OPPOSITION No B 2 522 111

DKV Seguros y Reaseguros S.A.E. (Sociedad Unipersonal), Avenida César Augusto, no. 33, 50004 Zaragoza, Spain (opponent), represented by Sonia Alvarez, Nuñez de Balboa, 31 - 3º 5ª, 28001 Madrid, Spain (professional representative)

a g a i n s t

Filtex S.R.L., Via Camillo Benso Conte di Cavour, 24, 36031 Dueville (VI), Italy (applicant), represented by Giambrocono & C. S.P.A., Via Rosolino Pilo, 19/b, 20129 Milano, Italy (professional representative).

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

DECISION:

1. Opposition No B 2 522 111 is partially upheld, namely for the following contested services in Class 44:

Medical and health services; Medical and healthcare support and information; Support for healthcare professionals and for patients; gathering, sorting, filtering and organising healthcare information; analysis and assessment of healthcare data; Advisory services relating to medical services, products, problems, apparatus, instruments and preparations; Compilation of medical reports; Medical screening; medical information retrieval; Preparation of reports relating to medical matters; Provision of information relating to medical specialists and practitioners; Information and advisory services relating to all the aforesaid services; Telemedicine services; Provision of medical information online from a computer database or via the Internet; Computerised information services relating to the sharing of medical information; Provision of online databases containing medical information for direct management by users.

2. European Union trade mark application No 13 737 011 is rejected for all the above services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services (in Classes 9, 35, 42 and 44) of European Union trade mark application No 13 737 011 (figurative mark:
“ ”). The opposition is based on Spanish trade mark registration No 3 040 471 (word mark: “MEDICARD”). The opponent invoked 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.

1. The goods and services

The services in Class 44 on which the opposition is based are the following:

Medical services; health care services; health and beauty treatments for people; hospital services, of clinics, medical clinics and health centers; therapeutic services; psychologists services, psychotherapy and psychiatric services; medical assistance; physiotherapy; ophtalmic and optical services; dentists and dental services.

The contested goods and services in Classes 9, 35, 42 and 44 are the following:

Class 9: Computer software for applications for the medical sector; Data processing equipment, in particular for healthcare purposes, computer media for healthcare data, computer software for processing of medical diagnoses; Computer software, including in the form of an application for mobile phones and tablet computers, that enables users to retrieve, collect, manage, track, exchange, and assess data and information concerning personal health, nutrition, lifestyle wellness, personal medications, medical treatments, therapies, medical devices and pharmaceutical preparations; Computer programs for using the internet and the worldwide web; Computer systems; Computer hardware, computer firmware, computer software and computer programs; Apparatus for communication; Data carriers; compact discs, CD- and DVD-ROM; Data devices and data transfer devices; Portable data storage devices; Parts and fittings for all the aforesaid; Electronic publications, downloadable; All of the aforesaid goods being for providing personal and medical information; Electronic and magnetic ID cards.

Class 35: Compilation, processing, transmission and archiving of personal and medical information and data; Advisory, consultancy and information services related to the aforesaid services, Collection and systematisation of information into computer databases; Collection of data; Compilation of computer databases.

Class 42: Providing an interactive website and an online portal for retrieval, collection, management, tracking, reporting, exchange, and assessment of data and information concerning personal health, nutrition, lifestyle wellness, personal medications, medical treatments, therapies, medical devices, and pharmaceutical products via a global computer network; providing online non-downloadable software that provides electronic alerts and reports concerning personal health topics, nutrition, lifestyle wellness, medical treatments, therapies, medical devices, and pharmaceutical products.

Class 44: Medical and healthcare support and information; Medical and health services; Support for healthcare professionals and for patients; gathering, sorting, filtering and organising healthcare information; analysis and assessment of healthcare data; Advisory services relating to medical services, products, problems, apparatus, instruments and preparations; Compilation of medical reports; Rental of medical facilities for first aid and medical treatments, or for healthcare services; Medical screening; medical information retrieval; Preparation of reports relating to medical matters; Provision of information relating to medical specialists and practitioners; Information and advisory services relating to all the aforesaid services; Telemedicine services; Medical services; Provision of medical information online from a computer database or via the Internet; Computerised information services relating to the sharing of medical information; Provision of online databases containing medical information for direct management by users.

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 terms ‘in particular’ and ‘including’, used in the applicant’s list of goods and services, indicate 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, they introduce a non-exhaustive list of examples (see the judgment of 09/04/2003, T‑224/01, Nu Tride, EU:T:2003:107).

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

Although the contested goods and the opponent’s services refer to the same subject matter of health and/or medicine, the relevant public would not think that the contested hardware and/or software and the opponent’s services came from the same undertaking or economically linked undertakings. The relevant public does not expect a doctor to develop and market hardware and/or software. The goods and services have different natures, purposes and methods of use. They are not in competition with each other or complementary to each other. Therefore, all the contested goods are dissimilar to the opponent’s services.

Contested services in Classes 35 and 42

The services in Classes 35 and 44 are related to technology and deal with the technological treatment of collected data. They have different natures and purposes from the opponent’s services. They are offered by different companies to consumers with different needs. Furthermore, they are neither complementary to nor in competition with each other. Their distribution channels and methods of use are also different. Consumers would not think that these services came from the same undertaking or economically linked undertakings. Therefore, they are dissimilar.

Contested services in Class 44

Medical and health services are identically contained in both lists of goods and services.

The contested Medical and healthcare support and information; Support for healthcare professionals and for patients; gathering, sorting, filtering and organising healthcare information; analysis and assessment of healthcare data; Advisory services relating to medical services, products, problems, apparatus, instruments and preparations; Compilation of medical reports; Medical screening; medical information retrieval; Preparation of reports relating to medical matters; Provision of information relating to medical specialists and practitioners; Information and advisory services relating to all the aforesaid services; Telemedicine services are included in the broad categories of the opponent’s Medical and health services. Therefore, they are identical.

The contested Provision of medical information online from a computer database or via the Internet; Computerised information services relating to the sharing of medical information; Provision of online databases containing medical information for direct management by users have the same distribution channels and public as the opponent´s Medical and health services. Therefore, they are similar to a low degree.

The remaining contested Rental of medical facilities for first aid and medical treatments, or for healthcare services have different natures and purposes from the opponent’s services. They are offered by different companies to consumers with different needs. Furthermore, they are neither complementary to nor in competition with each other. Their distribution channels and methods of use are also different. Consumers would not think that these services came from the same undertaking or economically linked undertakings. Therefore, they are dissimilar.

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 services found to be identical and similar to a low degree are directed at the public at large and at business customers with specific professional knowledge or expertise, such as doctors. The degree of attention will vary between average and high, because medicine and health-related services will be selected carefully.

3. The signs

MEDICARD
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 trade mark is a word mark, which is protected in any typeface.

The contested sign is a figurative mark. It consists of the three words ‘My’, ‘Med’ and ‘Card’, written in a standard typeface without any spaces between the words. The three words that constitute the sign each begin with an upper case letter. Furthermore, above the word elements and to the left of the sign, a stylised heart shape is depicted alongside a heart pulse line, which documents the frequency of heartbeats.

The elements ‘MED/MEDI’ of the signs will be associated by some consumers with ‘medicina, medicinal (medicine/medical)’. Bearing in mind that the relevant services are related to medicine, this element is non-distinctive for these services.

The element ‘My’ of the sign is a basic English word that will be associated with its meaning as a pronoun. Given that it means that something belongs to me or is in my possession, this element of the sign is weak.

The figurative element of the contested sign will be associated with a heart and with the frequency of heartbeats. Bearing in mind that the relevant services are related to medicine, this element is non-distinctive for these services.

Neither of the signs has any elements that could be considered clearly more dominant than other elements.

Visually, the signs have a similar number of letters, namely eight in the earlier trade mark and nine in the contested sign. The distinctive endings, ‘CARD’, are identical. The elements ‘MEDI/MED’ are very similar. Even considering that they are not distinctive for a part of the public, they have to be taken into account to some degree. The word ‘My’ is only part of the contested sign. Since it is non-distinctive, it cannot result in a significant difference between the signs. 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 (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). Furthermore, the figurative elements of the contested sign are non-distinctive. Therefore, there is an average degree of visual similarity between the signs. The degree of similarity is higher if the elements ‘MED/MEDI’ are recognised as distinctive elements of the signs.

Aurally, the graphic elements of the signs will not be taken into account. The signs have the following syllables:

• earlier trade mark – ‘ME-DI-CARD’;

• contested sign – ‘MY-MED-CARD’.

The signs have the same number of syllables, namely three. The final syllables of the marks, ‘CARD’, will be pronounced identically. Their first syllables, ‘ME’ in the earlier trade mark and ‘MY’ (pronounced ‘MI’) in the contested sign, are pronounced in quite a similar way. Their second syllables, ‘DI’ in the earlier trade mark and ‘MED’ in the contested sign, sound different. Taking into account that the elements ‘MED/MEDI’ are non-distinctive for a part of the public and that ‘MY’ is weak, there is an average degree of aural similarity between the signs. The degree of similarity is higher if the elements ‘MED/MEDI’ are recognised as distinctive elements of the signs.

Conceptually, the elements ‘MED/MEDI’ will be understood by a part of the public as a reference to ‘medicina, medicinal (medicine/medical)’. To this extent, the signs have the same meaning. However, it has to be taken into account that these elements are non-distinctive for a part of the public. Therefore, the significance of this conceptual similarity is limited. For this part of the public, the signs are similar to an average degree. If these parts of the signs are not understood, they have no impact on the conceptual comparison. The signs have the words ‘CARD’ in common, with the meaning for a part of the professional public of ‘a piece of thick, stiff paper or thin pasteboard, in particular one used for writing or printing on’ (Oxford English Dictionary). To this extent, the signs have the same meaning. They differ in the comprehensible word of the contested sign ‘My’, which is weak (as explained above). Therefore, the impact of this difference is limited. The same applies to the additional figurative elements of the contested sign, which refer to the subject matter of the services. Overall, the outcome of the conceptual comparison will not have a significant impact on the overall assessment.

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 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 despite the presence of a non distinctive element in the mark as stated above in section c) of this decision for a part of the public.

5. Global assessment, other arguments and conclusion

A likelihood of confusion on the part of the public must be assessed globally. That global assessment implies some interdependence between the factors taken into account and in particular a similarity between the marks and between the goods or services covered. Accordingly, a lesser degree of similarity between these goods or services may be offset by a greater degree of similarity between the marks, and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17; and 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19). The more distinctive the earlier mark, the greater the risk of confusion, and 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 (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

For the purpose of the global appreciation, the average consumer of the category of goods or services concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. The consumer’s degree of attention is likely to vary according to the category of goods or services in question, and average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26; and 30/06/2004, T‑186/02, Dieselit, EU:C:2011:238, § 38).

The contested goods and services are partly identical, partly similar to a low degree and partly dissimilar.

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since some of the goods and services are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

Taking into account the visual, aural and conceptual similarities between the signs, the fact that the coinciding elements ‘MED/MEDI’ will not be understood by a part of the public, the average degree of distinctiveness of the earlier trade mark and the fact that the services are partly identical and partly similar to a low degree, there is, even for the part of the public that will pay a high degree of attention, a likelihood of confusion. This likelihood is even greater where the degree of attention of the public is only average. There is also a likelihood of confusion for the services that are only similar to a low degree because of the significant similarities between the signs. Therefore, the opposition is partly well founded on the basis of the opponent’s Spanish trade mark registration.

Contrary to the applicant’s opinion, the differences between the signs are not sufficient to distinguish them clearly from each other. Therefore, the relevant consumers will believe that the trade marks come from the same undertaking or economically linked undertakings.

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). Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case. In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings, because the signs and/or the goods and services are not comparable.

Therefore, the opposition is partly well founded under Article 8(1)(b) EUTMR.

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

Konstantinos MITROU

Peter QUAY

Claudia MARTINI

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.