OPPOSITION No B 2 928 995

"Med Kataskevi Endymaton-Esoroychon-Magio Emporoviomichaniki Anonymi Etairia" diakritikos titlos "MED AEVE", 9, Acheloou str., 54628, Thessaloniki, Greece (opponent), represented by Konstantinos Kyriakou, 15, Komninon & Tsimiski str., 54626, Thessaloniki, Greece (professional representative)

a g a i n s t

MAR-FOUR Marian Siekierski, Kilińskiego 185, 90-348 Łódź, Poland (applicant), represented by Kancelaria Patentowa W. Zajączkowski i A. Potempa s.c., ul. Kadłubka 11/19 m. 38, 93-263 Łódź, Poland (professional representative).

On 19/07/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 928 995 is rejected in its entirety.

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

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 327 306. The opposition is based on European Union trade mark registration No 3 264 009. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

The trade marks at hand are:

Earlier trade mark	Contested sign

Remarks on the scope of the opposition

On 19/07/2017, the opponent filed a notice of opposition in which it invoked Article 8(1)(b) and Article 8(5) EUTMR. It clearly indicated that the opposition is based on all the goods for which the earlier trade mark is registered, namely all the goods in Classes 3, 14 and 25, and claimed that the mark is reputed for all these goods. The opponent did not put forward any other claims. However, in observations dated 29/11/2017, in point 2, the opponent argued that it owns rights to a company name incorporating the word ‘MED’, which is protected under the Greek law and the Paris Convention, and rights to several additional Greek and International trade marks. In addition, it argues that it owns a domain name www.med.com.gr.

The opponent did not explicitly claim that these rights should form additional grounds for the current opposition, however, for the sake of completeness it should be explained that these rights could not, in any case, be taken into account as additional grounds of the opposition as they were raised after the three-month opposition period, which expired on 20/07/2017. As follows from Article 46 EUTMR, the grounds on which the opposition is based should be specified within the period of three months in which the opposition can be filed.

Consequently, the examination of the opposition will continue regarding Article 8(1)(b) and Article 8(5) EUTMR, as indicated in the notice of 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.

1. The goods

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

Class 3: Bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices.

Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes, jewellery, precious stones, horological and chronometric instruments.

Class 25: Clothing, shoes, headgear.

The contested goods are the following:

Class 5: Bandages and dressings; cotton swabs for medical purposes.

Class 10: Catheters; syringes; needles for medical purposes; examination gloves for medical purposes; disposable goods for medical use.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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.

It should be recalled that the opponent did not argue that the contested goods in Classes 5 and 10 are similar to any degree to the opponent’s goods; on the contrary, the opponent explicitly admitted in point 1.2 of its observations that these goods do not belong to the same classes and, later, relied on Article 8(5) EUTMR.

Contested goods in Class 5

The contested bandages and dressings are pieces of material such as gauze used to protect, immobilize, compress, or support a wound or injured body part; the contested cotton swabs for medical purposes are one or two small wads of cotton wrapped around one or both ends of a short rod made of wood, rolled paper or plastic, used to take microbiological cultures. These goods are dissimilar to all the opponent’s goods in Classes 3, 14 and 25.

The contested goods are for specific medical purposes, namely bettering wounds or injured body parts and taking generic samples; therefore, they differ in purposes from the opponent’s goods which are mainly for cleaning and personal hygiene (Class 3), production and decoration of jewellery and objects d’art, personal adornment and time measurement (Class 14), covering parts of the human body and protecting them against the elements (Class 25). The majority of these goods have different natures and methods of use. The contested goods are usually manufactured under special conditions, in particular in the sterile environment, and require different expertise than manufacturing of goods in Classes 3, 14 and 25; consequently, the goods under comparison are not likely to originate from the same producers. They are neither complementary to nor in competition with each other. Finally, even if the contested goods may coincide with some goods from Class 3 in distribution channels (e.g. pharmacies) these goods are not displayed side by side and their end users are not likely to coincide in the moment of purchase of each set of goods.

Contested goods in Class 10

The contested catheters are thin flexible tubes inserted into the body to permit introduction or withdrawal of fluids or to keep the passageway open; the contested syringes are medical instruments used to inject or withdraw fluids. These contested goods, together with the contested needles for medical purposes; examination gloves for medical purposes; disposable goods for medical use are various products for either specific or general medical use or medical purposes. They are dissimilar to all the opponent’s goods in Classes 3, 14 and 25. These goods have entirely different natures and intended purposes; in addition, the majority of these goods differ in methods of use. They are normally manufactures by different, specialised producers; they are not complementary with, nor are in competition to each other. Although these goods may coincide with some goods from Class 3 in distribution channels (e.g. pharmacies), they are not displayed side by side and their end users are not likely to coincide in the moment of purchase of each set of goods.

The above findings apply, by and large, also to the contested examination gloves for medical purposes and the opponent’s clothing in Class 25, which also includes gloves. Although these goods coincide in methods of use, they differ in their other aspects, including the natures and intended purposes (medical gloves are disposable gloves, made of different polymer materials, used during medical examinations and procedures to help prevent cross-contamination between caregivers and patients). Also, they clearly differ in manufacturers and are not expected to be produced by the same undertakings; they target different public and are distributed through different channels. They are neither complementary to nor in competition with each other.

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

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 cannot be overcome by the highly distinctive character of the earlier trade mark, the evidence submitted by the opponent in this respect does not alter the outcome reached above.

REPUTATION — ARTICLE 8(5) EUTMR

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.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. Reputation of the earlier trade mark

According to the opponent, the earlier European Union trade mark registration No 3 264 009 for the figurative mark has a reputation in Greece, European Union, Bulgaria and Cyprus.

Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case, the contested trade mark was filed on 08/02/2017. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in Greece, European Union, Bulgaria or Cyprus prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely:

Class 3: Bleaching preparations and other substances for laundry use. cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices.

Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes, jewellery, precious stones, horological and chronometric instruments.

Class 25: Clothing, shoes, headgear.

The opposition is directed against the following goods:

Class 5: Bandages and dressings; cotton swabs for medical purposes.

Class 10: Catheters; syringes; needles for medical purposes; examination gloves for medical purposes; disposable goods for medical use.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 29/11/2017 the opponent submitted evidence to support this claim. As the opponent requested that certain commercial data contained in the evidence be kept confidential vis-à-vis third parties, the Opposition Division will describe the confidential evidence only in the most general terms without divulging any such data. However, part of the evidence originates from the publicly available sources and, therefore, does not contain confidential data. The evidence consists of the following documents:

• Enclosures 01: Printouts from the database of WIPO regarding two international registrations, namely IR 800 257 for the word mark ‘MED’ registered for goods in Classes 3, 14 and 25 in the Czech Republic, Hungary, Romania, Serbia, Russian Federation and Turkey and IR 1 254 700 for the figurative mark registered for goods in Class 9 in Turkey.

• Enclosure 02: An undated document in English which appears to be an internal presentation about the ‘MED’ group. According to this document, the company referred to as ‘MED S.A.’ was established in 1992; it owns 27 stores in Greece, 1 in France and 1 in Cyprus and is active in the production and retail of underwear, outwear, swimwear and sunglasses. The document features some promotional materials in connection with underwear, swimwear, outwear and sunglasses, along with photos of interior designs of shops, appearances in beauty contests, mainly in Greece (the dates are not provided), and information about the target group. The earlier mark appears in the following depictions .

• Enclosure 03: An undated and unsigned list of the ‘MED’ stores in Greece, France and Cyprus. The list is presented on the MED Group of Companies business paper and indicates towns, areas, addresses and types of relationship. The earlier mark appears in the following depiction .

• Enclosure 04: An affidavit in Greek, translated into English, of Xatzivasileiou Efthimios for the company MED ABEE (relation with the company not specified), dated 29/09/2017, informing about the number of active staff which amounts to several dozen. The earlier mark appears in the following depiction .

• Enclosure 05: An undated and unsigned list of five Greek trade marks of the opponent (numbers 162 419, 162 420, 162 421, 1 624 422 and 164 490, four of which with the word ‘MED’), one European Union Trade Mark, on which the current opposition is based, and two international registrations (numbers IR 800 257 and IR 1 254 700 with the word MED). The earlier mark appears in the following depiction .

• Enclosure 06: An electronic document that appears to be a balance sheet of the company referred to as MED AVEE for the period 01/01/2016 – 31/12/2016, dated 30/06/2017. The document contains information about the net income of the company, but it cannot be disclosed due to the confidential nature of this information.

• Enclosure 07: A document entitled Brand Awareness Measurement Market Research for the company MED Industrial and Commercial S.A., dated March 2013. According to this document the field investigation took place during the period between 11 and 25 March 2013, with the method of phone call interviews through CATI (Computers Assisted Telephone Interviews). The sample consisted of 210 respondents, men and women, aged 17-54, residing in 7 different areas of Greece. When it comes to swimwear the unaided awareness of the mark ‘MED’ (verbal) is 12% (with the related statistical error of 3,68%), while the aided awareness is 59% (with the related statistical error of 5,57%). When it comes to underwear the unaided awareness of the mark ‘MED’ (verbal) is 13% (with the related statistical error of 3,81%), while the aided awareness is 66% (with the related statistical error of 5,36%).

• Enclosure 08: A scan of the cooperation agreement between the companies in Bulgaria and France regarding the use of the ‘MED’ trade mark, dated 24/03/2017. The opponent is not a party of this agreement.

• Enclosure 09: An electronic agreement or a draft agreement between the opponent and an individual enterprise regarding the obligation, inter alia, not to use an indication ‘MEI’, dated 20/02/2015, not signed by the parties.

• Enclosure 10: An electronic document entitled ‘Administrative Commission of Trademarks Decision No. 3074/2013’, undated and unsigned. According to this document an application for ‘deletion’ of Greek trade mark registration No 164 490 for the mark ‘MED’ in Class 3 due to non-use has been rejected as well as the application for registration of the mark ‘MED’ by other company has been refused.

• Enclosure 11: A set of five opposition decisions of the EUIPO. According to the decision of 30/03/2007 in case B 849 846, the opposition against registration of the earlier trade mark has been rejected in its entirety. And according to the remaining decisions, various oppositions of the opponent against registrations of other trade marks have been accepted partially or in their entirety, namely in the following decisions: dated 29/06/2017 in the case B 2 717 794 (entirely against goods in Class 25), dated 27/09/2013 in the case B 1 989 535 (partially against goods in Classes 3, 5 and 10), dated 26/02/2015 in the case B 2 332 438 (partially against goods in Classes 5 and 10) and dated 02/05/2017 in the case B 2 703 349 (partially against goods and services in Classes 3, 5 and 44).

The Opposition Division finds that the evidence submitted by the opponent is not sufficient to demonstrate that the earlier trade mark acquired a reputation.

As a preliminary remark it should be noted that the submitted evidence refers mainly to the opponent’s clothing in Class 25, and in particular swimwear and underwear. There was no or very little evidence regarding the goods in Classes 3 and 14 for which reputation was also claimed. Consequently, reputation for the goods in Classes 3 and 14 has not been proven.

Regarding the goods in Class 25, despite showing some use of the earlier trade mark, the evidence submitted provides little relevant evidence on the actual extent of such use. The opponent did not provide materials showing the sales volumes under the mark and for the goods concerned. The submitted evidence is insufficient for this purpose, in particular, a balance sheet submitted as Enclosure 06 shows net income of the whole company and offers no explanation as to actual sales under the earlier mark and in relation to the goods for which reputation was claimed. Likewise, the internal presentation about the ‘MED’ group (Enclosure 02) refers to the results of the company as such and cannot be linked directly with the earlier mark. The affidavit regarding the number of active staff (Enclosure 04) indicates the size of the opponent’s company, but not the extent of use of the earlier trade mark for the goods for which the reputation was claimed. Also the listings of the registered marks (Enclosures 01 and 05), alone, are incapable of showing the scale of actual use of these trade marks. The submitted decision of the Greek authority (Enclosure 10) concerned the genuine use of the national trade mark ‘MED’ for cosmetics in Class 3, and not in Class 25 and, in any case, the details of this use were not indicated nor discussed. Also the decisions of the Office (Enclosure 11) did not analyse any aspects of the reputation of the earlier mark, but they hinged on the issue of a likelihood of confusion; only the decisions in cases B 2 332 438, B 1 989 535 and B 2 703 349 analysed the claim based on Article 8(5) EUTMR, but in all these cases the Office concluded that the reputation of the earlier mark has not been proven due to lack of evidence.

In addition, it should be noted that the submitted presentation about the ‘MED’ group (Enclosure 02), list of the stores (Enclosure 03) and an affidavit regarding the number of active staff (Enclosure 04), originate from the party interested in the outcome of the proceedings and, therefore, their probative value must be considered very carefully. In particular, these materials could be considered reliable evidence if the information contained therein finds confirmation in other items of evidence, such as examples from magazines, articles about the brand originating from the external and independent sources. However, they were not provided in the present case; single examples of the alleged media coverage included as part of Enclosure 02 are very small and illegible. Moreover, Enclosure 03 is undated and it seems incomplete as the exact addresses of around half of the listed stores are not available.

Regarding the recognition of the earlier trade mark by the relevant public, the opponent submitted a consumer-based market study (Enclosure 07). However, in view of the Opposition Division, this evidence is not conclusive. First, it should be noted that the sample of 210 respondents that were interviewed during the study is not representative of the type of consumer concerned. The relevant market for clothing, including swimwear and underwear, is large and composed of the general public; therefore, the sample should be larger. Although there is no fixed threshold, the samples ranging between 1 000 – 2 000 respondents were considered representative (01/06/2011, R1345/2010-1, Fukato Fukato (fig.) / Device of a square (fig.) et al.). Depending on the situation in a particular case, for example the size of a particular market, also a lower number could be accepted as representative; this, however, should be properly argued and demonstrated by the interested party. And second, the study has been performed in March 2013 and, thus, nearly four years before the filing date of the contested application. Bearing in mind a considerable time lapse, and the fact that situation in a clothing sector is changing very rapidly, e.g. with brands being created for a season or changed every season, these results cannot be directly extrapolated to the market situation in 2017 – at least, not without a support in other evidence. It should be noted that the Office cannot speculate, in favour of the opponent, as to the level of the recognition of the earlier mark.

As regards Enclosure 08, it should be noted that the opponent is not a party to this agreement; moreover, the agreement has been concluded on 24/03/2017, thus after filing of the contested application, and it concerns use of the mark in France, where the opponent owns one shop only (according to Enclosure 02). The remaining items of evidence do not concern these countries. As regards Enclosure 09, a single example of enforcement of the earlier mark against a competitor in Greece, following a preliminary injunction measure, does not necessarily confirm reputation in this country; it concerned a care of a likelihood of conclusion. In addition, it is not signed by the parties, so it may be in fact a draft agreement.

Furthermore, the evidence does not indicate the market share of the trade mark or the extent to which the trade mark has been promoted.

As a result, the evidence does not show that the trade mark was known by a significant part of the relevant public on the date of filing of the contested application. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

In any case, the Opposition Division also notes that the opponent did not provide any facts, arguments or evidence that could support the conclusion that the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

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 (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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

Liliya YORDANOVA

Jakub MROZOWSKI

Ewelina ŚLIWIŃSKA

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.