OPPOSITION No B 3 080 421

DeguDent GmbH, Rodenbacher Chaussee 4, 63457 Hanau-Wolfgang, Germany (opponent), represented by Bristows LLP, 100 Victoria Embankment, EC4Y 0DH London, United Kingdom (professional representative)

a g a i n s t

Carana Dental SRL, Rumnanía Sat Roșu, Comuna Chiajna, Strada Crivățului, 62 (provizoriu), Judet Ilfov, Roșu, Romania (applicant), represented by Charrier Rapp & Liebau Patentanwälte Partg mbB, Fuggerstr. 20, 86150 Augsburg, Germany (professional representative).

On 22/05/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 080 421 is partially upheld, namely for the following contested goods:

Class 5: Pharmaceutical, veterinary and sanitary preparations; materials for dressings; dressings, medical; material for stopping teeth and dental wax for dental and dental-technology purposes; embedding compounds for dental technology laboratories; moulding compounds for dental purposes; moulding compounds for dental technology purposes; plaster for dental technology purposes; silicones for dental and dental technology purposes; disinfectants.

Class 10: Surgical apparatus and instruments; finger guards for medical purposes; dental burs; injectors for medical purposes; cannulae; artificial teeth; lamps for medical purposes; medical instruments; medical instruments; knives for surgical use; scissors for surgery; scalpels; probes for medical purposes; mirrors for dentists; sterile sheets, surgical; veterinary apparatus and instruments; dental apparatus and instruments; dental apparatus, electric; dental examination chairs; pins for artificial teeth; dental cleaning apparatus; dental articulators; articulation plates for dental articulators; adhesive plates and bases for dental articulators; face-bows; bite forks and nosepieces for dental technology purposes; dental drills; dental drill bits; dental colour guides; dental pins; dental probes; apparatus for displaying dental images; apparatus for use by dental hygienists.

Class 11: Heated polymerisation units for dental restoration compounds, dental ovens; sterilisers for dental instruments.

Class 21: Toothbrushes; toothbrushes, electric; floss for dental purposes.

2. European Union trade mark application No 17 995 017 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 995 017 ‘carana’ (word mark). The opposition is based on, inter alia, European Union trade mark No 17 951 430 ‘CARRARA’ (word mark) in relation to which the opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARKS

The opponent initially also invoked Article 8(5) EUTMR in relation to all earlier marks. However, on 13/11/2019 the opponent requested to proceed with the examination of the opposition in relation to Article 8(1)(b) EUTMR only.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based.

The applicant has not submitted the request for proof of use by way of a separate document as required by Article 10(1) EUTMDR.

Therefore, the request for proof of use is inadmissible pursuant to Article 10(1) EUTMDR.

Moreover, the date of filing of the contested trade mark is 29/11/2018.

Earlier European Union trade mark registration No 17 951 430 was registered on 15/01/2019. Therefore, the request for proof of use in relation to this earlier trade mark is inadmissible in any case.

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 European Union trade mark registration No 17 951 430.

1. The goods

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

Class 5: Material for stopping teeth; dental wax; dental wax, in particular in the form of alloys, ceramics or plastics; dental alloys; dental amalgams; metal and ceramic alloys for dental use.

Class 10: Dental and dental technology apparatus and instruments.

The contested goods are the following:

Class 5: Pharmaceutical, veterinary and sanitary preparations; dietetic preparations adapted for medical use; infant formula; plasters, materials for dressings; dressings, medical; material for stopping teeth and dental wax for dental and dental-technology purposes; embedding compounds for dental technology laboratories; moulding compounds for dental purposes; moulding compounds for dental technology purposes; plaster for dental technology purposes; silicones for dental and dental technology purposes; disinfectants; preparations for destroying vermin; fungicides; herbicides.

Class 10: Surgical apparatus and instruments; finger guards for medical purposes; dental burs; injectors for medical purposes; enema apparatus for medical purposes; cannulae; artificial teeth; lamps for medical purposes; medical instruments; medical instruments; knives for surgical use; scissors for surgery; scalpels; probes for medical purposes; mirrors for dentists; sterile sheets, surgical; veterinary apparatus and instruments; dental apparatus and instruments; dental apparatus, electric; dental examination chairs; pins for artificial teeth; dental cleaning apparatus; dental articulators; articulation plates for dental articulators; adhesive plates and bases for dental articulators; face-bows; bite forks and nosepieces for dental technology purposes; dental drills; dental drill bits; dental colour guides; dental pins; dental probes; apparatus for displaying dental images; apparatus for use by dental hygienists.

Class 11: Heated polymerisation units for dental restoration compounds, dental ovens; sterilisers for dental instruments.

Class 21: Toothbrushes; toothbrushes, electric; floss for dental purposes; toothpicks.

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 5

The contested material for stopping teeth and dental wax for dental and dental-technology purposes are included in the broad categories of the opponent’s material for stopping teeth; dental wax. Therefore, they are identical.

The contested pharmaceutical and sanitary preparations; materials for dressings; dressings, medical; embedding compounds for dental technology laboratories; moulding compounds for dental purposes; moulding compounds for dental technology purposes; plaster for dental technology purposes; silicones for dental and dental technology purposes; disinfectants are similar at least to a low degree to the opponent’s material for stopping teeth since they coincide in the relevant public and distribution channels. Dental materials for stopping teeth are very specific goods sold through specialised distribution channels aimed at professionals, namely dentists. However, the contested pharmaceutical and sanitary preparations; materials for dressings; dressings, medical; disinfectants cover products that are used by dentists in their daily work, in particular, sedative drugs used for intravenous sedation during dental procedures, antiseptics. Therefore, the contested goods are also aimed at dentists and are likely to be provided through the same specialised distribution channels as the opponent’s materials for stopping teeth. Likewise, the contested embedding compounds for dental technology laboratories; moulding compounds for dental purposes; moulding compounds for dental technology purposes; plaster for dental technology purposes; silicones for dental and dental technology purposes all target the same relevant public (i.e. dentists) and have the same distribution channels as the opponent’s materials for stopping teeth.

The contested veterinary preparations include preparations for the dental treatment of animals and are similar to a low degree to the opponent’s dental and dental technology apparatus and instruments in Class 10. The goods have the same relevant public and distribution channels. They are also complementary.

However, the contested dietetic preparations adapted for medical use; infant formula; plasters; preparations for destroying vermin; fungicides; herbicides are dissimilar to any of the opponent’s goods in Classes 5 and 10. The goods have a different nature, purpose and method of use. They differ in manufacturers, relevant public and distribution channels. They are neither complementary nor in competition.

Contested goods in Class 10

The contested surgical apparatus and instruments; finger guards for medical purposes; dental burs; injectors for medical purposes; cannulae; artificial teeth; lamps for medical purposes; medical instruments; medical instruments; knives for surgical use; scissors for surgery; scalpels; probes for medical purposes; mirrors for dentists; sterile sheets, surgical; veterinary apparatus and instruments; dental apparatus and instruments; dental apparatus, electric; dental examination chairs; pins for artificial teeth; dental cleaning apparatus; dental articulators; articulation plates for dental articulators; adhesive plates and bases for dental articulators; face-bows; bite forks and nosepieces for dental technology purposes; dental drills; dental drill bits; dental colour guides; dental pins; dental probes; apparatus for displaying dental images; apparatus for use by dental hygienists are considered, if not identical, similar at least to a low degree to the opponent’s dental and dental technology apparatus and instruments. All the goods may target the same relevant public (i.e. dentists) and may be distributed through the same distribution channels. Moreover, the contested goods, such as surgical apparatus and instruments have the same purpose and manufacturers as the opponent’s goods in Class 10, and, in addition, the contested artificial teeth are complementary to the opponent’s goods. Furthermore, some of these contested goods, for example dental apparatus and instruments are identically included in the opponent’s list of goods. Other contested goods, such as dental apparatus, electric; dental cleaning apparatus; dental drills are included in the broad category of the opponent’s dental and dental technology apparatus and instruments, while, for example, the contested veterinary apparatus and instruments, which includes apparatus and instruments for animal dental care, overlaps with the opponent’s goods in Class 10, which may also serve for veterinary purposes.

However, the contested enema apparatus for medical purposes is considered dissimilar to the opponent’s goods in Classes 5 and 10. Even if the general purpose of the contested goods may be similar to that of the opponent’s goods, they have a different nature and method of use. They differ in manufacturers, relevant public and distribution channels. They are neither complementary nor in competition.

Contested goods in Class 11

The contested heated polymerisation units for dental restoration compounds (which are used to heat dental restoration materials); dental ovens (which are used during the production of ceramic dental restorations such as crowns, bridges, inlays and onlays); sterilisers for dental instruments (which sterilise dental utensils or instruments by destroying germs) are all apparatus used by dentists and have a certain degree of similarity with the opponent’s dental and dental technology apparatus and instruments in Class 10. Therefore, they coincide in the relevant public and are likely to be provided through the same specialised distribution channels. They are similar at least to a low degree.

Contested goods in Class 21

When comparing the opponent’s dental and dental technology apparatus and instruments in Class 10 with the contested toothbrushes; toothbrushes, electric; floss for dental purposes, the Opposition Division finds that there is a certain degree of similarity between them, since they belong to the same trade sector (dentistry) and might have the same commercial origin and a similar essential function or purpose (oral hygiene). However, their nature is basically different, and so are their distribution channels and outlets. In fact, the opponent’s goods are dental (medical) preparations, apparatus and instruments, which are sold in specialised outlets or through specialised sales agents in the medical sector, whereas the applicant’s toothbrushes and floss are marketed in pharmacies, supermarkets, etc. It follows that these contested goods are similar only to a low degree to the opponent’s goods in Class 10.

However, the contested toothpicks are dissimilar to any of the opponent’s goods in Classes 5 and 10. The goods have a different nature, purpose and method of use. They differ in manufacturers, relevant public and distribution channels. They are neither complementary nor in competition.

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 found to be identical and similar to varying degrees are mostly directed at professionals in the medical field such as dentists. However, some of them also target the public at large (e.g. toothbrushes; toothbrushes, electric; floss for dental purposes in Class 21).

The degree of attention may vary from average (e.g. for toothbrushes in Class 21) to high (e.g. for surgical apparatus and instruments in Class 10), depending on the specialised nature of the goods, the frequency of purchase and their price as well as the impact that the goods may have on human and/or animal health.

3. The signs

CARRARA	carana
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 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.

Even if a part of the relevant public recognises the name of the Italian city in the word ‘CARRARA’, it is meaningless for the majority of the relevant public.

The Opposition Division will first examine the opposition in relation to the part of the public for whom ‘CARRARA’ has no meaning and has a normal degree of distinctiveness. This is the case for part of the French-, German-, Polish- or Spanish-speaking consumers.

The word ‘carana’ of the contested sign is meaningless in the aforementioned territories and considered distinctive.

The signs have no elements that could be considered dominant.

Visually, the signs coincide in the letters ‘CAR*A*A’, that is, in five out of seven or six letters, respectively. Therefore, the majority of letters are shared and placed in the same order. The words only differ in their penultimate letters ‘N’ and ‘R’ and in the double ‘R’ in the middle of the earlier mark, whereas the contested sign has only one ‘R’. Moreover, since both marks are word marks, and protection is sought for the word as such and not its written form, the differences in the use of lower or upper case are immaterial in the present case.

Accordingly, the marks are visually similar to an average degree.

Aurally, the first letters, ‘CAR’, of the marks will be pronounced identically in accordance with the pronunciation rules of the aforementioned relevant territories. The signs also share the same order of vowels ‘A-A-A’ and the same number of syllables. Since the different consonants ‘N’ and ‘R’ are not significant in the overall intonation of the signs, the marks are aurally similar to an average degree.

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

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 initially claimed that the earlier trade mark has reputation but on 13/11/2019, the opponent withdrew Article 8(5) as a ground of the opposition and 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 in question from the perspective of the public under analysis. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The contested goods are partly identical and similar to varying degrees and partly dissimilar to the opponent’s goods. The signs are visually and aurally similar to an average degree. The earlier mark has a normal degree of inherent distinctive character.

The signs are similar to the extent that they coincide in ‘CAR*A*A’. Furthermore, although there is a risk in relying too much on a mechanical quantitative evaluation, it is a fact that counting the total number of letters, identifying the amount of identical letters and comparing their order in the respective marks can provide certain guidance. Taking into account that the signs share five letters out of seven and six letters, respectively, and they are in the same positions, the differences in ‘N’ and ‘R’ and in the double ‘R’ are insufficient to make the marks distinguishable from one another, in particular as the words are meaningless for the public under analysis and there is no concept attached to the signs that could help consumers differentiate one sign from the other.

Account is also taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the French-, German-, Polish- or Spanish-speaking public, for whom the word ‘CARRARA’ has no meaning, and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 17 951 430. 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.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to varying degrees to those of the earlier trade mark, including those goods similar to a low degree since the overall similarity between the signs is sufficient to counteract the low degree of similarity between the goods.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

The opponent has also based its opposition on the European Union trade mark registration No 1 270 701. Since this mark is identical to the one that has been compared above and covers a narrower scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those 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. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Martin MITURA

Anna BAKALARZ

Arkadiusz GÓRNY

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.