OPPOSITION No B 3 085 832

Naos Société par Actions Simplifiée, 355 rue Pierre-Simon Laplace, 13290, Aix-en-Provence, France (opponent), represented by Cabinet Laurent & Charras, Le Contemporain 50, Chemin de la Bruyère, 69574, Dardilly Cedex, France (professional representative)

a g a i n s t

Constantinos Mavrantonis, Agiou Dimitriou 32, Psychiko, Greece (applicant), represented by Eleonora Kladia and Maria Chatzinikoli, Solonos 74, 10680, Athens, Greece (professional representatives).

On 12/05/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 085 832 is partially upheld, namely for the following contested services:

Class 44: Human hygiene and beauty care; Hygienic care for human beings.

2. European Union trade mark application No 18 026 809 is rejected for all the above services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the services of European Union trade mark application No 18 026 809 for the figurative mark , namely against all services in Class 44. The opposition is based on inter alia, Maltese trade mark registration No 51 186 for the word mark ‘NODE’. 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 Maltese trade mark registration No 51 186.

1. The goods and services

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

Class 3: Cosmetics and cosmetic preparations; shampoos; hair lotions.

The contested services are the following:

Class 44: Human healthcare services; Human hygiene and beauty care; Hygienic care for human beings; Medical services; Medical assistance; Medical examinations; Issuing of medical reports; Medical screening; Health clinic services[medical]; Medical examination of individuals; Medical consultations; Nursing, medical; Medical information; Ambulant medical care; Residential medical treatment services; Medical examination of individuals (Provision of reports relating to the -); Medical treatment services; Services for the provision of medical facilities; Providing medical information; Medical counseling; Provision of medical services; Providing information relating to medical services; Providing information relating to nursing care services; Performing diagnosis of diseases; Preparation of reports relating to medical matters; Compilation of medical reports; Medical testing services relating to the diagnosis and treatment of disease; Medical analysis services; Medical clinic services; Medical evaluation services; Consultancy services relating to surgery; Private hospital services; Medical testing for diagnostic or treatment purposes; Medical house call services; Surgical diagnostic services; Technical consultancy services relating to medical health; Surgical treatment services; Health resort services [medical]; Advisory services relating to medical services; Physician 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.

The contested services human hygiene and beauty care are similar to the opponent’s cosmetics and cosmetics preparations as they have the same purpose. They target the same relevant public and usually coincide in distribution channels. Furthermore, they are complementary.

The contested services hygienic care for human beings are similar to the opponent’s shampoos and hair lotions. Even though these goods and services are different in nature, they have the same purpose. They target the same public and they can have the same distribution channels. Furthermore, these goods and services can also be complementary, as it may be necessary to use the earlier mark’s goods to render the contested services.

The contested services human healthcare services; Medical services; Medical assistance; Medical examinations; Issuing of medical reports; Medical screening; Health clinic services[medical]; Medical examination of individuals; Medical consultations; Nursing, medical; Medical information; Ambulant medical care; Residential medical treatment services; Medical examination of individuals (Provision ofreports relating to the -); Medical treatment services; Services for the provision of medical facilities; Providing medical information; Medical counseling; Provision of medical services; Providing information relating to medical services; Providing information relating to nursing care services; Performing diagnosis of diseases; Preparation of reports relating to medical matters; Compilation of medical reports; Medical testing services relating to the diagnosis and treatment of disease; Medical analysis services; Medical clinic services; Medical evaluation services; Consultancy services relating to surgery; Private hospital services; Medical testing for diagnostic or treatment purposes; Medical house call services; Surgical diagnostic services; Technical consultancy services relating to medical health; Surgical treatment services; Health resort services [medical]; Advisory services relating to medical services and Physician services are aimed at treating human illnesses and they have curative purposes. Said services are considered to be dissimilar to the opponent’s goods in Class 3. Admittedly, it cannot be excluded that some of the opponent’s goods in Class 3 may be used to provide the applicant’s services for health care purposes. However, it is not common for the providers of the contested services (doctors and health care professionals) to actually manufacture and sell their own brand of hygienic products, hair lotions, cosmetics or related goods. They usually use or sell goods which have been manufactured by a third party and which do not bear their own mark. The sale of any such goods would, if anything, be merely ancillary. From the consumer’s standpoint, the goods and services do not stem from the same company or economically linked companies. Even though a certain link cannot be denied due to the common goal of enhancing and improving the physical condition of patients, the differences in nature and especially in usual origin of these goods and services clearly outweigh any similarities.

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 and services found to be similar are directed at the public at large. The degree of attention may vary from average to high when faced with the relevant services as certain aesthetic considerations or consumers’ personal preferences; their sensitivities or their hair or skin type may play a role in the purchase of those goods and services.

3. The signs

NODE
Earlier trade mark	Contested sign

The relevant territory is Malta.

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 mark is the word mark 'NODE'.

The contested mark is a figurative mark composed of six verbal elements. The dominant element of the six elements due to its size and position is ‘NODE’, written in a slightly stylised typeface with a dark blue bold font; below this ‘institute’ is depicted in a smaller font size and in a more transparent blue; finally, in the upper part of the sign, in a much smaller size than the two previous elements, the remaining verbal elements are represented in black and in three short lines. In the first line, the verbal element ‘network’, below ‘of doctors’ and in the last line ‘education’.

The common verbal element ‘NODE’ will be understood by the relevant public as ‘a point, especially in the form of lump or swelling, where one thing joins another’. In anatomy it means ‘any natural bulge or swelling of a structure or part, such as those that occur along the course of a lymphatic vessel (lymph node)’ and in computing it refers to ‘an interconnection point on a computer network’ (information extracted from Collins English Dictionary on 04/05/2020 at https://www.collinsdictionary.com/de/worterbuch/englisch/node). Considering this and other non-specified meanings, this verbal element is not descriptive, allusive or otherwise related to the relevant goods and services and is, therefore, distinctive to a normal degree in both signs.

The verbal element ‘institute’ of the contested sign which is represented in a smaller font size than the verbal element ‘node’ above it, will be understood as ‘an organization set up to do a particular type of work, especially research or teaching, or the building the organization occupies’ (information extracted from Collins English Dictionary on 04/05/2020 at https://www.collinsdictionary.com/de/worterbuch/englisch/institute). Bearing in mind that the relevant services directly concern all kind of beauty and hygienic care services which can be delivered at institutes, it is considered that this element is non-distinctive, since it will be associated with an organisation that carries out a particular type of work or scientific research in the field of beauty care and will be seen by the relevant consumers as merely providing information related to the organisation’s field of activity.

Likewise, the verbal elements depicted in black in the upper right hand corner of the sign ‘network of doctors education’ are perceived with the natural meaning referring to a system of educational connections for medical practitioners. Given that the services for which the registration is sought are in the beauty and hygienic field and that the provision of those services may be provided by doctors or professionals in the field, these verbal elements are considered to be non-distinctive, since consumers would perceive that the services in question are provided by a network of educated doctors.

The contested sign’s verbal elements are depicted in a stylised typeface. However, the fact remains that when signs consist of both verbal and figurative components (or a stylised typeface as the contested sign does in the present case), 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). Thus, the relevant public will focus mainly on the most striking verbal element ‘node’. In view of the above, it is considered that the term ‘node’ will prevail in the perception of the consumer and will remain in his memory.

Visually, the signs coincide in the verbal element ‘NODE’ the only element of the earlier sign, and the dominant and only distinctive element of the contested sign. They differ in the additional non-distinctive verbal elements of the contested sign ‘institute’ and ‘network of doctors education’ which have no counterparts in the earlier mark. Furthermore, the signs differ in the stylisation of the contested sign.

Therefore, the signs are visually similar to an above average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘NODE’, present in both signs. The pronunciation differs in the sound of the non-distinctive additional elements ‘institute’ and ‘network of doctors education’ of the contested sign. However, it should be noted that the non-distinctive verbal elements ‘institute’ and ‘network of doctors education’ are unlikely to be pronounced in the contested mark, since they are descriptive in nature.

Case-law has confirmed that consumers naturally tend to shorten long marks in order to reduce them to elements that are easier to refer to and remember (07/02/2013, T‑50/12, Metro Kids Company, EU:T:2013:68, § 42; 30/11/2011, T‑477/10, SE© Sports Equipment, EU:T:2011:707, § 55; 16/09/2009, T‑400/06, zerorh+, EU:T:2009:331, § 58; 18/09/2012, T‑460/11, Bürger, EU:T:2012:432, § 48).

Therefore, given the distinctiveness of the common element ‘Node’, which will most likely be the only word pronounced, the signs are aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Since the marks share the distinctive verbal element ‘NODE’, they will be associated with a similar meaning. Moreover, in view of the analysis carried above in relation to the other non-distinctive verbal elements of the contested sign, the signs are conceptually similar to a high 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 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.

5. Global assessment, other arguments and conclusion

The likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

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.

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).

The services are similar to the goods of the opponent. They target the public at large whose degree of attention may vary from average to high, depending on the services and personal preferences. Furthermore, the earlier mark is distinctive to an average degree.

The marks at issue are visually similar to an above average degree and aurally and conceptually similar to a high degree as they coincide in the only and distinctive element of the earlier sign, and the dominant and distinctive element of the contested sign.

The Opposition Division considers that the differences between the signs — which are only the non-distinctive elements of the contested sign — are clearly not sufficient to outweigh the strong aural and conceptual similarities between them. Therefore, there is a likelihood of confusion because the differences between the signs are confined to non‑distinctive or secondary elements and aspects.

Consequently, it is concluded that the relevant public could believe that the goods and services found to be similar come from the same undertaking or economically linked undertakings.

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).

Indeed, it is highly 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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public.

Therefore, the opposition is partly well founded on the basis of the opponent’s Maltese trade mark registration No 51 186. It follows from the above that the contested trade mark must be rejected for the services found to be similar to the goods of the earlier trade mark.

The rest of the contested services 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 services cannot be successful.

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

• France trade mark registration No 1 365 249 ‘Nodé’ (word mark)

• France trade mark registration No 4 027 439 ‘NODE’ (word mark)

• Greek trade mark registration No 132 134 ‘NODE’ (word mark)

• International registration No 511 898 ‘Nodé’ (word mark), designating Germany, Austria, Benelux, Spain, Estonia, Italy, Latvia, Lithuania, Portugal and Romania, and

• International registration No 666 559 ‘Nodé’ (word mark), designating Bulgaria, Cyprus, Croatia, Denmark, Finland, United kingdom, Hungary, Poland, Slovakia, Slovenia, Sweden and Czech Republic.

Some of these marks are identical to the one which has been compared and cover the same or a narrower scope of goods, the outcome cannot be different with respect to services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those services.

The other earlier rights invoked by the opponent are less similar to the contested mark. This is because they contain an accent on the last letter ‘e’, which is not present in the contested trade mark, completely changing the meaning of the word. Moreover, they cover the same or a narrower scope of the goods. 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. 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 services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Gonzalo BILBAO TEJADA

Lars HELBERT

Astrid Victoria WÄBER

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.