OPPOSITION Nо B 3 081 185

Medion AG, Am Zehnthof 77, 45307 Essen, Germany (opponent), represented by Becker & Müller, Turmstr. 22, 40878 Ratingen, Germany (professional representative)

a g a i n s t

Definition Health Limited, Amelia House, Crescent Road, Worthing West Sussex BN11 1QR, United Kingdom (applicant), represented by Ioannides, Cleanthous & Co LLC, 4 Prometheus Street 1st Floor, 1065 Nicosia, Cyprus (professional representative).

On 19/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 081 185 is upheld for all the contested goods and services, namely:

Class 9: Computer software and digital application programs and platforms for the purpose of monitoring, managing and organising medical treatment or procedures, accessed via the internet, online, computers, digital applications and wireless devices; software or digital application programs and platforms to enable uploading, posting, sharing, displaying, tagging, sharing or otherwise providing electronic media or information for monitoring, managing and organising medical treatment or procedures; downloadable computer software or code in the nature of a mobile application for the transmission of messages among computer or digital application users, status and location updates and tracking; downloadable software in the nature of a mobile application; downloadable software in the nature of a mobile application in the field of social media, namely, to enable users to send, view or receive status or location updates, online forums and messaging, uploading and downloading electronic data and digital files to share with others for monitoring, managing and organising medical treatment or procedures; downloadable or digital software; apparatus, instruments and devices for the tracking and monitoring of persons.

Class 38: Transmission of digital information; data transmission; online messaging services; online communications services; providing access to and transmission of photos, pictures, videos, information and other data via software, via applications for mobile devices, via the internet and other telecommunication facilities; providing access to interactive and electronic platforms, in particular to applications for smart phones and other devices; all of the aforesaid being for the purpose of monitoring, managing and organising medical treatment and procedures.

Class 42: Advice relating to the development of computer systems; advisory and information services relating to computer software; advisory services relating to computer software; computer network services; computerised data storage services; creating programmes for data processing; design and development of computer software for use with medical technology; design and development of systems for data input, output, processing, display and storage; development and design of mobile applications; development of application software for delivery of multimedia content; interactive hosting services which allow the users to publish and share their own content and images online; software as a service (SaaS); technical advice and consultancy services in the field of information technology; technical advisory services relating to data processing.

2. European Union trade mark application No 18 009 415 is rejected for all the contested goods and services. It may proceed for the remaining services.

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

REASONS

On 25/04/2019, the opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 009 415 (figurative mark), namely against all the goods in Class 9, all the services in Class 38 and some of the services in Class 42. The opposition is based, inter alia, on European Union trade mark registration No 16 673 171 ‘life’ (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 European Union trade mark registration No 16 673 171.

a) The goods and services

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

Class 9: Navigation, guidance, tracking, targeting and map making devices; information technology equipment.

Class 38: Telecommunications.

Class 42: Hosting services and software as a service and rental of software; consultancy in the field of computers; on-line computer services; computer hardware development; software development, programming and implementation.

The contested goods and services are the following:

Class 9: Computer software and digital application programs and platforms for the purpose of monitoring, managing and organising medical treatment or procedures, accessed via the internet, online, computers, digital applications and wireless devices; software or digital application programs and platforms to enable uploading, posting, sharing, displaying, tagging, sharing or otherwise providing electronic media or information for monitoring, managing and organising medical treatment or procedures; downloadable computer software or code in the nature of a mobile application for the transmission of messages among computer or digital application users, status and location updates and tracking; downloadable software in the nature of a mobile application; downloadable software in the nature of a mobile application in the field of social media, namely, to enable users to send, view or receive status or location updates, online forums and messaging, uploading and downloading electronic data and digital files to share with others for monitoring, managing and organising medical treatment or procedures; downloadable or digital software; apparatus, instruments and devices for the tracking and monitoring of persons.

Class 38: Transmission of digital information; data transmission; online messaging services; online communications services; providing access to and transmission of photos, pictures, videos, information and other data via software, via applications for mobile devices, via the internet and other telecommunication facilities; providing access to interactive and electronic platforms, in particular to applications for smart phones and other devices; all of the aforesaid being for the purpose of monitoring, managing and organising medical treatment and procedures.

Class 42: Advice relating to the development of computer systems; advisory and information services relating to computer software; advisory services relating to computer software; computer network services; computerised data storage services; creating programmes for data processing; design and development of computer software for use with medical technology; design and development of systems for data input, output, processing, display and storage; development and design of mobile applications; development of application software for delivery of multimedia content; interactive hosting services which allow the users to publish and share their own content and images online; software as a service (SaaS); technical advice and consultancy services in the field of information technology; technical advisory services relating to data processing.

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

The term ‘in particular’, used in the applicant’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 terms ‘namely’ and ‘relating to’, used in the applicant’s list of goods and 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 goods and services specifically listed. 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 apparatus, instruments and devices for the tracking and monitoring of persons are included in the opponent’s broad category of navigation, guidance, tracking, targeting and map making devices. Therefore, they are identical.

The contested downloadable software in the nature of a mobile application in the field of social media, namely, to enable users to send, view or receive status or location updates, online forums and messaging, uploading and downloading electronic data and digital files to share with others for monitoring, managing and organising medical treatment or procedures; downloadable software in the nature of a mobile application; computer software and digital application programs and platforms for the purpose of monitoring, managing and organising medical treatment or procedures, accessed via the internet, online, computers, digital applications and wireless devices; software or digital application programs and platforms to enable uploading, posting, sharing, displaying, tagging, sharing or otherwise providing electronic media or information for monitoring, managing and organising medical treatment or procedures; downloadable computer software or code in the nature of a mobile application for the transmission of messages among computer or digital application users, status and location updates and tracking; downloadable or digital software are essentially software and therefore similar to the opponent’s information technology equipment, which may encompass all sorts of data processing equipment, including all sorts of computer hardware. Data processing equipment and software typically coincide in producer, distribution channels and end users. Furthermore, they are complementary.

Furthermore, it is irrelevant that the goods in dispute, as claimed by the applicant, might target different markets as the particular circumstances, in which the goods and services covered by the marks are actually marketed, have, as a matter of principle, no impact on the assessment of the likelihood of confusion because they may vary in time depending on the wishes of the proprietors of the trade marks (15/03/2007, C‑171/06 P, Quantum, EU:C:2007:171, § 59; 22/03/2012, C‑354/11 P, G, EU:C:2012:167, § 73; 21/06/2012, T‑276/09, Yakut, EU:T:2012:313, § 58).

Contested services in Class 38

The contested transmission of digital information; data transmission; online messaging services; online communications services; providing access to and transmission of photos, pictures, videos, information and other data via software, via applications for mobile devices, via the internet and other telecommunication facilities; providing access to interactive and electronic platforms, in particular to applications for smart phones and other devices; all of the aforesaid being for the purpose of monitoring, managing and organising medical treatment and procedures are all included in the opponent’s broad category of telecommunications. Therefore, they are identical.

Contested services in Class 42

Software as a service (SaaS) is identically contained in both lists of services (including synonyms).

The contested technical advice and consultancy services in the field of information technology include, as a broader category, the opponent’s consultancy in the field of computers. Since the Office cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested advisory services relating to computer software; advice relating to the development of computer systems; technical advisory services relating to data processing; advisory and information services relating to computer software are included in the opponent’s broad category of consultancy in the field of computers. Therefore, they are identical.

The contested computerised data storage services; computer network services are included in the opponent’s broad category of on-line computer services. Therefore, they are identical.

The contested design and development of systems for data input, output, processing, display and storage are included in the opponent’s broad category of computer hardware development. Therefore, they are identical.

The contested creating programmes for data processing; design and development of computer software for use with medical technology; development and design of mobile applications; development of application software for delivery of multimedia content are included in the opponent’s broad category of software development, programming and implementation. Therefore, they are identical.

The contested interactive hosting services which allow the users to publish and share their own content and images online are included in the opponent’s broad category of hosting services. Therefore, they are identical.

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 and services found to be identical or similar are directed at the public at large as well as business customers with specific professional knowledge or expertise.

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

c) The signs

life
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 sign is the word mark ‘life’. In the case of word marks, it is the word as such that is protected, as long as its depiction does not depart from the usual way of writing (standard rules of capitalisation), as is the case here. Therefore, it is irrelevant whether the marks are written in upper- or lower-case letters.

The word ‘life’ of the earlier mark will be understood as, inter alia, ‘the experience or state of being alive’ (information extracted from the Cambridge Dictionary on 07/05/2021 at https://dictionary.cambridge.org/dictionary/english/life). This element is a basic English word that is understood throughout the European Union (15/10/2018, T‑444/17, life coins / LIFE et al., EU:T:2018:681, § 52) and the relevant public will therefore understand it. However, this word has no direct descriptive, allusive, laudatory or otherwise related meaning for the relevant goods and services and is, therefore, considered distinctive.

The contested sign is a figurative mark consisting of the verbal element ‘LIFEBOX’, depicted in a fairly standard, blue font, and the depiction of a heart in shades of blue and green.

While the font and colours are of a merely decorative nature and will not have much of an impact on the perception of the sign by the relevant public, the depiction of the heart is rather fanciful and therefore distinctive. However, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

Although the verbal element is composed of only one word, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). As mentioned above, the word ‘LIFE’ will be understood by the entire relevant public, who will dissect the contested sign into the elements ‘LIFE’ and ‘BOX’.

The verbal component ‘LIFE’ of the contested sign will be understood as explained above, which is allusive at least to the extent that some of the goods and services are related to medical treatment and procedures. In relation to these goods and services, the verbal component ‘LIFE’ is distinctive to a below-average degree. For the goods and services which are not related to medical treatment or procedures, the verbal component ‘LIFE’ is of a normal degree of distinctiveness as is the case for the earlier mark. The verbal component ‘BOX’, being a basic English term, will be understood by the majority of the relevant public as ‘a reference to a square or rectangular container with stiff sides and sometimes a lid’ (information extracted on 07/05/2021 from Cambridge Dictionary at https://dictionary.cambridge.org/dictionary/english/box). Whether understood in the abovementioned sense or not, the verbal component ‘BOX’ has no particular meaning and is not otherwise allusive in the context of the relevant goods and services and is therefore of a normal degree of distinctiveness. The same applies to the verbal element ‘LIFEBOX’ taken as a whole, which is a coined term and therefore distinctive.

The contested sign has no element that could be considered more dominant (more eye-catching).

Finally, 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.

Visually, the signs coincide in the word ‘LIFE’, which is the entire earlier mark and the first verbal component of the contested sign. The signs differ in the additional verbal component ‘BOX’, the heart depiction and the use of colours and a stylised font of the contested sign. Despite these differences, the entire earlier mark is fully incorporated in the beginning of the verbal component of the contested sign. The differences are mainly limited to elements which either have a limited impact on the perception of the sign because of being decorative or secondary due to its type (figurative) or positioned at the very end of the verbal element, which is the part where consumers usually pay less attention. Although the verbal component ‘LIFE’ of the contested sign is allusive (for some of the goods and services), this does not render such element to be non-distinctive, but rather to be distinctive to a reduced degree. Taking into account the above, and in particular the different weighting of the various elements of the signs, they are considered visually similar to an average degree.

Aurally, similar considerations to those of the visual comparison apply. The signs coincide, irrespective of the different pronunciation rules in different parts of the relevant territory, in the sound of the letters ‘LIFE’, present identically in both signs. The signs differ in the sound of the additional letters ‘BOX’ of the contested sign. Considering the fact that the earlier right is completely incorporated in the beginning of the only verbal element of the contested sign, albeit having a reduced degree of distinctiveness for some of the goods and services, they are considered aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs coincide in the meaning of the word ‘LIFE’. They differ, to the extent that this element will be understood by the relevant public, in the meaning of the verbal component ‘BOX’ and the heart depiction of the contested sign. Taking into account the different weighting of these elements, the signs are considered conceptually similar to at least a below-average degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion 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. 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. In this regard, the distinctiveness of the earlier mark is assessed in relation to the goods and services of the earlier mark, which are similar or identical to the goods and services of the contested sign. As neither the goods nor services of the earlier mark demonstrate any particular relationship to the medical field (unlike the contested sign), the earlier mark is neither descriptive nor otherwise allusive and is therefore distinctive to a normal degree.

e) 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).

Account is 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).

The goods and services are partly identical and partly similar. They target the public at large and professionals with specific professional knowledge. The public’s degree of attentiveness may vary from average to high. The distinctiveness of the earlier mark is normal. The signs are visually and aurally similar to an average degree. Conceptually, the signs are similar to at least a below-average degree.

The signs coincide in the verbal component ‘LIFE’. Although this element is of a reduced degree of distinctiveness at least for some of the relevant goods and services of the contested sign, this is outweighed by the fact that the earlier mark is reproduced entirely in the contested sign and, in particular, in its beginning, which is more important since it catches the consumer’s attention first. The remaining differing elements are limited to figurative elements that are either decorative (font and colours) or secondary (depiction of a heart) nature and the additional word ‘BOX’, which, however, is placed in a secondary position at the very end of the verbal element of the contested sign.

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.

In the present case, the Opposition Division considers it conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, 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).

Despite the abovementioned differences, the Opposition Division considers the existing similarities to just outweigh the dissimilarities of the signs.

In its observations, the applicant argued that the earlier trade mark lacks distinctive character given that there are thousands of other trade marks that include the word ‘LIFE’. In support of its argument, the applicant referred to a search via TMView revealing more than 30.000 trade marks across the EU containing the word ‘LIFE’.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. In this regard, the applicant did not submit any particular evidence, which may suggest use of any of these marks referred to. Under these circumstances, the applicant’s claims must be set aside.

The applicant further suggested that the opponent filed the earlier mark in bad faith. However, this allegation can only be the basis for invalidity proceedings and not opposition proceedings. Unlike, for example, a possible non-use of the earlier mark (after expiry of the grace period), such an objection cannot lead to a rejection of the opposition. The objection is therefore irrelevant.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 16 673 171. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the abovementioned earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Christian STEUDTNER

Holger Peter KUNZ

Anna BAKALARZ

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.