OPPOSITION No B 3 070 245

Paul Hartmann AG, Paul-Hartmann-Str. 12, 89522 Heidenheim, Germany (opponent), represented by Stumpf Patentanwälte PartgmbB, Alte Weinsteige 73, 70597 Stuttgart, Germany (professional representative)

a g a i n s t

Olympus Corporation, 2951 Ishikawa-machi Hachioji-shi, Tokyo, Japan (applicant), represented by Meissner Bolte Patentanwälte Rechtsanwälte Partnerschaft mbB, Beselerstr. 6, 22607 Hamburg, Germany (professional representative).

On 31/08/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 070 245 is partially upheld, namely for the following contested goods:

Class 10: Medical and surgical apparatus and instruments, namely medical and surgical endoscopes.

2. European Union trade mark application No 17 935 216 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 935 216 for the figurative sign . The opposition is based on, inter alia, international trade mark registration No 442 777 designating the European Union for the word mark ‘Omnifix’. The opponent invoked Article 8(1)(b) EUTMR.

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 marks on which the opposition is based, inter alia, international trade mark registration
No 442 777 designating the European Union for the figurative mark .

The date of filing of the contested application is 26/07/2018. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 26/07/2013 to 25/07/2018 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 on which the opposition is based, namely the following:

Class 5: Material for dressings, plasters, bandages for medical use.

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 22/08/2019, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 27/10/2019 to submit evidence of use of the earlier trade mark. On 25/10/2019, within the time limit, the opponent submitted evidence of use. It should be also noted that on 22/05/2019 the opponent submitted some evidence concerning, inter alia, use of the family marks having in common the verbal element ‘OMNI’. This evidence will also be taken into account as it was submitted before the time limit set by the Office.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. However, such an approach is not applicable where it is clear that the evidence is publicly available (as is the case with advertising or press materials) and as such the Opposition Division will consider this below.

The evidence to be taken into account is the following:

The evidence from 22/05/2019

It should be explained that with regard to this evidence only materials relevant to the assessment of proof of use will be presented below as some of the evidence is irrelevant (i.e. Enclosure 1: official database extracts of the following marks:
IR 447 242 ‘Omnipor’, IR 442 776 ‘Omniplast’, IR 442 778 Omnisilk’, IR 674 919 ‘Omnistrip’ and IR 442 777 ‘Omnifix’; Enclosure 2: an extract from the Similarity Tool database; Enclosure 3: a list of ‘OMNI’ - trademark family, including, inter alia, ‘Omnifix’).

Enclosure 4:

An affidavit dated 18/04/2019 and signed by the Director Global Marketing Wound Care of the opponent’s company. According to this document ‘the company is using the trademark family in Germany continuously since the 1980s to designate plasters, materials for dressing’, ‘the evidence demonstrates the long lasting and intensive use of the earlier trade mark family OMNI-‘ and ‘the turnover achieved with the use of the trademarks in connection with plasters, materials for dressing in the countries of the EU is at least as follows (in EUR)’. With regard to the latter the affidavit contains a table presenting the turnover values in 2013-2018, for example in relation to Germany for the following trade marks: ‘Omnipor’, ‘Omnisilk’, ‘Omnistrip’, ‘Omnifilm’, ‘Omnifix’, ‘Omniplast’ and ‘Omnitape’ (all turnover values are substantial, the number of which, for reasons of confidentiality, cannot be revealed, especially with regard to the marks ‘Omnisilk’, ‘Omnistrip’ and ‘Omnifix’).

Enclosure 5:

Product information from the opponent’s website, undated (only a printout date is visible), showing its products, inter alia, plasters labelled with the mark ‘Omnifix’. The document is partly in German and partly in English. The products concerned are described as ‘Latex-free Non-Woven Dressing Retention Tapes’ and presented as and .

Enclosure 6:

An extract of a product catalogue titled ‘HARTMANN Sortimentskatalog’ from August 2016. It is in German (not translated into English) and contains names of the opponent’s products, including ‘Omniplast’, ‘Omnisilk’, ‘Omnipor’ and ‘Omnifilm’.

Enclosure 7:

A price list from a product catalogue ‘HARTMANN Sortimentskatalog’ from 01/07/2014. It is in German (not translated into English) and contains names of the opponent’s products, including ‘Omnifix’.

Enclosure 8:

An extract from a product catalogue ‘HARTMANN’ (undated, but according to the opponent it was issued in 2018). It is in French (not translated into English) and contains pictures of the opponent’s products, including those labelled with the mark ‘Omnifix’.

The evidence from 25/10/2019

This evidence contains the same documents as the evidence from 22/05/2019, namely its enclosures 4-8. Furthermore, this evidence contains numerous invoices (over 50 items) from 08/01/2015 to 29/12/2017. They are in German and addressed to various clients in Germany. On several of these invoices the name of a product ‘Omnifix’ appears, apart from other products named ‘Omnipor’, ‘Omniplast’, ‘Omnisilk’ and ‘Omnistrip’. The trade mark in question is depicted as ‘Omnifix elastic 15 cm x 10 m’.

The opponent also submitted evidence, as said above, to support its claim of ‘family of marks’, which also shows some use of the relevant earlier mark. However, as the enclosures listed above are enough to show use of the mark, and for reasons of procedural economy, they have not been listed in the present decision.

Assessment of the evidence

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 evidence submitted as proof of use can include documents such as invoices, price lists, affidavits, catalogues, surveys, turnover and sales figures, press cuttings, samples of products/packaging, advertisements, offers made to potential clients and other documents confirming that the mark has been genuinely used on the market. The opponent submitted some of the aforesaid documents, for instance, the Internet screenshots from the opponent’s website, the extracts from product catalogues and the invoices, as well as the affidavit. It should be emphasised that the final outcome depends on the overall assessment of the evidence in the particular case.

As a preliminary remark the Opposition Division points out that the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Article 10(6) EUTMDR). Taking into account the nature of the documents which have not been translated and are considered relevant for the present proceedings, for instance the invoices, and their self-explanatory character, the Opposition Division considers that there is no need to request a translation.

Place of use

It should be noted that the majority of the evidence, for example, the extracts from the product catalogues (except for one in French) and the invoices, whichare in German, refer to some cities in Germany. Furthermore, the prices are given in Euro, that is, the currency used in Germany. Consequently, the Opposition Division is of the opinion that the evidence relates to the relevant territory, namely Germany, which one of the largest EU Member States. In this sense, according to Article 15(1) and Article 42(2) EUTMR, if the earlier mark is a European trade mark, it must be used in the European Union. As the trade mark is used in one of the largest Member States of the EU, the evidence proves that the mark has been used in the relevant territory. Therefore, the evidence shows use in the territory of the European Union.

Time of use

Even though some of the evidence is not dated or comes from outside the relevant period, it can still be taken into consideration in conjunction with the other evidence that is dated within the relevant period, such as the invoices and the extracts from product catalogues, as the undated evidence (or the evidence deriving from outside the relevant period) provides useful indications regarding the nature of use. Therefore, the Opposition Division is of the opinion that there is sufficient evidence relating to the relevant period of time.

Extent of use

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The turnover and volume of sales of the product must always be assessed in relation to all the other relevant factors, such as the volume of business, production or marketing capacity, or the degree of diversification of the undertaking using the trade mark, and the characteristics of the products or services on the relevant market. Use need not always be quantitatively significant for it to be deemed genuine, as that depends on the characteristics of the goods or services concerned on the corresponding market (11/03/2003, C-40/01, Minimax, EU:C:2003:145, § 39; 08/07/2004, T-203/02, Vitafruit, EU:T:2004:225, § 42). However, in this case it is quantitively significant, since the extent of use of the earlier mark is backed up not only by numerous sample invoices, but also by other materials, such as promotional materials, data concerning turnover and financial results (i.e. the affidavit).

Therefore, the Opposition Division is of the opinion that the extent of use of the mark in question was indeed sufficient.

Nature of use - use as a trade mark and use of the mark as registered

In the context of Article 10(3) EUTMDR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered. It should be noted that the earlier trade mark, which is a word mark, can be used in any form.

The ‘Omnifix’ mark (i.e. international trade mark registration No 442 777 designating the European Union) is registered as a word mark ‘Omnifix’. It is used by the opponent either in a standard font (e.g. on invoices) or in a slightly stylised form (e.g. on promotional materials). For example, in relation to ‘Omnifix elastic 15 cm x 10 m’ appearing on invoices, it should be explained that the element ‘Omnifix’ appears here as a trade mark. The number ’15 cm x 10 m’ refers to a product size and the remaining word is purely descriptive, namely ‘elastic’. Use of a registered mark together with such descriptive indications does not in general constitute use of a variant but use of the mark itself. The Opposition Division is of the opinion that it is a common practice in the relevant market sector for an individual mark to be used together with such words describing characteristics of the goods concerned, especially on invoices. Furthermore, although the earlier mark was used in a slightly stylised manner in the promotional materials, it is clearly perceptible as ‘Omnifix’. Therefore, it is considered that the opponent’s trade mark ‘Omnifix’ was used as registered.

Nature of use - use in relation to the registered goods

The evidence comprises numerous documents that concern exclusively some of the goods from the opponent’s specification, namely plasters.

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove 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 covered by the earlier trade mark, that is, material for dressings, bandages for medical use.

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 shows genuine use of the trade mark for the following goods:

Class 5: Material for dressings, plasters, bandages for medical use.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

Furthermore, it should be noted that the other remaining earlier trade marks are registered for goods in Class 5, for example materials for dressings, bandages for medical use, sanitary preparations for medical use, materials for dressings, ointments and chemical preparations in ointment form for pharmaceutical purposes, etc. It is clear from the evidence that the opponent used all its earlier marks, including the mark ‘Omnifix’, exclusively for material for dressings, plasters, bandages for medical use in Class 5. Therefore, any analysis with regard to the remaining earlier trade marks would not change the above findings concerning the goods used in a genuine manner by the opponent, as they are all used for different variations of the same goods.

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 international trade mark registration No 442 777 designating the European Union for the word mark ‘Omnifix’ for which the evidence has been analysed above.

1. The goods

The goods on which the opposition is based, and for which genuine use was established, are the following:

Class 5: Material for dressings, plasters, bandages for medical use.

The contested goods are the following:

Class 9: Computer software for medical and surgical instruments, namely computer software for processing images captured with medical and surgical endoscopes.

Class 10: Medical and surgical apparatus and instruments, namely medical and surgical endoscopes.

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

The term ‘namely’, used in the applicant’s list of goods 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 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 for medical and surgical instruments, namely computer software for processing images captured with medical and surgical endoscopes are dissimilar to the all of the opponent’s goods in Class 5. The goods in question differ in their nature and purpose, as the contested goods are very specific products from the IT branch, namely software for processing images captured with medical and surgical endoscopes, whereas the opponent’s goods are all kinds of materials for dressings. The fact that they can all be used in hospitals does not make them similar. Furthermore, they differ in their distribution channels, sales outlets, producers and method of use. In addition, they are neither in competition with each other nor complementary to each other and are normally produced by other companies.

Contested goods in Class 10

The contested medical and surgical apparatus and instruments, namely medical and surgical endoscopes are similar to a low degree to the opponent’s material for dressings, plasters, bandages for medical use in Class 5. It should be explained, contrary to the applicant’s arguments, that there exist some points of contact between the goods as for example the opponent’s dressings can be used during or after surgeries using medical and surgical endoscopes. They usually coincide in relevant public and distribution channels. Furthermore, they are complementary.

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 of the earlier mark target the general and professional public and the contested goods target a professional public exclusively. 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 high. It is apparent from the case-law that, insofar as pharmaceutical preparations, whether or not issued on prescription, are concerned, the relevant public’s degree of attention is relatively high (15/12/2010, T‑331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T‑288/08, Zydus, EU:T:2012:124, § 36). This is also the case for other goods in Class 5, such as materials for dressings (10/02/2015, T-368/13, ANGIPAX, EU:T:2015:81,§ 42-46 and cited case-law).

c) The signs

Omnifix
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 earlier mark is registered as a word mark consisting of the word ‘Omnifix’, whereas the contested sign is a figurative sign consisting of the verbal element ‘Omni’ and two squares on its left side.

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.

For reasons of procedural economy and congruity, given that the use of the earlier mark has been mainly proven in relation to the German territory, the analysis will focus on the German-speaking part of the public at large.

For the part of the public referred to, the signs as a whole do not have any clear and direct meaning, and are, therefore, distinctive to an average degree.

However, as stated by the opponent, although the signs are composed of one verbal element, 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). A part of the German-speaking public may perceive the element ‘Omni’ in both signs as meaning ‘all’ or ‘of all things’, since it forms part of various words in German such as omnipräsent, omnipotent or omnivore. The concept conveyed by this prefix itself is too vague and is not directly and clearly related to the relevant goods in a way that could impair its distinctiveness, at least in relation to the relevant public and bearing in mind that the other element of the earlier mark (‘fix’) has a meaning (as detailed below). It is noted that the Latin prefix ‘omni’ does not exist as a separate word in German, but only as a part of compound words. Consequently, a multistep thought process would be necessary to relate the meaning of this word to the specific goods in a possibly descriptive manner. Moreover, in this case the relevant public are professionals, which may influence the way in which the signs are perceived or understood. Based on the foregoing, the distinctive character of the element ‘Omni’ is considered average in the present case.

In the scenario in which the element ‘Omni’ is singled out, the remaining part of the earlier mark, namely ‘fix’, means for the relevant public ‘standing firm, constant’ (extracted from the Duden Dicionary at https://www.duden.de/suchen/dudenonline/fix on 23/08/2020, namely ‘feststehend, konstant’). Therefore, bearing in mind the goods in question, namely material for dressings, plasters, bandages for medical use, it is weak for these goods.

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 signs have identical beginning is an important factor in the present case.

Furthermore, it should be noted that the two squares depicted on the left side in the contested sign, although being distinctive, are rather commonplace and play a secondary role in the comparison. This is because 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, as 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).

Visually, the signs coincide in the first or only letters ‘Omni’, being distinctive elements in both signs. They differ in the ending of the earlier mark, namely ‘fix’ which is weak, and the figurative element of two overlapping squares in the contested sign, which merely serve a decorative purpose.

Therefore, the signs are visually similar to an average degree.

Aurally, the signs coincide in the letters ‘Omni’ and their pronunciation. They differ in the ending in the earlier mark, that is ‘fix’, being weak.

Therefore, the signs are aurally similar to a high degree.

Conceptually, neither of the signs has a meaning for the majority of the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs. However, for the part of the public perceiving the meaning of the element ‘Omni’ in both signs, as they will be associated with a similar meaning, the signs are conceptually similar to a high degree.

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

3. 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.

According to the opponent, the earlier mark has been extensively used and enjoys 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 taken into consideration in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a weak element, as explained above in section c) of this decision.

4. Global assessment, other arguments and conclusion

The Court has stated that likelihood of confusion must be appreciated globally, taking

into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C 251/95, Sabèl, EU:C:1997:528, § 22).

According to settled case-law, the likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 16).

The goods are partly similar to a low degree and partly dissimilar. They target the professional public, whose degree of attention is high. The earlier mark enjoys a normal degree of distinctiveness.

The signs are visually similar to an average degree and aurally and conceptually similar to a high degree, or the conceptual assessment remains neutral (depending on the part of the public and their perceptions.

As it was said above, the beginnings are more memorable by the public. Furthermore, the element ‘fix’ is weak. Therefore, the public will focus on the verbal element ‘Omni’ in the earlier mark.

Moreover, 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. Although the relevant public may detect certain differences between the conflicting signs, they may be led to believe — on account of the fact that both signs share an identical beginning (i.e.‘ Omni’) — that the contested sign originates from the same or an economically linked undertaking.

In addition, 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 with 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).

It constitutes frequent practice nowadays for companies to make small variations of their trade marks, for example by altering their typeface or colour, or adding terms or elements to them, in order to name new lines of products or services, or to create a modernised version of the mark.

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). Therefore, the high degree of aural similarity and high degree of conceptual similarity between the signs counterbalance the low degree of similarity between the goods (contrary to the argument raised by the applicant).

Therefore, the differences between the signs, either located at the end of the earlier mark or in the figurative element of the contested sign, are not sufficient to counterbalance the degree of similarity between them as regards goods similar to a low degree, even taking into account the relatively high degree of attention shown by the relevant public in relation to these goods. Therefore, the relevant public may believe that they come from the same undertaking or, at least, economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the German-speaking part of the general public. 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.

It follows from the above that the contested trade mark must be rejected for the goods found to be similar to a low degree to those of the earlier trade mark.

The opponent has also based its opposition on the following earlier trade marks:

- international trade mark registration No 447 242 for the word mark ‘Omnipor’ designating the European Union (registered for goods in Class 5, namely materials for dressings, plasters, bandages for medical use, included in class 5);

- international trade mark registration No 442 776 for the word mark ‘Omniplast’ designating the European Union (registered for goods in Class 5, namely plasters, ointments and chemical preparations in ointment form for pharmaceutical purposes);

- international trade mark registration No 442 778 for the word mark ‘Omnisilk’ designating the European Union (registered for goods in Class 5, namely material for dressings, plasters, bandages for medical use);

- international trade mark registration No 674 919 for the word mark ‘Omnifilm’ designating the European Union (registered for goods in Class 5, namely plasters, material for dressings, bandages and tapes for sanitary use);

- European Union trade mark registration No 7 196 587 for the word mark ‘Omnistrip’ (registered for goods in Class 5, namely sanitary preparations for medical use; plasters, materials for dressings; disinfectants; hygienic bindings and bandages; suture strips for wounds).

It should be explained that the opponent submitted evidence showing use of material for dressings, plasters, bandages for medical use for medical use in Class 5.

Since these marks cover the same or a narrower scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those 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. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Helen Louise MOSBACK

Michal KRUK

Chantal VAN RIEL

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.