OPPOSITION Nо B 2 409 392

 

MXM, 2720, chemin St-Bernard, 06220 Vallauris, France (opponent), represented by Cabinet Beau De Lomenie, Tour Méditerranée 65 avenue Jules Cantini, 13006 Marseille, France (professional representative) 

 

a g a i n s t

 

Axonics Modulation Technologies, Inc., 26 Technology Drive, 92618 Irvine, United States (applicant), represented by Keltie LLP, No. 1 London Bridge, London SE1 9BA, United Kingdom (professional representative).

On 02/06/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 2 409 392 is upheld for all the contested goods.

 

2.	European Union trade mark application No 12 809 521 is rejected in its entirety.

 

3.	The applicant bears the costs, fixed at EUR 620.

 

REASONS

 

On 22/09/2014, the opponent filed an opposition against all the goods of European Union trade mark application No 12 809 521 AXONICS MODULATION (word mark), namely against all the goods in Classes 9 and 10. The opposition is based on European Union Trade Mark registration No 12 175 808, AXONIC (word mark). The opponent invoked  Article 8(1)(a) EUTMR and Article 8(1)(b) EUTMR.

 

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

 

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

 

 

a) The goods

 

The goods on which the opposition is based are, after a restriction filed by the opponent on 23/09/2014, the following:

 

Class 9: Data processing equipment; Computers; Computer software; High-frequency apparatus; Data processing apparatus for industrial and scientific purposes, namely for camera image processing and medical documentation on patients; Precision measuring apparatus; Regulating apparatus.

Class 10: Surgical, medical, dental and veterinary apparatus and instruments; Surgical apparatus and instruments namely surgical devices and implants; Medical apparatus and instruments namely medical devices and implants; Surgical implants (artificial materials); Heart pacemakers; Apparatus for use in medical analysis.

The contested goods are the following:

 

Class 9: Software relating to nerve stimulator apparatus, implantable pulse generator and external pulse generator.

Class 10: Nerve stimulator apparatus, implantable pulse generator, leads, external pulse generator, charging system and related system components.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

 

The term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

 

 Contested goods in Class 9

 

The contested  software relating to nerve stimulator apparatus, implantable pulse generator and external pulse generator are included in the broad category of the opponents computer software. Therefore, they are identical.

Contested goods in Class 10

The contested nerve stimulator apparatus, implantable pulse generator, leads, external pulse generator, charging system and related system components are included in the broad category of the opponents medical apparatus and instruments namely medical devices and implants. Therefore, they are identical.

 

b) Relevant public — degree of attention

  

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

  

In the present case, the contested goods found to be identical are specialised goods directed only at business customers in the medical field with specific professional knowledge or expertise. The definition of the relevant public must be adjusted to the more specific list, and likelihood of confusion should be assessed for professionals only (24/05/2011, T-408/09, ancotel, EU:T:2011:241, § 38-50).

 

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

c) The signs

 

AXONIC	AXONICS MODULATION
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 signs’ verbal elements are composed of English words. The use of English is common in the professional medical sectors. Professionals in all European Union countries who work in the abovementioned sectors have at least an elementary knowledge of English and usually a more profound knowledge of this language in their respective fields of activity.

The verbal element ‘AXONIC*’ is an English adjective meaning in biology ‘of or relating to the long, single projection of nerve cells conducting nerve impulses away from the cell's body’ (extracted from https://www.collinsdictionary.com/dictionary/english/axonic) and refers to the noun ‘AXON’ which refers to a projection of the nerve, and not the nerve itself (https://www.collinsdictionary.com/dictionary/english/axon). As neither the earlier goods, nor the contested goods describe directly the characteristics of the nerves of a biological system, ‘AXONIC’ and the plural form ‘AXONICS’ might allude that the goods at issue have a relation to nerves, but are not directly descriptive. Hence these verbal elements are of a below average distinctive character.

The contested sign’s further element ‘MODULATION’ means ‘the act or process of superimposing the amplitude, frequency, phase, etc. of a wave or signal onto another wave (the carrier wave) or signal or onto an electron beam’ (see https://www.collinsdictionary.com/dictionary/english/modulation). As such it is only of a very limited distinctiveness as it can allude to the functioning of the goods at hand.

Although the coinciding component ‘AXONIC*’ is not directly and immediately descriptive in relation to the relevant goods, it does, however, have a certain descriptive connotation as it could be understood as a reference to the area where the goods are used (see above). Nevertheless, bearing in mind the remaining components’ low degree of distinctiveness of the contested sign, it is still its most distinctive component in the contested sign.

Consumers generally tend to focus on the first element of a sign 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. As a result, given its position and its distinctiveness, the verbal element ‘AXONIC*’ will have a significant impact on the consumers.

Visually, the signs coincide in the six letters ‘AXONIC’ in an identical position at their beginning.  However, they differ in the further letter ‘S’ and the word ‘MODULATION’ of the contested sign, the latter having however, a limited impact on the comparison due to its very limited distinctiveness. Hence the signs are visually similar to an at least average degree due to their identical beginning. The further verbal element of the contested sign cannot dispel these similarities.

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 ‘AXONIC‛ at their beginning. The pronunciation differs in the sound of the letter ‛S’ and ‘MODULATION’ of the contested mark. Bearing in mind the distinctiveness of the various elements, the signs are similar to an at least average degree.

 

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the signs. Both signs will be associated with a similar meaning on account of the common element ‘AXONIC’. Taking into account all the components’ degrees of distinctiveness (as described above), the signs are conceptually similar to at least an average degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

 

d) 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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as below average for all the relevant goods.

 e) 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 (eighth recital 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).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).

As has been concluded above, the signs are similar at least to an average degree in all three aspects of the comparison. The goods were found identical and must be assessed from the point of view of the professional public whose degree of attention varies from average to high. Furthermore, the earlier mark enjoys a below average degree of distinctiveness. In addition, the impact of the other component (‘MODULATION’) is lower than that of the coinciding one (‘AXONIC’).

Moreover, although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Therefore, even in a case involving an earlier sign of weak (or below average) distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (13/12/2007, T‑134/06, Pagesjaunes.com, EU:T:2007:387, § 70 and the case-law cited therein; 13/09/2010, T‑72/08, smartWings, EU:T:2010:395, § 45; 10/07/2012, T‑135/11, Cloralex, EU:T:2012:356, § 35-37 [confirmed in 30/01/2014, C‑422/12 P, Cloralex, EU:C:2014:57, § 43-45]; 27/02/2014, T‑25/13, 4711 Aqua Mirabilis, EU:T:2014:90, § 38).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. This holds true even if the relevant consumers display a higher degree of attention when purchasing some of the goods.

In the present case, given the coinciding structure of both signs, it is very likely that the consumers in the relevant territory will consider the conflicting signs as having the same commercial origin, for example, that the contested sign represents a new line or a parallel line of the opponent’s services (23/10/2002, T 104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the public and therefore the opposition is well-founded on the basis of the opponent’s European Union Trade Mark registration No 12 175 808.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) EUTMR.

 

COSTS

 

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

 

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

 

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

 

 

 

The Opposition Division

 

 

Beatrix STELTER

Karin KLÜPFEL

Astrid WÄBER

 

 

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.