OPPOSITION No B 2 613 837

Synergie, 11, avenue du Colonel Bonnet, 75016 Paris, France (opponent), represented by T Mark Conseils, 9 avenue Percier, 75008 Paris, France (professional representative)

a g a i n s t

Synergy Diagnostics GmbH, Ulmer Straße 123, 73037 Göppingen, Germany (applicant), represented by MAS & P Miess Altherr Sibinger und Partner Rechtsanwälte Partnerschaftsgesellschaft, Kaiserring 48-50, 68161 Mannheim, Germany (professional representative).

On 16/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 613 837 is partially upheld, namely for the following contested services:

Class 35: Business assistance, management and administrative services; business analysis, research and information services; professional business evaluation and, economic and organisational analysis; personnel management consulting; personnel planning, management and placement; consultancy relating to business organisation and business management, and relating to business planning; benchmarking; consultancy and information relating to the aforesaid services, included in this class, all the aforesaid services in particular relating to health care facilities, medical and pharmaceutical facilities (laboratories, doctors’ surgeries, hospitals, clinics, rehabilitation clinics); none of the aforesaid services being in connection with data processing for public administration, including public hospitals.

2. European Union trade mark application No 14 344 212 is rejected for all the above services. It may proceed for the remaining services in Classes 42 and 44.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 14 344 212 for the figurative mark , namely against all the services in Classes 35, 42 and 44. The opposition is based on European Union trade mark registration No 1 822 014 for the figurative mark and international trade mark registration No 1 180 842 designating the European Union for the word mark ‘SYNERGIE’. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR in relation to both earlier rights.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition, now Article 47(2) and (3) EUTMR), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant has not submitted the request for proof of use by way of a separate document as required by Article 10(1) EUTMDR.

Therefore, the request for proof of use is inadmissible pursuant to Article 10(1) EUTMDR.

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.

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 international trade mark registration No 1 180 842 designating the European Union for the word mark ‘SYNERGIE’, since this earlier right is visually closer to the contested sign.

1. The services

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

Class 35: Advertising; business management; business administration; office functions; arranging newspaper subscriptions; organization and advice on business organization; business management consultancy; business consulting in connection with staff recruitment and management, staff recruitment; wage services; provision of qualified staff, particularly in the field of health and healthcare; bill-posting; commercial information agencies; office machine and equipment rental; marketing studies; computer file management; organization of exhibitions for commercial or advertising purposes; computer file management; purchase and rental of advertising space; opinion polling; public relations; input, processing and handling of data in particular in the field of staff placement, namely data input, compilation and systematization; temporary employment agencies; dissemination of advertisements on the global computer and telecommunication networks for the management of human resources and staff recruitment; electronic publishing of advertisements in the field of human resources management and staff recruitment; newspaper subscription services for others; subscriptions to electronic newspapers for others.

The contested services, after a limitation made by the applicant, are the following:

Class 35: Business assistance, management and administrative services; business analysis, research and information services; professional business evaluation and, economic and organisational analysis; personnel management consulting; personnel planning, management and placement; consultancy relating to business organisation and business management, and relating to business planning; benchmarking; consultancy and information relating to the aforesaid services, included in this class, all the aforesaid services in particular relating to health care facilities, medical and pharmaceutical facilities (laboratories, doctors’ surgeries, hospitals, clinics, rehabilitation clinics); none of the aforesaid services being in connection with data processing for public administration, including public hospitals.

Class 42: Testing, authentication and quality control; analytical laboratory services; scientific laboratory services; analytical laboratory services; development and testing of laboratory concepts; rental of laboratory apparatus and instruments; technical project management of medical and pharmaceutical facilities; consultancy and information in relation to the aforesaid services, included in this class; none of the aforesaid services being in connection with data processing for public administration, including public hospitals.

Class 44: Human healthcare services; human hygiene and beauty care; medical services; medical consultations; professional consultancy relating to health care; pharmaceutical services; consultancy and information in relation to the aforesaid services, included in this class.

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

The term ‘in particular’ (or ‘particularly’), used in both lists of services, indicates that the specific 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 (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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

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 services in Class 35

The contested business assistance, management and administrative services; business analysis, research and information services; professional business evaluation and, economic and organisational analysis; consultancy relating to business organisation and business management, and relating to business planning; benchmarking; consultancy and information relating to the aforesaid services, included in this class, all the aforesaid services in particular relating to health care facilities, medical and pharmaceutical facilities (laboratories, doctors’ surgeries, hospitals, clinics, rehabilitation clinics); none of the aforesaid services being in connection with data processing for public administration, including public hospitals are included in, or overlap, with the opponent’s broad categories of business management consultancy, business management, business administration and office functions. The Opposition Division cannot artificially dissect the contested services from the opponent’s categories of business services and therefore, they are considered identical.

The contested personnel management consulting; personnel planning, management and placement; consultancy and information relating to the aforesaid services, included in this class, all the aforesaid services in particular relating to health care facilities, medical and pharmaceutical facilities (laboratories, doctors’ surgeries, hospitals, clinics, rehabilitation clinics); none of the aforesaid services being in connection with data processing for public administration, including public hospitals overlap with the opponent’s business consulting in connection with staff recruitment and management, staff recruitment. These services are also considered identical.

For the sake of completeness, the Opposition Division notes that, contrary to the applicant’s argument, the fact that the contested services refer exclusively to the field of health care facilities, medical and pharmaceutical facilities, while the opponent’s services are not restricted to any field of business, does not change the above findings; rather, it reinforces them, as the opponent’s categories of services are thus broader categories including the contested services.

Contested services in Class 42

The contested testing, authentication and quality control; consultancy and information in relation to the aforesaid services, included in this class; none of the aforesaid services being in connection with data processing for public administration, including public hospitals are activities essentially related to checking that particular goods or services are of an acceptable standard; thus, they are services usually provided by specialised agencies and organisations with know-how in a particular area.

The contested analytical laboratory services; scientific laboratory services; analytical laboratory services; development and testing of laboratory concepts; rental of laboratory apparatus and instruments; technical project management of medical and pharmaceutical facilities; consultancy and information in relation to the aforesaid services, included in this class; none of the aforesaid services being in connection with data processing for public administration, including public hospitals are specialised services provided with respect to conducting scientific and analytical research or practical science in a specially equipped environment, as well as activities related to the managing of particular medical or pharmaceutical environments. All these services are provided by specialised companies engaged in the management and development of laboratory, medical and pharmaceutical facilities.

The opponent’s services in Class 35, by contrast, are in general advertising, business management and administration, and office services, all used as professional tools to help a business acquire, develop and expand market share. These services are provided by various types of business consultants and agencies specialised in improving the business standards and results of any commercially active undertaking. It is evident from the above that the natures and purposes of the services in question genuinely differ. Furthermore, these services will have completely different distribution channels and target different consumers. They cannot be considered complementary either, since the delivery of the contested services is not dependent on the provision of the opponent’s services or vice versa. These services are considered dissimilar.

Contested services in Class 44

The contested human healthcare services; human hygiene and beauty care; medical services; medical consultations; professional consultancy relating to health care; pharmaceutical services; consultancy and information in relation to the aforesaid services, included in this class are essentially medical services and services related to health and beauty care. This type of services are usually provided in specialised medical institutions, clinics or beauty salons, where patients and clients are generally treated for health conditions or given beauty treatments. These services are also considered dissimilar to the opponent’s business services in Class 35, due to their completely different natures, intended purposes, distribution channels and target publics. Even though the opponent’s services may be used to contribute to the successful commercial functioning of the contested services, this is not sufficient reason for a finding of similarity between them. These categories of services nonetheless have different purposes and target different consumers; 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 are directed at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness will vary between average and high, depending on how specialised the services are, as well as on the terms and conditions of purchase. For example, the purchase of some of the services might constitute an important business decision.

3. The signs

SYNERGIE
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 earlier mark is the word mark ‘SYNERGIE’, written in upper case letters. However, in the case of word marks the word as such is protected and not its written form. Therefore, it is immaterial whether the earlier mark is depicted in upper or lower case letters.

The contested sign contains the word ‘synergy’, with the first letters, ‘syn’, depicted in a grey lower case typeface, and the following four letters, ‘ERGY’, depicted in a dark blue upper case typeface. The verbal element is preceded by a small square divided by a white S-shaped curve into two parts in grey and dark blue.

The verbal element ‘synergy’ of the contested sign will be understood in particular by the English-speaking public as ‘any interaction or cooperation which is mutually reinforcing; a dynamic, productive, or profitable affinity, association, or link’ (information extracted from Oxford English Dictionary on 04/10/2018 at http://www.oed.com/view/Entry/196482?redirectedFrom=synergy#eid). Bearing in mind that the word ‘synergy’ derives from the Latin ‘synergia’ and has identical or very similar equivalents in all EU languages, for instance ‘synergie’ in French, German, Czech, Dutch and Romanian; ‘sinergia’ in Spanish and Portuguese; ‘synergia’ in Finnish, Slovak and Polish; ‘sinergija’ in Croatian and Slovenian; ‘szinergia’ in Hungarian and ‘синергия’ (transliterated as ‘sinergija’) in Bulgarian, etc., this element will be understood throughout the EU. Furthermore, as stated in the decision of 27/10/2011, R 2472/2010-2, Watt Synergia / SYNERGIE (fig. mark), § 42-43, ‘the non-existence of a term in a language does not always mean that the relevant consumers will not assume its meaning, as in the present case (see by analogy judgment of 14 July 2011, T‑160/09, ‘Oftal Cusi’, para. 79).’ Therefore, despite their different endings, the element ‘SYNERGIE’ of the earlier mark will convey the same meaning as the element ‘synergy’ of the contested sign throughout the EU.

The applicant in the present case claims that the earlier trade mark has a low degree of distinctiveness, since it consists solely of the word ‘SYNERGIE’, which serves to refer in a laudatory manner to an enhanced effect resulting from the provision of the opponent’s business services to consumers or companies. To support its argument, the applicant submitted extracts from a number of registrations of EUTMs and national trade marks (Attachment 5) and a few extracts from websites using the words ‘synergie’ or ‘synergy’ (Attachment 6).

With respect to the extracts from registrations submitted by the applicant, the Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. Furthermore, the extracts submitted by the applicant with respect to the use on the internet of the words in question provide very little information about the market environment and do not demonstrate that these words are commonly used in the relevant market sector’ or similar. The evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘synergie’ or ‘synergy’. Under these circumstances, the applicant’s claims must be set aside.

Furthermore, as the opponent states, the issue regarding the distinctiveness of the word ‘synergy’ in relation to services in Class 35 has already been dealt with by the Boards of Appeal in a previous case (27/10/2011, R 2472/2010-2, Watt Synergia / SYNERGIE (fig. mark), § 53). The Opposition Division refers to these findings, in which it is stated that the word ‘synergy’, even if it were to be considered somewhat allusive, has no descriptive character per se in relation to business services in Class 35. That is, the opponent’s right does not serve to directly describe particular characteristics or explain the nature of the services; it merely alludes to a potentially desired effect of a vague character. The Opposition Division notes that, in any case, the word ‘synergie’, for which the opponent has obtained protection for services in Class 35, is to a large extent reproduced in the verbal element ‘synergy’, which the applicant seeks to have registered for identical services, and which conveys the same meaning as the opponent’s mark.

In addition, account must be taken of the fact that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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.

Furthermore, 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). In the present case, the figurative element preceding the verbal element of the contested sign will have less impact on the overall perception of the mark, and the stylisation of the contested sign serves only to embellish the verbal element.

Visually, in the present case, the signs coincide in most of their letters, ‘SYNERG**’. In particular, they coincide in their beginnings, whereas they differ in their very last parts, ‘IE’ in the earlier mark and ‘Y’ in the contested sign. The signs also differ in the slight stylisation and in the figurative element of the contested sign, which, however, are considered of limited significance in the overall perception of the sign. Therefore, bearing in mind the abovementioned similarities between the signs, they are considered visually similar to an average degree.

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 string of letters ‛SYNERG**’, present identically in both signs. The pronunciation differs in the sound of the signs’ last letters, ‘IE’ in the earlier mark and ‛Y’ in the contested sign. It cannot be excluded, however, that some parts of the public may pronounce the final syllables of the signs in an almost identical manner, for instance as ‘-gy’ and ‘-gie’, that is [gi] and [gi:]. Therefore, the signs are considered aurally at least highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks, including to the findings of the Boards of Appeal referred to above. As both signs will be perceived as conveying the concept referred to above, they are conceptually identical.

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 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 may have a somewhat allusive character for the services in question from the perspective of the public in the relevant territory, as explained in section c) above. Therefore, the distinctiveness of the earlier mark must be seen as slightly lower than average.

5. Global assessment, other arguments and conclusion

The services in the present case are partly identical and partly dissimilar. The degree of attention is considered to vary between average and high, and the degree of distinctiveness of the earlier mark is considered slightly lower than average, for the reasons given in sections c) and d) of this decision.

It must be borne in mind that, when assessing likelihood of confusion, the distinctiveness of the earlier mark is only one factor among others involved in that assessment (see, by analogy, 29/09/1998, C‑39/97, Canon, EU:C:1998:442 § 24). Therefore, even in a case involving an earlier mark of low distinctiveness, or slightly lower than average distinctiveness, as in the present case, if the contested mark reproduces a large part of the earlier mark, there may be a likelihood of confusion on account, in particular, of the similarity between the signs and the identity, in the present case, between the services concerned. Therefore, even though the Opposition Division considers that the earlier mark is slightly allusive, this cannot prevent a finding that there is a likelihood of confusion, as many other factors also apply.

In the present case, in spite of the differences in the ends of the words ‘SYNERGIE’ and ‘SYNERGY’, the overall similarity between the signs in question is evident. Account is taken of the fact that 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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

Differences in final letters, as in the present case, may be seen as insignificant, as they will have less impact than the coinciding larger parts of the signs, ‘SYNERG*’. In addition, consumers, when encountering the marks, will tend to recognise the identical concept of ‘synergy’ conveyed by them and link the conflicting signs conceptually. Bearing in mind the conceptual identity between the two words and the principle of imperfect recollection, it is more than likely that the consumer will see the words as identical, not paying any attention to the different endings ‘IE’ and ‘Y’, or at most perceiving them as misspelt versions of the same word. Consequently, it cannot be excluded that, when encountering the signs, consumers will be likely to confuse them or believe that they originate from the same undertaking or 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 partly well founded on the basis of the opponent’s international trade mark registration.

It follows from the above that the contested trade mark must be rejected for the services found to be identical 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) EUTMR, the opposition based on this Article and directed at these services cannot be successful.

The opponent has also based its opposition on European Union trade mark registration No 1 822 014 for the figurative mark , covering the following services:

Class 35: Advertising; business management; business administration; office functions; newspaper subscription services; business management and organisation consultancy; recruitment and personnel management consultancy for companies; business management consultancy; outdoor advertising; commercial information agencies; rental of office machines and apparatus; marketing studies; organization of exhibitions for commercial or advertising purposes; management of computer files; purchase and rental of advertising space; opinion polling; public relations, personnel recruitment; provision of qualified staff among other in the field of health and medical treatment; entry, processing and use of data among other in the field of personnel placement; temporary employment agencies; management of computer files; dissemination of classified advertisements on the world-wide computer and telecommunications network; subscriptions, arranging newspaper subscriptions for others; arranging electronic newspaper subscriptions for others; subscription to a service providing centre giving access to a computer network or data transmission network; auctioneering; online auctioneering, auctioneering by means of the worldwide computer and telecommunications network; display of information contained in a data bank; electronic publishing, among other of classified advertisements.

As is evident from the above, this earlier right covers essentially the same scope of services, since it is registered for the same services in Class 35 as or similar ones to those already discussed above; the outcome cannot be different with respect to services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those services.

The Opposition Division will examine the remaining ground of the opposition, namely Article 8(5) EUTMR, in connection with these services.

REPUTATION — ARTICLE 8(5) EUTMR

The opponent claims that its two earlier rights enjoy reputation in France in relation to services in Class 35, in particular the following:

EUTM No 1 822 014

Class 35: Recruitment and personnel management consultancy for companies; personnel recruitment; provision of qualified staff among other in the field of health and medical treatment; temporary employment agencies.

IR No 1 180 842 designating the EU for the word mark ‘SYNERGIE’

Class 35: Business consulting in connection with staff recruitment and management, staff recruitment; provision of qualified staff, particularly in the field of health and healthcare; temporary employment agencies.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will 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 Article 7(1) EUTMDR, the Office will 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 Article 7(2)(f) EUTMDR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

In the present case, the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade marks.

On 04/12/2015 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. After a joint request for an extension of the cooling-off period, this time limit expired on 09/02/2018.

The opponent did not submit any evidence concerning the reputation of the trade marks on which the opposition is based.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as this ground is concerned.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Volker Timo MENSING

Manuela RUSEVA

Eva Inés PÉREZ SANTONJA

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.