OPPOSITION No B 2 689 043

Fidelidade - Companhia de Seguros, S.A., Largo do Calhariz, 30, 1200-086 Lisboa, Portugal (opponent), represented by Alvaro Duarte & Associados, Avª Marquês de Tomar, nº 44-6º, 1069-229 Lisboa, Portugal (professional representative)

a g a i n s t

Muticare GmbH, Auenstraße 100, 80469 München, Germany (applicant), represented by IT-Recht-Kanzlei, Alter Messeplatz 2, 80339 München, Germany (professional representative).

On 31/05/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 689 043 is partially upheld, namely for the following contested services:

Class 44: Human hygiene.

2. European Union trade mark application No 14 976 021 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 some of the goods and services of European Union trade mark application No 14 976 021, namely against all the services in Class 44. The opposition is based on Portuguese trade mark registrations No 448 578 and No 448 579. 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.

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 Portuguese trade mark registration No 448 579.

1. The services

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

Class 44: Medical care, clinics, nursing services, health services.

The contested services are the following:

Class 44: Human hygiene and beauty care; beauty care; beauty consultancy.

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 human hygiene is mainly provided by persons or establishments to human beings in the field of hygiene. It is aimed at preserving health, therefore, it has a physiological aim. The opponent’s health services comprise a wide range of healthcare practices provided to maintain and restore health by employing preventative measures and treating various human illnesses and physical ailments. They comprise medical care, diagnostic, preventive, therapeutic or palliative treatment of medical conditions. When comparing the abovementioned services the Opposition Division finds that there are some relevant similarities between these services, in particular because of their connection with maintaining and promoting human health, for instance by avoiding infections through the relevant preventative care in respect of cleanliness and personal hygiene. It follows that they can have the same natures, purposes and relevant public. Therefore, these services are similar to a low degree.

The contested beauty care [mentioned twice]; beauty consultancy are provided by wellness and beauty centres and consist, among other things, of facial and body treatments for humans by application of cosmetics and the use of special apparatus. Considering this, the Opposition Division can find nothing relevant in common between these contested services and the opponent’s services in Class 44, being basically medical and healthcare services. They have different natures, purposes, methods of use and distribution channels. Furthermore, they are provided by different undertakings and target a different relevant public. Finally, they are not in competition or complementary to each other. Therefore, these services 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 similar to a low degree are directed at the public at large and at business customers with specific professional knowledge or expertise, namely medics.

The degree of attention is above average, since the services in question may have consequences on the consumer’s health.

In the present case, the Opposition Division finds it appropriate to limit its examination to the part of the relevant public that is more prone to confusion, that is, the public at large (general public), which is assumed to have no specific medical knowledge or experience. If a significant part of the relevant public for the services at issue may be confused about the origin of the services, it will be sufficient to establish a likelihood of confusion. It is not necessary to establish that all actual or potential consumers of the relevant services are likely to be confused.

3. The signs

	Muticare
Earlier trade mark	Contested sign

The relevant territory is Portugal.

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 composed of the verbal element ‘multicare’ with the verbal element ‘Activcare’ in smaller letters below, and a figurative element of a person in a circle on the right.

The Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57).

With respect to the present case, it can be reasonably assumed that the general public will discern the commonly used prefix ‘multi’ and the word ‘Activ’ included in the earlier mark. The prefix ‘multi’ will be understood as referring to ‘many’ or ‘more than one’ and the word ‘Activ’, which is similar to the Portuguese word ‘activo’, as meaning 'moving, in a state of action’. Both elements are considered weak for the relevant services, because they merely denote their particular positive or appealing quality or function.

However, the general public is unlikely to understand the word ‘care’, since the corresponding Portuguese word is ‘cuidado’. Therefore, it will be perceived as a meaningless element with an average degree of distinctiveness for the relevant services.

The figurative element of the earlier mark, as described above, has no connection with the relevant services and is, therefore, distinctive to an average degree for these services. However, it must be recalled that when signs consist of both verbal and figurative components (as the earlier mark does in the present case), 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). Therefore, the figurative element of the earlier mark has only a limited impact on the consumer’s perception.

In summary, the verbal element ‘care’ (included twice) and the figurative element of the earlier mark are both distinctive to an average degree, though the latter has a lower impact on the consumers for the reason explained above, whereas the words ‘multi’ and ‘Activ’ are weak elements of the mark.

The element ‘multicare’ in the earlier sign is the dominant element as it is the most eye-catching due to its size and position while the other elements are either smaller (‘Activcare’) or are less sharply contrasting from the background (the grey figurative element).

The contested sign is a word sign, ‘Muticare’, and it will be perceived in its entirety by the general public, without making any dissection, as it does not contain any meaningful words that could be understood by the public. Given that it has no meaning for the general public in the relevant territory, it is distinctive to an average degree in relation to the relevant services.

Visually, the signs coincide in the letters ‘mu*ticare’, which form the entire contested sign and the majority of the letters of the dominant element of the earlier mark. However, the signs differ in all of the remaining elements of the earlier mark, namely the letter ‘l’ present in the word ‘multicare’, the word ‘Activcare’ and the figurative element, which however as explained above, are dominated by ‘multicare’, i.e. only a secondary attention would be paid to them.

Regarding the typeface in which the verbal element ‘multicare’ of the earlier mark is written, this stylisation is not considered that overwhelming and will not draw the consumer’s attention away from the word it is supposed to embellish. The letter case in which the contested sign is depicted is irrelevant for the purposes of comparison as in word marks it is the word as such that is protected and not its written form.

Therefore, and taking the impact of the particular elements of the signs as described above into account, the signs are visually similar to a high degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘mu*ticare’, present identically in both signs. The pronunciation differs in the sound of the remaining letters of the earlier mark, namely the letter ‘l’ in the word ‘multicare’ and the letters ‘Activcare’. The latter is secondary and at least a part of the public would refer to the earlier mark by pronouncing just the dominant element ‘multicare’.

Therefore, and taking the impact of the particular elements of the signs as described above into account, the signs are aurally similar to a high degree.

Conceptually, reference is made to the meanings of the signs and their individual elements given above.

Although the general public in the relevant territory will perceive some concepts in the earlier mark, as explained above, the contested sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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 the relevant services from the perspective of the general public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some weak elements in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Accordingly, a greater degree of similarity between the goods and services may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The present assessment of likelihood of confusion considers the perception of the part of the public that is more prone to confusion, namely the general public; the degree of attention is above average and the earlier mark enjoys a normal degree of inherent distinctiveness for the relevant services.

As concluded above, the contested services are partly similar to a low degree and partly dissimilar to the opponent’s services.

The conflicting signs are visually and aurally similar to a high degree and conceptually not similar, as explained in detail above in section c) of this decision. This is because they have in common the sequence of the letters/sounds ‘mu*ticare’, which constitutes the entire contested sign and plays an independent, dominant and, as a whole, distinctive role within the earlier mark.

The differences between the signs are not sufficient to counteract their similarities, since some of them are weak, namely the word ‘Activ’ of the earlier mark, or have a lower impact on the consumer’s perception, such as the figurative element of the earlier mark. The difference in the letter ‘l’ of the word ‘multicare’ is likely to be overlooked/overheard by the general public as it appears towards the middle and is not a visually/aurally striking letter. Although the word ‘multi’ included in the earlier mark is a weak element for the general public, it still contributes to the visual and aural similarity between the signs. Therefore, the Opposition Division is of the opinion that the differences between the signs are not sufficient to safely exclude a likelihood of confusion in the present case, also for the reasons explained below.

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 or services covered are from the same or economically-linked undertakings. Furthermore, it is common practice in the relevant market for manufacturers to make variations of their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements, in order to denote new product lines or to endow a trade mark with a new, fashionable image.

In the present case, although the public in the relevant territory might detect certain visual and aural differences between the signs, the likelihood that it might associate the signs with each other is very real. It is highly likely that the relevant consumer will perceive the contested sign as a sub-brand, a word variation of the earlier mark configured in a different way depending on the type of services that it designates. It is, therefore, conceivable that the relevant public, even with a high degree of attention, will regard the services designated by the conflicting signs as belonging to two ranges of services coming from the same undertaking.

The applicant claims, in its observations dated 10/11/2016, that it denies the use of the marks ‘Multicare Activcare’ and that such mark has to be deleted. Further, it continues that claims under this brand may then not be invoked. However, in the Opposition Division’s opinion it is not clear what the applicant has indeed meant by making these claims. If it wished to put the genuine use of the earlier mark into question such a request had to be made under the relevant provisions of the EUTMR. Since the abovementioned claim does not comply with the requirements set out in the EUTMR, it has to be set aside.

Based on an overall assessment, the Opposition Division concludes that there is a likelihood of confusion (including likelihood of association) on the part of the general public. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

Therefore, the opposition is partly well founded on the basis of the opponent’s Portuguese trade mark registration No 448 579.

It follows from the above that the contested sign must be rejected for a part of the contested services, even though they were found to be similar to a low degree to the opponent’s services. This is because, bearing in mind the interdependence principle mentioned above, the moderate degree of similarity between those services is clearly offset by the high degree of visual and aural similarity between the signs.

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 Portuguese trade mark registration No 448 578 for the figurative mark , registered, inter alia, for medical care, clinics, nursing services, health services in Class 44 on which opposition is based. However, since this mark covers the same scope of services than the earlier mark that has been compared 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.

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 will decide a different apportionment of costs.

Since the opposition is successful only for part 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

Chantal VAN RIEL

Martin MITURA

Vita VORONECKAITĖ

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.