OPPOSITION Nо B 3 064 057

 

Karl Storz SE & Co. KG, Dr. Karl-Storz-Straße 34, 78532 Tuttlingen, Germany (opponent), represented by Witte, Weller & Partner Patentanwälte mbB, Phoenixbau Königstr. 5, 70173 Stuttgart, Germany (professional representative) 

 

a g a i n s t

 

Spectronic AB, Karbingatan 36, 25467 Helsingborg, Sweden (applicant), represented by Awa Sweden AB, Matrosgatan 1, 211 18 Malmö, Sweden (professional representative).

On 22/06/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B  3 064 057 is upheld for all the contested goods.

 

2.	European Union trade mark application No 17 906 807 is rejected in its entirety.

 

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

REASONS

 

On 13/09/2018, the opponent filed an opposition against all the goods and services of European Union trade mark application No 17 906 807 ‘SPECTRONIC’ (word mark). The opposition is based on EUTM registration No 14 719 611 ‘SPECTRA’ (word mark). The opponent invoked Article 8(1)(a) EUTMR and 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.

 

 a) The goods and services

 

Some of the goods invoked by the opponent were deleted following Examination Decision (fully confirmed by Board of Appeal Decision of 25/04/2017, R 1501/2016-4) and Cancellation Decision C 39061 of 26/02/2021. Accordingly, the goods on which the opposition is based are the following:

 

Class 9: Computers, namely being components for an image processing system for use in endoscopy; Recorded computer programs and downloadable computer programs, namely for image processing for use in endoscopy; Data processing equipment, namely being components for an image processing system for use in endoscopy; Laptop computers, namely being components for an image processing system for use in endoscopy; Monitors (computer hardware) and monitors (computer programs), namely being components for an image processing system for use in endoscopy; Notebook computers, namely being components for an image processing system for use in endoscopy; Stereoscopes; Stereoscopic apparatus.

Class 10: Acupuncture needles; Apparatus for artificial respiration; Nursing appliances; Apparatus for the treatment of deafness; Microdermabrasion apparatus; Instrument cases for use by doctors; Respirators for artificial respiration; Feeding bottles; Basins for medical purposes; Receptacles for applying medicines; Teething rings; Blood testing apparatus; Bougies for surgery; Artificial breasts; Incubators for medical purposes; Incubators for babies; Surgical implants comprised of artificial materials; Surgical cutlery; Suture needles; Surgical sponges; Mirrors for surgeons; Defibrillators; Surgical bougies; Dialyzers; Drainage tubes for medical purposes; Insufflators; Electric acupuncture instruments; Electrodes for medical use; Finger guards for medical purposes; Feeding bottle teats; Dental burs; Galvanic belts for medical purposes; Galvanic therapeutic appliances; Uterine syringes; Obstetric apparatus for cattle; Obstetric apparatus; Forceps; Hearing protection devices; Appliances for washing body cavities; Urinals [vessels]; Urethral probes; Urethral syringes; Invalids' hoists; Heart pacemakers; Hearing aids; Ear trumpets; Corn knives; Syringes for injections; Inhalers; Injectors for medical purposes; Incubators for babies; Douche bags; Enema apparatus for medical purposes; Cannulae; Castrating pincers; Catgut; Catheters; Cases fitted for use by surgeons and doctors; Ambulance stretchers; Draw-sheets for sick beds; Artificial eyes; Artificial limbs; Artificial skin for surgical purposes; Artificial jaws; Lenses [intraocular prostheses] for surgical implantation; Artificial teeth; Lancets; Spoons for administering medicine; Masks for use by medical personnel; Medical guidewires; Spoons for administering medicine; Knives for surgical purposes; Breast pumps; Commode chairs; Needles for medical purposes; Anaesthetic apparatus; Anaesthetic masks; Contraceptives, non-chemical; Ear picks; Ear plugs [ear protection devices]; Operating tables; Pessaries; Balling guns; Condoms; Artificial limbs; Pulse meters; Pulse measuring devices; Pumps for medical purposes; Fumigation apparatus for medical purposes; Saws for surgical purposes; Feeding bottles; Feeding bottle valves; Scissors for surgery; Splints, surgical; Dummies for babies; Cupping glasses; Love dolls [sex dolls]; Probes for medical purposes; Containers especially made for medical waste; Spirometers [medical apparatus]; Syringes for medical purposes; Spittoons for medical purposes; Bed pans; Stents; Stethoscopes; Thermometers for medical purposes; Stretchers, wheeled; Trocars; Droppers for medical purposes; Dropper bottles for medical purposes; Incontinence sheets; Abdominal pads; Vaginal syringes; Vaporizers for medical purposes; Bed vibrators; Waterbeds for medical purposes; Resuscitation apparatus; Brushes for cleaning body cavities; Clips, surgical; Mirrors for dentists; Dentists' armchairs; Dental prostheses; Orthodontic appliances; Pins for artificial teeth; Nebulizers for medical use; Tongue scrapers; Strait jackets.

The contested goods and services are the following:

 Class 9: Computer software; Software for medical image-processing apparatus; Computer software for medical analysis; Devices for image capture and development and for image material processing; Measuring instruments, Counting, Adaptation and Calibration (measuring); Electronic articles, namely radio communication equipment; Telecommunications apparatus and equipment including pocket telephones with parts and accessories.

Class 10: Medical apparatus and instruments; Medical imaging apparatus.

Class 42: Development of computer software and artificial intelligence; Consultancy relating to computer hardware and software and medical image processing apparatus; Services relating to data analysis and processing of medical images or other data sets.

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 ‘including’, used in the applicant’s list of goods and services, indicates that the specific goods and services 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).

However, the term ‘namely’, used in the applicant’s and in the opponent’s lists of goods and services 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 and services specifically listed.

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 goods in class 9

The contested computer software includes as a broader category the opponent's recorded computer programs and downloadable computer programs, namely for image processing for use in endoscopy. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the earlier goods.

The contested software for medical image-processing apparatus; computer software for medical analysis includes as a broader category the opponent's recorded computer programs and downloadable computer programs, namely for image processing for use in endoscopy. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the earlier goods.

The contested devices for image capture and development and for image material processing overlap with the opponent's monitors (computer hardware) and monitors (computer programs), namely being components for an image processing system for use in endoscopy. Therefore, they are identical.

The contested electronic articles, namely radio communication equipment; telecommunications apparatus and equipment including pocket telephones with parts and accessories overlap with the opponent’s data processing equipment, namely being components for an image processing system for use in endoscopy since all of these goods are used for communications purposes. Therefore, they are identical.

The contested measuring instruments, counting, adaptation and calibration (measuring) coincide in their essential purpose of measuring with the opponent’s pulse measuring devices in Class 10, and these goods may originate from the same undertaking and sold via the same distribution channels. Therefore, these goods in conflict are similar.

Contested goods in class 10

The contested medical apparatus and instruments include, as a broader category the opponent's blood testing apparatus. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the earlier goods.

The contested medical imaging apparatus is similar to the opponent’s blood testing apparatus, since both are used for medical examination, target the same customers and sold via the same distribution channels.

Contested services in class 42

The contested development of computer software and artificial intelligence; consultancy relating to computer hardware and software and medical image processing apparatus; services relating to data analysis and processing of medical images or other data sets are similar to the opponent's data processing equipment, namely being components for an image processing system for use in endoscopy in Class 9 because market reality shows that undertakings providing software development can also be engaged in selling data processing equipment, via the same distribution channels and targeting the same consumers. Furthermore, these services and goods are complementary to one another.

 

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 identical or similar are essentially directed at medical professionals and business customers with specific professional knowledge in information technology and medical equipment.

 

The degree of attention may vary from average to high, depending on the specialised nature of the goods and services, their price and/or sophistication.

c) The signs

 

SPECTRA	SPECTRONIC
Earlier trade mark	Contested sign

 

 

The relevant territory is 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 earlier consists of one word, ‘SPECTRA’ which is the plural of the English word ‘spectrum’ and means ‘the whole range of electromagnetic radiation with respect to its wavelength or frequency (https://www.collinsdictionary.com/dictionary/english/spectrum; information extracted on 18/06/2021). Furthermore, it can safely be presumed that a significant portion of the remaining, non-English speaking public would also perceive this element as meaningful, partly because the relevant public includes professionals who have the sufficient command of English and partly because of the similar equivalents in the relevant languages such as in French (‘spectre’), in Spanish and Portuguese (‘espectro’), in German, Polish and Hungarian (‘spektrum’), to name but a few.

With regard to the contested sign, it also consists of one word ‘SPECTRONIC’ and the above considerations largely apply to this element too. This is because the sign contains, as its first seven letters, the element ‘SPECTRO-’, a prefix commonly used in reference to spectrum in a number of technical terms such as ‘spectrometer’ or ‘spectrogram’. Therefore, the contested sign is likely to be associated with the same concept as the earlier mark. Furthermore, it cannot be excluded that some of the consumers may associate the ending letter sequence with the concept of electronic’. Since the goods and services are all electronic or related to such goods, this element, if perceived, will have a very limited distinctiveness. Overall, the contested sign will be understood as having the prefix ‘sprectro-’ related to spectrum, and it may also evoke the very weak concept of ‘electronic’.

Based on all the foregoing, the concept of spectrum is considered to be below average since all the goods and services may use or relate to spectrum of light or radiation. Even so, the Opposition Division considers that the issue of the distinctiveness of the concept ‘spectrum’ evoked by both signs is of little relevance since this concept is identically present in both signs and will, therefore, be assessed on equal footing as concerns their comparison.

 

Visually and aurally, the signs coincide in their initial letter sequence ‘SPECTR-’ and differ in the earlier mark’s one additional letter ‘A’ at its end and the letters ‘-ONIC’ at the end of the contested sign. This also means that, except for its last letter, the whole of the earlier mark is reproduced in the contested sign, in the same position. Account must also be taken that consumers tend to focus on the beginning of signs as this is the part which first catches their attention. Overall, the signs’ different endings cannot counteract the visual and aural impact of their coinciding letter sequence, therefore, the signs are similar to an average degree.

Conceptually, the signs share the concept of spectrum as explained above. For this reason, and in the absence of any further semantic meaning, the coincidence in the concept evoked renders the signs conceptually identical to the extent that both evoke the concept of ‘spectrum’ albeit it is admitted that the distinctiveness of this concept is below average in relation to the goods and services, however, this would have the same impact on both signs in any event. As explained above, the only additional concept that may be perceived by part of the public is’ electronic’ of very low distinctiveness, therefore, this would have a minimal impact on the conceptual assessment, if perceived.

 

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 evokes a concept which may be related to the purpose of functioning of the goods at issue. Therefore, the distinctiveness of the earlier mark must be seen as below average.

 

 

e) Global assessment, other arguments and conclusion

 

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).

 

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).

 

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.

In the present case, the goods and services are identical or similar, and the signs are visually and aurally similar to an average degree, and conceptually identical to the extent that they both evoke the concept of ‘spectrum’. The coincidence between the signs resides in a semantic content of below average distinctiveness, however, the distinctiveness of this concept is to be assessed on equal footing, as explained above. Furthermore, the contested sign reproduces nearly the whole of the earlier mark, with the differences placed at the end of the signs. While the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, 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 an earlier mark with a weaker distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (16/03/2005, T‑112/03, Flexi Air, EU:T:2005:102). The Opposition Division considers that the important similarities between the signs, in combination with the identity/similarity of the goods and services, are capable of counteracting the differences, consequently, consumers are likely to be led to believe that the goods and services originate from the same or linked undertakings.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character because of its meaning, and this is considered to be supported by the fact that there are many trade marks including the element ‘spectr-’. In support of its argument the applicant refers to several 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 ‘spectr-’. Under these circumstances, the applicant claims must be set aside.

 

Therefore, the opposition is well founded on the basis of the opponent’s EUTM registration No 14 719 611. It follows that the contested trade mark must be rejected for all the contested goods and services.

 

 

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

 

Liliya YORDANOVA

Ferenc GAZDA

Octavio MONGE GONZALVO

 

 

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.