OPPOSITION No B 2 682 717

Paul Hartmann AG, Paul-Hartmann-Str. 12, 89522 Heidenheim, Germany (opponent), represented by Stumpf Patentanwälte PartGmbB, Alte Weinsteige 73, 70597 Stuttgart, Germany (professional representative)

a g a i n s t

Dignity Health, 185 Berry Street Suite 300, 94107 San Francisco, United States of America (applicant), represented by Merkenbureau Knijff & Partners B.V., Leeuwenveldseweg 12, 1382 LX Weesp, Netherlands (professional representative).

On 11/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 682 717 is partially upheld, namely for the following contested services:

Class 44: Healthcare and hospital services.

2. European Union trade mark registration No 14 914 105 is rejected for the contested services. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 914 105 for the word mark ‘DIGNITY HEALTH’, namely against all the goods and services in Classes 25 and 44. The opposition is based on European trade mark registration No 9 761 172 for the word mark ‘Dignity’. 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

Part of the goods and services on which the opposition was initially based have been removed from the registration of the earlier mark as a consequence of cancellation proceedings. Therefore, the services on which the opposition is based are the remaining ones, namely the following:

Class 41: Education and providing of training related to incontinence care; conducting of courses for the providing of know-how in the fields of wound care, incontinence and compression therapy.

The contested goods and services are the following:

Class 25: Clothing, namely, shirts, hats, infant garments, socks, headbands.

Class 44: Healthcare and hospital services.

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.

The contested goods in Class 25

The contested goods comprise various items of apparel. The main function of these goods is to dress the human body. The contested goods are not similar to the opponent’s services that constitute different forms of education in the field of healthcare. They differ in their purposes and natures, method of use, usual producers/providers and distribution channels; they are neither complementary nor in competition. Therefore, they are dissimilar.

It is noted that the opponent explicitly argued only the similarity of the contested goods to the opponent’s goods in Class 5, which, as mentioned earlier, are no longer covered by the earlier mark and cannot be taken into account.

The contested services in Class 44

The contested services are similar to some extent to the services of the earlier mark in Class 41. While it is true, as pointed out by the applicant, that educational and healthcare services have different purposes, they do share some commonalties. In particular, hospitals and healthcare institutions may provide education-related services as a part of the academic training, especially in hospitals that are affiliated with a medical school or university, or as a stand-alone part of training for the healthcare specialists or patients for informative purposes. In this respect, the contested and opponent’s services may be provided by the same institutions and be distributed through the same channels. Therefore, they are similar to a low degree.

As regards the applicant’s reference to previous decisions of the Office to support its arguments, it is noted that the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities (30/06/2004, T 281/02, Mehr für Ihr Geld, EU:T:2004:198). In view of the above, it follows that, even if the previous decisions referred to by the applicant may to some extent be factually similar to the present case, the outcome may not be the same. In the present case, the education and training services of the opponent specifically relate to the medical field, which justifies finding a low degree of similarity to the contested medical services, as explained above (see, by analogy, 11/06/2009, T 67/08, InvestHedge, EU:T:2009:198, § 46-48).

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 similar to a low degree are directed at the public at large and at business customers with specific professional knowledge or expertise.

Since the services at hand are specialised services, some of which may have important consequences for the health of their users, consumers’ level of attention would be rather high when choosing them.

3. The signs

DIGNITY	DIGNITY HEALTH
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union 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 (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The English-speaking part of the public would perceive all elements of both signs as meaningful. In particular, the common verbal element ‘DIGNITY’ will be understood, as referring to the ‘state or quality of being worthy of honour or respect’ (information extracted from https://www.lexico.com/en/definition/dignity on 03/07/2019). Although a positive connotation could be attached to this element, since it does not directly describe the services in question or any of their characteristics, this element is fully distinctive for the English-speaking part of the public. The additional term ‘HEALTH’ present only in the contested sign will be associated with the ‘state of being free from illness’ (information extracted from https://www.lexico.com/en/definition/dignity on 03/07/2019). Bearing in mind that the services in question are healthcare-related, this element of the sign will be seen as a reference to the type or intended purpose of the services and is therefore non-distinctive.

In view of the meanings given above, for reasons of procedural economy the Opposition Division will focus the comparison of the signs on the English-speaking part of the public.

Visually, aurally and conceptually, the signs coincide in their distinctive elements ‘DIGNITY’ (their image, sound and concept) and differ only in the additional non-distinctive element of the contested mark, ‘HEALTH’. The earlier mark is totally reproduced at the beginning of the contested mark where consumers generally tend to focus more attention when they encounter a trade mark (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.

Due to the minor importance of the differing element ‘HEALTH’, which furthermore is placed in second position, the signs are visually, aurally and conceptually highly similar. Furthermore, due to the non-distinctive nature of the element ‘HEALTH’, the signs might even be considered identical, at least conceptually.

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.

When an earlier mark is not descriptive (or is not otherwise non-distinctive), the mark will not necessarily have a higher degree of distinctive character just because there is no conceptual link to the relevant goods and services (16/05/2013, C-379/12 P, H/Eich, EU:C:2013:317, § 71). Any higher degree of distinctiveness should be proven by the opponent by providing evidence of enhanced distinctiveness through use. Therefore, the opponent’s allegations regarding the high degree of inherent distinctiveness of the earlier mark are set aside. Furthermore, the opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, as the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se and as the mark as a whole has no meaning for any of the services in question from the perspective of the public in the relevant territory, the distinctiveness of this mark must be seen as normal.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and 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).

In the present case, the contested services have been found similar to a low degree and the goods have been found dissimilar to the opponent’s services. The degree of attention of the relevant public (which consists of the general public and business customers with specific professional knowledge) is rather high.

The signs are visually, aurally and conceptually highly similar (and may also be considered identical, at least conceptually). The difference in the non-distinctive element in the contested sign is clearly not sufficient to outweigh the strong similarities between the marks due to the identical presence of the same distinctive element ‘DIGNITY’ in both signs, forming the whole of the earlier mark.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. In this case, despite the low degree of similarity of the services and the rather high level of attention of the relevant public, the coincidence in the distinctive element ‘DIGNITY’ makes it conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

In the view of all the foregoing, and in particular the abovementioned principle of interdependence, there is a likelihood of confusion on the English-speaking part of the public. As stated above in section c) 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. Therefore, it is not necessary to address the remaining part of the public of the EU.

Therefore, the opposition is partially well founded on the basis of the European Union trade mark registration No 9 761 172. It follows from the above that the contested mark must be rejected for the services found to be lowly similar to those of the earlier trade mark.

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

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 goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Vita VORONECKAITE

Alexandra APOSTOLAKIS

Helen Louise MOSBACK

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.