OPPOSITION No B 2 495 979

Harvard Bioscience, Inc., 84 October Hill Road, Holliston, Massachusetts 01746, United States of America (opponent), represented by Nash Matthews LLP, 24 Hills Road, Cambridge, Cambridgeshire CB2 1JP, United Kingdom (professional representative)

a g a i n s t

Betatex S.p.A., Via Raffaello N. 2, 06081 Assisi (PG), Italy (applicant), represented by Giuseppe Caforio, Via del sole 8, 06122 Perugia (PG), Italy (professional representative).

On 25/01/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 495 979 is partially upheld, namely for the following contested goods and services:

Class 10: Medical and veterinary apparatus and instruments, physical therapy equipment.

Class 42: Medical and pharmacological research services.

Class 44: Medical services for humans.

2. Community trade mark application No 13 464 912 is rejected for all the above goods and services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of Community trade mark application No 13 464 912. The opposition is based on Community trade mark registration No 564 179. 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.

1. The goods and services

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

Class 9: Electric waveform generators, diagnostic monitors, electric field applicators, and chambers, accessories and parts and fittings therefor; apparatus and instruments for the electroporation mediated manipulation of cells, bacteria and other related biological entities.

Class 10: Surgical, medical, dental and veterinary apparatus and instruments.

Class 42: Scientific research services.

The contested goods and services are the following:

Class 10: Medical and veterinary apparatus and instruments, physical therapy equipment.

Class 42: Medical and pharmacological research services.

Class 44: Medical services for humans, human hygiene and beauty care.

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 10

The contested medical and veterinary apparatus and instruments are identically contained in both lists of goods.

The contested physical therapy equipment is included in the broad category of the opponent’s medical apparatus. Therefore, they are identical.

Contested services in Class 42

The contested medical and pharmacological research services are included in the broad category of the opponent’s scientific research services. Therefore, they are identical.

Contested services in Class 44

When comparing the contested medical services for humans with the opponent’s medical apparatus and instruments in Class 10, these goods and services are similar to a low degree. They coincide in purpose, are complementary to each other and target the same public (see judgment of 18/10/2007, T-425/03, ‘AMS Advanced Medical Services’ (FIGURATIVE), paragraph 64).

According to the opponent, in the notice of opposition of 19/03/2015, the Class 10 goods of the registration of the earlier mark may also be used in the course of the provision of the Class 44 services human hygiene and beauty care of the challenged application, and are thus similar to such services.

However, the Opposition Division disagrees with this and finds that when comparing the contested human hygiene and beauty care with the opponent’s goods and services in Classes 9, 10 and 42, they are dissimilar. Even though it can be true that some of the goods of the opponent in Class 10 are used for the services of, for example beauty care, this does not mean that they are considered similar. The goods and services under comparison differ in nature and purpose. They target a different public via different distribution channels. They are neither in competition, nor are they complementary.

2. The signs

BTX
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The unitary character of the Community trade mark means that an earlier Community trade mark can be relied on in opposition proceedings against any application for registration of a Community 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 (judgment of 18/09/2008, C‑514/06 P, ‘Armafoam’, paragraph 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 English-speaking part of the relevant public.

The earlier mark is a word mark consisting of the word ‘BTX’. The contested sign is a figurative mark consisting of the words ‘BTX’ and ‘surg’, written one above the other, of which ‘BTX’ is written in a fairly standard bold typeface and underneath the word ‘surg’, also in a fairly standard lowercase typeface. On the left side appears a line in the form of half of a circle.

Visually, the marks are similar to the extent that they coincide in the letters ‘B-T-X’, being the sole element of the earlier mark that is fully included at the beginning of the verbal element of the contested sign. On the other hand, they differ in the additional letters ‘s-u-r-g‘ of the contested sign and the figurative elements, as described above, which are not shared by the earlier mark.

Aurally, the pronunciation of the marks coincides in the sound of the letters /B-T-X/, present identically in both signs, and to that extent the marks are aurally similar. The pronunciation differs in the sound of the element /surg/ of the contested sign which has no counterpart in the earlier mark.

Conceptually, the word ‘BTX’ of the earlier mark is meaningless. In the contested sign these letters ‘BTX’ do not have any meaning either. However, the element ‘surg’ will be perceived by the English-speaking public as the abbreviation for the word ‘surgical’, meaning: ‘of, relating to, involving, or used in surgery’ (see Collins English Dictionary online). Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

Taking into account the abovementioned visual and aural coincidences, it is considered that 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 earlier mark, composed of only one word, has no element that could be clearly considered more distinctive.

The element ‘surg’ of the contested sign is the abbreviation for ‘surgical’ that will be associated with ’of, relating to, involving, or used in surgery’. Bearing in mind that the relevant goods and services could be related to the surgical field or associated with it, it is considered that this element is weak for these goods and services. The public understands the meaning of the element and will not pay as much attention to this weak element as to the other more distinctive element of the mark. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue.

The earlier mark, composed of only one word, has no element that could be more dominant (visually eye‑catching). However, for the contested sign, since the letters ‘BTX’ are depicted in bold and in a slightly larger typeface than the word ‘surg’, together with the line in the form of half a circle, are the dominant elements (visually eye-catching).

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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

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 and services found to be identical or similar to a low degree are directed partly at the public at large and partly at business customers with specific professional knowledge or expertise. Since the goods and services involved affect a person’s state of health and/or in the medical field the degree of attention will be relatively high.

6. Global assessment, other arguments and conclusion

A likelihood of confusion (including a likelihood of association) 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.

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, aural 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’ (see judgment of 11/11/1997, C‑251/95, ‘Sabèl’, paragraph 22 et seq.).

The goods and services at issue have been found to be partly identical, partly similar to a low degree and partly dissimilar and the level of attention will be relatively high.

The conflicting signs are similar to the extent that they coincide in the element ‘BTX’, which constitutes the only element of the earlier mark, being entirely included in the contested sign forming the first three letters on top of it. It is important that the coinciding element falls at the beginning of 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 or from top to bottom, which makes the part placed at the left or on top of the sign (the initial part) the one that first catches the attention of the reader. Consequently, the coinciding first elements of the marks at issue have to be taken into account when assessing the likelihood of confusion between the marks.

It follows that the element ‘BTX’ of the contested sign, also being represented in a slightly bigger typeface than the other verbal element and, as being the whole earlier mark, significantly influences the overall impression of the signs and is likely to be remembered by the relevant public, even more as this element has a normal distinctiveness for the relevant goods and services. The signs differ, inter alia, in the element ‘surg’ of the contested sign. However, this element has less impact on the overall impression of the marks, because of its weak character for the goods and services.

Furthermore, when a sign consists 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, 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 0233/2011-4 – ‘Best Tone’, paragraph 24; decision of 13/12/2011, R 0053/2011-5 – ‘Jumbo’, paragraph 59). This is also applicable at the case at hand where the words ‘BTX surg’ are the only verbal elements of the contested sign.

While it may be true that the relevant public is more attentive when acquiring many of the contested goods and services, it does not mean that the purchaser has always the opportunity to compare both marks side-by-side. Accordingly, some degree of imperfect recollection of the absent mark at the time of acquisition cannot be totally ruled out.

It is very likely that the consumer in the relevant territory will consider the conflicting marks as having the same commercial origin, for example, that the contested sign with its additional element ‘surg’ represents a new line or a parallel line of the opponent’s products (see judgment of 05/09/2007, T-220/06, ‘JAKO-O Möbel und Spielmittel für die junge Familie GmbH’).

The relevant consumers might be led, therefore, by the visual and aural similarity of the word ‘BTX’, to believe that the identical and similar to a low degree goods and services covered by the marks come from the same undertaking or economically linked undertakings, this even taking into account that part of the relevant public are professionals and that there might be a higher degree of attention.

Taking into account all the circumstances, the differences between the signs are not enough to counteract the similarities and to safely exclude a likelihood of confusion. It can reasonably be concluded that consumers will not be able to distinguish the marks in dispute and will perceive them as having the same origin. Therefore, and in view of the above mentioned similarities, the Opposition Division is of the opinion that despite the higher level of attention of a part of the relevant public, the overall impression created by the signs at issue is very similar.

In view of all the relevant factors in the present case and also the principle of interdependence between them, i.e. the principle that a lesser degree of similarity between the goods/services may be offset by a greater degree of similarity between the marks, the relevant public could be mistaken as to the origin of those services that are similar even only to a low degree. The similarity of the signs outweighs the low similarity of these services.

Considering all the above, there is a likelihood of confusion at least on the English-speaking part of the public. As stated above in section b) 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.

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 partially well founded on the basis of the opponent’s Community trade mark registration No 564 179.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to a low degree to those of the earlier trade mark.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) CTMR, the opposition based on this article and directed at these services cannot be successful.

COSTS

According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) CTMR, 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

Julia SCHRADER

Chantal VAN RIEL

Saida CRABBE

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.