OPPOSITION Nо B 2 899 980

 

Fimed S.R.L., Via Santa Marta 12, 20123 Milano, Italy (opponent), represented by Bugnion S.P.A., Via di Corticella, 87, 40128 Bologna, Italy (professional representative) 

 

a g a i n s t

 

Legacy Ventures LLC, 1306 7th Ave N, 37208 Nashville, United States of America (applicant), represented by Dehns, St Bride's House, 10 Salisbury Square, EC4Y 8JD London, United Kingdom (professional representative)

On 14/01/2021, the Opposition Division takes the following

 

 

DECISION:

  

1.	Opposition No B 2 899 980 is rejected in its entirety.

 

2.	The opponent bears the costs, fixed at EUR 300.

 

REASONS

 

The opponent filed an opposition against all the goods of European Union trade mark application No 16 322 604 ‘VESALIO’ (word mark). The opposition is based on Italian trade mark registration No 1 404 230 (figurative mark). The opponent invoked Article 8(1)(b) EUTMR.

 

 PRELIMINARY REMARK

It is noted that the certificate submitted by the Opponent to substantiate the earlier mark is in black and white colours, while the earlier mark is claimed to be in colour, as per the Notice of opposition. However, the Opposition Division will not proceed to analyse the substantiation of the earlier mark at this stage and will proceed on the assumption that the earlier mark was properly substantiated.

PROOF OF USE

  

In accordance with 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 filing or, where applicable, the date of priority 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 requested that the opponent submit proof of use of Italian trade mark registration No 1 404 230 .

 

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

  

The date of priority of the contested application is 22/12/2016. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the Italy from 22/12/2011 to 21/12/2016 inclusive.

  

Furthermore, the evidence must show use of the trade mark for the good and services on which the opposition is based, namely the following:

 

Class 10:   Surgical apparatus and instruments.

 

Class 44:  Medical services.

 

According to Article 10(3) EUTMDR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

 

On 09/09/2019, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 14/11/2019 to submit evidence of use of the earlier trade mark; the deadline was extended until 14/01/2020. On 13/01/2020, following extension of time and within the time limit, the opponent submitted evidence of use.

  

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

 

The evidence to be taken into account is the following:

 Attachment 1: Screenshots of the Opponent´s website for the period between 2008 and 2020 extracted from WaybackMachine. The screenshots are in Italian or English, but the top level domain ending ‘.it’, appearing as part of the opponent’s Internet address, refers to Italy. The Opponent´s sign displayed on these screenshots is or (on the homepage). Some of the screenshots in English provide information about the medical and dental services offered by the opponent. While most of the screenshots show the relevant years and fall within the relevant period (2011-2016), the screenshot showing the Opponent’s homepage is undated.

 Attachment 2: Advertising materials in Italian newspapers where the sign is displayed as or . Some of these materials are dated outside the relevant time period (for instance the years 2017, 2018).

 Attachment 3: Revenue consisting of Notes to the Financial Statement of the companies Clinika S.r.l. and Studi Medici Vesalio S.r.l. for the year 2012 with partial translations in English. Said companies were authorized to use the opponent’s mark. According to the opponent, these documents show the total sum of revenues and advertising expenditures for 2012 of these two companies. None of these documents refers to or contains the opponent’s mark, so as to establish a link between the opponent and the revenues.

 Attachment 4: Affiliations (partially translated in English) consisting of a list of companies and entities whose members have access to medical services provided by the opponent. Part of these documents originate from the opponent´s website and are undated. They show the opponent’s sign as follows .

 Attachment 5: Deliberation of the regional government of Veneto of 23/12/2016 concerning the affiliation of Centro Medico Vesalio with the regional health system for the provision of specialized medical assistance starting from the year 2017 (after the relevant period).

 Attachment 6: Screenshots of third party´s websites such as www.miodottore.it, http://secondolamiaopinione.altervista.org, www.corrieredelleconomia.it, www.buongiornomamma.it showing the Opponent´s trade mark as follows , . Only some of these screenshots are dated and outside the relevant time period.

 Attachment 7: Declaration of Mr Marco Finotti, sole administrator of Fimed S.r.l., attesting the expenditures for advertising services as well as the amount of revenue arising from the provision of medical services in the period from 22/12/2011 to 22/12/2016 by the group of companies controlled by the opponent, which included the companies Clinika S.r.l. and Studi Medici Vesalio S.r.l. (both authorized to use only the opponent’s trade mark CENTRO MEDICO VESALIO and no other marks). According to this document, this group of companies has regularly provided medical services based on affiliation agreements with various national welfare and health care companies and entities.

On 09/10/2019, after expiry of the time limit, the opponent submitted additional evidence, in particular:

 Attachment 8: License agreements of 30/04/2010 between the opponent and the companies Clinika S.r.l. and Studi Medici Vesalio S.r.l according to which these companies were duly authorized to use the opponent’s Italian trade mark registration No 1 404 230 (listed in the agreement by its filling number, namely BO2010C000456) for surgical equipment and instruments and medical services.

 Attachment 9: Non-consecutive invoices attesting the use of the opponent’s trade mark for the period 2011-2016 for dental services. The mark is shown in the invoices like .

 Attachment 10: Balance sheets (partially translated) of Clinika S.r.l. and Studi Medici Vesalio showing their revenues for the year 2016. However, it is not clear from which activities these revenues were achieved.

 

Even though, according to Article 10(2) EUTMDR, the opponent has to submit proof of use within a time limit set by the Office, this cannot be interpreted as automatically preventing additional evidence from being taken into account.

 

According to Article 10(7) EUTMDR, where the opponent submits after the expiry of the time limit set by the Office indications or evidence that supplement prior relevant indications or evidence submitted within the time limit, the Office may take into account the evidence submitted out of time as a result of an objective, reasonable exercise of the discretion conferred on it by Article 95(2) EUTMR. The Office must exercise its discretionary power if the late indications or evidence merely supplements, strengthens and clarifies the prior relevant evidence submitted within the time limit with the purpose of proving the same legal requirement laid down in Article 10(3) EUTMDR, namely, place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which opposition is based.

 

When exercising its discretionary power, the Office must take into account, in particular, the stage of proceedings and whether the facts or evidence are, prima facie, likely to be relevant for the outcome of the case and whether there are valid reasons for the late submission of the facts or evidence. 

  

In this regard, the Office considers that the opponent did submit relevant indications or evidence within the time limit initially set by the Office and, therefore, the later evidence can be considered to be supplementary.

 

The fact that the applicant disputed the initial evidence submitted by the opponent  in relation to the use of the opponent´s mark for the goods and services for which is registered, justifies the submission of additional evidence in reply to the objection (29/09/2011, T‑415/09, Fishbone, EU:T:2011:550, § 30, 33; 18/07/2013, C‑621/11 P, Fishbone, EU:C:2013:484, § 36).

  

For the above reasons, and in the exercise of its discretion pursuant to Article 95(2) EUTMR, the Office therefore decides to take into account the additional evidence submitted on 09/10/2019.

 

The applicant argues that the opponent did not submit translations of some of the evidence of use and that therefore this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Article 10(6) EUTMDR). Taking into account the nature of the documents that have not been translated and are considered relevant for the present proceedings, namely part of the advertising materials and the screenshots from some of the webpages, and their self-explanatory character, the Opposition Division considers that there is no need to request a translation.  

As far as declaration of Mr Marco Finotti is concerned, Article 10(4) EUTMDR expressly mentions written statements referred to in Article 97(1)(f) EUTMR as admissible means of proof of use. Article 97(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.

 

However, this does not mean that such statements do not have any probative value at all.

 

The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources.

 

Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.

Assessment of genuine use — factors

Place of use

The submitted documents, in particular the advertisement materials, the screenshots from the opponent’s and third-party websites, the deliberation of the regional government of Venetto, show that the place of use is Italy. This can be inferred from the language of the documents (‘Italian’), the currency mentioned (Euros) and some addresses in Italy. Therefore, the evidence relates to the relevant territory, namely Italy.

Time of use

Most of the evidence is dated within the relevant period. However, some of the evidence is dated after the relevant period.

In this regard it must be noted that evidence referring to use outside the relevant period is disregarded unless it contains conclusive indirect proof that the mark must have been genuinely used during the relevant period as well. Events subsequent to the relevant period may make it possible to confirm or assess more accurately the extent to which the earlier mark was used during the relevant period and the EUTM proprietor’s real intentions at the time (order of 27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50, § 31).

In the presence case the deliberation of the regional government of Venetto signed only one day after the relevant period and supposed to start from the year 2017 is also relevant since it shows continuity of use.

Extent of use

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, and its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The documents filed, namely the invoices, the advertising materials, the screenshots of third party’s websites together with the presented declaration and affiliation agreements provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

 

Nature of use — use as a trade mark

In the context of Article 10(3) EUTMDR, the expression ‘nature of use’ includes evidence of use of the sign  in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

Nature of use requires, inter alia, that the trade mark is used as a trade mark, that is, for identifying origin, thus making it possible for the relevant public to distinguish between its goods and services and those of different providers.

Most of the evidence clearly shows the sign with reference to medical or dental services. Therefore, a link can be established between the sign and the services themselves.

The Opposition Division considers, therefore, that the evidence shows use of the sign as a trade mark.

Nature of use — use of the mark as registered

According to Article 18(1), second subparagraph, point (a), EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements that do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 47(2) and (3) EUTMR, Article 18 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case the opponent’s sign is registered as . Part of the evidence shows the sign in a different font or with its verbal elements in a different position, with additional verbal elements or without the figurative device, e.g. or .

It is to be noted that all these variations do not alter the distinctive character of the sign. The circle device has a decorative function and it is of less importance than the verbal elements of the sign since it will be through the use of these verbal elements that the relevant public will refer to the mark (07/05/2015, GELENKGOLD, T 599/13, EU:T:2015:262, § 53). The different depiction of the verbal elements will be perceived by the relevant public as graphical means of bringing its attention to these verbal elements and the public will not pay significant attention to these features as indicators of commercial origin. The word ‘Padova’ will be perceived as indication of the place where the corresponding services or products are offered, and it is therefore non-distinctive.

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 18(1), second subparagraph, point (a), EUTMR. 

Use in relation to the registered goods and services

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods and services covered by the earlier trade mark.

In particular, the affiliations agreement with private entities that have access to the medical services provided by the opponent and with the regional government of Veneto concerning the affiliation of Centro Medico Vesalio with the regional health system for the provision of specialized medical assistance clearly state that the sign is used for medical services covered in Class 44. In addition, the declaration of Mr Marco Finotti also states that the expenditures for advertising services and the revenues arise from the provision of medical services by the group of companies controlled by the opponent. In its observation from 13/01/2020, the opponent explains that its center provides different medical therapies. The same kind of information can be found on the screenshots from the opponent’s webpage and from third-party webpages (ex. www.apollo.io).

In none of the remaining evidence (provided within the relevant time limit for proof of use) can a link be established between the opponent´s sign and the goods surgical apparatus and instruments. Indeed, in its late submissions dated 09/10/2020 the opponent provides license agreements according to which the group of companies that it controls were authorized to use the opponent´s mark for surgical equipment and instruments and medical services. However, these agreements alone are not sufficient to justify that indeed use of the sign in relation to these goods was made. Without any further evidence (e.g. invoices in relation to these goods, advertising materials where the sign is displayed on the relevant goods, press materials making reference to these goods, etc…) it is not clear whether at all and to what extent the licensees made commercial use of the sign in relation to these goods and to what extent the relevant public was exposed to this sign in relation to these goods.

The invoices and extract from the balance sheets of 2016 provided with the late submissions do not prove use of the sign in relation to these goods either. On the contrary, the invoices refer to dental services, whereas the extract from the balance sheet does not clarify whether at least part of the indicated revenues come from the sale of surgical equipment and instruments.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

  

In the present case, the evidence shows genuine use of the trade mark for the following services

Class 44:  Medical services.

 

Therefore, the Opposition Division will only consider the abovementioned services in its further examination of the opposition.

 

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 services

 

The services on which the opposition is based and for which use was proven, are the following:

 

Class 44: Medical services. 

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

 

Class 10: Surgical and medical apparatus and instruments, all for vascular use, none for use in relation to oral or dental surgery; surgical and medical apparatus and instruments, all for endovascular use, none for use in relation to oral or dental surgery; medical devices, namely, flow restoration thrombectomy device for use by endovascular neurosurgeons in intracranial arteries; medical devices, namely, minimally invasive neurovascular devices for use by endovascular neurosurgeons in blood vessels for the treatment of neurological conditions; medical devices, namely, retrievers for use by endovascular neurosurgeons for treating strokes and to retrieve clots and foreign bodies in intracranial arteries.

Despite the opponent’s assertions regarding the similarity between the goods and services in conflict, it is noted that medical apparatus and instruments in Class 10, have no similarity to healthcare services in Class 44, such as medical services.

Healthcare professionals do not manufacture any of the aforesaid goods themselves, but obtain them from specialist undertakings. There is a recognisable distinction for the relevant public between the provider of the service and the manufacturer of the goods. Moreover, the goods and services in question are intended for and are indeed purchased by different publics; therefore, any complementary relationship between the goods or services concerned is ruled out.

Consequently, the opponent´s medical services in Class 44 are dissimilar to all the contested goods in Class 10.

This finding would still be valid even if the earlier trade mark were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the goods and services cannot be overcome by the high distinctive character of the earlier trade mark, the evidence submitted by the opponent in this respect does not alter the outcome reached above.

Considering that the goods and services are dissimilar, there is also no need to analyse whether the earlier mark has been properly substantiated given that the submitted certificate does not show colour representation.

b) Conclusion 

 

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 the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

 

COSTS

 

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

 

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

 

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

 

 

 

The Opposition Division

 

 

Francesca DRAGOSTIN

Meglena BENOVA

Helena GRANADO CARPENTER

 

 

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.