OPPOSITION Nо B 2 817 321

Dm-drogerie markt GmbH + Co. KG, Am dm-Platz 1, 76227 Karlsruhe, Germany (opponent), represented by Lemcke, Brommer & Partner Patentanwälte Partnerschaft mbB, Siegfried-Kühn-Straße 4, 76135 Karlsruhe, Germany (professional representative)

a g a i n s t

Promotal, 22 rue de Saint-Denis-de-Gastines, 53500 Ernée, France (applicant), represented by Cabinet Vidon Marques & Juridique PI, 16B, rue Jouanet - B.P. 90333 Technopôle Atalante, 35703 Rennes Cedex 7, France (professional representative).

On 07/07/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 817 321 is partially upheld, namely for the following contested goods:

Class 10: Examination beds for medical use; medical examination tables for use in chiropody; beds for medical use; chairs, armchairs, seats for medical use; sampling chairs for medical purposes; chairs adapted for transport, for medical purposes; devices for the transfer and movement of patients; devices for patient accessibility namely hoists and devices for receiving invalids or disabled patients; headrests for transfer stretchers; surgical, medical, dental and veterinary apparatus and instruments; orthapedic apparatus and appliances; medical apparatus and instruments for chiropody; medical apparatus and instruments for caring for the feet; medical apparatus for protecting against the hardening of callous areas of the feet; elasticated supports for the feet, ankles and knees; orthopaedic splints; electronic medical devices for caring for the feet; therapeutic massage apparatus and instruments; orthopedic soles; foot supports; cushions and pads for the ball of the foot; orthopaedic and therapeutic hosiery; elastic bandages for joints; furniture especially made for medical purposes; modular furniture for medical use; instrument tables for medical use; tablets for medical purposes; lamps, trolleys and stools for medical purposes; mattresses for medical use; stretchers; transfer stretchers; stretchers, wheeled; ambulance stretchers; adjustable-height transfer stretchers; reclining transfer stretchers; pads for stretchers, seats and chairs for medical purposes; medical apparatus and instruments for equipping and organising patients’ environment.

2. European Union trade mark application No 15 576 002 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

On 13/12/2016, the opponent filed an opposition against some of the goods of European Union trade mark application No 15 576 002 ‘APOLIUM’ (word mark), namely against all the goods in Class 10. The opposition is based on international trade mark registration designating the European Union No 1 073 735 ‘Apolea’ (word mark). 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.

a) The goods

The goods on which the opposition is based are, inter alia, the following:

Class 10: Surgical, medical, dental apparatus and instruments; orthopaedic articles; baby bottles; drinking bottles for infants and babies; bottle nipples; biting rings and violet root for teething relief; pacifiers for infants; biting rings; milk pumps; hot and cold compresses; thermometers for medical use; cushions for medical use; cushions with heat reservoir, for medical use; heating blankets for medical use; heating cushions (electric) for medical use; ice bags for medical use; elastic bandages; stockings for varicose veins; gloves for medical use; inhalers; lamps for medical use; spoons for medicines; masks for medical personnel; massage apparatus; massage apparatus for beauty care; massage gloves; vibratory massage apparatus; medical apparatus for physical exercise and physiotherapy; therapeutic hot-air apparatus; navel bandages; needles for medical use; syringes for medical use; non-chemical contraceptives; contraceptive sheaths (condoms); ear cleaning devices; mattresses for incontinence; tongue cleaning devices.

The contested goods are the following:

Class 10: Examination beds for medical use; medical examination tables for use in chiropody; beds for medical use; chairs, armchairs, seats for medical use; sampling chairs for medical purposes; chairs adapted for transport, for medical purposes; devices for the transfer and movement of patients; devices for patient accessibility namely hoists and devices for receiving invalids or disabled patients; headrests for transfer stretchers; pedals for transfer stretchers; surgical, medical, dental and veterinary apparatus and instruments; orthapedic apparatus and appliances; medical apparatus and instruments for chiropody; medical apparatus and instruments for caring for the feet; medical apparatus for protecting against the hardening of callous areas of the feet; elasticated supports for the feet, ankles and knees; orthopaedic splints; electronic medical devices for caring for the feet; therapeutic massage apparatus and instruments; orthopedic soles; foot supports; cushions and pads for the ball of the foot; orthopaedic and therapeutic hosiery; elastic bandages for joints; furniture especially made for medical purposes; modular furniture for medical use; instrument tables for medical use; tablets for medical purposes; lamps, trolleys and stools for medical purposes; mattresses for medical use; stretchers; transfer stretchers; stretchers, wheeled; ambulance stretchers; adjustable-height transfer stretchers; reclining transfer stretchers; pads for stretchers, seats and chairs for medical purposes; medical apparatus and instruments for equipping and organising patients’ environment.

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

The contested surgical, medical, dental apparatus and instruments; lamps for medical purposes are identically contained in the opponent’s list of goods (including synonymous).

The contested orthapedic apparatus and appliances; elasticated supports for the feet, ankles and knees; orthopaedic splints; orthopedic soles; foot supports; orthopaedic and therapeutic hosiery are included in, or overlap with, the opponent’s orthopaedic articles. Therefore, they are identical.

The contested elastic bandages for joints are included in the opponent’s broad category of elastic bandages. Therefore, they are identical.

The contested headrests for transfer stretchers; cushions and pads for the ball of the foot; pads for stretchers, seats and chairs for medical purposes are included in, or overlap with, the opponent’s cushions for medical use. Therefore, they are identical.

The contested veterinary apparatus and instruments; medical apparatus and instruments for chiropody; medical apparatus and instruments for caring for the feet; medical apparatus for protecting against the hardening of callous areas of the feet; electronic medical devices for caring for the feet; therapeutic massage apparatus and instruments; tablets for medical purposes; medical apparatus and instruments for equipping and organising patients’ environment are included in, or overlap with, the opponent’s broad categories of surgical, medical, dental apparatus and instruments. Therefore, they are identical.

The contested mattresses for medical use include, as a broader category, the opponent’s mattresses for incontinence. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical.

The contested examination beds for medical use; beds for medical use; devices for the transfer and movement of patients; stretchers; transfer stretchers; stretchers, wheeled; ambulance stretchers; adjustable-height transfer stretchers; reclining transfer stretchers are similar to the opponent’s mattresses for incontinence because they coincide in the end user (medical personnel) and distribution channels (specialised retailers). In addition, they are complementary as the opponent’s mattresses for incontinence are designed to be incorporated into the contested goods (namely beds for medical purposes and stretchers).

The contested hoists and devices for receiving invalids or disabled patients are similar to the opponent’s cushions for medical use (which include different types of cushions such as inflatable/air cushions, pressure relief pads and cushions or contoured cushions for patients’ use on beds or chairs) as they coincide in their relevant public (medical personnel), distribution channels (specialised retailers that supply medical equipment) and may coincide in their producers.

The contested medical examination tables for use in chiropody; chairs, armchairs; seats for medical use; sampling chairs for medical purposes; chairs adapted for transport, for medical purposes; furniture especially made for medical purposes; modular furniture for medical use; instrument tables for medical use; trolleys and stools for medical purposes are similar to a low degree to the opponent’s surgical, medical, dental apparatus and instruments. The contested goods are mainly pieces of furniture often used in a medical environment and for medical purposes. In addition, these goods have the same distribution channels, namely specialised retailers that supply equipment for use in clinics and doctors’ practices, and they target the same relevant public (medical personnel).

The contested pedals for transfer stretchers are dissimilar to all the opponent’s goods. The mere fact that these goods can target the same public (hospitals, invalid homes or procurement specialists for such establishments) and coincide in the distribution channels (suppliers dealing with moving equipment for patients and invalids) does not lead to the finding of similarity. In addition, it is unlikely that the usual producers are the same. In the absence of evidence from the opponent, the Opposition Division sees no reason to conclude otherwise.

b) 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 found to be identical or similar to varying degrees are directed mostly at business customers with specific professional knowledge or expertise in the medical field, but some are also directed at the public at large.

Contrary to the opponent’s view, the degree of attention will mostly be high, bearing in mind the specialised nature of most of the goods concerned (e.g. stretchers or beds for medical use), but may also be average in relation to some of the goods concerned, which may be less sophisticated and inexpensive goods (e.g. elastic bandages for joints).

c) The signs

Apolea	APOLIUM
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).

Both marks are word marks. In the case of word marks, it is the word as such that is protected and not its written form. It is, therefore, irrelevant whether it is written in upper-or lower-case letters unless the word mark combines upper- and lower-case letters in a manner that departs from the usual way of writing (irregular capitalisation), which is not the case here.

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 and from top to bottom, which makes the part placed at the left and top of the sign (the initial part) the one that first catches the attention of the reader.

Neither of the trade marks has a meaning and, therefore, they are distinctive. In addition, contrary to the opponent’s view, the Opposition Division considers that the public will not break down the signs into elements that suggest a concrete meaning.

Visually and aurally, the signs coincide in the string of letters/sounds ‘Apol’, which is placed at the beginning of the signs and comprises the majority of their letters/sounds. They differ in the final letters ‘ea’/‘IUM’ which have less impact on the public.

What matters in the assessment of the visual similarity of two word marks is the presence, in each of them, of several letters in the same order (25/03/2009, T‑402/07, ARCOL / CAPOL, EU:T:2009:85, § 83). The same applies to the aural similarity.

Therefore, the signs are visually and aurally similar to an average degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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

e) Global assessment, other arguments and conclusion

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.

The goods are partly identical or similar to varying degrees and partly dissimilar and target the public at large and professionals in the field of health. The relevant public’s degree of attention may vary from average to high.

The signs are visually and aurally similar to an average degree as they coincide in their initial letters/sounds ‘Apol’. The differing final letters (‘ea’/‘IUM’) are not sufficient to outweigh these similarities. Moreover, the fact that neither of the signs conveys any concept for the relevant public does not help the public to distinguish between them or to notice the spelling differences between them.

It should be noted 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).

Considering the above, 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 designating the European Union No 1 073 735. It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to varying degrees to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As the identity or 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

Victoria DAFAUCE MENÉNDEZ

Fernando AZCONA DELGADO

Agnieszka PRZYGODA

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.