 426 758 for the word mark ‘TWIN-DUR’.

None of the evidence relates to the abovementioned word marks. The evidence shows use of the sign . Such use cannot be considered use of the earlier marks ‘TWIN’, ‘TWIN-BASE’, ‘TWIN-FLEX’ and ‘TWIN-DUR’ as registered, since the distinctiveness of these signs is affected by the addition of the verbal element ‘STAR’ (which, although of somewhat limited distinctiveness, still has an impact on the overall impression of the mark), and by the omission of the second part of the verbal elements in the case of some of the marks ‘TWIN-BASE’, ‘TWIN-FLEX’ and ‘TWIN-DUR’. The Opposition Division considers that the use of the sign ‘TWINSTAR’ cannot be considered to constitute a form of the abovementioned earlier marks which does not alter the distinctive character of these marks. In view of the above, the Opposition Division considers that the evidence does not demonstrate use of the marks ‘TWIN’, ‘TWIN-BASE’, ‘TWIN-FLEX’ and ‘TWIN-DUR’ as registered within the meaning of Article 15(1)(a) EUTMR for the goods for which they are registered.

Therefore, the opposition must be rejected pursuant to Article 42(2) and (3) EUTMR and Rule 22(2) EUTMIR insofar as it is based on earlier German trade marks No 30 650 141, No 30 651 739, No 30 426 759 and No 30 426 758.

The examination of the evidence of use continues in relation to the remaining earlier marks invoked, namely earlier European Union trade mark No 6 089 676 and German trade mark No 30 703 412, both for the word mark ‘TWINSTAR’.

The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s earlier European Union trade mark No 6 089 676.

Earlier European Union trade mark No 6 089 676 – Assessment of genuine use

Place of use

According to Article 15(1) EUTMR, the evidence must show that the European Union trade mark has been genuinely used in the European Union.

Following the Court judgment of 19/12/2012, C‑149/11, Leno, EU:C:2012:816, § 44, Article 15(1) EUTMR must be interpreted as meaning that the territorial borders of the Member States should be disregarded when assessing whether or not a EUTM has been put to ‘genuine use’ in the European Union.

In territorial terms, and in view of the unitary character of the EUTM, the appropriate approach is to consider not political boundaries but market(s). Moreover, one of the aims pursued by the EUTM system is to be open to businesses of all kinds and sizes. Therefore, the size of an undertaking is not a relevant factor to establish genuine use.

In the present case, the evidence, in particular the invoices, demonstrates use in different countries of the European Union. The invoices were issued by the opponent, a German company, and refer to sales of goods to different entities in the European Union. Some of the information in the invoices has been blackened, so that the names and addresses of the customers are not visible. Nonetheless, it should be noted that all the invoices are issued in euros in French, German or English. Several invoices contain references (e.g. ‘intra-Community delivery’), associated with the delivery of the goods. In addition, by consulting the client codes and references of the customers contained in the invoices, which contain the country code of the customer, and the information provided by the opponent in its observations, it is possible to verify that the invoices reflect the sales of goods to clients in Austria, France, Germany, Greece, Hungary and Latvia.

Consequently, and in accordance with Article 15(1), second subparagraph, point (b) EUTMR, the evidence of use filed by the opponent contains sufficient indications concerning the place of use, namely the European Union.

Time of use

The vast majority of the evidence, including all of the invoices and most of the product catalogues and brochures, is dated within the relevant period (from 11/03/2009 to 10/03/2014 inclusive).

Consequently, taking into account the fact that the majority of the documents are dated within the relevant period, it is concluded that the evidence of use filed by the opponent contains sufficient indication of the time of use.

Extent of use

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The documents filed, in particular the invoices, supported by the product catalogues and brochures, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope and the duration and frequency of use.

The evidence submitted by the opponent to prove genuine use of the earlier EUTM relates to sales of pressure and vacuum moulding machines for dental application to different clients in the European Union. Bearing this in mind, the Opposition Division observes that the evidence submitted sufficiently demonstrates that there has been public and outward use of the mark. The invoices relate to the full duration of the relevant period and prove the frequency of use of the mark throughout the relevant period. They refer to sales of goods under the mark ‘TWINSTAR’ amounting to several hundred euros per invoice. Considering the nature of the goods at issue (moulding machines with a specific application in the medical field) and the fact that they are intended for a specialised public, the documents show sales amounting to a substantial value and provide sufficient information concerning the commercial volume of use. Moreover, the fact that the invoices are non-consecutive must also be taken into consideration. From this, it can be inferred that the invoices have been submitted merely as examples of sales and do not represent the total sales of goods under the earlier mark realised by the opponent during the relevant period. It is clear from the evidence that the opponent distributed goods bearing the earlier mark in the relevant market. This gives the Opposition Division sufficient information regarding the commercial activities of the opponent in the relevant period. In any case, the documents prove that use of the mark has been more than mere token use.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of use of the earlier mark.

Nature of use

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 15(1), second subparagraph, point (a) EUTMR, the following shall also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

The purpose of Article 15(1)(a) EUTMR, which avoids imposing strict conformity between the form in which the trade mark is used and the form in which it was registered, is to allow its proprietor, when exploiting it commercially, to vary it in such a way that, without altering its distinctive character, enables it to be better adapted to the marketing and promotion requirements of the goods or services concerned (23/02/2006, T‑194/03, Bainbridge, EU:T:2006:65, § 50).

It is appropriate to consider whether the mark as used contains differences from its registered form that would affect its distinctive character or, in spite of some differences, the mark as used and its registered form are essentially the same.

In the present case, earlier European Union trade mark No 6 089 676 consists of the verbal element ‘TWINSTAR’. This element, as a whole, has no clear or univocal meaning for the public in the relevant territory and, therefore, intrinsically, it has full distinctive capacity to identify and distinguish the goods and services for which it was registered.

The opponent’s catalogues and photographs of product packaging show the indications , , and , and the invoices refer to goods with the signs ‘TWINSTAR P’ or ‘TWINSTAR V’.

The representation of part of the verbal element in bold letters, and the other part in standard font in some cases constitutes an acceptable means of bringing the mark in question to the public’s attention and, consequently, does not affect the distinctiveness of the verbal element ‘TWINSTAR’, which has been registered as a word mark. It should be also noted that, in the case of word marks, the word as such is protected, not its written form.

As regards the indications ‘P’ and ‘V’, shown in the catalogues, invoices and photographs, following the sign ‘TWINSTAR’ (e.g. ), it is apparent that these indications are used to indicate the different models of goods offered by the opponent (‘P’ for the pressure moulding machines and ‘V’ for the vacuum moulding machines, as shown). Moreover, the symbol for a registered trade mark (®), is depicted after the word ‘TWINSTAR’, indicating that this is the element that should be considered as the trade mark of the goods at issue.

It follows that the sign ‘TWINSTAR’, although used with additional indications, functions as a trade mark identifying the commercial origin of the goods sold by the opponent. Therefore, the use of the earlier mark in the way shown in the documents does not alter its distinctive character.

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 15(1)(a) EUTMR.

Overall assessment

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, and 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the earlier trade mark for all the goods covered by that trade mark.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

In the present case the evidence shows genuine use of the trade mark for the following goods:

Class 10: Moulding machines for dental purposes.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

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. As seen above, the Opposition Division will first examine the opposition in relation to the opponent’s European Union trade mark No 6 089 676, for which use has been proven in relation to part of the goods.

1. The goods and services

The goods on which the opposition is based and for which use is proven are the following:

Class 10: Moulding machines for dental purposes.

The contested goods and services are the following:

Class 5: Materials prepared for bandages (dressings), dental wax, disinfectants.

Class 10: Artificial dental implants, artificial limbs, prosthetic components and surgical instruments for the fitting thereof.

Class 41: Provision of tuition, providing of training in the dental field, fitting of implants and dental prostheses.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be 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 5

The opponent’s moulding machines for dental purposes in Class 10 are dental moulding machines that make a variety of hard and soft dental appliances, such as temporaries, splints, mouthguards, bite registrations and individual trays.

The contested dental wax and the opponent’s moulding machines for dental purposes in Class 10 are related, since they may have the same producers, distribution channels and may target the same relevant public (e.g. dental specialists and orthodontists). Therefore, they are similar to a low degree.

The contested materials prepared for bandages (dressings), disinfectants are not sufficiently related to the opponent’s moulding machines for dental purposes in Class 10, which are apparatus with a very specific application for the making of certain dental appliances. The goods under comparison differ in their nature, purposes and methods of use. They do not usually have the same producers and are not strictly complementary or in competition. The mere fact that these contested goods and the opponent’s goods may have an application in the dental field is not necessarily sufficient for a finding of similarity between them. Therefore, they are dissimilar.

Contested goods in Class 10

The contested artificial dental implants; prosthetic components and surgical instruments for the fitting thereof and the opponent’s moulding machines for dental purposes may serve the same general purpose, being used in prosthodontics and restorative dentistry, since the contested goods include, inter alia, dental implants, prosthetics and surgical instruments used in dentistry. They may have the same producers, distribution channels and may target the same relevant public (e.g. dental specialists). Therefore, they are similar to a high degree.

The contested artificial limbs are not sufficiently related to the opponent’s moulding machines for dental purposes. These goods under comparison have different medical purposes and different methods of use. They are used in different, highly specialised, areas of the health-care field, which require completely different medical interventions carried out by specialists practising only in the particular area. Consequently, these goods target different professional publics specialised in different and very specific fields. Furthermore, the goods will most likely originate from different manufacturers and, taking into account that they target different customers, they will not be in competition with each other. The mere fact that these contested goods and the opponent’s goods are related to the medical field in general is not sufficient for a finding of similarity between them. Therefore, they are dissimilar.

Contested services in Class 41

The contested provision of tuition, providing of training in the dental field, fitting of implants and dental prostheses are educational and training services relating to the dental field. These services differ in nature, purpose and method of use from the opponent’s moulding machines for dental purposes in Class 10. However, they relate to the dental and dental surgical field, target a specialised public with interest in that area and can be produced or provided by the same undertakings. Furthermore, they may be complementary, since the contested services can be indispensable or important for the use of the opponent’s specific apparatus. Therefore, they are similar to a low degree.

2. 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.

The relevant public for the assessment of the likelihood of confusion is composed of users likely to use both the goods and services covered by the earlier mark and those covered by the mark applied for that were found to be identical or similar (01/07/2008, T-328/05, Quartz, EU:T:2008:238, § 23).

In the present case, the goods found to be similar (to different degrees) are directed at dental medical professionals on the one hand (the earlier goods and part of the contested goods and services) and at both dental professionals and the general public on the other hand for some of the contested goods (e.g. the contested disinfectants in Class 5). Therefore, the public to be considered in this assessment is the overlapping professional public with specific knowledge or expertise in the dental medical field. Considering the specialised nature and purposes of the relevant goods and the effects that they may have on human health, the public’s degree of attention is higher than average.

3. The signs

TWINSTAR	TWIN4
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 French- and German-speaking parts of the relevant public.

The earlier mark is the word mark ‘TWINSTAR’. The contested sign is a word mark, consisting of the word ‘TWIN’ joined together with the numeral ‘4’.

Neither of the marks under comparison has any element that could be considered more dominant (visually eye-catching) than other elements.

The verbal element ‘TWINSTAR’, constituting the contested sign, has no meaning for the relevant public. The Court has held that, although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details when perceiving a word sign, they will break it down into elements that, for them, suggest a specific meaning or that resemble words known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57). Therefore, it is reasonable to assume that the French and German-speaking parts of the public will split the element ‘TWINSTAR’ into two parts, ‘TWIN’ and ‘STAR’, because it may perceive at least the element ‘STAR’ as meaningful.

The word ‘TWIN’, present in both marks, may be understood by part of the relevant professional public with some knowledge of English with the meaning of the English word ‘twin’, namely ‘either of two persons or animals conceived at the same time’, ‘either of two persons or things that are identical or very similar; counterpart’. The word ‘TWIN’, considered on its own or in combination with the word ‘STAR’ or a numeral, as in the present case, does not convey any specific meaning in relation to the relevant goods and services. Therefore, the Opposition Division sees no reasons to consider the inherent distinctiveness of this term to be lesser than average.

Another part of the relevant professional public will not perceive the word ‘TWIN’ with a meaning, because it does not exist as such in French and German and because the word ‘TWIN’ is not a specialised term in the medical field.

The digit ‘4’ of the contested sign will be understood by the relevant public as a numeral, representing the cardinal number that is the sum of three and one. This element is not descriptive or of limited distinctiveness for the relevant goods and services.

Consequently, the contested sign has no elements that could be considered clearly more distinctive than other elements.

The word ‘STAR’ in the earlier mark is an English word, referring to ‘any of a vast number of celestial objects that are visible in the clear night sky as points of light’. However, it is a term commonly used in commerce to refer to superior goods and services as ‘star’ products. Therefore, when considered individually, the word ‘STAR’ may be perceived by the relevant French- and German-speaking parts of the public with a somewhat laudatory meaning in relation to the goods and services at issue and its distinctiveness is deemed to be slightly below average.

However, account should be taken of the fact that the words ‘TWIN’ and ‘STAR’ may be perceived as a logical and conceptual unit referring to double star or binary star by the part of the public that will understand both words. Consequently, since the elements ‘TWIN’ and ‘STAR’ of the earlier mark convey, altogether, one meaning for a part of the public, they will capture the same attention of the relevant public. In this case, the verbal element ‘TWINSTAR’ has no direct connection to any of the relevant goods, as it does not describe or evoke their essential characteristics. Consequently, the earlier mark has no elements that could be considered clearly more distinctive than other elements for this part of the public.

For the part of the public which will not perceive a meaning in the element ‘TWIN’ in the earlier mark but will only understand the word ‘STAR’, the beginning of the mark ‘TWIN’ has a relatively higher distinctive power in relation to the relevant goods.

Visually, the signs coincide in the sequence of letters ‘TWIN’, which are fully included at the beginning of both signs. Consequently, the marks coincide in four letters, constituting the distinctive element ‘TWIN’, which is distinguishable and recognisable in both marks and plays an independent role within them. However, the marks differ in the additional letters ‘STAR’ at the end of the earlier mark and the numeral ‘4’ at the end of the contested sign.

Account should be taken of the fact that the common element of the marks, ‘TWIN’, is contained in the beginning of the contested sign, which is the part that consumers generally tend to focus on when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Therefore, taking into account the fact that the coinciding letters are placed at the beginning of the marks and constitute a fully distinctive element, the commonalities are sufficient for the signs to be held visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘TWIN’, which are present at the beginning of both marks. The pronunciation differs in the sound of the second word contained in the earlier mark, ‘STAR’, and in the sound of the number ‘4’ of the contested sign, which will be pronounced with the sounds corresponding to the numeral ‘4’ in the respective languages.

The marks are aurally similar to an average degree on account of the initial verbal element ‘TWIN’ that the marks have in common.

Conceptually, as seen above, the common verbal element of the marks, ‘TWIN’, will be understood with its meaning in English by part of the relevant public, and will not be associated with any meaning by another part of the public. The numeral ‘4’ in the contested sign will be perceived as such. The element ‘STAR’ in the earlier mark will be perceived with its meaning in English.

Consequently, for the part of the public which will understand all verbal elements of the marks and will perceive the word ‘TWIN’ in the earlier mark as conceptually related to the noun ‘STAR’, there is conceptual similarity between the signs on account of the common element ‘TWIN’, which is, however, reduced by the fact that the common element is qualifying the subsequent additional word in the earlier mark, which introduces an additional concept. Therefore, the marks are conceptually similar to a low degree for a part of the public.

For the remaining part of the public which will not associate the common element ‘TWIN’ of the marks with any meaning and will perceive with meanings only the elements ‘STAR’ and ‘4’ of the marks, they 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.

4. 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 goods 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 somewhat weaker element in the mark for a part of the public.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The goods and services under comparison are partly similar (to different degrees) and partly dissimilar. The signs are similar on account of the word ‘TWIN’ they have in common, which is included at the beginning of both marks and plays an independent and distinctive role in them. The coinciding element of the marks, ‘TWIN’, will also establish a certain conceptual link between the signs for a part of the public, thus further contributing to the overall similarity between the marks. The marks differ in the second word of the earlier mark, ‘STAR’, and in the numeral ‘4’ in the contested sign. However, these additional elements at the end of the marks at issue are not sufficient to clearly differentiate between them.

Consequently, the aforementioned findings lead to the conclusion that the marks convey similar overall impressions.

Article 8(1)(b) EUTMR states that, upon opposition, an EUTM application shall not be registered if, because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark (emphasis added).

Considering that average consumers rarely have the chance to make a direct comparison between different marks but must trust in their imperfect recollection of them, they may legitimately believe that the contested word mark ‘TWIN4’ is a new version or a brand variation of the earlier mark, ‘TWINSTAR’.

Therefore, even considering that the degree of attention with regard to the relevant goods and services may be higher than average, the Opposition Division considers that there is a likelihood of confusion, including a likelihood of association, between the marks.

This finding is true even for the goods and services that are similar to only a low degree, since the impact of the differences between the signs is not sufficient to overcome the similarity between them. This similarity between the signs, due to their distinctive initial element, ‘TWIN’, outweighs the low degree of similarity between some of the goods and services.

The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

In the present case, the previous cases referred to by the applicant to support its arguments as regards the dissimilarity between some of the goods and services at issue are not relevant to the present proceedings, as they do not concern the comparison of the particular goods and services of the present case.

Moreover, while the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

In its observations, the applicant also argues that the earlier trade mark has a low distinctive character given that there are many trade marks that begin with and include the element ‘TWIN’. In support of its argument the applicant refers to some trade mark registrations in the European Union

The Opposition Division notes that the existence of some trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element ‘TWIN’. Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the French- and German-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 6 089 676. 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 similar (to different degrees) to the goods of the earlier trade mark.

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 goods cannot be successful.

There is no need to assess the claimed ‘family of marks’ or ‘marks in a series’ claimed for to the earlier trade marks in relation to dissimilar goods, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the opponent had proven that it owned a family of marks.

The opponent has also based its opposition on German trade mark registration No 30 703 412 for the word mark ‘TWINSTAR’, registered for the following goods:

Class 7: Filling, moulding and abrading machines for dentistry; swaging machines being tools for use in dental laboratories; swaging machines being tools for use in goldwork.

Class 10: Swaging machines for use in dentistry (dental apparatus and instruments).

Class 17: Thermoplastic plastic foils (other than for packaging), artificial resins and synthetic resins being semifinished products; elastic yarns and threads, not for textile use; foils of regenerated cellulose for dental use (other than for packaging); semi-processed plastics for dental use.

As follows from all the above, the opposition has been rejected only in respect of those goods that were found to be dissimilar to the opponent’s goods.

This mark is identical to the one that has already been compared above. The applicant requested that the opponent submit proof of use of all earlier marks on which the opposition is based. This request is admissible also in relation to earlier German trade mark registration No 30 703 412 given that the earlier trade mark was registered more than five years prior to the publication of the contested application.

The evidence of use for this trade mark is the same as that listed above in relation to earlier European Union trade mark registration No 6 089 676. Consequently, even if these documents could provide sufficient indications with respect to place, time, extent and nature of use of earlier German trade mark registration No 30 703 412, they refer to use for no broader a scope of goods, namely moulding machines for dental purposes, which in the case of that earlier mark has been classified in Class 7, but are in their nature, the same goods. As was concluded above, moulding machines for dental purposes are dissimilar to the contested materials prepared for bandages (dressings), disinfectants in Class 5 and artificial limbs in Class 10. Therefore, the outcome cannot be different with respect to the goods for which the opposition has already been rejected. No likelihood of confusion exists with regard to those dissimilar goods.

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 shall 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

Pedro JURADO MONTEJANO

Alexandra APOSTOLAKIS

Andrea VALISA

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.