OPPOSITION No B 3 070 997

Merck KGaA, Frankfurter Str. 250, 64293 Darmstadt, Germany (opponent), represented by CON LOR S.P.A., Avda Aguilera, 19 - 1ºB, 03007 Alicante, Spain (professional representative)

a g a i n s t

Stevanato Group S.P.A., Via Molinella 17, 35017 Piombino Dese (PD), Italy (applicant), represented by Barzanò & Zanardo Roma S.P.A., Via del Commercio 56, 36100 Vicenza, Italy (professional representative).

On 15/11/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 070 997 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 17 962 015 (word mark EZ BE POD), namely against all the goods in Classes 5, 9 and 10. The opposition is based on European Union trade mark registration No 4 619 623 (word mark EASYPOD). 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

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

Class 10: Medical apparatus and instrument, namely pen injector for growth hormone.

The contested goods are the following:

Class 5: Filled syringes for medical purposes [containing pharmaceuticals]; Pre-filled syringes for medical purposes; Insulin injectors sold filled with insulin; Injectable dermal filler; Sticking plasters for medical use; Plasters, materials for dressings; Transdermal patches; Transdermal patches for medical treatment.

Class 9: Disposable dispenser syringes for laboratory use; Reusable dispenser syringes for laboratory use.

Class 10: Disposable syringes; Hypodermic syringes; Syringes for medical purposes; Multishot needle syringes; Syringes for injections; Syringes in the nature of pens; Insulin syringes; Pumps for medical purposes; Metering pumps for delivering drugs in measured quantities [medical use]; Cardiovascular pumps; Intravenous infusion pumps for medical purposes; Infusion pumps to deliver medication; Hypodermic injectors; Medication injectors; Injectors for medical purposes.

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

The term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

Some of the contested goods are identical or similar to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods 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.

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 are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention is considered to be high.

It is apparent from the case-law that, insofar as pharmaceutical preparations, whether or not issued on prescription, are concerned, the relevant public’s degree of attention is relatively high (15/12/2010, T‑331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T‑288/08, Zydus, EU:T:2012:124, § 36). This applies in analogy to the other relevant goods in Classes 9 and 10.

In particular, medical professionals have a high degree of attentiveness when prescribing medicines. Non-professionals also have a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health.

c) The signs

EASYPOD	EZ BE POD
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 word ‘EASY’ included in the earlier mark is a basic English word which means ‘not requiring much labour or effort; not difficult; simple’ and is likely to be understood by the relevant public of the services concerned in the whole territory of the European Union. This finding has been confirmed by the Boards of Appeal in case 21/02/2017, R 2048/2015-2, § 59 and § 60. As the word ‘EASY’ may laud the goods concerned as it indicates that the goods offered are easy to use (13/05/2015, T-608/13, easy Air-airtours, EU:T:2015:282, § 38 and 57), it is considered to be non-distinctive.

Part of the public, namely the English-speaking public, will understand the verbal element ‘EZ’ with the same meaning as ‘easy’ in the earlier mark as ‘ez’ is a common misspelling of said word (13/11/2018, C-48/18P, EZMIX, EU:C:2018:895, § 36). That word has the meaning explained above and the considerations mentioned above on the distinctiveness of the word ‘EASY’ are equally applicable here. Therefore, the verbal element ‘EZ’ as such lacks any ability to function as a badge of origin for the relevant goods for that part of the public. For the remaining part of the public, such as for example the German-speaking part, ‘EZ’ has no meaning and is fully distinctive.

The word ‘POD’ contained in both signs will be understood in the English language as ‘a seed container that grows on plants such as peas or beans’ (Collins Online Dictionary) or ‘any discrete unit, often having a rounded shape, which forms a separate or detachable part of a larger structure’ (Oxford Online Dictionary). As the relevant goods are such containers or can be offered in small pod-like containers, this element is considered to be weak for that part of the public. For the remaining part of the public, for which it has no meaning, it is considered to be distinctive.

The verbal element ‘BE’ in the contested mark is understood in the English language as the infinitive of the verb ‘to be’ and as such is considered in the context of the contested mark to be of normal distinctiveness.

Visually, the signs coincide in the letters ‘E’ and ‘POD’ contained identically in both signs. They differ however in the rest, especially ‘*Z’ and ‘BE’ in the contested mark and ‘’*AS*Y’ in the earlier mark. Taking into account the non-distinctive character of the element ‘EASY’ for all the public and of ‘EZ’ in the contested mark for the English-speaking public, the signs are similar to a low degree.

Aurally, the pronunciation of the signs coincides in the syllables ‘Eh-Sy’ and ‘Pod’ for the English-speaking public; the verbal elements ‘easy’ and ‘ez’ however are considered to be non-distinctive. They differ in the additional element ‘Be’ in the contested mark. Therefore for that part of the public the signs are considered to be similar to an average degree. For that part of the public which does not pronounce ‘ez’ as ‘easy’ like for example the German-speaking public, who will pronounce this element as “Eh-Tsi” the signs are similar only to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

Given that the element ‘easy’ (for the English-speaking part ‘EZ’ also in the contested mark) is non-distinctive, the relevant public will be inclined to focus on the remaining verbal elements of the signs. In the present case, the element ‘BE’ of the contested mark contributes to differentiating the signs to some extent.

Therefore, the signs are conceptually similar to a low degree for the English-speaking public as they coincide in the non-distinctive term ‘easy/ezy’ as well as the weak term ‘pod’, while for the remaining part of the public the signs have no coinciding concepts because neither ‘EZ’, ‘Be’ nor ‘Pod’ have a meaning and the verbal element ‘easy’, being non-distinctive cannot set the signs conceptually apart.

Taking into account that the signs have been found similar in at least one aspect of the comparison, the examination of the existence of a risk of injury will proceed.

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 for the English-speaking public for all of the goods in question. The mark has a normal degree of distinctiveness for the remaining part of the relevant territory, where it has no meaning in relation to the goods in question, despite the presence of a non-distinctive element (easy).

e) Global assessment, other arguments and conclusion

The goods were assumed to be identical. The level of attention is considered to be high as the relevant goods are highly specialised medical goods for the injection of medicine or laboratory goods. The signs are visually and conceptually lowly similar and aurally at most similar to an average degree. The coincidence of the first element ‘easy’ and ‘ez’ for the English-speaking consumer is of minimal importance as these elements are considered to be non-distinctive, also taking into account their different representation. The signs are even less similar for those consumers who do not understand the verbal element ‘EZ’ in the contested mark as then the signs would only coincide at the end of the marks (‘pod’); for that part of the public the element ‘pod’ is distinctive, which however would not be enough to establish likelihood of confusion as these elements are placed at the end of the marks and also due to the high degree of attention of the relevant consumers.

The different elements are clearly perceivable and sufficient to exclude any likelihood of confusion between the marks.

The similarities between the signs concern either elements that are not distinctive or elements that are secondary within the overall impression given by the signs. Therefore, the similarities are not sufficient to lead to a likelihood of confusion on the part of the public.

Considering all the above, even assuming that the goods 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

Konstantinos MITROU

Lars HELBERT

Tu Nhi VAN

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.