OPPOSITION No B 3 075 623

Sanacorp Pharmahandel GmbH, Semmelweisstr. 4, 82152 Planegg, Germany (opponent), represented by Unverzagt Von Have Rechtsanwälte Partnerschaftsgesellschaft mbB, Heimhuder Straße 71, 20148 Hamburg, Germany (professional representative)

a g a i n s t

Taleo Corporation, 41 avenue de la gare, 1611 Luxembourg, Luxembourg (applicant).

On 17/02/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 075 623 is rejected in its entirety.

2. The opponent bears the costs.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 17 980 821 ‘Elmea’ (word mark). The opposition is based on the following trade mark registrations:

• German trade mark registration No 302 015 055 683 ‘mea’ (word mark);

• German trade mark registration No 302 011 029 584 ‘mea’ (word mark);

• German trade mark registration No 302 014 025 551 (figurative mark);

• European Union trade mark registration No 14 674 642 (figurative mark);

• European Union trade mark registration No 17 946 465 ‘meadirekt’ (word mark);

• European Union trade mark registration No 17 946 463 (figurative mark);

• European Union trade mark registration No 3 234 581 ‘MEA’ (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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s German trade mark registrations No 302 015 055 683 and No 302 011 029 584 both for the word ‘mea’, and in relation to European Union trade mark registration No 3 234 581 for the word ‘MEA’.

1. The services

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

German trade mark registration No 302 015 055 683

Class 41: Training in the field of sales promotion and employee management as well as professional and product-related training and further education of employees; training, education and further education [including distance training and seminars] in the field of data processing, communication techniques, office organisation and process control as well as medicine, paramedicine, pharmacy and nutrition.

Class 42: Evaluation and exploitation of third party data, namely data analysis for scientific and research purposes, conversion of data from physical to electronic media; design and development of programs for data processing; technical consulting, in particular in the IT hardware and software area, development of computer system analyses, technical planning of IT systems and telecommunications systems; services of an architect, construction and construction planning and consulting, in particular constructional consulting for the design of pharmacies; technical advice for pharmacies; medical-pharmaceutical research; technical advice on the medical approval of drugs for others.

German trade mark registration No 302 011 029 584

Class 41: Training in the field of sales promotion and staff management and technical and product-related education and training of employees; education, training and professional training (including distance learning) in the fields of data processing, communications techniques, office organization and process control as well as in the medical, para-medical and pharmaceutical fields.

Class 42: Evaluation and use of data by third parties, namely for scientific data analysis and research purposes, converting data from physical to electronic media; development and creation of programs for data processing; technical consultancy, in particular in computer hardware and software, development of computer systems analyses, engineering of computer systems and telecommunications systems; services of an architect, building and construction drafting and consultancy, in particular structural engineering consultancy for the redesign of pharmacies; technical consultancy for pharmacies; medical and pharmaceutical research; technical advice in the medical authorization of medicines for other.

European Union trade mark registration No 3 234 581

Class 41: Training in the field of sales promotion, the management of employees, and with regard to product and specialist knowledge; providing of training, further training and education (including correspondence courses) in the field of data processing, communications technology, office organisation and process control.

Class 42: Evaluation and exploitation of data, for others; development and creation of computer programmes; technical consultancy for others, in particular in the field of hardware and software for electronic data processing, systems analysis; planning electronic data processing systems and telecommunications systems; architecture, architectural and construction drafting and consultancy, in particular structural engineering consultancy for designing of new pharmacies; technical consultancy for pharmacies.

The contested services are the following:

Class 42: Scientific research; consultancy in the field of pharmaceutical research; providing medical and scientific research information in the field of pharmaceuticals and clinical trials; consultancy relating to biotechnology; technical consultancy services relating to information technology; technological consultancy.

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

The terms ‘in particular’ and ‘including’, used in the opponent’s list of services, indicates that the specific services 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 in the opponent’s list of services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the services 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 scientific research services include, as a broader category the opponent’s medical and pharmaceutical research services of the earlier marks 1) and 2). Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested technical consultancy services relating to information technology; technological consultancy include, as broader categories the opponent’s technical consulting, in particular in the IT hardware and software area, development of computer system analyses, technical planning of IT systems and telecommunications systems services. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

The contested consultancy in the field of pharmaceutical research; providing medical and scientific research information in the field of pharmaceuticals and clinical trials; consultancy relating to biotechnology and the opponent’s medical-pharmaceutical research of earlier marks 1) and 2) have a similar purpose. They target the same relevant public and are complementary. Therefore, they are similar.

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.

The services at issue are specialised services directed at professionals with specific knowledge or expertise.

The public’s degree of attentiveness may vary from higher than average to high, depending on the price, specialised nature, frequency of purchase, or terms and conditions of the services purchased.

3. The signs

German trade mark registration No 302 015 055 683 mea German trade mark registration No 302 011 029 584 mea European Union trade mark registration No 3 234 581 MEA	Elmea
Earlier trade mark	Contested sign

The relevant territory is Germany for the earlier trade marks 1) and 2) and the European Union for earlier trade mark 3).

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).

All the signs are word marks. According to case-law, 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 (22/05/2008, T‑254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is irrelevant whether the word marks are depicted in lower- or upper-case letters.

The verbal elements ‘MEA’ and ‘Elmea’ have no meaning in relation to the services in any language. The opponent argues that the contested sign consists of the components ‘El’ and ‘mea’, and that the component ‘el’ is the Spanish masculine article. Consumers normally perceive a mark as a whole and do not analyse its various details. Moreover, words should not be artificially dissected. The contested sign ‘Elmea’ does not contain any special character, hyphen, or other punctuation mark, and consequently it is perceived visually as one single word and there is no reason to assume that consumers could break it down into smaller parts, including the Spanish article ‘El’, as claimed by the opponent.

It follows that the relevant public will perceive the verbal element ‘Elmea’ as a single meaningless word and will not attribute any specific meaning to the verbal element ‘mea’/’MEA’ in the context of the relevant services. Therefore, the degree of distinctiveness of the verbal elements ‘mea’/’MEA’ and ‘Elmea’ is average.

Conceptually, neither of the signs has a meaning for the relevant public. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

Visually, the signs coincide in the letters ‘mea’ and they differ in the letters ‘El’ in the contested sign which have no counterparts in the earlier marks. The signs also differ in length. 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. The earlier marks are short words as they are composed of three letters whilst the contested sign appears clearly longer.

Moreover, 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 contested sign begins with the letters ‘El’ which are not present in the earlier marks, and due to these differing letters at the beginning the contested sign creates a different visual impression — it has a different structure and is clearly longer.

Given that the earlier marks are short signs and consumers will be able to perceive them in their entirety, whilst the contested sign contains differing letters in its most relevant part (the beginning), the signs are visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛mea’, present identically in both signs. The pronunciation of the signs differs in the sound of the letters ‛El’ of the contested sign, which will be pronounced at the beginning when referring to the contested sign verbally. The sound of the differing letters ‘El’ is clearly audible and perceivable when referring to the contested sign verbally, which creates a different rhythm and intonation from the earlier trade marks. Therefore, the signs are aurally similar to a low degree.

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 marks

The distinctiveness of the earlier marks 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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

In the present case, the services are identical or similar. They are specialised services directed at business customers with specific professional knowledge or expertise. The public’s degree of attentiveness may vary from higher-than-average to high. The signs are visually and aurally similar to a low degree and the conceptual aspect does not influence the assessment of the similarity of the signs. The degree of distinctiveness of the marks is normal.

Although the signs coincide visually and aurally in three letters, this coincidence is clearly diluted by the presence of the additional letters ‘El’ at the beginning of the contested sign, which is the part where consumers usually focus their attention. Furthermore, the earlier marks are short signs and the shorter the sign, the more easily the public is able to perceive all of its individual elements and small differences (two letters in the present case), which may lead to a different overall impression. Moreover, the relevant public is professional public that displays between higher than average and high degree of attentiveness. They will be aware not only of the specificity of the services but also of the service provider, as well as of the marks on the market, and will therefore clearly perceive even slight differences between the signs at issue.

Therefore, the differences between the marks at issue are considered sufficient to dispel the likelihood that consumers might confuse the signs or believe that the services covered by the marks at issue are provided by the same or economically linked undertakings.

It remains necessary to consider the opponent’s argument that the earlier trade marks, all characterised by the presence of the same word component, ‘mea’, constitute a ‘family of marks’. In its view, such a circumstance is liable to give rise to an objective likelihood of confusion insofar as the consumer, when confronted with the contested mark, which contains the same word component as the earlier marks, will be led to believe that the services identified by that mark may also come from the opponent.

In fact, the concept of the family of marks was exhaustively analysed by the General Court in the Bainbridge case (23/02/2006, T‑194/03, Bainbridge, EU:T:2006:65).

When the opposition to a European Union trade mark is based on several earlier marks and those marks display characteristics that give grounds for regarding them as forming part of a single ‘series’ or ‘family’, a likelihood of confusion may be created by the possibility of association between the contested trade mark and the earlier marks forming part of the series. However, the likelihood of association described above may be invoked only if two conditions are cumulatively satisfied.

Firstly, the proprietor of a series of earlier registrations must furnish proof of use of all the marks belonging to the series or, at the very least, of a number of marks capable of constituting a ‘series’. Secondly, the trade mark applied for must not only be similar to the marks belonging to the series, but also display characteristics capable of associating it with the series. This could not be the case where, for example, the element common to the earlier series of marks is used in the contested trade mark either in a different position from that in which it usually appears in the marks belonging to the series or with a different semantic content. Although the contested sign contains the letters ‘mea’, consumers will not artificially split the word ‘Elmea’ into ‘El’ and ‘mea’ and will perceive the contested sign as a single meaningless word which is sufficiently different from the opponent’s earlier trade marks. Consequently, it is unlikely that consumers could believe that the contested sign is also part of the opponent’s family of marks. Therefore, the contested sign does not display the characteristics capable of associating it with the opponent’s family of marks.

Since one of the two cumulative conditions is not met, it is not necessary to assess the evidence submitted by the opponent, and the opponent’s claim of a family of marks must be set aside.

Considering all the above, there is no likelihood of confusion on the part of the public even for identical or similar services. Therefore, the opposition must be rejected.

The opponent has also based its opposition on the following earlier trade marks:

• German trade mark registration No 302 014 025 551 (figurative mark);

• European Union trade mark registration No 14 674 642 (figurative mark);

• European Union trade mark registration No 17 946 465 ‘meadirekt’ (word mark);

• European Union trade mark registration No 17 946 463 (figurative mark).

The other earlier rights invoked by the opponent are less similar to the contested mark. This is because they contain further figurative elements and additional verbal elements such as ‘direkt’, which are not present in the contested trade mark and which increase the differentiation between the signs. Moreover, they cover the same or a narrower scope of the services. Therefore, the outcome cannot be different with respect to services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those services.

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. In the present case, the applicant did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Cynthia DEN DEKKER

Birute SATAITE-GONZALEZ

Erkki MÜNTER

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.