OPPOSITION No B 3 073 739

Mühlbauer Technology Gmbh, Elbgaustraße 248, 22547 Hamburg, Germany (opponent), represented by Knpz Rechtsanwälte – Klawitter Neben Plath Zintler – Partnerschaftsgesellschaft Mbb, Kaiser-Wilhelm-Str. 9, 20355 Hamburg, Germany (professional representative)

a g a i n s t

Jinn P. Chu, 3f, No. 233, Xiang-fong Street, Keelung 20243, Taiwan (applicant), represented by Florian Schwerbrock, Hagenauer Str. 1, 10435 Berlin, Germany (professional representative).

On 04/02/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 073 739 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 959 019 for the figurative mark , namely against all the goods in Class 10. The opposition is based on European Union trade mark registrations No 8 986 622 and No 17 875 476, both for the word mark ‘DMG’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

Proof of use of the earlier European Union trade mark registration No 8 986 622 ‘DMG’ was requested by the applicant. However, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T‑296/02, Lindenhof, EU:T:2005:49, § 41, 72). The examination of the opposition will proceed as if genuine use of the earlier mark had been proven for all the goods invoked, which is the best light in which the opponent’s case can be considered.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

a) The goods

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

European Union trade mark registration No 8 986 622 (earlier mark 1)

Class 7: Machines and machine tools.

Class 10: Surgical, medical and dental apparatus and instruments, namely milling apparatus for dental purposes, programmable milling apparatus for dental purposes, drills for dental applications, mixing apparatus for dental materials, namely impression materials; machines and apparatus for use in dental practices, namely mixing apparatus for dental materials, particularly impression materials, syringes for application of dental filling material.

European Union trade mark registration No 17 875 476 (earlier mark 2)

Class 1: Plastics, unprocessed; synthetic resins, unprocessed; photo curable resins, uncured; all the afore-mentioned also for use with computer driven machines for making three-dimensional embodiments of computer; plastics and synthetic resins for the fabrication of medical products; plastics and synthetic resins for the fabrication of dental products; unprocessed synthetic material for the fabrication of medical and dental products and/or other products; liquid resins; liquid synthetic material for the fabrication of medical and dental products and/or other products; photo curable liquid synthetic resins and industrial chemicals for use in 3D printers for the fabrication of medical and dental products and/or other products; photo curable liquid synthetic resins and industrial chemicals used in 3D printers to create 3D embodiments of computer-generated designs for medical and dental products and/or other products.

Class 5: Pastes, polymer melts, gels and liquids for manufacturing partly and fully anatomical temporary crowns and bridges, and long-term bridges and long-term crowns for dental prosthetics for manufacturing dental restorations.

Class 7: 3D printers; 3D printers for dental purposes and for dental laboratories; machines for production of three-dimensional printed objects for the dental field; computer-assisted machines for producing three-dimensional parts for further manufacture in the dental field; machines for manufacturing three dimensional models, namely, computer-aided modeling devices and computer-aided designs in the dental field.

Class 9: Computer hardware; computer software for computer-aided object design in particular in the dental field; software, also for operating and controlling 3D printers; software for technical dental laboratories.

Class 10: Dental instruments and apparatus; tooth models and drilling templates, dental splints; artificial teeth, dental prostheses, crowns, bridges, in particular of plastic and ceramic.

Class 17: Materials used in 3D printers to create 3D embodiments of computer-generated designs, namely, semi-worked thermoplastics in the form of filaments or strands of abs, asa, polycarbonate, polyamide, polyphenylsulfone or nylon, for use in 3D printers.

The contested goods, after limitation, are the following:

Class 10: Medical syringe needles; knives for surgical purposes; cutlery [surgical]; acupuncture needles; lancets; scalp needles; safety trocar; trocars; surgical suture needles; suture needles; intravenous administration set; electrosurgical unit; hypodermic syringes; needles for medical purposes; catheters; surgical staples; venous indwelling needles; probes for medical purposes; urethral probes; bone screws; scalpels; scissors for surgery; artificial implant for surgical use; syringes for medical purposes; syringes for injections; medical instruments; medical guidewires.

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’, used 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.

The contested medical instruments include, as a broader category the opponent’s dental instruments. The contested syringes for medical purposes include, as a broader category, or overlap with, the opponent’s syringes for application of dental filling material. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested syringes for injections; hypodermic syringes; medical syringe needles; acupuncture needles; scalp needles; surgical suture needles; suture needles; needles for medical purposes; venous indwelling needles; intravenous administration set are medical instruments commonly used in medicine for injecting or extracting liquids to/from the human body, as well as needles for acupuncture – a beneficial traditional technique, which nowadays is effectively used together with traditional medicine, including in the field of dentistry (for treating dental pain, nerve pain, dental anxiety and gag reflex, chronic muscle pain or spasm, headache, etc.). Although, as pointed out by the applicant, these goods do not coincide in their nature and primary purpose with the opponent’s dental instruments and apparatus, there are some similarities in purpose and some degree of complementarity between the contested goods and the opponent’s syringes for application of dental filling material. The goods under comparison are directed at the same public, that is medical professionals including those in the field of dentistry. Moreover, the relevant public can look for the goods in question through the same channels of distribution and might reasonably expect that production of these goods lies under the responsibility of the same undertaking. Therefore, the abovementioned contested goods are at least similar to the opponent’s goods.

The contested knives for surgical purposes; cutlery [surgical]; lancets; safety trocar; trocars; electrosurgical unit; catheters; surgical staples; probes for medical purposes; bone screws; scalpels; scissors for surgery; medical guidewires comprise surgical apparatus and instruments, instruments used for suturing, metal screws inserted into the bone and implements used for capillary blood sampling. Taking into account that in addition to general practice, dentistry includes many specialties and subspecialties, such as, orthodontics and dental orthopaedics, paediatric dentistry, periodontics, prosthodontics, oral and maxillofacial surgery, oral and maxillofacial pathology, endodontics, public health dentistry, and oral and maxillofacial radiology, there is some connection between the contested goods and the opponent’s dental instruments and apparatus to the extent that the goods under comparison target the same relevant public, may be distributed through the same channels and the relevant consumers will expect them to come from the same or economically linked undertakings. Therefore, they are similar.

The contested artificial implant for surgical use is similar to a low degree to the opponent’s dental instruments and apparatus as they usually coincide in producer, relevant public and distribution channels.

However, the contested urethral probes are instruments for probing and dilating passages within the body, namely, to be inserted into the male or female urethra, for the purpose of stretching or unblocking a stricture. They have completely different nature, purpose and method of use from the opponent’s goods in Class 10 which, in the broadest sense, relate to the field of dentistry. Although both the opponent’s goods and the contested goods belong to the category of medical instruments, the fields of medicine they relate to are too different to allow an assumption that they could ever be of interest to the same medical professionals. Therefore, the relevant public for the goods in question also differ. Moreover, it is highly unlikely that these goods could originate from the same undertaking and they are neither complementary nor in competition. Although these goods may be offered for sale by the same distributors of medical instruments, this is not sufficient for finding similarity between them. Therefore, the contested urethral probes are dissimilar to the opponent’s goods in Class 10.

For the same reasons, the contested urethral probes are dissimilar to the opponent’s goods in Classes 1, 5, 7, 9 and 17, which cover various synthetic materials for fabrication of medical and dental products (Class 1), various materials for manufacturing crowns, bridges, etc. (Class 5), 3D printers and other machines for dental purposes and dental laboratories (Class 7), as well as materials used in these 3D printers (Class 17). Although all these goods, in the broader sense, have a direct or indirect relation to the medical field, this is not sufficient for finding similarity between them.

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 or similar (to varying degrees) are various medical instruments, mainly targeting medical professionals. However, it cannot be excluded that some of the goods, such as the contested syringes for injections or some of the goods that might be included in the broad category of the opponent’s dental instruments and apparatus (e.g. orthodontic devices), can also be used by the general public. In any case, since the goods in question are specialised goods that are related to the treatment of health, to dentistry or surgery, they will be chosen with care and the degree of attention of the relevant public, whether professional or not, will be relatively high.

c) Distinctiveness of the earlier marks and comparison of the signs

DMG
Earlier trade marks	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 marks are word marks composed of three letters ‘DMG’. The contested sign is a figurative mark composed of three letters ‘TmG’, depicted in slightly stylised typeface, preceded by the figurative element comprising six rectangle-shaped elements gradually increasing in size. The Opposition Division agrees with the opponent that the verbal elements ‘DMG’ of the earlier marks and ‘TmG’ of the contested sign do not constitute any commonly known meaningful acronyms in relation to the goods in question and, therefore, will be perceived by the relevant public as meaningless. Consequently, each of them has an average degree of distinctiveness.

As the opponent did not explicitly claim that its marks are particularly distinctive by virtue of intensive use or reputation, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. Since the earlier trade marks have no meaning for any of the goods in question from the perspective of the public in the relevant territory, they have a normal degree of inherent distinctiveness.

The parties disagree regarding the meaning and distinctiveness of the figurative element of the contested sign. According to the opponent, this element is negligible as it will be perceived as a banal Wireless Local Area Network (WLAN) symbol, whereas the applicant claimed that this element is original, distinctive, and dominant, and taking into account its position, plays a particularly important role in the overall composition of the contested sign. It must be recalled, that 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). However, it does not mean that the figurative element will be disregarded by the relevant consumers. Moreover, it is not negligible, as the opponent claimed, since a negligible element refers to an element that due to its size and/or position is not noticeable at first sight or is part of a complex sign, neither of which is applicable to the present case. However, this element is also not dominant, as the applicant claimed, since the figurative element does not overshadow the verbal element and taking into account the similar sizes of these two elements, neither of them can be considered clearly more dominant than the other in the overall composition of the contested sign.

As regards the perception of this figurative element, it is very unlikely that the relevant consumers will perceive it as a WLAN symbol, bearing in mind that firstly, it does not clearly resemble that symbol and secondly, the goods in question are not of such a nature as to bring into consumers’ mind the idea of a WLAN symbol. Therefore, the Opposition Division considers that the figurative element of the contested sign will be seen by the relevant consumers as some abstract combination/alignment of geometric shapes without any particular meaning. However, as it is common to use various geometric shapes for decorative purposes in trade marks, and given the simplicity of the combination as such, the distinctiveness of the figurative element of the contested sign is seen as low, despite not conveying any direct meaning in relation to the goods in question. Consequently, the verbal element ‘TmG’ is the most distinctive element of the contested sign.

When comparing the signs the length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words, small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.

Visually, the verbal elements of the signs are composed of three letters, the second and third of which coincide. However, the signs differ in the first letters of their verbal elements, namely ‘D’ of the earlier marks and ‘T’ of the contested sign, which are completely different visually. Moreover, the signs also differ in stylisation and the figurative element of the contested sign. Although the stylisation is a merely decorative feature and the figurative element possesses only a low degree of distinctiveness (as explained above), they still have some impact on the visual perception of the contested sign.

The opponent claimed that the signs are highly similar visually. According to the opponent, visual dissimilarities between the letters ‘D’ and ‘T’ cannot counteract the fact that the marks are otherwise identical. In addition, the opponent referred to previous decisions of the Office to support its argument that the figurative element of the contested sign is merely ornamental and therefore has no bearing on the visual comparison of the signs, namely:

1) 24/09/2013, B 1 758 567, SEM v ;

2) 12/12/2017, B 2 755 968, v KAS;

3) 10/02/2020, B 3 074 438, v Vivus;

4) 26/11/2012, B 1 870 586, ELKA v ;

5) 19/09/2011, B 1 785 206, ZOORO v ;

6) 05/04/2006, R 753/2005‑2, ROMOFARM (FIGURATIVE MARK) / PROMFARM, PROMOFARM v ;

7) 21/12/2012, R 567/2012‑2, INTERKULTUR (FIG. MARK) / INTERKULTUR, INTERKULTUR v .

However, these decisions cannot support the opponent’s claims as regards the figurative element of the contested sign, as in the decisions quoted the figurative element was identified as having limited impact, or less impact, or as less distinctive than the verbal element, but, contrary to the opponent’s assertions, in none of them was it stated that this element is completely irrelevant and should be disregarded. Moreover, the figurative elements in the above cases are quite different from the figurative element in the present case.

The opponent also argued that in all the abovementioned cases dissimilarities at the beginning of the verbal elements – especially when only the first letter was different – were not enough to counteract the fact that the signs were otherwise deemed visually identical. However, only the first two cases involving the short three-letter signs can be considered comparable to some extent to the present case and, in each of them, the visual differences created by the first letters were acknowledged. All the remaining cases cited by the opponent relate to signs containing more different and, importantly, longer verbal elements and are, therefore, not comparable to the present case. As already mentioned above, the relevant public’s perception in relation to longer signs is not necessarily the same as in relation to short signs.

Moreover, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

The shorter a sign, the more easily the public is able to perceive all of its single elements. The Court has established the principle that, in the case of word marks which are relatively short, even if two marks differ by no more than a single consonant, it cannot be found that there is a high degree of visual similarity between them (16/01/2008, T‑112/06, Idea, EU:T:2008:10, § 54). Since the difference in the first letter out of three will create significant visual differences between the short verbal elements of the marks, which are further reinforced by the lowly distinctive, but still clearly perceptible, figurative element of the contested sign, the signs are considered visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, each of the signs will be pronounced as three separate letters, the second and third of which, namely ‘M’ and ‘G’ coincide. The pronunciation differs in the sound of their first letters, namely ‘D’ of the earlier marks and ‘T’ of the contested sign.

The opponent claimed that the signs in question will be pronounced almost identically as the letters ‘T’ and ‘D’ are regarded phonetically (almost) identical. To support its arguments, the opponent refers to the following decisions of the Office:

1) 14/06/2016, B 2 559 279, TEKA v DEKA;

2) 30/10/2019, B 3 068 217, Toggo v Doggo;

3) 20/03/2015, B 2 357 617, DITRON v TITRON.

Although it is true that the ‘T’ and ‘D’ sounds are stop consonants and may be pronounced in similar ways, the main difference between them is that the ‘T’ sound is voiceless, and the ‘D’ sound is voiced. Moreover, in the cases cited by the opponent the signs are referred to aurally as words and consequently their letters are less pronounced, whereas in the present case the relevant public will pronounce each of the letters of the verbal elements ‘DMG’ and ‘TmG’ separately as letters of the Latin alphabet. Since the relevant consumers are aware of how to pronounce the letters, as well as knowing the differences between them, the letter ‘D’, when pronounced, will result in a stronger and more striking sound than the letter ‘T’. Therefore, the decisions referred to by the opponent are not comparable to the present case and, taking all the circumstances into account, the signs are considered aurally similar to, at most, an average degree.

Conceptually, neither of the signs has a meaning for 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.

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

d) 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).

The signs both have three letters; both are, consequently, short marks and because they differ in their first letter and in the figurative element, these are relevant factors to consider when evaluating the likelihood of confusion between them.

The contested goods are partly identical, partly similar (to varying degrees) and partly dissimilar to the opponent’s goods and they target the public at large and medical professionals with a relatively high degree of attention. The degree of inherent distinctiveness of the earlier marks is normal.

The signs are similar insofar as they have two letters in common. However, as explained in detail in section c), this commonality is only of such a nature as to lead to a finding of a low degree of visual similarity and, at most, an average degree of aural similarity. Even though the signs are potentially more similar from the aural perspective than from the visual perspective, this must be assessed against the fact that the goods in question are specialised medical instruments and apparatus, which are either quite sophisticated or must meet particular requirements, and the relevant public is likely to peruse the specifications or descriptions of these goods and visually perceive their trade marks prior to purchase. Therefore, it is considered that the visual aspect has more importance in the global assessment of likelihood of confusion.

Moreover, the relevant public will pay relatively high attention in relation to the goods at issue. This means that, despite imperfect recollection, the differences identified between them will be noticed by the relevant consumers, especially the differing first letter of their short verbal elements, as well as the not particularly distinctive, but clearly perceptible differing figurative element in the contested sign.

Therefore, in the absence of any conceptual link between the signs that could lead the relevant public to associate them with each other, the differences between the signs in question are sufficiently striking to outweigh the similarities. Consequently, it is highly unlikely that consumers with a relatively high degree of attention would confuse the signs even when encountering them on identical goods. Therefore, it can be concluded that the relevant public will not confuse the marks and will not believe that the goods in question come from the same undertaking or economically linked undertakings.

The opponent refers to previous decisions of the Office to support its arguments in favour of likelihood of confusion, namely:

1) 16/06/2010, B 1 528 762, DMS v ;

2) 12/12/2017, B 2 755 968, v KAS;

3) 31/05/2017, B 2 301 433, v .

However, the first decision referred to by the opponent is more than 10 years old and cannot be considered as reflecting the Office’s present practice. In addition, in the first two decisions cited some of the relevant factors to be taken into account, such as the relevant public and its degree of attention, differ from the present case; and the third decision relates to completely different trade marks. It follows that the decisions referred to by the opponent cannot be considered fully comparable to the present case and the outcome will not necessarily be the same.

Moreover, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

Considering all the above, the Opposition Division finds that there is no likelihood of confusion on the part of the public.

Therefore, the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR, it is unnecessary to examine the evidence of use filed by the opponent.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Zuzanna STOJKOWICZ

Rasa BARAKAUSKIENE

Biruté SATAITE-GONZALEZ

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.