OPPOSITION No B 3 072 923

S.C. Ibookmed S.R.L., Str. Zlatna nr. 16, birou 3A, Brasov, jud. Brasov, Romania (opponent), represented by S.C. Weizmann Ariana & Partners Agentie de Proprietate Intelectuala S.R.L., str. 11 IUNIE, nr. 51, sc. A, etaj 1, ap. 4, sector 4, 040171, BUCURESTI, Romania (professional representative)

a g a i n s t

Sfatul Medicului.Ro Sa, Bd. Pierre de Coubertin nr. 3-5, Office Building, Etaj 6, Camera 6Re, Sector 2, Bucuresti, Romania (applicant), represented by Anișoara Fuciu, Snagov, Bl. P53, Sc.A, Parter, Ap. 1, Ilfov, Romania (professional representative).

On 19/12/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 072 923 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 17 960 100 for the word mark ‘ClickMed. Booking your doctor!’ The opposition is based on Romanian trade mark registration No 155 216 for the figurative mark . 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.

a) The goods and services

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

Class 9: Apparatus and instruments for conducting, distributing, transforming, accumulating, regulating or controlling electric current; apparatus for recording, transmission and reproduction of sound or images; magnetic recording media, acoustic discs; Apparatus and instruments for scientific, nautical, topographical, photography, cinematographic, optical, weighing, measuring, signaling, checking, salvaging and teaching; mechanisms for coin-operated machines; fire fighting equipment (we request protection for the entire list of products included in this class according to the Nice Classification); cash registers, calculating machines, data processing equipment and computers.

Class 35: Advertising; business management and administration; office work (we request protection for the entire list of services included in this class according to the Nice Classification).

Class 38: Telecommunications (we request protection for the entire list of services included in this class according to the Nice Classification).

Class 42: Services in the fields of science and technology as well as related research and design; industrial analysis and research services; hardware and software design and development (we request protection for the entire list of services included in this class according to the Nice Classification).

Class 44: Medical services; veterinary services; agriculture, horticulture and forestry services (we ask for protection for the entire list of services included in this class according to the Nice Classification); hygiene and beauty services for humans or animals.

The contested services are the following:

Class 35: Business administration; Secretarial services; Clerical services for making appointments; Administrative services relating to the referral of patients.

Class 36: Insurance underwriting; Insurance services for the repayment of medical expense.

Class 38: Telephone communication services provided for hotlines and call centers.

Class 44: Medical services; Advisory services relating to medical services; Human hygiene and beauty care; Medical information.

Some of the contested services are identical or similar to the goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested services were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 and services assumed to be identical are directed at the public at large and the professional public. The degree of attention varies from average to high depending on the specialised nature, frequency of purchase and price of the goods and services.

c) The signs

	ClickMed. Booking your doctor!
Earlier trade mark	Contested sign

The relevant territory is Romania.

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 sign consist of the words ‘BOOK MED’ written in standard white capital letters. For the part of the public which understands English the expression refers to the operation of booking an appointment for a medical examination. To that end, ‘BOOK MED’ will be of reduced distinctiveness for services in Classes 35, and 44 which can be related to the field of medical examination, since this element refers to the purpose of the services. For all the other goods and services of the earlier sign the element will be of normal distinctiveness. The remaining elements, namely the red and blue framing is of decorative nature and as such of limited impact.

For the part of the public which does not understand English the words ‘BOOK MED’ are meaningless, therefore distinctive.

The earlier sign has no element that is more eye-catching than others.

The contest sign consists of the elements ‘ClickMed. Booking your doctor!’. The part of the public which understands English will perceive the meaning of the verbal elements ‘Click’ and ‘Med’. ‘Click’ would be understood as the operation to select something on a website. ‘Med’ refers to medical examination creating an association in relation to the services in class 44. The verbal element ‘Booking your doctor!’ will be perceived as such and therefore with a non-distinctive meaning in relation to the services in Class 35, namely secretarial services, clerical services for making appointments, administrative services relating to the referral of patients.

The element ‘doctor’ will be understood in Romanian with the respective meaning. It is weak in relation to the services in the Classes 35 and 44. For the part of the public which does not understand English the remaining elements are meaningless, therefore distinctive.

The contest sign is a word mark. It must be noted that the protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess. Therefore, it is irrelevant whether the word mark is depicted in lower or upper case letters (judgment of 22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43). Consequently, the contested sign has no dominant element.

Visually, the main commonalities reside in the syllables ‘MED’ and ‘BOOK’.

However, the structure of the two signs is different: The element ‘BOOK’ is placed at the beginning of the earlier sign and ‘MED’ at the end whereas the elements ‘MED’ and ‘BOOK’ are place between the elements ‘Click’ and ‘ing your doctor!’ in the contested application. Furthermore, they differ in the number of the letters. The earlier sign consists of seven letters whereas the contested sign consists of 25 letters, a full stop and an exclamation mark. Moreover, the verbal elements of the earlier sign are white and framed in red or blue. The contested sign has no graphic or stylistic characteristics.

Therefore, the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the syllables ‘MED’ and ‘BOOK’. The pronunciation differs in the syllable ‘ING’ of the contested sign and the sound of the additional verbal elements, which have no counterparts in the earlier sign.

Therefore, the signs are aurally similar at most to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the public which understands English the signs will be associated with a similar meaning, coinciding in weak concepts. Therefore, the signs are conceptually similar to a low degree.

The part of the public which does not understand English will perceive the meaning of the element ‘DOCTOR’ of the contested sign as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

d) Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low by the part of the public which understands English for some of the services in question, namely services in Classes 35, 44 and 38 which can be related to the operation of booking an appointment for a medical examination. The mark has a normal degree of distinctiveness for the remaining goods and services in relation to which it has no meaning from the perspective of the public in the relevant territory, also the mark has a normal degree of distinctiveness as a whole for the the part of the public which does not understand English.

e) Global assessment, other arguments and conclusion

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

For the purposes of that global appreciation, the average consumer of the category of services concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, 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 services have been assumed identical. They target both the professional and the general public, which will pay a degree of attention that can vary from average to high.

Conceptually the signs are similar to a low degree for a part of the relevant public. For the non-English speaking part they are conceptually not similar.

Apart from the low visual and aurally similarity the marks’ respective additional elements are clearly perceivable and sufficient to differentiate the signs, implying significant visual and aural differences.

Taking all the above into account it must be concluded that the assessed differences between the signs are capable of maintaining a sufficient distance between the overall impressions given by the signs. For these reasons, the Opposition Division does not find it plausible that the relevant consumer, who is considered reasonably well informed and reasonably observant and circumspect, might believe that the services assumed to be identical come from the same undertaking or economically linked undertakings.

Considering all the above, even assuming that the services are identical there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

COSTS

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

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

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Aldo BLASI

Matthias KLOPFER

Marianna KONDAS

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.