OPPOSITION No B 3 004 184

OPPOSITION DIVISION

OPPOSITION No B 3 004 184

Abbott Laboratories, 100 Abbott Park Road, Abbott Park, Illinois 60064, United States (opponent), represented by Baker & McKenzie LLP, 100 New Bridge Street, London, EC4V 6JA, United Kingdom (professional representative)

a g a i n s t

Medicsensors Ltd, Future Labs, Eastgate, Leeds, LS2 7LY, United Kingdom (applicant).

On 31/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 004 184 is partially upheld, namely for the following contested goods and services:

Class 5: Transdermal patches; transdermal patches for medical treatment; medical dressings, coverings and applicators; transdermal patches; adhesive skin patches for medical use; insulin injectors sold filled with insulin; anti-diabetic pharmaceuticals; medical preparations.

Class 9: Mobile apps; downloadable mobile applications for the management of data; downloadable mobile applications for the management of information; application software for mobile phones; downloadable applications for use with mobile devices; computer software applications, downloadable; downloadable mobile applications for use with wearable computer devices; software related to handheld digital electronic devices; freeware; downloadable computer software for the management of information; computer software downloaded from the internet; adaptive software; data processing programs; computer software relating to the medical field; computer programs [downloadable software]; downloadable application software for smart phones; science software; software for remote diagnostics; computer programmes for data processing; downloadable computer software for remote monitoring and analysis; downloadable software; utility software; simulation software; educational software; downloadable computer software for the management of data; mobile software; computer software for mobile phones; software and applications for mobile devices; software for mobile phones; software for tablet computers; computer software for business purposes; computer software for use as an application programming interface (api); workout logging software; computer software; bioinformatics software.

Class 42: Science and technology services; scientific research and analysis; medical research; scientific research in the field of social medicine; scientific investigations for medical purposes; consultancy relating to research and development in the field of therapeutics; scientific research and development; research and development in the pharmaceutical and biotechnology fields; provision of information and data relating to medical and veterinary research and development; biomedical research services; information technology services for the pharmaceutical and healthcare industries; providing scientific information in the field of medical disorders and their treatment; design and development of medical technology; provision of information relating to scientific research; research into new products; scientific research for medical purposes; research and development of new products; software as a service [SaaS]; creation of computing platforms for third parties; computer system design and development; design and development of data processing systems.

2. European Union trade mark application No 17 156 209 is rejected for all the above goods and services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 156 209 . The opposition is based on European Union trade mark registration No 204 420 ‘MEDISENSE’. 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.

The goods and services

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

Class 5: Chemical reagents, namely, medical reagent strips for use by individuals to test their own body fluids and for use by medical profession to test the body fluids of others.

Class 9: Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching, apparatus and instruments; apparatus for recording transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus; scientific research apparatus used to detect and measure the level of substances in body fluids.

Class 10: Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopaedic articles; suture materials; medical and diagnostic apparatus to detect and measure the level of substances in body fluids; lancets and lancing devices and body fluid monitoring, diagnostic and testing apparatus and diagnostic kits containing test strips, test meter, and control solutions.

The contested goods and services are the following:

Class 42: Science and technology services; scientific research and analysis; medical research; scientific research in the field of social medicine; scientific investigations for medical purposes; consultancy relating to research and development in the field of therapeutics; scientific research and development; research and development in the pharmaceutical and biotechnology fields; provision of information and data relating to medical and veterinary research and development; biomedical research services; information technology services for the pharmaceutical and healthcare industries; providing scientific information in the field of medical disorders and their treatment; food sanitation consultation; design and development of medical technology; provision of information relating to scientific research; research into new products; scientific research for medical purposes; research and development of new products; software as a service [SaaS]; creation of computing platforms for third parties; computer system design and development; design and development of data processing systems.

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

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 5

The contested medical preparations include, as a broader category, the opponent’s medical reagent strips for use by individuals to test their own body fluids and for use by medical profession to test the body fluids of others. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested medical applicators are devices used to apply substances for medical or testing purposes. It cannot be excluded that these goods might be used in combination with reagents to test for the presence of substances in the saliva or blood. Therefore, these goods are at least similar to the opponent’s medical reagent strips for use by individuals to test their own body fluids and for use by medical profession to test the body fluids of others, as they can have the same nature, purpose, producers, relevant public and distribution channels.

The contested transdermal patches (listed twice); transdermal patches for medical treatment; adhesive skin patches for medical use are medicated patches that are placed on the skin to deliver a specific dose of medication. The opponent’s medical reagent strips for use by individuals to test their own body fluids and for use by medical profession to test the body fluids of others are testers in the form of strips to be used by the patient or for professional analysis of human body fluids. In particular, the opponent’s goods may also include adhesive strips containing substances able to monitor values present in bodily fluids such as blood or sweat. These goods have the same nature and may have the same general purpose, that of preventing ill health in humans. In addition, they usually have the same producers, relevant public and distribution channels. Therefore, they are similar.

The contested insulin injectors sold filled with insulin; anti-diabetic pharmaceuticals are similar to the opponent’s medical reagent strips for use by individuals to test their own body fluids and for use by medical profession to test the body fluids of others, as all these goods have the same purpose, that of preventing ill health, and they usually have the same producers, relevant public and distribution channels.

The contested medical dressings and coverings are absorbent materials used to cover a superficial wound. These goods are similar to the opponent’s medical reagent strips for use by individuals to test their own body fluids and for use by medical profession to test the body fluids of others, as they usually have the same purpose, producers and distribution channels.

Contested goods in Class 9:

All the contested goods in Class 9 are various types of software such as applications related to medicine. These goods are therefore similar to the opponent’s computers, as they usually have the same producers, relevant public and distribution channels. Furthermore, they are complementary.

Contested services in Class 42:

The contested science and technology services; scientific research and analysis; medical research; scientific research in the field of social medicine; scientific investigations for medical purposes; consultancy relating to research and development in the field of therapeutics; scientific research and development; research and development in the pharmaceutical and biotechnology fields; provision of information and data relating to medical and veterinary research and development; biomedical research services; providing scientific information in the field of medical disorders and their treatment; design and development of medical technology; provision of information relating to scientific research; research into new products; scientific research for medical purposes; research and development of new products are services provided by members of professions in relation to theoretical and practical aspects of complex fields, such as the medical, therapeutic and pharmaceutical sectors. The opponent’s lancets and lancing devices and body fluid monitoring, diagnostic and testing apparatus and diagnostic kits containing test strips, test meter, and control solutions in Class 10 are medical testing devices. These goods and services are considered similar, as they may have the same producers, distribution channels (e.g. large healthcare companies) and relevant public (e.g. hospitals).

The contested information technology services for the pharmaceutical and healthcare industries; software as a service [SaaS]; creation of computing platforms for third parties; computer system design and development; design and development of data processing systems are services rendered in the fields of IT, computing and software design. These services are similar to data processing equipment and computers, as they usually have the same relevant public and distribution channels. Furthermore, they are complementary.

The contested food sanitation consultation is a service involving checking the safety and quality of foodstuffs. This services is provided by very specific agencies or companies and does not have anything in common with any of the opponent’s goods. In particular, they have different purposes, methods of use, distribution channels and relevant publics. In addition, they are not complementary or in competition. Therefore, they are dissimilar.

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 and services found to be identical or similar to various degrees are directed at the public at large as well as at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased.

The signs

MEDISENSE

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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The earlier mark’s last five letters, ‘SENSE’, may be perceived as meaningful in certain territories, for example in those countries where English is understood. As this element may increase the conceptual difference between the signs, the Opposition Division finds it appropriate to focus the comparison on the part of the public for which this element is meaningless, such as the non-English-speaking part of the public, for example a sizeable part of the Hungarian-, Portuguese-, Slovenian-, Spanish- and Bulgarian-speaking parts of the public.

The signs’ prefixes, ‘MEDI’ of the earlier mark and ‘medic’ of the contested sign, will be perceived by the relevant public as referring to the concept of ‘medicine’. Therefore, these elements are considered non-distinctive in relation to all the relevant goods and services, as they refer to their nature or purpose. Conversely, the signs’ suffixes, ‘SENSE’ of the earlier mark and ‘sen’ of the contested sign, are meaningless for the relevant public and are, therefore, distinctive.

In the assessment of the visual and aural similarity of the marks in question it has to be also borne in mind that 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. In addition, the contested mark comprises a figurative element composed of stylised blue lines that will be perceived merely as a repetition of the first letter of the element ‘medicsen’. In this regard, it should be noted that, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

Visually, the signs coincide in the letters ‘MEDI(*)SEN(**)’. However, they differ in the contested mark’s fifth letter, ‘c’, and in the earlier sign’s last two letters, ‘SE’. It must be emphasised that the earlier mark’s additional last two letters, ‘SE’, have a limited differentiating visual impact, as they repeat a sequence of letters that occurs in the coinciding part of the sign. The stylised blue element found above the element ‘medicsen’ in the contested sign also has a limited impact, as it will be perceived merely as a repetition of the first letter of that verbal element. Although ‘MEDI-’ and ‘medic-’ are non-distinctive for the relevant goods and services, they are at the beginnings of the signs and the differences between the signs are, as explained above, trivial. Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘MEDI(*)SEN(**)’, present identically in both signs. The pronunciation differs in the sound of the contested mark’s fifth letter, ‘c’, and in the earlier sign’s last letters, ‘SE’, as well as in the figurative letter ‘M’ of the contested mark. However, a significant proportion of the relevant consumers will not pronounce this letter, given that it merely repeats the first letter of the sign’s verbal element, and, as for the additional last two letters, ‘SE’, in the earlier mark, they also have a limited differentiating aural impact, for the reason given above.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the verbal elements of the marks and to the fact that, although the signs are essentially made up of non-distinctive verbal elements, the differences between them are trivial. Consequently, they are conceptually similar to an average degree.

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

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, despite the presence of a non‑distinctive element in the mark, as stated above in section c) of this decision.

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).

Such a global assessment of likelihood of confusion implies some interdependence between the relevant factors and, in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

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.

Moreover, 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 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 the present case, the goods and services are partly identical or similar to various degrees and partly dissimilar. They target both the general public and a professional public; the degree of attention may vary from average to high.

The signs in conflict are visually, aurally and conceptually similar to various degrees, for the reasons given above.

In principle, according to the Common Practice (Guidelines for Examination in the Office, Part C, Opposition, Double Identity and Likelihood of Confusion — Global Assessment), a coincidence in non-distinctive components does not lead to likelihood of confusion. However, in the present case there are very few differences between the marks, and these differences are irrelevant, and therefore a finding of likelihood of confusion is justified, as the overall impressions created by the marks are highly similar or identical.

Therefore, taking into account the abovementioned principles, the Opposition Division considers that the differences between the signs are incapable of resulting in sufficiently different overall impressions, this notwithstanding the high degree of attention paid in relation to some of the relevant goods and services. Therefore, a likelihood of confusion between the trade marks at issue cannot be excluded.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the non-English-speaking part of the public, such as a sizeable part of the Hungarian-, Portuguese-, Slovenian-, Spanish- and Bulgarian-speaking parts of the public, and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 204 420. 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.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to various degrees to those of the earlier trade mark.

The rest of the contested 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 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

María Belén IBARRA DE DIEGO

Aldo BLASI

Edith Elisabeth

VAN DEN EEDE

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.

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