OPPOSITION Nо B 3 083 146

 

Chemotargets S.L., Dr. Aiguader, 88, 08003 Barcelona, Spain (opponent), represented by Curell Suñol S.L.P., Via Augusta 21, 08006 Barcelona, Spain (professional representative) 

 

a g a i n s t

 

Agilent Technologies, Inc., 5301 Stevens Creek Boulevard, 95051 Santa Clara, United States of America (applicant), represented by Promark, 62 Avenue des Champs Elysées, 75008 Paris, France (professional representative).

On 07/05/2021, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 3 083 146 is upheld for all the contested goods.

 

2.	European Union trade mark application No 17 965 314 is rejected in its entirety.

 

3.	The applicant bears the costs, fixed at EUR 620.

 

REASONS

 

On 13/05/2019, the opponent filed an opposition against all the goods of European Union trade mark application No 17 965 314 ‘CLARITY’ (word mark). The opposition is based on European Union trade mark registration No 16 901 894, ‘CHEMOTARGETS CLARITY’ (word 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

 

The goods on which the opposition is based are, inter alia, the following:

 

Class 9: Computer software platforms for accessing and analysing information and resources on applied chemistry relating to health sciences, biomedicine, biology, biotechnology, clinical biochemistry, pharmaceutical chemistry and pharmacology;

The contested goods are the following:

Class 9: Computer software for use in molecular spectroscopy analysis; computer software for collecting, analyzing, and reporting data from molecular spectroscopy instruments; computer software to control hardware and accessories for use in molecular spectroscopy. 

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.

 

Contested goods in class 9

The contested computer software for use in molecular spectroscopy analysis; computer software for collecting, analyzing, and reporting data from molecular spectroscopy instruments; computer software to control hardware and accessories for use in molecular spectroscopy are highly specialized goods, and so are the opponent´s goods in Class 9.

The opponent has explained the following:

“the goods applied for are “computer software” for its use in molecular spectroscopy, which is the study of the interaction between matter and electromagnetic radiation and it is a fundamental exploratory tool in the fields of physics, chemistry, and astronomy, especially biomedical spectroscopy in the areas of tissue analysis and medical imaging”(…) (https://en.wikipedia.org wiki/Spectroscopy) (…) On the other hand, the products and services from the prior mark are also computer software platforms and other products applied to chemistry, health sciences, biomedicine, biology, biotechnology, clinical biochemistry, pharmaceutical chemistry and pharmacology. Hence, the filed of application (sic) of the compared “computer services” are highly related as all of them are used in the same filed, for instance, biomedicine or chemistry"

The applicant has not submitted any arguments in this regard.

Spectroscopy is the science and practice of using spectrometers and spectroscopes and of analysing spectra, the methods employed depending on the radiation being examined. The techniques are widely used in chemical analysis and in studies of the properties of atoms, molecules, ions, etc.. A spectrometer is any instrument for producing a spectrum, especially one in which wavelength, energy, intensity, etc, can be measured while a spectroscope is any of a number of instruments for dispersing electromagnetic radiation and thus forming or recording a spectrum (information extracted from Collins English Dictionary on 05/05/2021 at https://www.collinsdictionary.com/dictionary/english/spectroscopy, and related web links thereto).

According to the Guidelines (Guidelines for Examination in the Office, Part C, Opposition, Section 2, Chapter 2, Comparison of Goods and Services, sub-section 5.10.4), there are many types of software, and although software by nature (a set of instructions that enables a computer to perform a task) is the same, this does not mean that their specific purpose is the same. This implies that very specific software could even be dissimilar to another type of software.

In the instant proceedings, although it is clear that the contested goods are highly specialized, it may be reasonably assumed, at least in the absence of any arguments to the contrary by the applicant on the issue, that there is or may be at least some overlap between the contested software, used in fields such as chemical analysis, and the earlier software, encompassing information and resources on applied chemistry relating to a range of scientific and medical fields. In light of the above, it is considered that the contested goods are similar to at least an average degree to the opponent´s Computer software platforms for accessing and analysing information and resources on applied chemistry relating to health sciences, biomedicine, biology, biotechnology, clinical biochemistry, pharmaceutical chemistry and pharmacology in Class 9, since they can coincide in distribution channels (and coincide in being used in the same market field, such as in biomedicine or chemistry), can be directed at the same consumers and can originate from the same kind of undertakings.

 

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 similar to at least an average degree are directed at professionals, who will display a higher than average degree of attention during their purchase, since these goods are not frequently purchased, can be expensive, and are highly specialized (i.e. require technical/professional knowledge for their proper use)

 

c)  The signs

 

CHEMOTARGETS CLARITY	CLARITY
Earlier trade mark	Contested sign

 

 

The relevant territory is  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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. The Opposition Division considers it appropriate to focus the comparison on the English-speaking part of the relevant public, for whom the coincidences between the signs are of greater impact than the differing element ‘CHEMOTARGETS’, for the reasons explained in detail below.

The common element ‘CLARITY’ is the English word for inter alia ‘clearness’, and will therefore be understood as such by the part of the relevant public referred to above. Since it is neither descriptive nor allusive of the kind of goods concerned, it is considered of average distinctive character.

The word ‘CHEMOTARGETS’, when perceived by these consumers, will be mentally-dissected into ‘CHEMO’ and ‘TARGETS’, despite being positioned with no space between them, since these will be identified as meaningful components in English. ‘CHEMO’ consists of a commonly used abbreviation for ‘chemotherapy’ and ‘TARGETS’ as the plural form of the English term ‘TARGET’, used to refer to a goal to be reached, respectively. English speakers could, therefore, perceive ‘CHEMOTARGETS’ as meaning “targeted chemotherapy”. As a whole, the word ‘CHEMOTARGETS’ can be seen as reference to the characteristics of the goods concerned, such as their purpose, and so is of lower than average distinctive character.

Even if the word ‘CHEMOTARGETS’ constitutes also the opponent´s name, as claimed by the opponent, consumers are not necessarily aware of this fact and, even if so, the concept attributed to the terms being recognized as forming it (explained above) will not be ignored for this reason.

In its arguments, the applicant stated that “In the present case, the first element of the earlier mark ‘CHEMOTARGETS’ is dominant. It is perfectly distinctive, located in the first position, longer, and more distinctive than the element CLARITY”. And that “the term CLARITY may evoke for some people one of the designated goods’ expected quality, i.e. software that enables to obtain transparent data and information on the structures studied through spectroscopy operations”. In light of the above reasons, the word ‘CLARITY’ is of average distinctive character for the kind of goods concerned and ‘CHEMOTARGETS’ is of lower than average distinctive character, and therefore ‘CLARITY’ is the most distinctive element in the mark.

 

As claimed by the applicant, consumers generally tend to focus on the beginning (left of the sign, initial part) of a sign when they encounter a trade mark, because the public reads from left to right. However, in this case the differing beginning of the earlier mark is less distinctive than the coinciding ending of that same sign.

  

Visually and Aurally, the signs coincide in ‘CLARITY’ (and its sound) and differ in ‘CHEMOTARGETS’ (and its sound). The contested sign is entirely contained/reproduced in the earlier mark, in which it constitutes the second word. However, despite not being positioned at the beginning, as explained above, the coinciding word ‘CLARITY’ is the more distinctive element in the earlier mark which affords it a greater impact than the differing term ‘CHEMOTARGETS’, being of lower than average distinctive character.

It is considered, therefore, that the signs are visually and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs coincide in the concept of the distinctive word ‘CLARITY’ and differ in the concept of the word ‘CHEMOTARGETS’ of lower than average distinctive character.

It is considered that the signs are conceptually similar to an average degree.

 

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. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite containing a word considered of lower than average distinctive character.

 

e)  Global assessment, other arguments and conclusion

 

The goods compared are similar to at least an average degree, directed at professionals who will display a higher than average degree of attention during the purchase, for the reasons explained in section b) above.

The signs are visually, aurally and conceptually similar to an average degree. They coincide in the distinctive word, ‘CLARITY’, being the entirety of the contested sign.

The earlier mark as a whole is of normal distinctive character.

 

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. Indeed, in the present case it is highly conceivable that the relevant consumer will perceive the contested mark ‘CLARITY’ as a sub-brand, a variation of the earlier mark ‘CHEMOTARGETS CLARITY’, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

 

In its observations, the applicant argues that there are many trade marks in the registry that contain the word ‘CLARITY’, and which the opponent has not opposed. However, the present case must be examined taking into account only the signs herein involved, and the commercial strategy of the opponent towards other existing signs is irrelevant. Therefore, the applicant´s claim here is set aside.

  

The parties refer to previous decisions of the Office to support its respective 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 parties are not relevant to the present proceedings. They involve signs and/or goods and/or services that are different from the ones herein involved, even if the signs do coincide in one of their elements. Therefore, the same reasoning cannot be expected to be followed or the same outcome reached in the present case.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 16 901 894. It follows that the contested trade mark must be rejected for all the contested goods.

 

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

 

 

Kieran HENEGHAN

María del Carmen SUCH SANCHEZ

Vít MAHELKA

 

 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.