OPPOSITION No B 3 063 128

BMT Medical Technology s.r.o., Cejl 50, 565 60 Brno, Czech Republic (opponent), represented by Dušan Kendereški, Tuřanka 1519/115a, 62700 Brno, Czech Republic (professional representative)

a g a i n s t

Instituto de Tecnología y Estética Pharma, S.L., Ciudad del Transporte, c/ Olite, 9, 31119 Imarcoain, Spain (applicant), represented by Jesús María Zugarrondo Temiño, Miguel Astráin, 18-1ºC, 31006 Pamplona, Spain (professional representative).

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

DECISION:

1. Opposition No B 3 063 128 is upheld for all the contested goods.

2. European Union trade mark application No 17 885 108 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 885 108 for the figurative mark , namely against all the goods in Class 11. The opposition is based on the Czech trade mark registration No 228 933 for the word mark ‘STERIDENT’. The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK - SUBSTANTIATION

In its observations dated 30/12/2019, the applicant claims that the opponent failed to prove the existence, validity and scope of protection of its earlier right.

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 is restricted in this examination to the facts, evidence and arguments submitted 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 submit 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.

According to Article 7(2) EUTMDR, within the period referred to above, the opposing party must also file evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition, like in the present case, is based on a registered trade mark that is not a European Union trade mark, the opposing party must submit a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in Article 7(1) EUTMDR and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Article 7(2)(a)(ii) EUTMDR.

However, where the evidence concerning the registration of the trade mark is accessible online from a source recognised by the Office, the opposing party may provide such evidence by making reference to that source — Article 7(3) EUTMDR.

In the present case, although the notice of opposition was not accompanied by any particular evidence as regards the earlier trade mark on which the opposition is based, the opponent chose to rely on the online substantiation, expressly ticking the relevant box on the notice of opposition whereby the opponent accepts that the necessary information for this trade mark is imported from the relevant online official database, accessible through TMVIEW, and that this source is used for substantiation purposes without prejudice to its right or obligation to provide any additional information that may be necessary to comply with the substantiation requirements of Article 7(2) and (4) EUTMDR. The earlier mark is a national trade mark registered with the Intellectual Property Office of the Czech Republic (IPOCZ) and the relevant details of this earlier mark are available from the relevant online official database, accessible through TMVIEW. Furthermore, a translation of the goods and services on which the opposition is based on into the language of the present proceedings (English), was provided in the notice of opposition.

Therefore, contrary to the applicant's arguments, the opponent filed evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition, that is relevant and sufficient to meet the requirements laid down in Article 7(2) EUTMDR for the opponent's earlier Czech trade mark. The applicant's claim is set aside.

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 the trade mark on which the opposition is based on, namely Czech trade mark registration No 228 933 for the word mark ‘STERIDENT’.

The date of filing of the contested application is 06/04/2018. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the Czech Republic from 06/04/2013 to 05/04/2018 inclusive.

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

Furthermore, the evidence must show use of the trade mark for the goods and services on which the opposition is based, namely the following:

Class 9: Computing equipment and software, data on mechanical digital carriers, especially magnetic and optic, instruments for testing by thermal cycles, laboratory instruments, scientific instruments and tools, equipment for cultivation of micro-organisms.

Class 10: Sanitary technology included in this class, sanitary equipment included in this class, especially medical instruments, devices and fluorography devices and instruments, dental and veterinary apparatuses and instruments, furniture for dentist rooms.

Class 11: Sanitary facilities classified in this class, especially sterilizers, industrial sterilizers, sterilizer heat sources and sterilizer accessories including spare parts, distilling apparatuses, air-conditioners, dryers, heating devices, cooling devices and appliances, tempering boxes and accessories classified in this class.

Class 42: Software services, software creation, engineering works and projection in the field of medical and laboratory equipment, research and development of medical equipment and medical preparations and laboratory devices and equipment.

According to Article 10(3) EUTMDR, 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 18/06/2019, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 23/08/2019 to submit evidence of use of the earlier trade mark. This deadline was extended until 23/10/2019. On 23/10/2019, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Annex 2: Two company profile brochures in English language, referring to the history, activities and products of the opponent, dated 2014 and 2019, respectively. While both brochures refer to sterilizers as products offered by the opponent, only the second brochure makes an express reference to ‘STERIDENT’ and shows product photos of ‘STERIDENT’ branded sterilizers, as displayed below, indicating specifically that these sterilizers are compact and economic steam sterilizers designed for medical and dental departments, clinics and hospitals. The first picture also appears in the document dated 2014.

• Annex 3: One general price list from the opponent effective from 01/03/2014, in which reference is made, inter alia, to ‘STERIDENT’ steam sterilizers. Three price lists from the opponent dated 01/2014, 01/2016, 01/2018 for small volume steam sterilizers. Express reference is made in all three price lists to, inter alia, ‘STERIDENT’ sterilizers, these being intended for sterilization of packaged solid compact, hollow and porous material as well as instruments in medical facilities, and for use in medical and dental practice, in hospitals and in general in all fields where surgery is performed. All price lists are in Czech and prices are indicated in Czech Koruna, which is typically abbreviated as Kč or CZK.

• Annex 4: Seven invoices issued by the opponent in between 31/08/2014 and 25/08/2017. Four invoices are addressed to recipients within the Czech Republic, whereas the remaining invoices are addressed to recipients outside the Czech Republic. All invoices refer to steam sterilizers ‘STERIDENT’ and indicate the Czech Republic as the country of origin. The invoices addressed to Czech recipients are in Czech and prices are indicated in local currency (these invoices each amount to converted values higher than EUR 3 000). The remaining invoices are in Euro amounting to values in between EUR 4 500 and EUR 24 000 approximately.

• Annex 5: Delivery chart from the opponent in which the sale of ‘STERIDENT’ products in the period from 2014 to 2018 are listed. Most of the recipients from the invoices submitted as Annex 4 are listed in this chart. According to this chart, 19 ‘STERIDENT’ devices were delivered between 2014 and 2018, 9 of which were delivered to recipients within the Czech Republic.

• Annex 6: Two brochures in English, dated 9/2015 and 6/2017, respectively, referring to the opponent’s products of compact and economic steam sterilizers designed for medical and dental use, which include product photos and descriptions of the ‘STERIDENT’ sterilizers, as displayed below:

In this regard the Opposition Division notes that the product photo is identical to the products in the company profile brochures submitted as Annex 2.

• Annex 7: Undated product photos of ‘Sterident’ branded products, as displayed below, having the same design as the ‘STERIDENT’ products shown in Annexes 2 and 6:

• Annex 8: 11 screenshots from the opponent’s as well as from two of its business partners’ websites, extracted using the digital internet archive ‘The Wayback Machine’ and referring to dates between November 2014 and August 2018. While all of these extracts show the mark ‘STERIDENT’ in connection with sterilizers, it has to be noted that two of these extracts are dated outside the relevant period of time. The extracts from the opponent’s business partners are all in Czech, while the extracts from the opponent’s website are all in English.

• Annex 9: An extract from Google Analytics indicating visits on the opponent’s website during the time period from 2014 to 2018. According to this extract 237 080 visits and 808 987 views were recorded, 77 084 of which coming from domains (‘cs’ and ‘cs-cz’), which are likely to be associated with users coming from the Czech Republic.

• Annex 10: Catalogue from the company Thermo Fisher Scientific, dated 2017/2018, referring to the opponent’s ‘STERIDENT’ sterilizers and including a product photo, description and the price of the product. The catalogue is in Czech and prices are indicated in local currency.

Most of the evidence shows that the place of use is the Czech Republic. This can be inferred from the language, addresses, and currency indicated on the price lists and some of the invoices, as well as the language used on the website extracts and catalogue from the opponent’s business partners. Therefore, the evidence relates essentially to the relevant territory.

Furthermore, most of the evidence is dated within the relevant period and the documents filed, in conjunction with the pictures (although some of them are undated), provides the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

The evidence also shows that the mark has been used in accordance with its function and as registered.

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 invoices submitted reflect a sufficient level of sales in the Czech Republic all through the relevant period which clearly excludes token use.

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, and taking into account that the relevant goods are rather specialist goods for the medical sector, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods and services covered by the earlier trade mark.

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.

In the present case, the evidence does not show use of the mark in connection with any goods and services in Classes 9, 10 and 42 for which the earlier mark is also protected. In relation to the opponent’s goods in Class 11, the evidence provided by the opponent shows use of the earlier mark at least for sterilizers for medical and dental use which are included in the broad category of the sanitary facilities classified in this class, especially sterilizers which are covered under the earlier mark and for the sake of procedural economy, the Opposition Division will proceed considering only sterilizers for medical and dental use in Class 11 in its further examination of the opposition.

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

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

Class 11: Sterilizers for medical and dental use.

The contested goods, following a limitation made to the Office by the applicant, are the following:

Class 11: Sterilization, disinfection and decontamination equipment; sterilisers; sterilisers; filter aggregates; microfiltration systems; systems for controlling and eliminating particles; filtering and sterilisation equipment and systems, for sale in kit form; all the aforesaid, not including those in relation to dentistry and the dental sector.

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 sterilization, disinfection and decontamination equipment; sterilisers; sterilisers; sterilisation equipment and systems, for sale in kit form; all the aforesaid, not including those in relation to dentistry and the dental sector are identical to the opponent’s sterilizers for medical and dental use, because the opponent’s goods include, are included in, or overlap with, the contested goods.

According to the Collins Online Dictionary a ‘sterilizer’ is a person, substance or device that sterilizes (information extracted on 22/06/2020 at https://www.collinsdictionary.com/dictionary/english/sterilizer). The term ‘sterilizes’ can be defined as making a thing or place completely clean and fee from germs (information extracted on 22/06/2020 at https://www.collinsdictionary.com/dictionary/english/sterilize). The applicant’s filter aggregates; microfiltration systems; systems for controlling and eliminating particles; filtering equipment and systems, for sale in kit form are essentially goods aimed at filtration, which can be defined as the process of removing solid parts that are not wanted [for example, particles or bacteria] from a liquid or gas by passing it through a filter (information extracted on 22/06/2020 from Macmillan Dictionary at https://www.macmillandictionary.com/dictionary/american/filtration). Considering the above, and in the context of, for example, medical equipment, the opponent’s sterilizers for medical and dental use are at least similar to the contested filter aggregates; microfiltration systems; systems for controlling and eliminating particles; filtering equipment and systems, for sale in kit form; all the aforesaid, not including those in relation to dentistry and the dental sector, as these goods may serve the same general purpose (e.g. eliminating unwanted particles/organisms for medical purposes) and may address the same public (e.g. professionals in the medical field). Furthermore, they may originate from the same producer and may share the same distribution channels.

For the sake of completeness, the Opposition Division notes that, contrary to the arguments of the applicant, the limitation of the goods of the contested sign has no impact on the above mentioned findings, because the goods of the earlier mark are, first, not entirely limited to the dental sector, and, second, even if they were, the goods in question may still be used for the same purposes, address the same public (e.g. healthcare professionals), originate from the same producer and share the same distribution channels.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical or similar are directed at the public at large, as well as business customers with specific professional knowledge or expertise.

It is apparent from the case-law that, insofar as products related to consumer’s health are concerned, the relevant public’s degree of attention is relatively high. In particular, healthcare professionals have a high degree of attention, but also the public at large shows a higher degree of attention, whenever goods are involved which may affect their state of health. It follows from the above, that the degree of attention for the relevant public, no matter whether the public at large or the professional public, will be relatively high.

3. The signs

STERIDENT
Earlier trade mark	Contested sign

The relevant territory is the Czech Republic.

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 word mark ‘STERIDENT’ is a coined word which, taken as a whole, has no meaning in the relevant territory. Although the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details, the relevant consumers, when perceiving a verbal sign, may 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). In view of this principle, it cannot be excluded that part of the relevant public may split the earlier mark into the two elements ‘STERI’ and ‘DENT’. To such extent, although not a common abbreviation in Czech, the element ‘STERI’ might be understood by part of the public as a reference to sterilisation given the existence of the word sterilní’ (sterile) in the Czech language. Taking into account that the goods of the earlier mark are sterilizers, this element is weak for this part of the public. Similar considerations apply to the element ‘DENT’, which might be perceived by parts of the public as a reference to ‘dental’ or ‘dentistry’ given the existence of the words ‘dentální or ‘dentistka’ in Czech. As far as this element will be understood in the above mentioned sense, and taking into account that the opponent’s sterilizers might be used, amongst others, for dental purposes, this element is of limited distinctive character, too. However, taken as a whole, and as already mentioned above, the earlier mark has no clear and immediate meaning and is therefore of normal distinctive character.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that many trade marks include ‘STERI’. In support of its argument the applicant refers to several European Union trade mark registrations.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘STERI’. Under these circumstances, the applicant’s claims must be set aside.

The contested sign is a figurative mark consisting of the invented verbal element ‘STERIDERM’, written in a standard typeface in turquoise color, placed in the middle of a circular, grey and turquoise colored, graphical element, which is surrounded by a number of differently sized bubbles depicted in the very same colors. Similar to the earlier mark, it cannot be excluded that part of the public will split the verbal element of the contested sign into the words ‘STERI’ and ‘DERM’. As regards to ‘STERI’, the same considerations as for the earlier mark apply. The additional element ‘DERM’ might be perceived by parts of the relevant public as a reference to ‘dermatology’, given the existence of the word ‘dermatologie’ in Czech. To the extent that the goods of the contested sign might be used for dermatological purposes, this element, just like ‘STERI’ will be of limited distinctive character for such public. Taken as a whole, the Opposition Division is of the opinion that the contested sign has no clear meaning and is therefore of normal distinctive character. While the figurative elements of the contested sign are rather fanciful, it has to be recalled 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). Therefore, the figurative elements of the contested sign as well as its colors will have little impact on the consumer’s perception of the sign.

The contested sign has no element that could be considered clearly more dominant than other elements.

Visually and aurally, the signs coincide in the string and the sound of the letters ‘S‑T-E-R-I-D-E-*-*’. Both signs are of the same lengths. The signs differ on account of two different last letters (respectively), and the additional figurative elements of the contested sign, which however have little impact on the perception of the relevant public. Taking into account that the signs coincide in the positioning of 7 out of a total of 9 letters, and the fact that they share the same beginning, which is the part which first catches the consumer’s attention, the signs are considered to be visually and aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although, parts of the words of the signs taken in isolation might be associated by parts of the public with particular meanings, the words as a whole are invented terms, which do not have a clear and concise meaning for such public in relation to the goods in question. In this regard it has to be recalled that neither of the elements composing the words of the signs in dispute as such (‘STERI’ and ‘DENT’, on the one hand, and ‘STERI’ and ‘DERM’, on the other hand) have a meaning in the Czech language, but might be merely associated with a meaning individually and only by parts of the relevant public. According to the General Court, a conceptual dissimilarity cannot be assessed, when neither of the relevant marks has a clear and concise meaning (07/11/2017, T-144/16 MULTIPHARMA, §60). No matter whether in the present case the relevant public will understand the meanings of the various verbal elements of the signs or not, the signs as a whole do not have a clear and concise enough meaning. Therefore, a conceptual comparison is not possible and the conceptual aspect does not influence the assessment of the similarity of the signs.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent 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, even if some of its elements taken in isolation could be considered to be weak.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

In the present case the goods are partly identical and partly similar. The relevant public is the public at large as well as professionals and the degree of attention displayed by the public in relation to the relevant goods is high. The distinctiveness of the earlier mark as a whole must be seen as normal. The signs are visually and aurally similar to a high degree. Neither sign (taken as a whole) has a clear and concise meaning that would be of assistance to the public to differentiate between them. In this regard, and even if parts of the signs would be associated with meanings, such meanings would still not be sufficiently precise to neutralize the strong visual and aural similarities of the signs. In any event, it should further be noted that when marks share an element with low distinctiveness (‘STERI’, if associated with a meaning) the assessment of likelihood of confusion will focus on the impact of the non-coinciding components on the overall impression of the marks. The assessment will take into account the similarities/differences and distinctiveness of the non-coinciding components. As seen above, in the present case, the remaining components ‘DENT’ and ‘DERM’ also coincide visually and aurally in their two first letters ‘DE’.

In the present case, 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).

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Czech trade mark registration No 228 933. It follows that the contested trade mark must be rejected for all the contested goods.

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, 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

Begoña URIARTE VALIENTE

Holger Peter KUNZ

Martina GALLE

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.