OPPOSITION No B 3 069 663

medi GmbH & Co. KG, Medicusstr. 1, 95448 Bayreuth, Germany (opponent), represented by Boehmert & Boehmert Anwaltspartnerschaft mbB - Patentanwälte Rechtsanwälte, Hollerallee 32, 28209 Bremen, Germany (professional representative)

a g a i n s t

Podobrace B.V., Marconistraat 9, 1131 JW Volendam, Netherlands (applicant), represented by Intellectueeleigendom.nl, Savannahweg 17, 3542 AW Utrecht, Netherlands (professional representative)

On 23/01/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 069 663 is upheld for all the contested goods.

2. European Union trade mark application No 17 940 112 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 17 940 112 for the figurative mark . The opposition is based on European Union trade mark registration No 7 375 173 for the figurative mark and German trade mark registration No 30 619 700 for the word mark 'medi'. The opponent invoked 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.

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 German trade mark registration No 30 619 700.

1. The goods

The opposition is based on the following goods:

Class 10: Articles for thermal and cold therapy (included in class 10), namely electric heating pads and blankets for medical purposes; orthopedic articles, in particular bandages, medical stockings for arm and leg (compression stockings, thrombosis prophylactic stockings, support stockings), medical tights (compression, thrombosis prophylactic and support tights) and parts thereof; Articles of orthopedics, in particular orthoses for the fields of cervical, trunk, shoulder, arm, hand, leg, knee, foot, spring joint; medical equipment and articles for physiotherapy and convalescence (included in class 10); artificial limbs.

The contested goods are the following:

Class 10: Wheeled walkers to aid mobility; Orthopedic and mobility aids; Orthopedic articles; Bandages for orthopaedic purposes; Medical knee braces; Wrist braces for medical use; Elasticated supports for the wrist; Bracelets for medical purposes; Medical ankle braces; Ankle supports for medical use.

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

The term ‘in particular’, used in the opponent’s list of goods, indicates that the specific goods 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’, also used in the opponent’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, the Opposition Division notes that the opponent has claimed that the earlier mark enjoys an enhanced distinctiveness for orthopaedic articles (see the assessment of that claim further below under section d) of this decision). Therefore, the Opposition Division finds it appropriate to compare all the contested goods with the orthopaedic articles covered by the earlier mark.

Contested goods in Class 10

The contested orthopedic articles are identically covered by the opponent’s orthopedic articles, in particular bandages, medical stockings for arm and leg (compression stockings, thrombosis prophylactic stockings, support stockings), medical tights (compression, thrombosis prophylactic and support tights).

The contested bandages for orthopaedic purposes; medical knee braces; wrist braces for medical use; elasticated supports for the wrist; bracelets for medical purposes; medical ankle braces; ankle supports for medical use are, or can all be, orthopedic articles and they are therefore included in, or overlap with, the broad category of the opponent’s orthopedic articles, in particular bandages, medical stockings for arm and leg (compression stockings, thrombosis prophylactic stockings, support stockings), medical tights (compression, thrombosis prophylactic and support tights) and parts thereof. Therefore, they are identical.

The broad category of the contested orthopedic and mobility aids overlaps with the opponent’s orthopedic articles, in particular bandages, medical stockings for arm and leg (compression stockings, thrombosis prophylactic stockings, support stockings), medical tights (compression, thrombosis prophylactic and support tights) to the extent that both categories of goods include orthopaedic aids. Therefore, they are identical.

The contested wheeled walkers to aid mobility are similar to the opponent’s orthopedic articles, in particular bandages, medical stockings for arm and leg (compression stockings, thrombosis prophylactic stockings, support stockings), medical tights (compression, thrombosis prophylactic and support tights) since these goods can target the same relevant public, be found in the same specialised shops and be produced by the same undertakings active in the field of orthopaedic articles and mobility aids.

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 and at professionals in the medical field.

Bearing in mind the specialised nature of the goods concerned, that they are not purchased on a frequent basis and that they are used in the treatment of medical conditions, the degree of attention of the relevant public will at least be relatively high.

3. The signs

medi
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).

As regards the earlier word mark, 'medi', the applicant argues that it will be associated with the meaning of 'medical' and that it is therefore of limited distinctiveness in relation to the goods concerned merely describing their medical nature. In support of its claims, the applicant also submitted a copy of the Benelux Intellectual Property Office’s 'Guidelines on the criteria for the examination of trademarks on absolute grounds' in which it is mentioned, inter alia, that even if 'medi' cannot be found in dictionaries as an abbreviation for medical, it is a very common designation that will immediately be perceived by the public in its descriptive sense. Although the guidelines of the Benelux IPO are not directly relevant to the assessment of the distinctiveness of the term 'medi' in the relevant territory, which is Germany, the Opposition Division notes that the General Court has also already confirmed that 'medi' is non-distinctive for, inter alia, the same scope of goods as those relevant in the present proceedings for the English-speaking public and that, even if the Boards of Appeal did, it was not necessary to prove that 'medi' was listed as an abbreviation in dictionaries. Furthermore, apart from being a dictionary abbreviation, 'medi' was also found to be non-distinctive since it is the root of a variety of words that all refer to the medical field (see to this effect 12/07/2012, T-470/09, medi, EU:T:2012:369, § 20, 22-23 and 39 – confirmed by 16/10/2013, C‑410/12 P, medi v OHIM, C:2013:702). Moreover, as regards the German-speaking public, the General Court has also confirmed that even if 'medi' does not appear in German-language dictionaries as an abbreviation for 'medicine', it is also used in a number of compound German words relating to this field and will therefore be associated with this meaning in relation to goods belonging to that sector (see to this effect 06/11/2011, T-247/10, deutschemedi.de, EU:T:2011:579, § 41-43). As a result, even if 'medi' is not a formal German abbreviation of the words 'medical' or 'medicine', bearing in mind that 'medi' is the root of a variety of German words, such as ‘medizinisch’ and ‘Medizin’, and in view of the aforementioned case-law, it must be considered that a fortiori the word 'medi' will be perceived by the relevant public in Germany as describing that the goods concerned are for medical purposes and therefore perceive it as non-distinctive. Nevertheless, the earlier mark must be recognized as validly registered as the validity of earlier trade marks may not be called into question in opposition proceedings before the Office (24/05/2012, C-196/11, F1-LIVE, EU:C:2012:314). Therefore, the only element of which the earlier mark consists must be considered to have at least a weak distinctiveness in relation to the goods in question.

The contested sign is a figurative mark consisting of the verbal element 'medidu' depicted in relatively standard lower case letters, 'medi' in blue and 'du' in orange. The letter 'i' is stylised to the extent that it is subscripted and entwined by an orange snake (also partially overlapping the letter 'd') where the snake’s head represents its dot.

The applicant argues that 'medidu' will be perceived as a meaningless word by the relevant public. However, 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). In this respect, the component 'medi' will have a clear meaning for the relevant consumers as outlined in detail above. Furthermore, the letters 'du' will also have a meaning for the public in the relevant territory since 'du' is the German word for 'you', as also pointed out by the opponent and which was not denied by the applicant (other than by claiming that this was unlikely since the orange snake connects the element 'medi' with 'du' to form one word). However, in view of the different colouring of its letters, the verbal element 'medidu' is clearly depicted as two different components, namely 'medi' and 'du', both of which also have a concrete meaning for the public in the relevant territory. Therefore, the applicant’s allegation that 'medidu' will be perceived as a meaningless word cannot be upheld.

As a result, the considerations concerning the perception and distinctiveness of the element 'medi' in the earlier mark applies equally to this element of the contested sign. As regards the word 'du' (which will be perceived as meaning 'you' by the relevant public for the reasons set out above), the Opposition Division agrees with the opponent that it is likely to be perceived as a means to directly address the consumer and the element 'du' is therefore also of limited distinctiveness as such. Finally, as regards the figurative element of the contested sign, the snake entwining the letter 'i', as put forward by both parties, it will be associated with the Rod of Asclepius which is a commonly used symbol for medicine and health care and this element must therefore also be considered to be weak in relation to the goods concerned.

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

Visually, the signs coincide in the word ‘medi’, which is the only element of the earlier mark and the first part of the verbal element ‘medidu’ in the contested sign, but which is however weak for the reasons set out above. The signs differ in the additional word ‘du’ (which is also weak as such) and in the stylisation and colour combination of the verbal element in the contested sign as well as in the contested sign’s figurative element, which is however also weak. Furthermore, 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).

Nevertheless, while it is true that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark as put forward by the opponent, it must also be taken into account that ‘medi’ is only weak and even if the additional word ‘du’ is also weak, the verbal element of the contested sign is depicted in two distinct colours which is likely to catch the attention of consumers. Therefore, in the present case, the Opposition Division does not find it likely that consumers will pay more attention to the first word ‘medi’ in the contested sign than to the second word ‘du’.

Therefore, the signs must be considered to be visually similar, but not more than to a below average degree.

Aurally, the signs coincide in the pronunciation of the weak word ‛medi’ but differ in the pronunciation of the word ‛du’ in the contested sign, which is however also weak and only consists of an additional short syllable.

Therefore, the signs must be considered to be aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs are similar to the extent that they coincide in the concept of 'medi', which is however weak, and differ in the additional, but also weak, concepts of 'du' (you) and the Rod of Asclepius in the contested sign as set out above.

Therefore, the signs must also be considered to be conceptually similar, but not more than to a below average degree overall.

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

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.

According to the opponent, the earlier trade mark enjoys a high recognition on the German market resulting in an enhanced distinctiveness in connection with the orthopaedic articles for which it is registered in Class 10. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted evidence to support this claim. As the opponent requested that certain commercial data contained in the evidence be kept confidential vis-à-vis third parties, the Opposition Division will describe this part of the evidence only in the most general terms without divulging any such data. The evidence consists of the following documents:

• Exhibit 01: Intermediate ruling of the German Federal Patent Court in German dated 29/04/2016 in relation to a case between medi Gmbh & Co. KG and Medishop GmbH. In its observations, the opponent included a partial English translation concerning the following findings made by the Court:

'According to the senate’s preliminary legal assessment both opposition marks “medi” (word and word/device) enjoy an enhanced distinctiveness among the specialized public in relation to the following class 10 goods:

Orthopaedic articles, in particular bandages, medical socks for arm and leg (compression socks, thrombosis-prophylactic socks, supporting socks), medical tights (compression tights, thrombosis-prophylactic tights, supporting tights) as well as parts thereof; orthopedic articles, in particular orthoses for the areas cervical, hull, shoulder, arm, hand, leg, knee, foot, ankle joint'

• Exhibit 02: Pictures of a display stand, an advertising poster and a newspaper clipping concerning 'medi-Strumpf' branded compression stockings which the opponent indicates date as far back as to 1964. The documents show, inter alia, the following pictures:

• Exhibits 03-04: Extracts from the Commercial Register of medi GmbH & Co. KG, the opponent, dated 03/03/2016 showing that the company changed its name from Weihermüller & Voigtmann GmbH und Co. KG to Medi Bayreuth Weihermüller & Voigtmann GmbH und Co. KG in 1991; extracts from the web archive (www.archive.org) of the opponent’s website, www.medi.de, from November 1997, October 2000 and May 2006 respectively referring to the opponent’s company as medi Bayreuth and in 2006 referring to 'medi Kompressionsstrümpfe Bandagen Orthesen Prothesen' in the heading.

• Exhibits 05-07: Extracts from the Wikipedia entry on the opponent’s company in German; extracts from the opponent’s website, www.medi.de, in English dated 04/03/2019 and indicating, inter alia, that the company is one of the world’s leading manufacturers of medical aids with around 2,600 employees worldwide and two production facilities in Germany. The range of goods includes medical compression stockings, adaptive compression aids, supports, orthoses, thrombosis prophylaxis stockings, compression garments and orthopaedic shoe insoles which can be found in almost every medical specialist shop (especially medical supply stores) in Germany; extracts from Creditreform concerning medi GmbH & Co. KG including information about the company located in Bayreuth, Germany.

• Exhibit 08: Study by the Allensbach Institute for Demoscopy in German dated 2013 and which, according to the opponent, concerns the use of orthopaedic articles by the German population. In its observations, the opponent indicates that the study shows, inter alia, that around 29% of the German population over 16 years old use orthopaedic or phlebological aids prescribed by a doctor; in 2013 around 11.6 million people used orthopaedic footwear or insoles prescribed by a doctor, 5.6 million used elastic bandages, 4.7 million used medical compression stockings prescribed by a doctor and 0.9 million people used orthoses.

• Exhibit 09: Market research study by iConsult from July 2009 entitled '“medi 2012”: medi and competitors from the point of view of different target groups' and an English translation thereof. The study includes a brief summary of the methodology and proceeding used and indicates, inter alia, that when asked about the best manufacturers of compression stockings (unsupported), 87% of proprietors, managing directors or purchasing managers at medical supply stores responded with 'medi', 17% of pharmacists, 28% of pharmacy technicians, 57% of phlebologists, 51% of APIs, 55% of doctors’ assistants, 80% of health insurance companies, 67% of hospitals (when asked about manufacturers of thrombosis prophylaxis stockings); when asked about the best manufacturers of bandages and orthoses (unsupported), 58% of proprietors, managing directors or purchasing managers at medical supply stores responded with 'medi', 6% of pharmacists, 24% of pharmacy technicians, 41% of registered orthopaedists, 33% of hospital orthopaedists, 60% of health insurance companies.

• Exhibit 10: Affidavit in German signed by the managing director of medi GmbH Co. KG on 03/04/2019 with an English translation thereof. It is declared, inter alia, that: in 2013, more than three million pieces of compression stockings were sold under the word or word/device mark 'medi' in Germany and around one million pieces of orthopaedic articles (orthoses and orthopaedic bandages); in the period between 2012-2017, annual turnovers in Germany were in the lower three digit million range; in the annual total turnover of 2017, approximately 53% was accounted for by phlebological articles (compression stockings, etc.) and approximately 36% by orthopaedic articles (orthoses, bandages, etc.); in 2016, the opponent achieved a market share of 27% for compression stockings and of 12% for bandages in Germany; the marketing expenditure for the 'medical' division in the period from 2013-2017 borne by the headquarters in Germany and mainly concerning the aforementioned goods in Germany, ascended to a total of several millions and include traditional advertising (e.g. in-print and online media), training, education and symposia for physicians, pharmacists and paramedics as well as sponsorship activities (e.g. for testimonials such as Wolfgang Joop, concert and sports events).

• Exhibit 11: extracts from different magazines and newspapers in German, namely DHB-Magazin, Nordbayerischer Kurirer, Die Anzeige, VdK Zeitung and Golfmedico dated between 2008-2015 and showing advertisements and articles about 'medi' orthopaedic articles, such as orthoses (for the spine, arms and knees) and compression stockings and featuring the following sign:

One of the articles also include a time line of the opponent’s milestones indicating, inter alia, under the year 1964 the 'medi Strumpf'.

• Exhibit 12: Press coverage in different magazines and specialised media, such as PTA Heute, Deutsche Heilpraktiker Zeitschrift, Mamma Mia! Medizin, Mobil - Magazin der Deutschen Rheuma-Liga, Der Privatarzt Gynäkologie, GesundheitsProfi and MTD, dated between 2008-2015, as well as internal design documents and pictures from different stores showing the instore marketing concept and product images of the instore marketing concept of the 'medi' brand and products including, inter alia, the following pictures:

• Exhibits 13-14: copies of a 'medi' seminar list covering the dates between 01/02/2013-31/12/2017 including, inter alia, the name of the courses and the dates and course locations (name of the city and the establishment where held, such as Frankfurt / City Hotel Bad Vil). The list includes a wide range of different cities in Germany and courses/seminars held (the seminar list consists of around 45 pages); some extracts of the 'medi Seminarprogramm' from 2014, 2015 and 2016 in German including the list of courses/seminars concerning, inter alia, 'Phlebologie - Kompressionstherapie' and 'Orthopädie – Funktionelle Osteo-porose-Therapie mit Orthesen', etc. The cover pages of the seminar programmes feature the following sign:

Copies of the programmes for the following events: 'Berliner Expertenmeeting Sportmedizin' in June 2016, 'Sportortho-Kongress' also in June 2016, 'Symposium on Therapeutic Aspects of Vertebral Fractures due to Osteoporosis and other Spinal Diseases' in September/October 2017, 'medi European Sports Orthopaedics Symposium' in April 2018 as well as the 'Investititionsprogramm 2017 medi Weiterbildungsangebot' all of which also feature the 'medi' logo depicted above; copies of press coverage dated between 2013-2016 in GesundheitsProfi and Orthopädie Schutechnik concerning some of the 'medi' seminars referred to above.

• Exhibit 15: Invoices issued to the opponent for participating at the trade fairs EXPOLIFE 2015, EXPOLIFE 2017 and EXPOLIFE 2019.

• Exhibit 16: Press coverage in the magazines or news media Orthopädische Nachrichten, GesundheitsProfi, FOCUS Online, MTD, Orthopädie schutechnik, Oberfränkische Wirtschaft, Bayreuther Woche and Sanitätshaus Aktuell on the opponent’s participation at different congresses and trade fairs, such as Deutschen Kongress für Orthopädie und Unfallchirurgie (DKOU) 2015 in Berlin, Expolife International 2015, OTWorld 2014 in Leipzig, Expolife 2013 in Kassel and seminars held, such as the foot care seminar 'Therapiekonzept der Spiraldynamik' in 2015, the medi 'ich fühl mich besser' tour in 2014 and 2015 as well as the Laufen Bewegt Aktion 2011; extracts from the opponent’s website in relation to some of the same.

• Exhibits 17-20: Press coverage in German news media, such as Handelsblatt, Bild.de, Frankfurter Allgemeine, Nordbayerischer Kurier and Berliner Morgenpost, etc. and specialised media, such as Osteologie, MTD, MedKolleg and GesundheitsProfi dated between 2013-2016 concerning the basketball team 'medi Bayreuth' playing in the German 'Baketball Bundesliga' and information indicating that 'medi' became the head sponsor of the basketball team as of the season 2013/2014. The press clippings and documents include, inter alia, the following pictures showing the inclusion of 'medi' on the basketball players’ t-shirts and in on-pitch advertising:

Extracts from 'medi Bayreuth' basketball team’s official social media accounts such as Twitter and Instagram; examples of advertising featuring players from the 'medi Bayreuth' basketball team and wearing orthopaedic articles, such as knee orthosis; extracts from an unknown source indicating that throughout the season 2014/2015, around 50.000 spectators (average of around 3.000 per match) attended the 'medi Bayreuth' basketball matches.

• Exhibit 21: Press coverage dated between 2008-2016 showing that 'medi' is the official supplier to the German national skiing teams of DSV ('Deutscher Skiverband' - German Ski Association) as well as examples of athletes’ posts on social networks advertising, inter alia, 'medi' orthopaedic articles.

• Exhibits 22-23: Press coverage dated between 2012-2015 in German specialised magazines Wirtschaftsmagazin für den Orthopäden, GesundheitsProfi, Phlebologie, Orthopädie schutechnik, MTD as well as in Die Anzeige and at the website www.lifepr.de concerning the extreme alpinist Stephan Siegrist including his collaboration with 'medi' and use of 'medi' orthopaedic articles; a few articles with other sportsmen using 'medi' articles; extracts from the opponent’s website www.medi-corporate.com related to the opponent’s sponsorship of Stephan Siegrist.

• Exhibits 24-28: Press articles in German newspapers and magazines such as Bayreuther Sonntagszeitung and Apotheken Magazin mentioning that 'medi' was a partner of the event Bayreuther Festspiele in 2013 and 2014 and including advertisements of compression stockings featuring the 'medi' logo depicted further above; extracts from the opponent’s website and examples of press reports from www.medizin-und-technik.de and www.presseportal.de concerning the opponent’s collaboration with the Academy of Arts in Berlin, Germany in 2012 where orthopaedic articles were supplied to the project 'tender loving care'; press coverage and extracts from the opponent’s website on the 2016 Berlin Fashion Week where the fashion designer Anne Gorke included the opponent’s compression stockings in her show; press coverage on the 'medi' advertising campaign in 2018 together with TV-star Barbara Schönberger “Starke Wirkung für starke Frauen” (strong effect for strong women); press coverage in newspapers and magazines such as Frankfurter Allgemeine, Bild and GesundheitsProfi dated between 2012-2014 concerning the opponent’s collaboration with star designer Wolfgang Joop in relation to compression stockings.

• Exhibit 29: Press coverage in a wide range of news media, such as Sporlastic Orthopaedics, GesundheitsProfi, Orthopädie Technik, OTworld, Erfahrungsheilkunde, Der Privatarzt Medizin & Management and Wirtschaftsmagazin für den Orthopäden, etc. dated between 2008-2016 featuring a range of different 'medi' orthopaedic articles (e.g. for the back, knee, arms, ankles, wrists, etc.) some of which show the 'medi' logo depicted above on the products and one of the articles also mention that a 'medi' ankle orthosis product won the IF Design Award 2015. A couple of the articles, albeit in German and without any English translations thereof, can at least be understood to give information about market shares where 'Medi Bayreuth' is indicated to have around 13% market share in 2013 and 2014 in an article published by Sporlastic Orthopaedics and showing around 30% market share in relation to three different groups (31,85%, 37,83% and 27,94% respectively) in an article published by GesundheitsProfi dated 2009.

• Exhibits 30-31: extracts including a Google Analytics analysis of the opponent’s website www.medi.de between 2009-2015 as well as an overview of the website traffic on different European and non-European country-specific 'medi' websites between 2016-2018; tables indicating the views of the opponent’s videos on Vimeo and YouTube in the years 2016-2018, impressions and fans on, inter alia, the opponent’s German Facebook account in the years 2015-2018 and German Instagram account in the years 2016-2018 as well as a table concerning the 'medi global – international newsletter' between 2016-2018; a few press articles dated in 2015 and 2016 concerning 'medi' videos on Vimeo and Youtube; extracts from the opponent’s website www.medi.de in German dated 03/03/2016 regarding its customer services.

• Exhibit 32: Extracts from a study by GlobalData published in October 2015 and entitled 'Compression Therapy – Global Analysis and Market Forecasts'. Under the heading 'Key Players in the Compression Therapy Market', Sigvaris, BSN Medical and Medi are mentioned to be 'the most prominent firms in the compression garments business'. A table with source indication 'GlobalData, 2015' indicates under the heading 'Company Market Shares for Static Compression Therapy' that Medi has an 11% market share in 5EU (France, Germany, Italy, Spain and UK).

• Exhibit 33: Extracts from a study in German in April 2016 entitled 'Trade mark perception medi in the competitive environment' and carried out by K&A Brand Research, a German research institute, commissioned by the opponent. The extracts submitted include a brief summary of the methodology and sample size used in the study together with an English translation thereof as well as the part of the study concerning 'Market shares per indication' which indicates that the opponent had a market share of 27% in Germany in relation to compression stockings and 12% in relation to bandages. It also includes, inter alia, the part of the study concerning unprompted brand awareness which shows that, when queried 'which brands for compression stockings and bandages come first to [the respondent’s] mind spontaneously', 12% of APIs, 81% of professionals at medical supply stores and 6% of patients responded 'medi'.

• Exhibits 34-35: Letters in German signed in February 2019 by Eurocom e.V. (European Manufacturers Federation for Compression Therapy and Orthopaedic Devices) and BVMed (the Federal Association of Medizintechnologie) with English translations thereof. Eurocom e.V. states, inter alia, that nearly all European companies in the field of compression therapy and orthopaedic devices operating on the German market are members of their association and that 'the mark MEDI of the company medi GmbH & Co. KG is one of the leading trademark in Germany and the European Union for medical devices (medical compression socks, bandages, orthoses, insoles, compression clothing and respective fittings) and has an high awareness amongst the relevant medical community'. It is also stated that '[t]he mark “MEDI” is also known to purchaser, consumers and patients'. BVMed states, inter alia, that it currently represents 223 industrial and commercial enterprises in the field of medical technology and that according to their perception, 'the mark MEDI of the company medi GmbH & Co. KG belongs to one of the most important trademarks for medical devices in Germany. We are convinced that the mark MEDI is well-known amongst the relevant experts for medical devices, especially for medical compression stockings and compression clothing, bandages, insoles, orthoses and prostheses'.

• Exhibit 36: Copy of an article in German by Biesalski & Company entitled 'Die Marken der deutschen Hidden Champions 2015' (the brands of the German Hidden Champions 2015) ranking 'medi' as number 29.

The earlier trade mark must have acquired enhanced distinctiveness prior to the time of filing of the contested EUTM application (or any priority date). The contested EUTM application has a filing date of 07/08/2018 and the earlier mark must thus have acquired enhanced distinctiveness prior to this date (and still at the time of the decision).

Enhanced distinctiveness requires recognition of the mark by the relevant public and, in making that assessment, account should be taken, in particular, of the inherent characteristics of the mark, including the fact that it does or does not contain an element descriptive of the goods or services for which it has been registered; the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 23).

The evidence of enhanced distinctiveness acquired through use must refer to both (i) the relevant geographical area and (ii) the relevant goods and/or services. The nature, factors, evidence and assessment of enhanced distinctiveness are the same as for reputation although the threshold for a finding of enhanced distinctiveness may be lower.

As regards the contents of the evidence, the more indications it gives about the various factors from which enhanced distinctiveness may be inferred, the more relevant and conclusive it will be. In particular, evidence which as a whole gives little or no quantitative data and information will not be appropriate for providing indications about vital factors, such as trade mark awareness, market share and intensity of use and, consequently, will not be sufficient to support a finding of enhanced distinctiveness.

Having examined the comprehensive evidence listed and described above, for the reasons set out below, the Opposition Division concludes that the earlier trade mark has acquired an enhanced distinctiveness through its use on the market in the relevant territory, at least for the professional public in the medical field, in relation to orthopaedic articles.

The evidence submitted almost exclusively concern the German market and shows that 'medi' branded compression stockings were first sold in 1964, more than 50 years ago. Even if the turnover figures and marketing expenditure indicated in the opponent’s affidavit are not supported by any official accounting documents or invoices, it is clear from the evidence that, at least, in the years between 2008-2016 the 'medi' brand and products have frequently been featured in the press, and in particular in specialised media for the health care profession, as attested by the abundant and wide range of press clippings submitted from different magazines and newspapers as described above. Furthermore, the evidence also shows that the opponent has actively promoted its brand by sponsoring different sports clubs and athletes as well as more local events and that it frequently holds seminars and participates at trade fairs in the relevant sector all of which show an intensive, geographically wide-spread and long-standing use of 'medi' in relation to orthopaedic articles. This is also further supported by the market share figures provided (around 27% for compression stockings and 12% for bandages) as attested by (a combined reading of) exhibits 29, 32 and 33. Nevertheless, this still does not provide any conclusive information about the consumers’ perception or degree of awareness of the earlier mark. In the present case, in view of the inherently weak distinctive character of the earlier mark 'medi' for the goods concerned, direct evidence of consumer perception and awareness is of even more importance. In this respect, even if the evidence shows that the earlier mark has been used for a long time in relation to orthopaedic articles and that the opponent also advertises its 'medi' brand through, inter alia, sponsorships of sports clubs and athletes and that it is also featured to some extent in the general press and is present in social media, most of the evidence submitted concern press reports and advertisements in specialised media and otherwise concern trade fairs and seminars aimed at business customers in the medical field. Therefore, in the absence of any market studies aimed at the general public or brand rankings based on the perception by end consumers or other evidence that could further help to assess the general public’s perception and degree of awareness of the earlier mark, the Opposition Division does not consider that it can be safely concluded on the basis of the evidence submitted, considered in its entirety, that the earlier mark has acquired an enhanced distinctiveness among the general public in relation to any of the goods concerned.

However, apart from the fact that the evidence submitted mainly concerns and shows long-standing, intensive and geographically wide-spread use of the earlier mark in specialised media and at trade fairs and seminars, etc. aimed at business customers, the market research study by iConsult from July 2009 (exhibit 09) also attests to the professional public’s perception and awareness of the earlier mark and the study by GlobalData in 2015 (exhibit 32) indicates that Medi is one of the most prominent firms in the compression garments business. Furthermore, 'medi' was ranked as brand number 29 in the German Hidden Champions 2015 (exhibit 36) and the letters from relevant trade associations signed in 2019 declare that 'medi' is one of the leading or most important trade marks in Germany for medical devices (medical compression socks, bandages, orthoses, insoles, compression clothing, etc.) and that it is well-known to professionals in the medical field. Therefore, the Opposition Division considers that the evidence, when considered as a whole, is sufficient to allow a solid conclusion to be reached as to the professional public’s perception and awareness of the earlier mark, at least in relation to orthopaedic articles, which is also further supported by the findings of the German Federal Patent Court in the intermediate ruling of April 2016 (exhibit 01) that 'medi' enjoys an enhanced distinctiveness among the specialised public in relation to such goods.

The applicant argues that the opponent has provided material in which the word 'medi' is shown in a 'red square' and that this element seems to be more distinctive than the word itself. In this respect, even if it is true that the pink 'medi' logo (as depicted above in the summary of the evidence) is frequently used both in the advertising of the opponent’s products and on the products themselves as shown by the evidence submitted, it must be borne in mind that the use of backgrounds such as squares or frames is quite common and they generally serve to highlight other elements (15/12/2009, T-476/08, Best Buy, EU:T:2009:508, § 27; 27/10/2016, T-37/16, CAFFE NERO, EU:T:2016:634, § 42). Therefore, the use of the square or rectangular pink background is a non-distinctive feature that rather serves to highlight the verbal element 'medi' and the white line (also included in the logo as used) merely underlines this word. As a result, these additional elements are not of such a nature as to alter the distinctive character of the word mark for 'medi' as such. Moreover, even if the 'medi' logo is frequently used, it is also clear from the evidence that the opponent’s brand and products are also frequently referred to by the word 'medi' itself, both in advertising material and in the body of texts in press articles, etc.

Therefore, the Opposition Division finds that the earlier mark for the word mark 'medi' has acquired an enhanced distinctiveness among the relevant professional public through use in Germany in relation to the following goods on which the opposition is based:

Class 10: Orthopedic articles, in particular bandages, medical stockings for arm and leg (compression stockings, thrombosis prophylactic stockings, support stockings), medical tights (compression, thrombosis prophylactic and support tights); articles of orthopedics, in particular orthoses for the fields of cervical, trunk, shoulder, arm, hand, leg, knee, foot, spring joint.

Nevertheless, bearing in mind the weak distinctive character of the earlier mark 'medi' for the goods concerned and the overall degree of recognition as shown by the evidence submitted, the distinctiveness of the earlier mark cannot be considered to be more than normal.

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).

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 are identical or similar and the degree of attention of the relevant public will at least be relatively high.

If there is identity between the goods, such a finding would imply, that, if there is to be no likelihood of confusion, the degree of difference between the marks at issue must be high (13/11/2012, T‑555/11, tesa TACK, EU:T:2012:594, § 53 and the case-law cited therein).

However, the inherent distinctiveness of the earlier mark is low and it should also be taken into account that where a mark is largely descriptive, small differences may suffice to avoid confusion since the average consumer, when perceiving something largely descriptive, will recognise that to be so and expect others to use similar descriptive marks and thus be alert for detail which would differentiate one provider from another.

In this respect, based on the inherently weak distinctiveness of the coinciding verbal element 'medi', the signs have been found to be visually and conceptually similar to a below average degree and aurally similar to an average degree. Therefore, a priori it could well be that the differences between the signs would be sufficient for there to be no likelihood of confusion on the part of the public, even in relation to identical goods.

However, the opponent has shown that the earlier mark has acquired an enhanced distinctiveness among the relevant professional public and it has therefore been found to enjoy a normal degree of distinctiveness for this part of the public, at least in relation to the orthopaedic articles covered by the earlier mark, which are identical or similar to the contested goods for the reasons set out above in section a) of this decision.

In this respect, the earlier mark is fully contained at the beginning of the verbal element 'medidu' in the contested sign and clearly depicted as a separate element in view of the different colouring of the words 'medi' and 'du'. Furthermore, the additional figurative element and the word 'du' are both weak as explained above in section c) of this decision. Therefore, bearing in mind the enhanced distinctiveness of the earlier mark, even if the contested sign includes some additional elements and a colour combination which are not present in the earlier mark, a likelihood of confusion on the part of the professional public in the relevant territory cannot be safely excluded.

Indeed, even if the degree of attention will at least be relatively high and the differences between the signs will not go unnoticed, the relevant business customers are still likely to believe, on account of the coincidence in the verbal element 'medi', which will play an independent distinctive role in the contested sign for the professional part of the public, that the identical or similar goods offered under the signs in dispute originated from the same or economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the professional public in the relevant territory within the meaning of Article 8(1)(b) EUTMR. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse whether or not there is a likelihood of confusion on the part of the general public in the relevant territory as well.

Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 30 619 700. It follows that the contested trade mark must be rejected for all the contested goods.

As the examination of this earlier right 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 right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Christian STEUDTNER

Sam GYLLING

María del Carmen COBOS PALOMO

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.