OPPOSITION No B 3 080 109

Polaar, 53 rue du Rocher, 75008 Paris, France (opponent), represented by Strato-IP, 63 boulevard de Ménilmontant, 75011, Paris, France (professional representative)

a g a i n s t

Pollogen Ltd., 6 Kaufman Street, P.O. Box 50320, 68012 Tel Aviv, Israel (applicant), represented by Jan Stütz, Unter den Linden 10, 10117 Berlin, Germany (professional representative).

On 11/05/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 080 109 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 17 960 317 for the figurative mark . The opposition is based on European Union trade mark registration No 4 794 111 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.

1. The goods and services

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

Class 3: Soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices, shaving products, depilatories, makeup preparations or make-up removing preparations, lipsticks, beauty masks, deodorants, sanitary preparations for human beings, cosmetic skin care preparations, preparations for colouring the skin or hair, sunscreen preparations for human beings; cosmetic sets; cosmetic preparations for slimming, or for sun-tanning purposes or for bathing; lotions for cosmetic purposes.

Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; disinfectants; sunburn ointments, ointments for pharmaceutical preparations; pharmaceutical preparations for skincare; bath preparations, medicated; Therapeutic preparations for the bath; medical preparations for slimming purposes; chemical preparations for medical or pharmaceutical purposes; herbs for medicinal purposes; herbal tea; antiparasitic preparations; sugar for medical purposes.

Class 21: Non-electric household or kitchen utensils and containers (not of precious metals or coated therewith); combs and sponges; brushes (except paint brushes); toothbrushes; brush-making materials; toilet utensils and toilet cases; cosmetic utensils; shaving brushes; shaving-brush holders; soap boxes; cleaning instruments (hand-operated); unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes; bottles; flasks or figurines (statuettes) of porcelain, terracotta or glass; bins, glasses (containers); tableware (other than cutlery) not of precious metals; perfume sprayers and vaporisers; apparatus for removing make-up (non-electric).

Class 44: Medical services; veterinary services; hygienic and beauty care for human beings or animals; hygiene and beauty care relating to spa baths and thalassotherapy; health services, plastic surgery; hospital services; Nursing homes; convalescent or rest homes; beauty salons; aromatherapy, hairdressing salons; barbers; hair implantation; manicuring; massages; opticians' services.

The contested goods are the following:

Class 3: Cosmetics; beauty masks; skin whitening creams; cosmetic preparations for skin care; anti-wrinkle cream; macule-removing cream; collagen preparations for cosmetic purposes; soap.

Class 10: Medical devices; vibromassage apparatus; dental apparatus and instruments; X-ray apparatus for medical purposes; ultrasonic device and parts thereof for medical use; microdermabrasion apparatus; lasers for medical purposes; gloves for medical purposes; babies' bottles; condoms; surgical implants comprised of artificial materials; orthopedic articles; suture materials.

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.

Some of the contested goods are identical or similar to goods on which the opposition is based. For example, cosmetics and soap in Class 3 are identically contained in both lists of goods. 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 goods were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 and services assumed to be identical are directed at the public at large and at professional customers with specific knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price. By way of example, the degree will be rather average in relation to the goods in Classes 3 and 21 and higher than average in relation to purchase of medical equipment in Class 10 and upon using the services of Class 44.

3. The signs

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 composed of the word ‘Polaar’ in grey with a small dot over the first letter ‘a’. Although the lower part of the word has been cut off, it is still legible. This word does not exist as such, but it is likely that it will be associated by the majority of the relevant public with the word ‘Polar’, which exists in several of the relevant languages (Danish, English, German, Portuguese, Spanish and Swedish) or has a very similar equivalent (e.g. polare in Italian). This element will be understood as ‘of or relating to the North or South Pole of the earth (or another celestial object), or the poles of the celestial sphere’ (information extracted from Oxford English Dictionary on 28/04/2020 at https://www.oed.com/view/Entry/146742?redirectedFrom=polar#eid). The Bulgarian-speaking public may associate it also with „полар“ (i.e. /polar/, or synthetic fleece). For the part of the public that will not perceive any meanings of the word, it is meaningless. Whether understood or not, it will not be perceived as having any direct meaning in relation to the relevant goods and, therefore, it has an average degree of distinctiveness.

The element of the contested sign ‘TRIPOLLAR’ is likely to be perceived by part of the relevant public, including the Bulgarian-speaking part of the public, as a misspelling of ‘tripolar’ or ‘having or characterized by three poles’ (information extracted from Oxford English Dictionary on 28/04/2020 at https://www.oed.com/view/Entry/205642?redirectedFrom=tripolar#eid17787286),  while for the part of the public that will not perceive it as having any meaning the term is meaningless. Bearing in mind that the relevant goods are cosmetics, medical and dental apparatus, gloves for medical purposes, condoms and babies’ bottles, this element is distinctive.

The Opposition Division is of the opinion that ‘INTELLIGENT BIOLOGY’ will be associated with a meaning throughout the whole territory of the European Union as these terms are very close to the respective words used in the European Union official languages, for example ‘inteligentna biologia’ in Polish, ‘intelligente Biologie’ in German, ‘biologie intelligente’ in French, ‘biologia inteligente’ in Spanish.

Part of the relevant public, namely the professionals, will perceive the element of the contested sign ‘INTELLIGENT BIOLOGY’ as the interdisciplinary area of bioinformatics, systems biology, intelligent computing/artificial intelligence, bioengineering, and data sciences. As such, it is distinctive for the relevant goods.

The remaining part of the public will perceive this element as an abstract concept based on the combination of two words: ‘intelligent’, meaning ‘quick to understand, knowing’, and of normal distinctiveness, and ‘biology’ meaning ‘the science that deals with living organisms as objects of study’. This second term and the element as a whole are allusive to some of the goods, for example cosmetics and surgical implants. However, as this element does not directly describe these goods or their characteristics, it is considered of normal distinctive character for all the relevant goods.

The figurative device of the contested sign may allude to an image of electrons surrounding the nucleus of an atom. However, such perception is not given. Whether or not it will be perceived as such image, or merely as a decorative element, it has at least a certain degree of distinctiveness, since it does not describe the nature of the goods. Although the verbal component of a sign usually has a stronger impact on the consumer than the figurative component, this principle does not apply in all cases. In this specific case the figurative device of the contested sign will not be fully disregarded by the relevant public as it is co-dominant due to its size and prominent position as 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.

The remaining figurative aspects of the contested sign, the rather standard stylization and the black colour, are secondary.

Visually, the signs coincide in the letters ‘POL’ and ‘AR’ placed in different positions in signs. However, they differ in the remaining letters ‘TRI’ and ‘L’, the verbal elements ‘INTELLIGENT BIOLOGY’, and the figurative device present only in the contested sign, on one hand, and the first letter ‘A’ with a dot of the earlier mark, on the other hand, as well as in the different stylization, length and structure of the signs (including the missing parts of the letters in the earlier mark).

Therefore, given the complexity of the contested sign and the arrangement of its elements within the sign, as well as the occasional coincidence of some syllables, the signs are visually similar to at most a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides or is very similar, at most, in the sound of the letters ‛PO’ and ‘AR’, present identically in both signs. Although in some languages double letters may be pronounced as a single sound, in other languages they lead to a significant difference in the pronunciation (for example ‘ll’ in Spanish or ‘aa’ in Estonian). The pronunciation further differs in the prefix ‘TRI-’ and the words ‘INTELLIGENT BIOLOGY’ of the contested sign, which have no counterparts in the earlier mark. Consequently, the signs differ in their length, intonation and rhythm.

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

Conceptually, although the public in the relevant territory will perceive the meanings of the elements ‘INTELLIGENT BIOLOGY’ of the contested sign as explained above, the other sign has no meaning for part of the public. The remaining part of the public will associate the signs with a dissimilar meaning. Therefore, the signs are not conceptually similar in any of the above events.

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.

The opponent claimed that the verbal element of the earlier trade mark ‘is strongly distinctive’ but did not file any evidence in order to prove such a claim.

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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

In the present case, the relevant goods and services are assumed to be identical. They are directed at the public at large and at professional customers with specific knowledge or expertise whose degree of attention may vary from average to high.

The earlier mark is inherently distinctive to a normal degree.

The signs were found to be visually and aurally similar to at most a low degree and conceptually not similar regardless of the perception of their components.о

It should be further noted that the earlier mark is much shorter and simpler in its structure than the contested sign as it consists of only one verbal element. 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, even small differences may frequently lead to a different overall impression. In the present case some of the differing letters are placed at the beginning of the marks which makes it even less likely to be ignored.

Furthermore, the global appreciation of the likelihood of confusion must be based on the overall impression given by the marks. The perception of the marks by the average consumer of the goods in question plays a decisive role and in this context consumers’ purchase behaviour and habits have to be assessed in the frame of that perception of the marks.

It is then necessary to examine the objective conditions under which the marks may be present on the market. The category of goods and services involved may increase the importance of one of the different aspects of similarity between signs (visual, phonetic and conceptual) because of how goods and services are ordered and/or purchased. In the case at hand part of the relevant goods target the general public and are usually sold in self-service stores (for example cosmetics, babies’ bottles, condoms). In those stores the consumers normally choose the goods themselves although they may be assisted at a certain point of the purchase by a member of the personnel. Therefore, the marks at issue will usually be perceived visually prior to purchase and the visual similarity or dissimilarity will have a greater impact on the consumer. As regards the remaining goods in Class 10, which target the professional public, the goods in Class 5 and the services in Class 44, the degree of attention is higher as these goods are normally complex and more expensive devices and apparatus and services which affect the health of both patients and medical staff.

In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details or aspects. The similarities found cannot prevail for the reasons established above. As stated above in part c) of this decision, the two signs have different lengths, intonations and rhythms. Therefore, in the light of the above considerations, the similarities between the signs are not sufficient to lead to a likelihood of confusion on the part of the general and professional public.

The opponent refers to previous decisions of the Office to support its arguments. However, 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).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the opponent are not relevant to the present proceedings:

• 17/09/2018, B 2 875 477: in this case the compared signs consist of only one verbal element each. In the case at hand the contested sign is a much longer sign with a figurative element.

• 05/12/2013, B 1 212 117 and 08/04/2019, 14 613 C: in these cases the compared signs could be dissected as they consist of elements that suggest a concrete meaning. In the case at hand the elements of the contested sign will be associated with a concrete meaning as a whole and it is unlikely any of the terms will be dissected.

Considering all the above, even assuming that the goods and 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, 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

Manuela RUSEVA

Tzvetelina IANTCHEVA

Mads Bjørn Georg JENSEN

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.