OPPOSITION No B 3 059 894

Mühlbauer Technology GmbH, Elbgaustraße 248, 22547 Hamburg, Germany (opponent), represented by Klawitter Neben Plath Zintler KNPZ Rechtsanwälte, Kaiser-Wilhelm-Str. 9, 20355 Hamburg, Germany (professional representative)

a g a i n s t

Klaus-Peter Behr, Hageler Straße 1, 26197 Großenkneten, Germany (applicant), represented by Eisenführ Speiser Patentanwälte Rechtsanwälte PartgmbB, Am Kaffee-Quartier 3, 28217 Bremen, Germany (professional representative).

On 20/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 059 894 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 877 723 ‘ANICON’ (word mark). The opposition is based on international trade mark registration No 983 484 designating the European Union ‘ICON’ (word mark). The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

Proof of use of the earlier mark was requested by the applicant. However, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T‑296/02, Lindenhof, EU:T:2005:49, § 41, 72). The examination of the opposition will proceed as if genuine use of the earlier mark had been proven for all the goods invoked, which is the best light in which the opponent’s case can be considered.

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: Dental material for stopping teeth, fastening and moulding material; preparations for dental purposes, in particular for dental minimal invasive therapies, in particular for infiltrations of caries lesions of the dental enamel.

Class 10: Dental apparatus and instruments, in particular apparatus and applications of dental materials.

The contested goods and services are the following:

Class 1: Chemicals used in industry; Chemicals used in science; Diagnostic preparations, not for medical or veterinary purposes; Chemicals used in photography; Chemicals for use in agriculture; Chemicals used in horticulture; Chemicals used in forestry; Synthetic resins, unprocessed; Unprocessed plastics; Fire extinguishing compositions; Fire prevention compositions; Tempering preparations; Soldering preparations; Tanning compositions for animal skins; Adhesives used in industry; Putties and other paste fillers; Compost; Fertilising preparations, other than fertilising preparations for lawns; Fertilisers, other than fertilisers for lawns; Biological preparations for use in industry and science.

Class 5: Pharmaceuticals; Medical preparations; Veterinary preparations; Vaccines and diagnostic agents for medical or veterinary purposes; Sanitary preparations for medical purposes; Foodstuffs and dietetic substances for medical or veterinary purposes; Infant formula; Dietary supplements for humans; Dietary supplements for animals; Teeth filling material; Dental impression materials; Disinfectants; Preparations for destroying vermin; Fungicides; Herbicides, other than lawn weed killers.

Class 35: Advertising; Business management; Business administration; Office functions; Business consultancy in the field of the production of vaccines, and in the field of veterinary and food diagnostics.

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; Testing, authentication and quality control; Analytical laboratory services; Microbiology, molecular biology and immunology analysis and research; Inspection of foodstuffs; Food sanitation consultation; Development of diagnostic apparatus; Consultancy and information in relation to the aforesaid services, included in this class.

Class 44: Medical services; Veterinary services; Hygienic care for human beings; Beauty care for human beings; Animal healthcare services; Animal beautician services; Agriculture services; Horticultural services; Forestry.

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 opponent’s list of goods, indicates that the specific goods 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).

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.

Contested services in Classes 35, 42 and 44

The contested services in Classes 35, 42 and 44 are dissimilar to the opponent’s goods in Classes 5 and 10. The opponent’s goods include dental material and preparations and dental apparatus and instruments. The contested services in Class 35 (advertising, business consultancy, management, administration and office function), Class 42 (science and technology services and research and design, IT services, testing and quality control, laboratory services, etc.) and Class 44 (medical, veterinary, agricultural services, etc.) differ from the opponent’s goods in Classes 5 and 10 in nature, method of use and in their specific intended use and purpose. In addition, these sets of goods and services are normally produced/provided by different companies, follow different distribution channels and also target different consumers. They are not complementary or in competition either. Consequently, they are considered dissimilar.

The opponent argues that the contested services in Class 44 serve the same purpose and are complementary to its goods. The contested services in Class 44 are related to human and animal hygiene and beauty care, human and animal medical services and agricultural, horticultural and forestry services. Even though a certain remote link between some of these services to the opponent’s goods in Class 5 cannot be denied due to the common goal of treating diseases, for example, the differences in nature and especially in their usual origin clearly outweigh any similarity. The relevant public does not expect a dental specialist or a doctor, a veterinarian, etc. to develop and market a dental preparation or instrument. Consumers are usually aware of the distinct manufacturers/providers of these goods and services. It is noted that goods (or services) are complementary if there is a close connection between them, in the sense that one is indispensable (essential) or important (significant) for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking (11/05/2011, T-74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T-558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T-504/11, Dignitude, EU:T:2013:57, § 44). Therefore, in view of all of the above, the opponent’s arguments are rejected as unfounded.

Contested goods in Class 1

The contested goods in this class are various raw materials and compositions and are not similar to the opponent’s dental-related goods in Classes 5 and 10. These goods have no commonalities, as they serve a completely different purpose and have a different nature. They do not have the same method of use, and are not complementary or in competition with each other. Furthermore, their distribution channels and producers are different. Consequently, they are considered dissimilar.

Contested goods in Class 5

The contested Teeth filling material; Dental impression materials are identical to the opponent’s opponent’s preparations for dental purposes in Class 5, because the opponent’s goods include, are included in, or overlap with, the contested goods.

The contested Pharmaceuticals; Medical preparations include, as broader categories, or overlap with, the opponent’s preparations for dental purposes. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested Vaccines and diagnostic agents for medical purposes are at least similar to the opponent’s preparations for dental purposes, as they may coincide in purpose, method of use, relevant public and distribution channels.

The contested Sanitary preparations for medical purposes; Disinfectants are similar to a low degree to the opponent’s preparations for dental purposes, as they can coincide in relevant public and distribution channels.

The contested Veterinary preparations; Vaccines and diagnostic agents for veterinary purposes are similar to a low degree to the opponent’s Dental apparatus and instruments, as the latter include dental treatment for animals. These sets of goods can coincide in relevant public and distribution channels. Furthermore, they are complementary.

However, the remaining contested goods, namely Foodstuffs and dietetic substances for medical or veterinary purposes; Infant formula; Dietary supplements for humans; Dietary supplements for animals; Preparations for destroying vermin; Fungicides; Herbicides, other than lawn weed killers are dissimilar to all the opponent’s goods in Classes 5 and 10. These sets of goods differ in nature and purpose and have a different method of use. They are not complementary or in competition with each other. Furthermore, their distribution channels, relevant public and origin are usually different.

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.

The relevant goods are those goods found to be identical or similar to various degrees. In the present case, the contested goods target the general and the professional public. However, the goods of the earlier mark target a professional public exclusively, as they are specialised instruments and materials for use in dentistry and target consumers such as dental professionals and dentists with specific professional knowledge or expertise. Therefore, the relevant public for assessing likelihood of confusion will be the professional public only (14/07/2005, T‑126/03, Aladin, EU:T:2005:288, § 81). The degree of attention is likely to be relatively high in view of the specialised nature of the goods and, also since these goods affect, either directly or indirectly, the state of dental health.

3. The signs

ICON	ANICON
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).

Both marks are word marks consisting of a single verbal element.

The word element ‘ICON’ of the earlier mark will be understood by the relevant public as an ‘icon’ [‘an image, picture, representation, etc.’; ‘a representation of Christ, the Virgin Mary, or a saint, especially one painted in oil on a wooden panel’; ‘a person or thing regarded as a symbol of a belief, nation, community, or cultural movement’ or ‘a pictorial representation of a facility available on a computer system, that enables the facility to be activated by means of a screen cursor rather than by a textual instruction‘, see Collins Dictionary online at www.collinsdictionary.com]. Apart from existing in English and being widely used in the field of smart phones and computers, this word has very similar counterparts in the official languages in the relevant territory, e.g. ‘icona’ in Italian and Portuguese, ‘icono’ in Spanish, ‘icône’ in French, ‘Ikon’ in German, Danish, Swedish and Hungarian, ‘icoon’ in Dutch, ‘ikoon’ in Estonian, ‘ikona’ in Bulgarian, Latvian, Croatian, Slovak, Czech and Polish, ‘ikoon’ in Estonian, ‘icoană’ in Romanian, etc. As this element has no descriptive, allusive or otherwise weak meaning in relation to the relevant goods, its inherent distinctive character is normal.

The verbal element of the contested sign ‘anicon’ does not have any clear meaning for the relevant public in the relevant territory. Therefore, its inherent distinctiveness is normal.

The opponent argues that the contested sign will be split and the element ‘ICON’ will be identified therein. However, the Opposition Division does not find it likely that the relevant public will make such splitting. Indeed, it is acknowledged that when a sign is composed of a single verbal element, nevertheless, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). However, in the present case, there is no reason why the relevant consumers, when confronted with the contested sign will split it into ‘AN’ and ‘ICON’. There is no visual division or clear underlying concepts that would justify the finding that the word will be split into ‘AN’ and ‘ICON’. In fact, the phonetic structure of the word is A-NI-CON, which supports the finding that ‘ICON’ will not be singled out as a separate element within ‘ANICON’, because splitting into AN-ICON is not facilitated by the natural pronunciation of the sign. Therefore, the Opposition Division considers that the verbal element of the contested sign will be perceived by the public as a fanciful unit without any meaning.

Visually, the signs coincide in that both contain the letters ‘ICON’, which represent the entirety of the earlier mark and the last four letters ‘ANlCON’ of the contested sign. The signs differ in the letters ‘AN’ in the beginning of the contested sign. The opponent argues that the signs are similar as the earlier mark is entirely included in the contested sign. However, the Opposition Division notes that the fact that ‘ICON’ of the earlier mark represents the last four letters of the contested sign does not bring about a degree of visual similarity that is more than low.

This is because the signs differ in their beginnings, which is a particularly relevant. 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, the fact that the beginnings of the marks differ creates a fairly distinct visual impression. In addition, the earlier mark is relatively short and in spite of being included entirely in the end of the contested trade mark, it is not included as a separable element having an independent distinctive role therein. As mentioned above, there is no reason why the relevant consumer, when faced with the contested sign, would split it into ‘an-icon’, so as to detect the four coinciding letters.

Therefore, taking into account all the above, it is considered that the signs are visually similar to a low degree.

Aurally, the earlier mark is pronounced as I-CON (uttered as /ai-con/ or /i-con/ depending on the pronunciation rules in different parts of the relevant territory), whereas the contested sign is pronounced as A-NI-CON. The highest possible degree of aural similarity between the signs seems to be in the cases when the sound of ‘I’ in both marks is the same (unlike in English, for example, in which ‘i’ in the earlier mark is uttered as /ai/ and in the contested sign it is uttered as /i/; though in that case the pronunciation of both signs will start with the same sound ‘a’). Nevertheless, although the signs coincide in the sound of the four letters ‘icon’, or in the beginning sound ‘a’, these coinciding sounds are distributed in a different syllabic structure (i-con vs. a-ni-con). Therefore, it is only in the last syllable that the signs coincide in full and the other syllables differ in their number (one vs. two syllables) and in their structure and rhythm of pronunciation. Therefore, the degree of aural similarity between the signs is low.

The concepts of the signs have been defined above. Although the public in the relevant territory will perceive the meaning(s) of the earlier mark as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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 (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23). It is a matter of law, which must be examined by the Office even if the parties do not comment on it. In contrast, the degree of enhanced distinctiveness acquired through use of the earlier sign is a matter of law and fact, which the Office cannot examine unless the opponent claims and substantiates it in due time (see the Guidelines, Part C, Opposition, Section 1, Opposition Proceedings, paragraph 4.2, Substantiation).

Until the expiry of the substation period, which ended on 14/12/2018, the opponent did not explicitly claim, or file any evidence thereof, that its mark is particularly distinctive by virtue of intensive use or reputation.

However, following the applicant’s request for proof of use, the opponent filed on 21/05/2019 evidence of proof of use of its earlier mark. The opponent also claimed in its observations of the same date that the evidence shows that the earlier trade mark enjoys enhanced distinctiveness by virtue of intensive use or reputation.

In this regard, the Opposition Division notes that according to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Article 7(1) EUTMDR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

In particular, if the opponent wishes to rely on a claim of enhanced distinctiveness of its earlier mark, it should make and substantiate its claim in due time, namely before the expiry of the substantiation period which in the present case ended on 14/12/2018.

The notice of opposition was not accompanied by such claim or any evidence of the enhanced distinctiveness of the earlier trade mark. On 09/08/2018 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 14/12/2018. On 21/05/2019, prompted by the applicant’s request, the opponent submitted evidence of genuine use.

According to Article 7(5) EUTMDR, the Office will not take into account written submissions, or parts thereof, which have not been submitted in or not been translated into the language of the proceedings, within the time limit set by the Office.

According to Article 8(1) EUTMDR, if until expiry of the period referred to in Article 7(1) EUTMDR, the opposing party has not submitted any evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, or where the evidence submitted is manifestly irrelevant or manifestly insufficient, the opposition will be rejected as unfounded.

Article 8(1) EUTMDR is an essentially procedural provision and it is apparent from the wording of that provision that when no evidence with regard to the substantiation of the earlier mark concerned is submitted within the time limit set by the Office or where the evidence submitted is manifestly irrelevant or manifestly insufficient to meet the requirements laid down in Article 7(2) EUTMDR, the opposition must be rejected as unfounded. It follows that the Office cannot take into account evidence submitted for the first time after the expiry of the time limit when the evidence submitted within the time limit is manifestly irrelevant or manifestly insufficient.

In the present case, within the set time limit, the opponent did not even claim, let alone file any evidence thereof, that its mark is particularly distinctive by virtue of intensive use or reputation.

For this reason, the claim and evidence submitted on 21/05/2019, after expiry of the time limit, cannot be taken into account for the assessment of the alleged enhanced distinctiveness of the earlier mark.

Given that the abovementioned claim and evidence cannot be taken into account, 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 descriptive or weak 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 contested goods and services are partly identical and similar to various degrees and partly dissimilar to the opponent’s goods. The relevant goods are directed at the professional public in the field of dental care and the degree of attention is relatively high. The inherent distinctiveness of the earlier marks is normal.

The signs are visually and aurally similar to a low degree. The signs are not conceptually similar.

The similarities between the signs are due to the letter sequence ‘ICON’ representing the earlier mark. However, as explained above, this coincidence does not have an independent distinctive and autonomous role in the contested sign and will probably go unnoticed. There is no reason why the public will associate the marks with a common trade origin. Consumers are not in the habit of analysing and dissecting trade marks. On the contrary, the average consumer normally perceives a mark as a whole and does not proceed to analyse its details. The contested sign is sufficiently removed from the earlier mark and any existing similarity is diluted in the overall impression created by the signs.

In the present case, it is particularly relevant to emphasize the relatively high degree of attention of the relevant professional public and the conceptual difference between the marks. Any conceptual differences which may distinguish the marks at issue may counteract to a large extent any visual and aural similarities (14/10/2003, T-292/01, Bass, EU:T:2003:264, § 54, 55). As to the relevant public, it consists of specialists in the dental-care industry, who will exhibit a relatively high level of attention at the point of purchase of the goods in question. Immediately, this reduces the likelihood of confusion between the marks at the crucial moment when the choice between those goods and marks is made (12/01/2006, C-361/04 P, Picaro, EU:C:2006:25, § 39, 40). Even considering that consumers only rarely have the chance to make a direct comparison between the different marks, the differences in the signs are clearly perceptible and sufficient to exclude any likelihood of confusion between them, including in view of the identity of some of the goods.

Taking into account all the circumstances of the case, it is concluded that the similarities between the signs are not sufficient to trigger a likelihood of confusion on the part of the public. Despite the coincidence/s mentioned, the described differences between the signs are sufficient to exclude any likelihood of confusion on the part of the public.

The opponent 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. In the present case, the previous cases referred to by the opponent are not relevant to the present proceedings, as they refer to completely different signs. Even if some of the signs may be remotely comparable in view of the inclusion of the earlier mark in the contested sign, the cases are not relevant, as the particular factual circumstances of those cases are rather different, such as different degree of similarity of the signs due to different linguistic findings, different goods, different relevant public and degree of attention, etc. Therefore, the previous decisions quoted by the opponent are irrelevant for the outcome in the present case.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR, it is unnecessary to examine the evidence of use filed by the opponent.

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, 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

Reiner SARAPOGLU

Liliya YORDANOVA

Jakub MROZOWSKI

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.