OPPOSITION Nо B 3 085 917

 

O2 Worldwide Limited, 20 Air Street, W1B 5AN London, United Kingdom (opponent), represented by Stobbs, Building 1000 Cambridge Research Park, CB25 9PD Cambridge, United Kingdom (professional representative) 

 

a g a i n s t

 

Ningbo Shengyurui Medical Appliances Co., Ltd, No. 138 Binhaisi Road, Hangzhou Bay New Zone, Ningbo City, Zhejiang Province, People’s Republic of China (applicant), represented by Ingenias, Av. Diagonal, 514 – 1º, 08006 Barcelona, Spain (professional representative).

 

On 21/10/2020, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 3 085 917 is upheld for all the contested goods.

 

2.	European Union trade mark application No 17 935 003 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 17 935 003 for the figurative mark . The opposition is based on, inter alia, European Union trade mark registration No 9 279 456 for the word mark ‘O2’. The opponent invoked Article 8(1)(b) and 8(5) 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.

 

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s EUTM registration No 9 279 456 for the word mark ‘O2’.

 

a) The goods

 

The goods on which the opposition is based are, inter alia, the following:

 

Class 10: Surgical, medical, dental and veterinary apparatus and instruments, none of the aforementioned being apparatus or instruments which administer, control or monitor the supply of gases for medical purposes.

The contested goods are the following:

 

Class 10: Nursing appliances; appliances for washing body cavities.

Contested goods in Class 10

 

The contested goods in this Class are included in, or at least overlap with, the broad category of the opponent’s medical apparatus and instruments, none of the aforementioned being apparatus or instruments which administer, control or monitor the supply of gases for medical purposes. Therefore, they are identical.

 

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 found to be identical target, mainly, the professional public from the medical and nursing sector, but some of them also target the public at large (e.g. the broad term nursing appliances covers, inter alia, various nursing appliances for use in breast feeding that may be purchased also by the public at large and used at home).

Some of these goods may be quite specialised and relatively expensive, while other goods are less specialised and available at more reasonable prices, therefore, the degree of attention may vary from average to higher than average, depending on the specialised nature of the goods, the frequency of purchase and their price.

c) The signs

O2
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).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The signs will be associated with certain meanings in those countries where English is understood. This affects the perception of the signs by that public (in particular their conceptual understanding) and the assessment of likelihood of confusion in these territories, as explained below. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, namely the public in Ireland, Malta and the United Kingdom.

The earlier trade mark is a word mark ‘O2’. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, in principle, it is irrelevant whether the contested sign is depicted in upper- or lower-case characters, or in a combination thereof. For the same reasons, word marks have no elements that could be considered clearly more dominant (eye-catching) than other elements.

The contested sign is a figurative mark ‘O2Plus’ written in a standard non-distinctive black typeface with the number ‘2’ slightly smaller than the upper-case letters ‘O’ and ‘P’. Although it is composed of one verbal element, the public is likely to break it down into two components, ‘O2’ and ‘Plus’, which they will find meaningful. According to case-law, the consumer, when perceiving a word, 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). This is justified by the fact that consumers naturally look for a meaning when perceiving a word mark.

It is plausible, as argued by the opponent, that the earlier mark ‘O2’ and the contested sign’s component ‘O2’ will be perceived by the relevant public as the chemical symbol for oxygen in its molecular form, given that the ‘O2’ formula is well known (02/02/2016, R 625/2015‑2, EO2 / O2 et al., § 27; 20/08/2018, R 2083/2017‑2, 3b (fig.) / O2 et al., § 69; R 1784/2017‑2, O2CHAIR MORE AIR, LESS STRESS (fig.) / O2 (et al.). § 22). As this meaning has no clear and direct link with the goods in which both marks coincide, and the applicant did not submit any arguments or evidence to the contrary, it is considered that ‘O2’/‘O2’ is inherently distinctive to an average degree for these goods.

As regards the contested sign’s component ‘Plus’, according to settled case-law, the use of the English word ‘Plus’ after the name is indeed a very common marketing practice (03/03/2010, T-321/07, A+, EU:T:2010:64, § 41) to indicate that the product in question is an improved version of the basic product (thus merely indicating something ‘extra’), and the relevant public will immediately and directly perceive such meaning in the case at hand (04/05/2015, R 2510/2014-4, GUIDEPLUS, § 13). Therefore, the inherent distinctiveness of the component ‘Plus’ is, at most, weak for the contested goods (20/08/2008, R 108/2005-4, PLUSOPTIX/PLUS, § 28-29).

The contested sign has no element(s) that could be considered more dominant (eye-catching) than other elements.

According to settled case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, namely the visual, aural and conceptual aspects (23/10/2002, T-6/01, Matratzen + Matratzenmarkt Concord (fig.), EU:T:2002:261, § 30).

The earlier marks are very short and, according to case-law, the shorter a sign, the more easily the public is able to perceive all its single elements. Therefore, small differences may frequently lead in short words to a different overall impression (06/07/2004, T‑117/02, Chufafit, EU:T:2004:208, § 48; 20/04/2005, T‑273/02, Calpico, EU:T:2005:134, § 39).

In addition, consumers normally focus their attention at the beginning of the signs (21/05/2015, T‑420/14, Wine in Black / NOVAL BLACK, EU:T:2015:312, § 25). 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.

Visually, aurally and conceptually, the signs coincide in that the letter ‘O’ and the number ‘2’ of the earlier mark are entirely included at the contested sign’s beginning. They will be pronounced identically in two separate syllables /oʊ/ and /tuː/, and they will be associated with the same concept (i.e. ‘oxygen’). The contested sign differs in its additional component ‘Plus’, its sound and meaning, which has no counterpart in the earlier mark. However, this differing element will not attract much attention of the consumers given its, at most, weak distinctive character and location in a more distant position within that sign. Moreover, the contested sign differs visually in the stylisation of its verbal elements which, however, is non-distinctive and, in any case, is less important in view of the verbal nature of the earlier mark which may be stylised in various ways. Therefore, the signs are visually, aurally and conceptually similar to at least an average degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

1. 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.

Although the opponent did not invoke Article 8(5) EUTMR in relation to the earlier EUTM registration No 9 279 456, referred to above, it did claim, in general, that its earlier marks are extremely well-known in the European Union and that they enjoy an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 to which this examination is limited. Therefore, the distinctiveness of the earlier mark must be seen as normal.

2. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The relevant public is composed of the professional public and public at large displaying a degree of attention varying between average and higher than average. Account is also 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).

In cases, like the present one, where the goods are identical, the differences between the signs should be significant and relevant to a degree that will allow consumers, especially those displaying an average degree of attention, to safely distinguish the marks and to exclude the likelihood of confusion between them (13/11/2012, T-555/11, tesa TACK, EU:T:2012:594, § 53). In the Opposition Division’s view, the contested sign does not maintain a sufficient distance from the earlier mark.

The earlier mark has a normal degree of inherent distinctiveness. The signs are visually, aurally and conceptually similar to at least an average degree. The earlier mark (the letter ‘O’ and the number ‘2’) is included at the contested sign’s beginning, namely in a part that usually catches more attention of the public. The contested sign differs only in its second component ‘Plus’ and the standard stylisation of its verbal elements. However, as these elements are not particularly distinctive (or non-distinctive), their impact will be very limited and, in any event, lesser than that of the coinciding part.

Although the public will not overlook certain differences between the signs, especially the contested sign’s second component ‘Plus’, the likelihood of confusion includes the likelihood of association with the earlier trade mark. It 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. Therefore, in the present case, even though the marks may not be directly confused with one another, there is a likelihood of confusion when the average consumer, although aware of the differences between the signs, nevertheless will assume, owing to the use of the distinctive component ‘O2’ for identical goods, that they are derived from the same undertaking or economically linked undertakings.

It is likely that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods and services which it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49), since it is a common market practice to launch new versions of marks accompanied by additional elements. In particular, consumers could be led to believe that the owner of the earlier trade mark ‘O2’ has launched a new line of identical products that are an improved version of the basic product and, therefore, additionally designated by the verbal component ‘Plus’.

Bearing in mind the above, despite the shortness of the earlier mark and given the lack of additional, sufficiently distinctive elements in the contested sign, the Opposition Division considers that the differences between the signs are not sufficient to counterbalance their similarities with regard to the identical goods.

Consequently, the Opposition Division concludes that there is a likelihood of confusion on the part of the English-speaking part of the public, namely the public in Ireland, Malta and the United Kingdom. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 9 279 456. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of this earlier mark or the other opposing marks due to their reputation, as claimed by the opponent. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

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

Likewise, since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR, or to address the opponent’s family of marks argument.

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

Jakub MROZOWSKI

Reiner SARAPOGLU

 

 

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.