OPPOSITION No B 3 060 659

Indiba, S.A., C/Moianes, 13, Poligono Industrial Can Casablanques, 08192 Sant Quirze del Valles (Barcelona), Spain (Opponent), represented by Durán - Corretjer, S.L.P., Còrsega, 329 (Pº de Gracia/Diagonal), 08037 Barcelona, Spain (professional representative)

a g a i n s t

Steffen Kahdemann h.u. denteon MedTec Business Consulting, Parkstraße 1, 91438 Bad Windsheim, Germany (applicant), represented by Barkhoff Reimann Vossius, Prinzregentenstr. 74, 81675 München, Germany (professional representative).

On 20/08/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 060 659 is upheld for all the contested goods and services, namely

Class 10: Medical implants made of artificial materials, namely breast implants.

Class 44: Medical services for the diagnosis of conditions of the human body.

2. European Union trade mark application No 17 804 601 is rejected for all the contested goods and services. It may proceed for the remaining (non-contested) services (i.e. IT services) in Class 42.

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

REASONS

The opponent filed an opposition against some of the goods and services of the European Union trade mark application No 17 804 601 for the figurative mark , namely against all the goods in Class 10 and all the services in Class 44. The opposition is based on international registration designating the European Union No 1 076 755 and Spanish trade mark registration No 2 944 504, both for the word mark ‘INDIBA’. The opponent invoked Article 8(1)( b) EUTMR.

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 both trade marks on which the opposition is based. The date of filing of the contested application is 11/02/2018. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in the European Union or in Spain from 11/02/2013 to 10/02/2018 inclusive.

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

Furthermore, the evidence must show use of the trade marks for the goods and services on which the opposition is based, namely the following (identically covered in both earlier marks):

 10Surgical and medical instruments and apparatus; electro-medical devices, apparatus or instruments, including devices, apparatus and instruments for professional beauty care treatments; esthetic massage apparatus; infrared apparatus for curative and medical use; infrared radiation units for treatment purposes; apparatus for the therapeutic stimulation of the body..

 44Medical services; hygiene and beauty treatments for humans or animals; services for treating cellulite; body treatment services, face and hair treatment services; cosmetic body care services..

Class 10: Surgical and medical instruments and apparatus; electro-medical devices, apparatus or instruments, including devices, apparatus and instruments for professional beauty care treatments; esthetic massage apparatus; infrared apparatus for curative and medical use; infrared radiation units for treatment purposes; apparatus for the therapeutic stimulation of the body.

Class 44: Medical services; hygiene and beauty treatments for humans or animals; services for treating cellulite; body treatment services, face and hair treatment services; cosmetic body care services.

According to Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), 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 28/09/2018, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 02/01/2019 to submit evidence of use of the earlier trade marks. On 27/12/2018, 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, in particular, the following:

 Print out of the opponent’s website (www.indiba.com/about_us) (Annex 1);

 Affidavit dated 18/12/2108 signed by the CEO of the opponent, listing the various EU countries in which the INDIBA devices and accessories are sold as well as the number of devices sold in Spain as well as in the EU excluding Spain, in the period February 2013-February 2018 (Annex 2);

 Various invoices issued between 2013-2017 showing sales of different INDIBA apparatus and some accessories to different clients throughout Spain (Annexes 3-7); although not all invoices specifically refer to the earlier mark, it can be deduced from these invoices in conjunction with the product reference numbers that are explained in the price lists attached as Annex 13 as well as the (undated) Spanish and English catalogues and English, French, Italian and Spanish information leaflets (attached as Annexes 15 and 17), that all invoices relate to the opponent’s INDIBA electro-medical devices (using diathermy, i.e. the induction of local hyperthermia by radiofrequency waves) used in physiotherapy, and for aesthetic treatments as well as massages, and accessories;

 Various invoices issued between 2013-2017 showing sales of INDIBA apparatus and accessories to different clients throughout the EU such as Belgium, France, Germany, Greece, Italy, Poland, Portugal, United Kingdom (Annexes 8-12);

 Pictures (undated) of INDIBA apparatus (Annex 14);

 Medical articles dated 2017 ad 2018 on the opponent’s apparatus, in English and Spanish (with partial English translation) (Annex 18);

 Extracts of websites of rehabilitation and beauty centres in the Netherlands, Poland, Spain and the UK, using the opponent’s apparatus (Annex 19) as well as some invoices issued by centers in Italy and Spain for use of the opponent’s apparatus to customers and Spanish (Annex 20).

As far as the affidavit is concerned, Article 10(4) EUTMDR (former Rule 22(4) EUTMIR, in force before 01/10/2017) 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.

The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods and services for which the earlier marks are registered. However, the applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

In the present case, taking into account the evidence in its entirety, the Opposition Division considers the evidence submitted by the opponent sufficient to prove genuine use of the earlier trade marks during the relevant period in at least Spain.

The documents (invoices, brochures, catalogues) indeed show that the place of use is, inter alia, Spain. This can be inferred from the language of the documents and the addresses on the invoices in Spain. Therefore, the evidence relates to the relevant territory.

Most of the evidence is dated within the relevant period.

Furthermore, the documents filed, as a whole, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use in at least Spain.

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).

The evidence shows that the mark has been used in accordance with its function and as registered for at least electro-medical apparatus for use in the field of physiotherapy or aesthetics; apparatus for the therapeutic stimulation of the body, in Class 10 for which it is registered, in (at least) Spain. However, the evidence filed by the opponent does not show genuine use of the trade marks for all the goods and services covered by the earlier trade marks. There is little or no evidence in relation to other apparatus or to the services covered in Class 44.

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.

According to case-law, when applying the abovementioned provision, the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub‑categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub‑category or sub‑categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub‑categories.

(14/07/2005, T‑126/03, Aladin, EU:T:2005:288, § 45‑46.)

In the present case, the evidence proves use for at least electro-medical apparatus for use in the field of physiotherapy or aesthetics (these goods can be considered to form an objective subcategory of the opponent’s electro-medical devices and apparatus) and for apparatus for the therapeutic stimulation of the body. Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark for at least these goods.

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 Spanish trade mark registration No 2 944 504.

a) The goods and services

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

Class 10: Electro-medical apparatus for use in the field of physiotherapy or aesthetics.

After a limitation filed by the applicant, the contested goods and services are the following:

Class 10: Medical implants made of artificial materials, namely breast implants.

Class 44: Medical services for the diagnosis of conditions of the human body.

As a preliminary remark, 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 applicant’s list of goods in Class 10 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, i.e. breast implants.

Furthermore, 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.

Contested goods in Class 10

The contested medical implants made of artificial materials, namely breast implants are artificial devices that replace or help replace missing body parts or body parts that need to be replaced due to disease; such devices are also use for aesthetic reasons. The opponent’s electro-medical devices used in the field of aesthetics in Class 10 are devices used in the aesthetic field to solve or improve aesthetic problems. These goods have some relevant points in common. They have the same general purpose (as they are aimed at solving problems related to certain aesthetic issues) and may coincide in relevant public (aesthetical clinics that offer both plastic surgery and less invasive aesthetical treatments) and coincide in their broad nature in that they are aesthetic medicine-related goods for specialties that focus on improving cosmetic appearance) and method of use (as they are adapted to the patient’s body and needs after a medical study). Therefore, these goods are held similar to a low degree.

Contested services in Class 44

The contested services medical services for the diagnosis of conditions of the human body are held similar to a low degree to the opponent’s goods in Class 10 as they have the same broad purpose (i.e. standardising or improving the aesthetic aspect of a patient) and relevant public (the patient). Furthermore, albeit different in nature, these goods and services can be complementary, as the services include services that relate to assessing the medical condition of the patient before using the opponent’s apparatus in order to improve it, providing advice and consultation in relation to using such apparatus in order to improve the patient’s condition, etc.).

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 and services found to be similar to a low degree are directed at the public at large, but also partially at business customers with specific professional knowledge or expertise, such as medical practitioners. It is apparent from the case-law that, insofar as goods or services affecting human health are concerned, the relevant public’s degree of attention is relatively high. It follows that the public’s degree of attentiveness may vary from average to high, depending on whether the goods/services affect consumers’ health, the price, sophistication, specialised nature, or terms and conditions of the purchased goods and services.

c) The signs

INDIBA
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 earlier mark is a word mark, consisting of the sole verbal element ‘INDIBA’. It should be noted that the protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (22/05/2008, T 254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is irrelevant that, in the present case, the earlier word mark is depicted in upper (or lower) case letters.

The contested sign is a figurative mark, composed of the sole verbal element ‘indiva’ depicted in a fairly standard, black bold typeface and preceded by a figurative device representing an abstract profile of a female face.

Both ‘INDIBA’ and ‘indiva’ are meaningless for the relevant public; hence these elements are normally distinctive. As regards the figurative device in the contested sign, although not totally devoid of distinctiveness, it is allusive to the target group/end users of the goods and services (the female public) at issue; therefore, it is held of weaker distinctiveness. Also, 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).

The minimal stylisation of the verbal element in the contested sign will be perceived as being of a purely decorative nature; therefore, it lacks distinctiveness.

Visually, the signs coincide in the string of letters ‘I-N-D-I-(*)-A’. They merely differ in the different letter (‘B’ vs ‘V’) in the middle of the signs’ sole verbal element, in the minimal stylisation of the verbal element in the contested sign (which, however, as seen above, lacks distinctiveness) and the figurative device in the contested sign which is however of weaker distinctiveness and will also have less impact on consumers than the verbal component.

Therefore, the signs are held visually similar to a degree that is higher than average.

Aurally, the signs will be pronounced identically by the relevant public, as the letters ‘V’ and ‘B’ are pronounced identically in Spanish language.

Conceptually, neither of the signs’ verbal elements has a meaning for the public in the relevant territory. Although the figurative device in the contested sign evokes a concept, it is not sufficient to establish any significant conceptual difference, as this element is allusive and of weaker distinctiveness, as seen above, so that the attention of the relevant public will be attracted by the fanciful and normally distinctive verbal element, which has no meaning. Since a conceptual comparison is not possible between the signs’ normally distinctive verbal elements, in the present case, the conceptual aspect cannot significantly 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.

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.

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.

e) Global assessment, other arguments and conclusion

As concluded above, the contested goods and services are similar to a low degree to the opponent’s goods. The degree of attention will vary from average to high. 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). The distinctiveness of the earlier mark is normal.

Although the goods and services are held similar to a low degree only, and there may be a higher degree of attention, this cannot prevent the opposition against the relevant goods and services from succeeding. While the similarity of the goods must be taken into account when assessing the likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442), this is only one of a number of elements entering into that assessment and it is established case-law that, even in a case involving only lowly similar goods/services, there may be a likelihood of confusion on account, in particular, of the distinctive character of the earlier mark and the similarity between the signs. Evaluating likelihood of confusion indeed 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 earlier mark is almost entirely included in the contested sign, and the sole difference between them lies in their middle letter, ‘B’ vs ‘V’, which are however pronounced identically. It is therefore concluded that the high degree of visual similarity and aural identity between the signs offsets any lesser degree of similarity between the relevant goods and services. In the light of the foregoing, the degree of similarity between the marks is sufficient for it to be concluded that a substantial part of the relevant public, whether average or professional, could reasonably believe that the goods and services found to be similar to a low degree, originated from the same undertaking or economically linked undertakings, even when the degree of attention is high.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is well founded on the basis of the opponent’s earlier Spanish trade mark No 2 944 504.

As the earlier Spanish trade mark leads to the success of the opposition and to the rejection of the contested sign for all the goods and services against which the opposition was directed, there is no need to examine the other earlier trade mark invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Justyna GBYL

Edith Elisabeth VAN DEN EEDE

Keeva DOHERTY

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.