OPPOSITION No B 2 442 302

B. Braun Avitum AG, Carl-Braun-Str. 1, 34212 Melsungen, Germany (opponent), represented by Müller Schupfner & Partner Patent- und Rechtsanwaltspartnerschaft mbB, Bavariaring 11, 80336 München, Germany (professional representative)

a g a i n s t

Biodom 27 d.o.o., proizvodnja, trgovina in storitve, Oic - Hrpelje 14A, 6240 Kozina, Slovenia (applicant).

On 23/11/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 442 302 is upheld for all the contested goods, namely:

Class 9: Measuring, detecting and monitoring instruments, indicators and controllers; monitoring instruments; controllers (regulators); visual monitoring apparatus; monitoring units [electric]; monitoring apparatus, electric; monitoring control apparatus [electric]; electronic carbon dioxide monitors [other than for medical purposes]; electronic monitoring instruments, other than for medical use; electronic temperature monitors, other than for medical use; remote control apparatus; heat regulating apparatus; time regulating apparatus; process controlling apparatus [electric]; thermostat control apparatus; temperature controlling apparatus; automatic control apparatus; process control digital controllers; electrical controls; electric control apparatus; electronic control units; process controlling apparatus [electronic]; electronic regulators; infrared remote control apparatus; control stations (remote, electric or electronic -); energy control devices; energy regulators; pressure regulators; thermal controls; all of the aforementioned goods in the field of domestic heating.

2. Community trade mark application No 13 129 515 is rejected for all the contested goods. It may proceed for the remaining goods.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods of Community trade mark application No 13 129 515, namely against some of the goods in Class 9. The opposition is based on, inter alia, German trade mark registration No 30 108 580. The opponent invoked Article 8(1)(b) CTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s German trade mark registration No 30 108 580.

1. The goods

The goods on which the opposition is based are the following:

Class 9, 10: Measuring and control devices for medical purposes; software for measuring and control devices for medical equipment.

The contested goods are the following:

Class 9: Measuring, detecting and monitoring instruments, indicators and controllers; monitoring instruments; controllers (regulators); visual monitoring apparatus; monitoring units [electric]; monitoring apparatus, electric; monitoring control apparatus [electric]; electronic carbon dioxide monitors [other than for medical purposes]; electronic monitoring instruments, other than for medical use; electronic temperature monitors, other than for medical use; remote control apparatus; heat regulating apparatus; time regulating apparatus; process controlling apparatus [electric]; thermostat control apparatus; temperature controlling apparatus; automatic control apparatus; process control digital controllers; electrical controls; electric control apparatus; electronic control units; process controlling apparatus [electronic]; electronic regulators; infrared remote control apparatus; control stations (remote, electric or electronic -); energy control devices; energy regulators; pressure regulators; thermal controls; all of the aforementioned goods in the field of domestic heating.

The relevant factors relating to the comparison of the goods include, inter alia, the nature and purpose of the goods, 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 opponent´s measuring and control devices for medical purposes are all those apparatus which determine and supervise, for instance, the pressure or the temperature intended to be used in hospitals and clinics. Software for measuring and control devices for medical equipment consists of the program inserted for those apparatus to function.

Measuring, detecting instruments and indicators all of the aforementioned goods in the field of domestic heating consists of those devices which calculate, determine or record the temperature at home.

Monitoring instruments (listed twice); visual monitoring apparatus; monitoring units [electric]; monitoring apparatus, electric; monitoring control apparatus [electric]; electronic monitoring instruments, other than for medical use; electronic temperature monitors, other than for medical use; all of the aforementioned goods in the field of domestic heating are all those computerised and non-computerised apparatus used for observing, checking, or keeping a continuous record of the temperature at households or in the case of the electronic carbon dioxide monitors [other than for medical purposes] for checking and tracking the colourless and odourless gas produced by burning carbon and organic compounds and by respiration which is naturally present in air, in relation to the temperature at homes.

On the other hand, controllers (regulators); heat regulating apparatus; time regulating apparatus; electronic regulators; energy regulators; pressure regulators all of the aforementioned goods in the field of domestic heating consist of devices used to command or adjust the temperature, the time, the energy or the pressure within household heating.

Controllers; remote control apparatus; process controlling apparatus [electric]; thermostat control apparatus; temperature controlling apparatus; automatic control apparatus; process control digital controllers; electrical controls; electric control apparatus; electronic control units; process controlling apparatus [electronic]; infrared remote control apparatus; control stations (remote, electric or electronic -); energy control devices; thermal controls; all of the aforementioned goods in the field of domestic heating all refer to devices or readers (computerised, non-computerised, with digits, operating distance with waves or with no human intervention) used to regulate the temperature at home.

A certain link exists between the applicant´s and the opponent´s goods. Even considering the fact that the goods do not move through the same commercial channels and that the consumer might not be the same, the coincidence in the nature (all measuring/monitoring or regulating/controlling apparatus) and origin (specific companies may offer healthcare devices for hospitals and appliances for house temperature) allow for establishing a certain degree of similarity between them.

It follows that the contested measuring, detecting and monitoring instruments, indicators and controllers; monitoring instruments; controllers (regulators); visual monitoring apparatus; monitoring units [electric]; monitoring apparatus, electric; monitoring control apparatus [electric]; electronic carbon dioxide monitors [other than for medical purposes]; electronic monitoring instruments, other than for medical use; electronic temperature monitors, other than for medical use; remote control apparatus; heat regulating apparatus; time regulating apparatus; process controlling apparatus [electric]; thermostat control apparatus; temperature controlling apparatus; automatic control apparatus; process control digital controllers; electrical controls; electric control apparatus; electronic control units; process controlling apparatus [electronic]; electronic regulators; infrared remote control apparatus; control stations (remote, electric or electronic -); energy control devices; energy regulators; pressure regulators; thermal controls; all of the aforementioned goods in the field of domestic heating are similar to a low degree to the opponent´s measuring and control devices for medical purposes.

2. The signs

bioLogic RR
Earlier trade mark	Contested sign

The relevant territory is Germany.

The earlier mark is a word sign which consists of the elements ‘bioLogic’ and ‘RR’. On the other hand, the contested sign is a figurative mark which consists of the central verbal element ‘BIOLOGIC’ written in uppercase white letters, the word ‘BIO’ is written in non-bold letters where the initial letter ‘B’ is unfinished which might represent the number ‘3’ and the element ‘LOGIC’ is written in bold. This element is depicted on a black ellipse.

Visually, the signs are similar to the extent that they coincide in the element ‘biologic’ insofar as it is likely that the consumers will perceive the initial letter of the contested sign as forming the letter ‘B’. However, they differ in the letters ‘RR’ included in the earlier mark and in the representation of the initial ‘B’ and in the colours and the graphical presentation of the verbal element, all contained in the contested sign.

Aurally, the pronunciation of the signs coincides in the sounds of the letters ‘bio-lo-gic’ identically contained in both signs as the consumers will perceive the initial letter as forming a ‘B’, and to that extent the marks are aurally similar. The pronunciation differs in the sound of the letters ‘RR’ included in the earlier trade mark which have no counterpart in the contested sign. Furthermore, the signs contain ten and eight letters respectively in the same position, therefore, they have the same rhythm and intonation.

Conceptually, both signs include the element ‘BIOLOGIC’ which means related to living organisms in English.

The specialised public and the majority of the consumers in the relevant territory will understand the English term ‘biologic’ as a close variation thereof exists in German (‘Biologisch’).

The relevant public in Germany will perceive the element ‘RR’ of the earlier mark as the double letter ‘R’. However, the specialised public in the medical field might also understand the letters ‘RR’ as an abbreviation of ‘Respirationrate’ which indicates the level of the respiration in English.

Since the signs will be associated with a similar meaning due to the fact that both share the concept of ‘biological’, the signs are conceptually similar.

Taking into account the abovementioned visual, aural and conceptual coincidences, the signs under comparison are similar.

3. Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

The marks under comparison have no elements which could be considered clearly more distinctive than other elements for a part of the relevant public.

However, the term ‘biologic’ will be associated with living organisms for the German consumers as a close term exists in German. Bearing in mind that the relevant goods are devices to measure, regulate, monitor or control either used in the medical field or in the domestic heating, it is considered that this element is allusive for some of the goods, namely, measuring and control devices for medical purposes.

In the present case, the allusion of living organisms to the goods is sufficiently imaginative. The mere fact that there is an allusion to characteristics of the goods would not materially affect distinctiveness. Therefore, the element ‘BIOLOGIC’ would be considered to have an average degree of distinctiveness.

For the remaining goods, this element is considered to be distinctive.

As regards the element ‘RR’ included in the earlier mark, the specialised consumers might perceive this element as an abbreviation of ‘Respirationrate’ which indicates the level of the respiration and it is descriptive and non-distinctive for some of the relevant goods, namely, measuring and control devices for medical purposes. For the remaining goods, this element is distinctive. For the remaining consumers, this element conveys no meaning and it is considered to be distinctive for all of the goods at issue.

The marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.

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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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 clear 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 descriptive and non-distinctive element in the mark as stated above in section c) of this decision.

5. 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 goods found to be similar to a low degree are directed at the general public and at the specialised public with knowledge in the relevant field. The degree of attention of these publics may hence vary from average to enhanced.

6. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, phonetic and conceptual similarities between the marks. The comparison “must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components” (judgment of 11/11/1997, C-251/95, Sabel, ). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

Likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa. Furthermore, the more distinctive the earlier mark, the greater the risk of confusion. Marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (judgment of 29/09/1998, C-39/97, Canon,).

For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (judgment of 22/06/1999, C-342/97, Lloyd Schuhfabrik Meyer).

The goods have been found similar to a low degree.

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 (judgment of 14/07/2005, T‑312/03 ‘Selenium-Ace’, paragraph 37; decision of 19/12/2011, R 233/2011-4, ‘Best Tone’ paragraph 24; decision of 13/12/2011, R 53/2011-5 ‘Jumbo’, paragraph 59). In the present case, the figurative elements of the contested sign are less important than the words and the term ‘BIOLOGIC’ plays the important role in the comparison of the signs for the reasons set out below.

The signs have been found similar from a visual, aural and conceptual point of view. The similarities of the signs lie in the common element ‘BIOLOGIC’ and outweigh the differences between them, namely, the stylisation of the contested mark and the difference in the additional letters ‘RR’ in the earlier mark which are positioned at the end of the sign since the public generally retains the beginning rather than the end. Furthermore, for a part of the relevant public the ‘RR’ element lacks any distinctive character.

In accordance with the principle of interdependence, a lower degree of similarity between the goods can be outweighed by a higher degree of similarity between the signs and vice versa. It follows that the contested trade mark must be rejected for the goods found to be similar to a low degree to those of the earlier trade mark. In the case at hand, the marks display similarities therefore even goods found similar to a low degree may be believed to come from the same or from economically linked undertakings.

Considering all the above, the Opposition Division finds that 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 German trade mark registration.

As earlier German trade mark No 30 108 580 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (judgment of 16/09/2004, T-342/02, ‘Moser Grupo Media’).

COSTS

According to Article 85(1) CTMR, 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 Rule 94(3), (6) and (7)(d)(i) CTMIR, 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

Michaela SIMANDLOVA

Carmen SANCHEZ PALOMARES

Solveiga BIEZA

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) CTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Article 2(30) CTMFR) has been paid.