OPPOSITION No B 3 079 822

Batavia Biosciences B.V., Zernikedreef 16, 2333 CL Leiden, the Netherlands (opponent), represented by Landmark B.V., Nijverheidsweg-Noord 86c, 3812 PN Amersfoort, the Netherlands (professional representative)

a g a i n s t

Singleron UG (Haftungsbeschränkt), Dechant-Hess Strasse 33, 41468 Neuss, Germany (applicant), represented by CH Kilger Anwaltspartnerschaft mbB, Fasanenstr. 29, 10719 Berlin, Germany (professional representative).

On 04/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 079 822 is partially upheld, namely for the following contested goods and services:

Class 9: Computer software for the performance of microfluidic assays, biological assays, antigen detection assays, cell based assays and antibody assays; computer software for the analysis of single biological cells; computer software for detecting and analyzing single biological cells as well as its content.

Class 42: Drug discovery services; biotechnological research; research and development in the field of microorganisms and cells; research and development in the field of single-cell analysis; research and development in the field of microfluidic chip assays and systems; scientific services relating to the isolation and cultivation of human tissues and cells; cell separation technology services; cell separation research services.

2. European Union trade mark application No 18 012 621 is rejected for all the above goods and services. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 18 012 621 for the word mark ‘SCOPE’. The opposition is based on European Union trade mark registration No 18 001 984 for the word mark ‘SCOPE’. The opponent invoked Article 8(1)(a) and (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.

1. The goods and services

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

Class 42: Research and development in the pharmaceutical and biotechnology fields; research and development of vaccines and medicines.

The contested goods and services are the following:

Class 1: Nucleic acid sequencing programs [other than for medical use]; nucleic acids for scientific purposes; nucleic acid for use in nucleic acid amplification processes [other than for medical use]; nucleic acid amplification reagents [other than for medical use]; polymers for use in the analysis of nucleic acids.

Class 9: Computer software for the performance of microfluidic assays, biological assays, antigen detection assays, cell based assays and antibody assays; computer software for the analysis of single biological cells; computer software for detecting and analyzing single biological cells as well as its content.

Class 42: Drug discovery services; biotechnological research; research and development in the field of microorganisms and cells; research and development in the field of single-cell analysis; research and development in the field of microfluidic chip assays and systems; scientific services relating to the isolation and cultivation of human tissues and cells; cell separation technology services; cell separation research services.

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.

Contested goods in Class 1

The contested goods in Class 1 are various nucleic acids and nucleic acid-related substances which can be used in biotechnological research and development. However, the mere fact that they may be used in conjunction with the opponent’s services in Class 42 is not sufficient in itself to conclude that the goods and services are similar. Furthermore, their nature, purpose and relevant public are distinct: the opponent’s services are provided to third parties, while the contested goods are used by biotechnological companies and laboratories. Finally, the compared goods and services have different distribution channels and are not in competition with each other. Therefore, they are dissimilar.

Contested goods in Class 9

The contested goods in Class 9 are similar to the opponent’s research and development in the biotechnology field as they are complementary and may coincide in their providers and relevant public.

Contested services in Class 42

The contested services in Class 42 being research and development services in the pharmaceutical and in various fields of biotechnology such as microorganisms, cells and tissues analysis and microfluidic chip assays are included in the broad categories of, or overlap with, the opponent’s research and development in the pharmaceutical and biotechnology fields. Therefore, they are identical.

2. The signs

SCOPE	SCOPE
Earlier trade mark	Contested sign

The signs are identical.

3. Global assessment, other arguments and conclusion

In the present case, the goods and services of the contested sign have been found partly identical, partly similar and partly dissimilar to the services of the earlier mark.

The signs were found to be identical and the contested services, as established above in section a) of this decision, are identical. Therefore, the opposition must be upheld according to Article 8(1)(a) EUTMR for these services. Furthermore, some contested goods, as established above in section a) of this decision, were found to be similar to the services covered by the earlier trade mark. Given the identity of the signs, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition is upheld also insofar as it is directed against these goods. The rest of the contested goods are dissimilar. As the 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.

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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Manuela RUSEVA

Tzvetelina IANTCHEVA

Valeria ANCHINI

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.