OPPOSITION Nо B 2 989 252

Dentsply Sirona Inc., Susquehanna Commerce Center, 221 West Philadelphia Street, 17401‑2991 York, United States of America (opponent), represented by Bristows Llp, Avenue des Arts 56, 1000 Brussels, Belgium (professional representative)

a g a i n s t

Produits Dentaires Pierre Rolland, 17 Avenue Gustave Eiffel Zi Du Phare, 33700 Merignac, France (applicant), represented by Cabinet Guiu - Jurispatent, 10, Rue Paul Thénard, 21000 Dijon, France (professional representative).

On 22/03/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 989 252 is upheld for all the contested goods.

2. European Union trade mark application No 17 038 613 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

On 07/11/2017, the opponent filed an opposition against all the goods of European Union trade mark application No 17 038 613 ‘PR BOND’ (word mark), namely against all the goods in Class 5. The opposition is based on, inter alia, European Union trade mark registration No 13 132 055 ‘PRIME&BOND’ (word mark). The opponent invoked Article 8(1)(b) EUTMR, and Article 8(4) and (5) 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 European Union trade mark registration No 13 132 055 ‘PRIME&BOND’ (word mark).

a) The goods

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

Class 5: Dental resin; dental adhesive compounds.

Class 10: Dental equipment, apparatus and instruments for use in respect of the application of dental resin and dental adhesive compounds.

The contested goods are the following:

Class 5: Adhesives for dental use; dental cement; materials for tooth restoration.

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 adhesives for dental use; dental cement are included in the broad category of, or overlap with, the opponent’s dental adhesive compounds. Therefore, they are identical.

The contested materials for tooth restoration include, as a broader category, the opponent’s dental resin. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

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 are directed at professionals with specific knowledge or expertise in the dental sector.

The degree of attention will be high.

c) The signs

PRIME&BOND	PR BOND
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).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57).

The earlier mark’s verbal elements are not meaningful in certain territories, for example in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the public, such as the Spanish-speaking public.

The signs at issue are both word marks. The earlier mark is ‘PRIME&BOND’, and the contested sign is ‘PR BOND’.

The signs’ verbal elements have no meaning for the relevant public and are, therefore, distinctive. The only exception is the earlier sign’s ampersand, which will be recognised by the relevant public, as it is a common symbol used in commerce to represent the concept of ‘and’. As it merely connects two terms, it is non-distinctive.

Visually and aurally, the signs coincide in their first letters, ‘PR’, and in the verbal element ‘BOND’. They differ in the earlier mark’s letters ‘IME’ and its ampersand, ‘&’, which have no counterparts in the contested sign. The signs also differ visually because the earlier mark is composed of one element, and the contested by two components.

The fact that the signs have the same beginning is particularly important because this is the part of the mark that consumers generally tend to take more note of (16/03/2005, T‑112/03, Flexi Air, EU:T:2005:102, § 64). Indeed, 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, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Therefore, and taking into account the distinctiveness of the various components of the earlier mark, the signs are visually and aurally similar to at least an above-average degree.

Conceptually, although the public in the relevant territory will perceive the meaning of the ampersand in the earlier mark as explained above, the other sign has no meaning in that territory. In this sense, the signs are not conceptually similar, although it must be noted that this conceptual discrepancy carries no particular weight here, as it arises from a non-distinctive element.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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

A global assessment of the likelihood of confusion implies some interdependence between the factors, which must be taken into account. Accordingly, a lesser degree of similarity between these goods or services may be offset by a greater degree of similarity between the marks, and vice versa (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17; 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20).

The signs are visually and aurally similar to a least an above-average degree, and conceptually not similar. The goods are identical and target professionals with a high degree of attention.

The average consumer of the goods concerned is deemed to have a high degree of attention. Furthermore, 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).

In view of the identity of the goods and the similarity of the trade marks, it must be concluded that the minor differences between the signs are insufficient to rule out a likelihood of confusion, even for professionals with a high degree of attention.

Considering all the above, there is a likelihood of confusion on the part of the Spanish-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application; therefore, there is no need to analyse the remaining part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 13 132 055 ‘PRIME&BOND’ (word mark). It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As earlier European Union trade mark registration No 13 132 055 ‘PRIME&BOND’ (word mark) leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(4) and (5) EUTMR.

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

The Opposition Division

Richard BIANCHI

Cristina CRESPO MOLTO

Pierluigi M. VILLANI

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.