OPPOSITION No B 3 015 867

DeguDent GmbH, Rodenbacher Chaussee 4, 63457 Hanau-Wolfgang, Germany (opponent), represented by Bristows LLP, 100 Victoria Embankment, EC4Y 0DH London, United Kingdom (professional representative)

a g a i n s t

Leibniz-Institut für Plasmaforschung und Technologie e. V., Felix-Hausdorff-Straße 2, 17489 Greifswald, Germany (applicant), represented by Schulz Junghans Patentanwälte PartGmbB, Großbeerenstraße 71 1. Hof, Remise rechts, 10963 Berlin, Germany (professional representative).

On 17/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 015 867 is partially upheld, namely for the following contested goods:

Class 9: Weighing, measuring apparatus and instruments.

Class 10: Surgical, medical, dental and veterinary apparatus and instruments, artificial teeth; suture materials; plasma devices, plasma sources and plasma equipment for medical, veterinary and therapeutic purposes; pumps for medical, veterinary and therapeutic purposes; devices for administering medicines and substances for medical, veterinary and therapeutic purposes, in particular inhalers, dropper bottles, containers, pumps, in particular metering pumps, droppers, for administering medicines and substances for medical, veterinary and therapeutic purposes; devices for plasma medicine; implants; parts and fittings for all of the aforesaid goods, included in this class.

2. European Union trade mark application No 16 811 804 is rejected for all the above goods. 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 16 811 804 ‘INP’, namely against all the goods and services in Classes 9, 10, 41 and 42. The opposition is based on European Union trade mark registration No 12 936 936 ‘IPN’. The opponent invoked Articles 8(1)(b) and 8(5) EUTMR.

PRELIMINARY REMARKS

The opponent initially based its opposition on Articles 8(1)(b) and 8(5) EUTMR. However, in its observations of 13/07/2018, the opponent requested Article 8(5) EUTMR be disregarded as grounds of the opposition. Consequently, the opposition will be assessed on the basis of Article 8(1)(b) EUTMR only.

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

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

Class 5: Material for stopping teeth, dental wax; materials for dentures; metal alloys, precious metal alloys and metal preparations for dental purposes; ceramic materials for dental purposes; porcelain for dental purposes; composite materials for dental purposes; metal alloys, precious metal alloys and metal preparations for use in dental prosthetics; ceramic materials for use in dental prosthetics; porcelain for use in dental prosthetics; plastics for use in dental prostheses; dental cement; materials for the manufacture, relining and repair of dentures.

Class 10: Dental instruments and apparatus; orthodontic instruments and apparatus; dental implants, artificial teeth, dental prostheses, dental bridges, dental crowns, dentures; prefabricated denture teeth.

The contested goods and services are the following:

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus, software.

Class 10: Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopedic articles; suture materials; plasma devices, plasma sources and plasma equipment for medical, veterinary and therapeutic purposes; pumps for medical, veterinary and therapeutic purposes; devices for administering medicines and substances for medical, veterinary and therapeutic purposes, in particular inhalers, dropper bottles, containers, pumps, in particular metering pumps, droppers, for administering medicines and substances for medical, veterinary and therapeutic purposes; devices for plasma medicine; implants; parts and fittings for all of the aforesaid goods, included in this class.

Class 41: Education; providing of training; entertainment; sporting and cultural activities.

Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘in particular’, used in the applicant’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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.

Contested goods in Class 9

The contested weighing, measuring apparatus and instruments include goods such as weighing scales for medical use (e.g. scales used by dentistry professionals for weighing and measuring the mass of certain materials for a dental prosthesis or crown). It follows that the contested goods are similar to a low degree to the opponent’s dental instruments and apparatus included in Class 10, as they usually coincide in producer, relevant public and distribution channels.

All the remaining contested goods in Class 9 are very specific goods that do not have anything in common with any of the opponent’s goods. In particular, they have clearly different purposes, methods of use, distribution channels, relevant public and producers. Furthermore, they are neither complementary nor in competition. Therefore, they are dissimilar.

Contested goods in Class 10

Dental apparatus and instruments, artificial teeth; implants are identically contained in both lists of goods (including synonyms).

The Opposition Division partially agrees with the opponent’s arguments on the identity between the contested plasma devices, plasma sources and plasma equipment for medical, veterinary and therapeutic purposes; devices for plasma medicine and some of the opponent’s goods. In particular, the evidence submitted by the opponent (Annexes 1 — 3) demonstrates an overlap between these goods and the opponent’s dental instruments and apparatus. Therefore, they are identical.

The contested surgical, medical, and veterinary apparatus and instruments, suture materials; pumps for medical, veterinary and therapeutic purposes; devices for administering medicines and substances for medical, veterinary and therapeutic purposes, in particular inhalers, dropper bottles, containers, pumps, in particular metering pumps, droppers, for administering medicines and substances for medical, veterinary and therapeutic purposes comprise a wide range of devices used for medical, surgical, veterinary and therapeutic purposes. It follows that these goods are at least similar to the opponent’s dental instruments and apparatus since they may have the same purpose. They usually coincide in producer, relevant public and distribution channels. Furthermore some of them are complementary.

The contested parts and fittings for all of the aforesaid goods, included in this class (i.e. of dental apparatus and instruments, artificial teeth; implants; surgical, medical, and veterinary apparatus and instruments, suture materials; pumps for medical, veterinary and therapeutic purposes; devices for administering medicines and substances for medical, veterinary and therapeutic purposes, in particular inhalers, dropper bottles, containers, pumps, in particular metering pumps, droppers, for administering medicines and substances for medical, veterinary and therapeutic purposes; plasma devices, plasma sources and plasma equipment for medical, veterinary and therapeutic purposes; devices for plasma medicine) are similar to the aforementioned opponent’s goods that were found similar or identical, since they might coincide in producer, relevant public and distribution channels.

The contested artificial limbs, eyes; orthopedic articles; parts and fittings for all of the aforesaid goods, included in this class are very specific goods that do not have anything in common with those of the opponent. In particular, they have clearly different purposes, methods of use, distribution channels, relevant public and producers. Furthermore, they are neither complementary nor in competition. Therefore, they are dissimilar.

Contested services in Class 41

The contested education; providing of training; entertainment; sporting and cultural activities are services that do not have anything in common with any of the opponent’s goods. In particular, they have clearly different purposes, methods of use, distribution channels, relevant public and producers. Furthermore, they are neither complementary nor in competition. Therefore, they are dissimilar.

Contested services in Class 42

Although pharmaceutical and medical companies are heavily involved in research and development activities, they do not usually provide such services to third parties. Consequently, the contested scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software are dissimilar to all the opponent’s goods since they have clearly different purposes, methods of use, distribution channels, relevant public and producers/providers. Furthermore, they are neither complementary nor in competition.

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 goods found to be identical or similar to varying degrees are directed are mainly directed at business customers with specific professional knowledge or expertise in the medical field, such as doctors and dentists.

The degree of attention is considered higher than average taking into account the sophisticated and specialised nature of the relevant goods.

3. The signs

IPN	INP
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).

A substantial part of consumers in the European Union will perceive the signs as meaningless, and therefore distinctive to a normal degree.

It cannot be excluded that a small part of the public may associate the signs with several specific acronyms in different languages of the European Union (e.g. the earlier sign ‘IPN’ might be perceived as the acronym of ‘Instant Payment Notification’ and the contested ‘INP’ as ‘Intelligent Network Processor’, at least by the English-speaking consumers). However, the Opposition Division will not consider those possibilities in the assessment below as this would lead to envisaging multiple scenarios, on a reduced part of the public. This takes into account that there is no need to establish that all current or potential consumers of the relevant public are likely to be confused. If a significant part of the relevant public may be confused as to the origin of the goods, this is sufficient.

Visually and aurally (irrespective of the different pronunciation rules in different parts of the relevant territory), the signs coincide in the initial letter/sound ‘I’. A certain degree of similarity also derives from the subsequent two letters/sounds ‘PN’ in the earlier sign and ‘NP’ in the contested application, which are merely inverted. In this regard, it must be stressed that the mere inversion of the second and third letters does not constitute a significant difference (10/11/2017, R 398/2017‑4, ICF (fig.) / ifc (fig.)).

In the present case, given that both signs are short terms consisting of a vowel followed by two consonants, it is most likely that all the letters of the signs will be spelled out separately, as ‘I-P-N’ and ‘I-N-P’.

Therefore, the signs are visually and aurally similar to a higher than 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.

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 claimed that the earlier trade mark enjoys enhanced distinctiveness since it has no meaning in relation with the relevant goods. No additional evidence has been filed to substantiate this claim.

In this regard it is Office practice, when an earlier mark is not descriptive (or is not otherwise non-distinctive), to consider it as having no more than a normal degree of inherent distinctiveness. This degree of distinctiveness can be further enhanced if appropriate evidence is submitted showing that a higher degree of distinctiveness of the earlier mark has been acquired through use or because it is highly original, unusual or unique (26/03/2015, T‑581/13, Royal County of Berkshire POLO CLUB (fig.) / BEVERLEY HILLS POLO CLUB et al., EU:T:2015:192, § 49). It should, however, be recalled that a 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).

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.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends, inter alia, 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. 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).

For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, 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.

Account is taken of the fact 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 higher degree of attention – as in the present case – need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

The goods and services have been found partly identical, partly similar to varying degrees and partly dissimilar.

The signs under comparison are visually and aurally similar to a higher than average degree since they coincide in their first letter ‘I’ and also in the subsequent letters ‘P’ and ‘N’, albeit reversed within the contested sign.

In conclusion, the Opposition Division considers that the differences between the signs – which are merely caused by the inversion of the respective last two letters – are not sufficient to outweigh the higher than average visual and aural similarities between them. Consequently, the relevant public, when encountering the signs in relation to identical or at least similar goods are likely to think that they come from the same undertaking or from economically linked undertakings, notwithstanding the higher than average degree of attention paid.

As regards the goods that are similar to a low degree only, it must be kept in mind that 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 higher than average degree of similarity between the signs is sufficient to offset the low degree of similarity between some of the goods, despite the higher than average degree of attention paid.

The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

The previous case referred to by the applicant (22/03/2010, R 1187/2009‑2, TIG / TGI) is not relevant to the present proceedings. Specifically, in the referred case the Board of Appeal considered that the conflicting signs were substantially dissimilar from the phonetic point of view since ‘TIG’ was pronounced as a single one-syllable word while the other mark ‘TGI’ was pronounced letter by letter. This is not like the present case, where, as stated above, the letters of both signs will be spelled out separately.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public.

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

The Opposition Division

Marianna KONDAS

Aldo BLASI

Marta GARCÍA COLLADO

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.