OPPOSITION Nо B 3 065 121

 

Lars Benjamin Fritz, Jürgensplatz 56, 40219 Düsseldorf, Germany (opponent), represented by Schumacher& Willsau Patentanwaltsgesellschaft, Nympenburger Straße 42, 80335 München, Germany (professional representative) 

 

a g a i n s t

 

PROMIDEA S.R. L., 1 B Pibera Bd Floor 4, 077190 Voluntari, Romania (applicant),

On 16/07/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3065121  is rejected in its entirety.

 

2.	The opponent bears the costs.

 

REASONS

 

The opponent filed an opposition against some of the services of European Union trade mark application No 17 911 616 ’ ’ (figurative mark), namely against all services in Classes 35 and 42. The opposition is based on German trade mark registration No 302 016 110 204 ‘PROVIDEA’ (word mark).The opponent invoked  Article 8(1)(b) EUTMR.

PREAMBLE:

It should be stated that the observations of the applicant have been filed 16/12/2020 while the deadline set in the Office’s letter of 05/10/2020 was the 10/12/2020, consequently the observations have been filed outside the deadline. Therefore, the content of the observations will not be taken into account.

For the sake of completeness, it can be noted the content of the observations would not have changed the decision.

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  services

 

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

Class 35: Advertising, in particular in the field of health care; business management, in particular in the field of health care; business administration, in particular in the field of health care; clerical work, in particular in the field of health care.

Class 36: Insurance, in particular in the field of health care; finance, in particular in the field of health care; monetary affairs, in particular in the field of health care; real estate, in particular in the field of health care.

Class 37: Construction, in particular in the field of health care; repair of buildings and structures, in particular in the field of health care; installation works on buildings and structures, in particular in the field of health care.

 

Class 41: Education, in particular in the field of health care; training, in particular in the field of health care; entertainment, in particular in the field of health care; sports and cultural activities, in particular in the field of health care.

Class 42: Scientific and technological services as well as research and design services relating thereto, in particular in the field of health care; industrial analysis and research services, in particular in the field of health care; design and development of computer hardware and software, in particular in the field of health care. Class 43: Catering and accommodation, in particular in the field of health care. Class 44: Medical and veterinary services; health care and beauty care for humans and animals.

The contested  services are the following:

 

Class 35: Promotional services; Advertising, marketing and promotional services; Advertising, marketing and promotional consultancy, advisory and assistance services; Import agency services.

Class 42: Development (Research and -) of products; Quality testing of products for certification purposes; Inspection of goods for quality control; Safety testing of products.

An interpretation of the wording of the list of services] is required to determine the scope of protection of these services.

The term ‘in particular’, used in the opponent’s list of services, indicates that the specific 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).

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 Class 35

The contested promotional services; advertising, marketing and promotional services; advertising and promotional consultancy, advisory and assistance services are either identically included in, or overlap with, the opponent’s advertising, in particular in the field of health care.

The contested import agency services are similar to business management, in particular in the field of health care, as they usually coincide in producer, relevant public and distribution channels.

Contested services in Class 42

The contested development of products are identical to design and development of hardware and software, in particular in the field of health care as the later is included in the services of the contested sign.Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested research of products includes, as a broader category the opponent’s research services, in particular in the field of health care. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The remaining quality testing of products for certification purposes; inspection of goods for quality control; safety testing of products are dissimilar to all the services of the opponent. They are provided by specialized providers and over different distribution channels. They are directed to a different public. Furthermore, they serve a different purpose and have a different nature. They are neither complementary nor in competition.

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 services found to be identical or similar are directed at professional public.

The level of attention depends on several criteria and can vary between average and high depending on the relevance of the service, the investment and the frequency of the services.

 

c) The signs

 

Providea
Earlier trade mark	Contested sign

 

The relevant territory is Germany.

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).

‘

‘Providea` as a whole has no meaning and is distinctive. For the part of the public that will perceive the element ‘PRO’ with the meaning professional or in favour of, this element can be slightly limited in its distinctiveness.

‘Promidea’ as such has no meaning for the relevant public, however it will be dissected. The word element ‘PROM’ will not be perceived with any meaning by the German public, the element ‘idea’ will be associated with the equivalent German word ‘Idee’ and, therefore, in relation to the services at hand that are idea-driven the element is of reduced distinctiveness.

Even though the graphic elements of the contested sign consist of a dot and a circle replacing the letter ‘O’ and different fonts and colors, in the case at hand, the stylization facilitates the dissection of the verbal parts and has, therefore, an impact on the comparison and has normal distinctiveness.

Visually, the signs coincide in eight letters and differ in one letter as the opponent points out as well as in the stylization that leads to a perception of the contested sign as a two word sign and, therefore, has an impact on the comparison. The coincidence in letters (or strings) of letters alone is not sufficient to conclude similarity, the relevant factor is the perception of the relevant public. In the case at hand, the overall impression taking into account that the element ‘idea’ has a reduced distinctiveness is average at most.

Aurally, the perception of the signs affects the pronunciation and the rhythm of the words. While the earlier sign will be perceived as one word and pronounced in three parts ‘pro-vee-déa’, the contested sign will be pronounced as ‘Prom- idea’. The similarity will be at most average.

 

Conceptually, the German public will not grasp the concept of ‘idea’ in both marks. The public will perceive the concept of ‘idea’ in the contested one and a part will perceive the concept of ‘pro’ in the earlier one. Either the relevant public will perceive only one meaning for one of the signs or both signs with a different meaning, so that there is no conceptual similarity.

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  services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of the element ‘PRO’ that is of limited distinctiveness at least for t part of the public.

 

e) Global assessment, other arguments and conclusion

 

The likelihood of confusion must be appreciated globally, with reference to the perception which the relevant public has of the signs and of the goods or services in question, taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and the similarity of the goods or services designated. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18 and 19; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

The signs have been found visually and phonetically at most average similar and without a conceptual similarity. The services have been found partially identical, partially similar and partially dissimilar. As the level of attention will be higher, the difference between the signs will be more noticed than the similarities between the signs. The relevant public will perceive the earlier sign as a one word mark and the contested as a two word mark triggered by the stylization of the contested sign, namely different colours and fonts.

The opponent’s argument would apply if the two signs were word marks, without taking into account the stylisation of the contested sign. However, as argued above, just this stylisation triggers a visual dissection of the sign into two words with clear meaning, although ‘idea’ is of reduced distinctiveness. Consequently, taking the overall impression of the marks, there is no likelihood of confusion.

Considering all the above, even with identical and similar services, there is no likelihood of confusion for the relevant public. Therefore, the opposition must be rejected.

 

 

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 (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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. In the present case, the applicant did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

 

 

 

The Opposition Division

 

 

Astrid Victoria WÄBER

Claudia MARTINI

Katarzyna ZANIECKA

 

 

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.