OPPOSITION No B 2 485 764

BioKat Systeme GmbH, Industriehof 6, 77933 Lahr, Germany (opponent), represented by Friedrich Graf Von Westphalen & Partner MBB, Kaiser-Joseph-Str. 284, 79098 Freiburg i. Br., Germany (professional representative)

a g a i n s t

Biokit S.A., Can Male, s/nº, 08186 Lliça d'Amunt (Barcelona), Spain (applicant), represented by Curell Suñol S.L.P., Via Augusta 21, 08006 Barcelona, Spain (professional representative).

On 04/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 485 764 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 13 396 411, namely against all the goods and services in Classes 10 and 42. The opposition is based on German trade mark registration No 302 012 048 198. The opponent invoked Article 8(1)(b) EUTMR.

SUBSTANTIATION

According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party shall also file proof of the existence, validity and scope of protection of his earlier mark or earlier right, as well as evidence proving his entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered - Rule 19(2)(a)(ii) EUTMIR.

According to Rule 19(3) EUTMIR, the information and evidence referred to in paragraphs 1 and 2 shall be in the language of the proceedings or accompanied by a translation. The translation shall be submitted within the time limit specified for submitting the original document.

According to Rule 98(1) EUTMIR, when a translation of a document is to be filed, the translation shall identify the document to which it refers and reproduce the structure and contents of the original document.

On 15/02/2016, the opponent filed a document (extract from the official database of the German national office) in the language of the proceedings containing data concerning the trade mark on which the opposition is based.

In the present case, the applicant considers that the evidence filed by the opponent does not meet the requirements because the designation of colours (blau, grün) is not in the language of proceedings. Therefore, the applicant considers that the opposition is to be rejected as unsubstantiated under Rule 20(1) EUTMIR.

However, in accordance with the Guidelines of the Office (p.39): Where the earlier mark has been identified as being in colour during the three-month opposition period, there are two acceptable scenarios. The first scenario is where an official colour representation of the mark such as a registration certificate, renewal certificate, official extract, etc. is submitted that contains a reproduction of the mark in colour. In the present case, this is precisely the situation: the earlier mark has been identified as being in colour during the three-month opposition period and an official colour representation was submitted (i.e. an official extract that contains a reproduction of the mark in colour). Therefore, in the present case, the Opposition Division considers that the opposing party has proven the existence, validity and scope of protection of his earlier mark or earlier right, as well as his entitlement to file the opposition.

The earlier right must therefore be deemed to be substantiated.

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.

1. The goods and services

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

Class 10: Surgical, medical, dental and veterinary apparatus and instruments; medical and therapeutical instruments and apparatus, in particular special test apparatus, diagnosis apparatus and therapeutic devices for bioresonance therapy and corresponding electro-magnetic sensors and devices; apparatus for bioresonance therapy and components of apparatus for bioresonance therapy; transmaterial catalysts in the form of medical and therapeutic instruments and apparatus.

Class 42: Scientific and technological services and research and design services relating thereto; industrial analysis and research services; design and development of computer hardware and software; issuance of certificates and/or seals of approval as part of certification for approved services, substances, materials, products and/or diagnosis methods and the technical supervision of certified companies; biological research; research in the field of medicine, bacteriology, chemistry and environmental protection; scientific laboratory services; environmental impact assessments.

The contested goods and services are the following:

Class 10: Medical apparatus and instruments for laboratory analysis and clinical diagnosis of human diseases, namely immunoassay analysers and automatic instruments for administering and incubating reagents.

Class 42: Scientific and technological services and research and design of new products in the field of chemical reagents and biology, biotechnology, virology, bacteriology, parasitology, coagulation, particle physics, enzymatic immunoassaying, and genetic and chemical engineering of proteins; industrial analysis and research services; advisory services relating to chemical reagents; laboratory services; laboratory analysis and testing services; clinical trials; material testing.

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

The term ‘in particular’, used in the opponent’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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

Contested goods in Class 10

The contested medical apparatus and instruments for laboratory analysis and clinical diagnosis of human diseases, namely immunoassay analysers and automatic instruments for administering and incubating reagents are included in the broad category of the opponent’s medical apparatus and instruments. Therefore, they are identical.

Contested services in Class 42

The contested scientific and technological services and research and design of new products in the field of chemical reagents and biology, biotechnology, virology, bacteriology, parasitology, coagulation, particle physics, enzymatic immunoassaying, and genetic and chemical engineering of proteins; advisory services relating to chemical reagents; laboratory services; laboratory analysis and testing services; clinical trials are included in the broad category of the opponent’s scientific and technological services and research and design services relating thereto;. Therefore, they are identical.

Industrial analysis and research services are identically contained in both lists of goods and services (including synonyms).

The contested material testing are included in the broad category of the opponent’s industrial analysis and research services Therefore, they are identical.

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.

In the present case, the goods and services found to be identical are specialised goods and services directed at business customers with specific professional knowledge or expertise. In view of the particularly specialized character of such goods and services, it is considered that the degree of attention is much higher than average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Germany.

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 earlier mark is a figurative mark which consists of the word ‘BioKat’ in which the three first letters, ‘Bio’ are portrayed in standard green characters and the following three letters, ‘Kat’ are written in standard blue characters. The letters ‘B’ and ‘K’ are capitalised whereas the remaining letters are in lowercase. A figurative element is placed at the right of the aforementioned word and consists of an arrow-shaped element in three colours, namely blue, white and green.

The contested sign is a figurative mark which consists of the word ‘Biokit’ portrayed in standard bold grey characters in which the initial letter ‘B’ is capitalised whereas the remaining letters are in lowercase. A figurative element is placed at the left of the aforementioned word and consists of a w-shaped element in two shades of blue.

The signs have no element that could be considered dominant (visually eye-catching). However, with regard to the distinctiveness of the various elements composing the signs, the following should be noted:

In the earlier mark the word ‘BioKat’ is visually divided into two parts due to the use of different colours and capital letters. Therefore, the relevant public will easily recognise two components in this element, namely ‘Bio’ and ‘Kat’ and perceive the former as the short form for ‘Biologie’ (biology) (http://www.duden.de/suchen/dudenonline/bio) or as the prefix indicating something connected with living things or human life. As a consequence, this component is non-distinctive as it will be perceived as an indication of the field in which the goods and services at issue are offered. The latter component, ‘Kat’, is the abbreviation of the word ‘Katalysator’ (in English: catalyst) (see http://www.duden.de/rechtschreibung/Kat_Katalysator) and is weak or non-distinctive as it will be perceived as an indication of or an allusion to the nature or purpose or field of application of the goods and services at issue. As a consequence of the foregoing, the result of the combination of both components, ‘BioKat’, will be perceived as short for the German word ‘Biokatalysator’ (in English: biocatalyst) which designates a chemical, especially an enzyme, that initiates or increases the rate of a biochemical reaction and is therefore weak or non-distinctive of the goods and services at issue to the extent that it will be perceived as an indication of the nature, purpose or field of application of the goods and services at issue.

Likewise, in the contested sign, while ‘Bio’ is not visually separated from the remaining letters of the sign’s word element, it remains that the word Biokit as a whole has no meaning and that consumers naturally look for a meaning when reading a word. Taking this into account and the fact that both ‘bio’ and ‘kit’ have a meaning for the German public, it is only natural that said public should perceive both such components in the word element. Indeed, as mentioned above, ‘bio’ is a common abbreviation in German of ‘biological’ and is non-distinctive of the goods and services at issue for the same reasons as explained above. The English word ‘kit’ is also commonly used in German (see http://www.duden.de/suchen/dudenonline/kit) to refer to a set of parts ready to be made into something or set of tools or equipment that you use for a particular purpose (see http://www.duden.de/rechtschreibung/Satz#b2-Bedeutung-6) and is weak or non-distinctive as it will be perceived as an indication of or an allusion to a characteristic of the goods at issue to the extent that these could come in a kit or that the services at issue are offered in view of the development of such kit. As a consequence of the foregoing, the result of the combination of both components, ‘Biokit’, will be perceived as a coined word to refer to some kit designed, for instance, for biological purposes and is therefore weak or non-distinctive of the goods and services at issue to the extent that it will be perceived as an indication of the nature, purpose or field of application of the goods and services at issue.

The figurative elements of the signs at issue, namely the arrow-shaped and w-shaped devices, respectively, are rather commonplace geometrical shapes and are, as a consequence, weakly distinctive.

It is the practice of the Office that when marks share an element with no distinctiveness, the assessment of likelihood of confusion will focus on the impact of the non-coinciding components on the overall impression of the marks. The assessment will take into account the similarities/differences and distinctiveness of the non-coinciding components. In the present case, the signs coincide in the non- –distinctive component ‘Bio’.

Visually, the signs coincide in their first, non-distinctive components of their respective word elements, namely in the letters ‘B-I-O’ which, in addition, are portrayed in standard characters in both signs but are different in their respective remaining features as described above. The signs coincide further in the second, weak or non-distinctive components of their respective word elements, namely in the letters ‘K-*-T’ which, in addition, are portrayed in standard characters in both signs but different in their respective remaining features described above. The signs differ further in the remaining graphic and figurative elements as described above and in their respective fifth letters, ‘A’, in the earlier mark and ‘I’ in the contested sign.

Taking into account that the signs coincide in a non-distinctive component to which the relevant public will not pay much attention, said public will rather focus on the remaining elements or components and more particularly on the remaining short word components ‘Kat’ and ‘kit’. Indeed, verbal components of signs usually have a stronger impact on the consumer than figurative components due to the fact that 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; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). However, in the present case, as mentioned, said word components are short and the length of the signs or components may influence the effect of the differences between them. The shorter a sign or a component, the more easily the public is able to perceive all of its single elements. Therefore, in short words small differences may frequently lead to a different overall impression. In view of the foregoing, bearing in mind that the signs coincide in a non-distinctive element and further in a short, weak or non-distinctive component, and taking into account the remaining elements, the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the non-distinctive component, namely in the sound of the letters ‛BIO’ and coincides further in the sound of the letters ‘K’ and ‘T’ of the second weak or non-distinctive component, present identically in both signs. The pronunciation of the signs differs in the second word component of the signs, namely in the sound of the letters ‘A’ of the earlier mark and ‘I’ in the contested sign which are the only vowels of such components and, as such, influence highly on the pronunciation of said components. Despite being shaped as a ‘W’, the figurative element of the contested sign will not be pronounced as such and bears no influence on the pronunciation of the sign or on the comparison of the signs at issue. In view of the foregoing; the signs are aurally similar to a low degree.

Conceptually, as mentioned above, the result of the combination of the two meaningful components ‘Bio’ and ‘Kat’, will be perceived as short for the German word ‘Biokatalysator’ (in English: biocatalyst) with the meaning given above whereas, in the contested sign, the result of the combination of ‘Bio’ and ‘kit’, ‘Biokit’, will be perceived as a coined word to refer to some kit designed, for instance, for biological purposes. Taken as a whole, and despite the fact that coincide in the non-distinctive component ‘Bio’, the word BioKat’ and ‘Biokit’ will be associated with a dissimilar meaning. Finally, it cannot be excluded that the figurative elements of the signs be perceived as an arrow and as a letter ‘W’, respectively. In view of the foregoing, the signs are conceptually dissimilar.

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. Considering what has been stated above in section c) of this decision, namely that ‘BioKat is weak or non-distinctive of the goods and services at issue and that the device is commonplace and equally non-distinctive, the distinctiveness of the combination of components and elements of the earlier mark must be seen as low for all of the goods and services in question.

5. Global assessment, other arguments and conclusion

In its judgment of 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23, the Court held that ‘… (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’. Therefore, the degree of distinctiveness of the various components of composite marks is an important criterion that must be considered within the trade mark comparison.

When assessing the similarity of signs, an analysis of whether the coinciding components are descriptive, or otherwise non-distinctive is carried out in order to calculate the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. This recognises that the consumer is more likely to consider that a descriptive, allusive or otherwise weak element of a mark is not being used to identify a particular undertaking, and thus to distinguish goods or services from those of other undertakings.

Consequently, although trade mark proprietors commonly use descriptive, allusive or otherwise weak elements as part of a trade mark to inform consumers about certain characteristics of the relevant goods or services, it may be more difficult to establish that the public may be confused as to origin due to similarities that solely pertain to weak elements.

In the present case, the goods and services are identical whereas the signs are visually and aurally similar to a low degree and conceptually dissimilar.

According to case-law, the conceptual differences between signs may counteract their visual and phonetic similarity (judgment of 12/01/2006, C-361/04, PICARO, ECLI:EU:C:2006:25, § 20). In the present case, despite their common, non-distinctive component ‘Bio’ and their further coincidences in what are, ultimately, merely short, weak or non-distinctive components, ‘Kat’ and ‘kit’, the signs convey completely different meanings which will not go unnoticed to the relevant specialised public which displays a degree of attention that is much higher than average. The Opposition Division considers that this significant difference coupled to the high impact of the differences in the respective letters ‘A’ and ‘I’ on the pronunciation of ‘Kat’ and ‘Kit’ outweigh the low visual and aural similarities between the signs

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

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

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Begoña URIARTE VALIENTE

Martina GALLE

Pedro JURADO MONTEJANO

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.

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) EUTMIR, 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 (Annex I A(33) EUTMR) has been paid.