OPPOSITION No B 3 100 248

Fidia Farmaceutici S.p.A., Via Ponte della Fabbrica, 3/A, 35031 Abano Terme (PD), Italy (opponent), represented by Dr. Kunz-Hallstein Rechtsanwälte, Galeriestr. 6A, 80539 München, Germany (professional representative)

a g a i n s t

Fida-Tech ApS, Universitetsparken 2, 2100 København, Denmark (applicant), represented by Brian Sørensen, Marselisborg Havnevej 36, 8000 Aarhus C, Denmark (professional representative).

On 06/08/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 100 248 is partially upheld, namely for the following contested goods and services:

Class 9: Software for characterization and quantification of molecules, including concentration and size of molecules within a biological sample; software for measuring and analysing molecules in samples from humans and animals for medical and veterinary apparatus and instruments.

Class 10: All goods in this class.

Class 42: All services in this class.

2. European Union trade mark application No 18 038 110 is rejected for all the above goods and services. It may proceed for the remaining goods, namely:

Class 9: Apparatus and instruments for characterization and quantification of molecules, including concentration and size of molecules within a biological sample.

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 18 038 110 for the word mark ‘FIDA’. The opposition is based on Italian trade mark registration No 302 019 000 004 257 for the word mark ‘FIDIA’. 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.

a) The goods and services

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

Class 1: Adhesives for use in industry; fire extinguishing and fire prevention compositions; compost, manures, fertilizers; putties and other paste fillers; biological preparations for use in industry and science; tempering and soldering preparations; substances for tanning animal skins and hides; chemicals for use in industry, science and photography, as well as agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; chemical and biological substances for the production of pharmaceutical products, cosmetics, medicines, dietetic substances, nutritional substances and health care products.

Class 3: Non-medicated cosmetics and toiletry preparations; non-medicated dentifrices; hair lotions; bleaching preparations and other substances for laundry use; cleaning, polishing scouring and abrasive preparations; perfumery, essential oils; non-medicated soaps; shampoos.

Class 5: Dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for human beings and animals; disinfectants; fungicides, herbicides; surgical implants comprised of living tissues; plasters, materials for dressings; nutritional supplements; material for stopping teeth, dental wax; medicines; pharmaceutical products; medical and veterinary preparations; sanitary preparations for medical purposes; parapharmaceutical products; preparations for destroying vermin; pre-filled syringes for medical purposes.

Class 10: Sexual activity apparatus, devices and articles; apparatus, devices and articles for nursing infants; surgical, medical, dental and veterinary apparatus and instruments; massage apparatus; applicators for pharmaceutical and medical products; orthopaedic articles; therapeutic and assistive devices adapted for the disabled; suture materials; artificial limbs, eyes and teeth.

Class 40: Custom manufacture of pharmaceuticals; manufacture of pharmaceutical products, medical preparations, cosmetics, nutritional supplements for medical use; custom manufacture of special products; treatment of materials.

Class 41: Sporting and cultural activities; entertainment; education; arranging and conducting of conferences and seminars; publication of results of clinical studies for pharmaceutical and medical preparations; publishing services.

Class 42: Conducting clinical trials and studies; design and development of computer hardware and software; research and development in the field of pharmaceutical products, medicines, cosmetics, and nutritional supplements; industrial analysis and industrial research services; chemical and medical laboratory services; scientific and technological services and research and design relating thereto.

Class 44: Hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services; pharmaceutical services; medical services (listed twice); veterinary services.

The contested goods and services are the following:

Class 9: Apparatus, instruments and software for characterization and quantification of molecules, including concentration and size of molecules within a biological sample; software for measuring and analysing molecules in samples from humans and animals for medical and veterinary apparatus and instruments.

Class 10: Medical and veterinary apparatus and instruments for measuring and analysing molecules in samples from humans and animals; medical and veterinary apparatus and instruments; vials and other containers for blood and other medical and veterinary samples; apparatus for taking and storing blood and other human and veterinary samples.

Class 42: Scientific laboratory services in the characterization and quantification of molecules, including analysis of biological samples for protein concentration and size of molecules.

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 ‘including’, used in the applicant’s list of goods and services, indicates that the specific goods and 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).

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 9

The contested software for characterization and quantification of molecules, including concentration and size of molecules within a biological sample; software for measuring and analysing molecules in samples from humans and animals for medical and veterinary apparatus and instruments are programs, routines, and symbolic languages that control the functioning of hardware and direct its operation. The opponent’s design and development of computer hardware and software in Class 42 involves designing and writing computer programs, enabling data processing apparatus – especially a computer – to perform a desired sequence of operations. The opponent’s services are closely linked to the contested goods, as providers of software will also commonly offer installation, development and other software-related services (e.g. as a means of keeping the system updated). Although the nature of the contested goods and the opponent’s services is different, both the relevant public and the usual producers/providers of the goods and services coincide. Furthermore, these goods and services are complementary. Therefore, they are similar.

The contested apparatus and instruments for characterization and quantification of molecules, including concentration and size of molecules within a biological sample are specific apparatus and instruments for use in scientific research and laboratory analysis for defining the chemical properties of molecules, and quantitative analysis is the determination of the absolute or relative abundance thereof. These contested goods have nothing in common with the opponent’s goods in Class 10 (being mainly medical apparatus and instruments, but also surgical, dental and veterinary apparatus, instruments and articles generally used for the diagnosis, treatment or improvement of the function or condition of persons and animals). They do not coincide in nature, purpose or method of use. Furthermore, they target different consumers, do not share the same distribution channels, do not originate from the same companies and are neither in competition nor complementary. For these reasons, they are considered to be dissimilar.

These contested goods are also dissimilar to the opponent’s goods and services in Class 1 (essentially chemical products for use in industry, science and agriculture), Class 3 (essentially non-medicated toiletry preparations and cleaning preparations), Class 5 (pharmaceuticals and other preparations for medical or veterinary purposes), Class 40 (manufacture of pharmaceuticals and medical devices), Class 41 (essentially educational, sporting, cultural and entertainment services) and Class 44 (for example, medical and pharmaceutical services). Apart from being different in nature, these goods and services have different purposes and methods of use. Furthermore, they target different consumers, do not share the same distribution channels, do not originate from the same companies and are neither in competition nor complementary.

Finally, these contested goods are also dissimilar to the remaining services of the opponent in Class 42 (scientific, technological, research, industrial analysis, design services), in particular scientific and technological services and research and design relating thereto. Apart from being different in nature, as goods are tangible and services are intangible, these goods and services have different methods of use. Furthermore, they target different consumers, do not share the same distribution channels, do not originate from the same companies and are neither in competition nor complementary.

Contested goods in Class 10

Medical and veterinary apparatus and instruments are identically contained in both lists of goods.

The contested medical and veterinary apparatus and instruments for measuring and analysing molecules in samples from humans and animals; vials and other containers for blood and other medical and veterinary samples; apparatus for taking and storing blood and other human and veterinary samples are included in the broad category of the opponent’s medical and veterinary apparatus and instruments. Therefore, they are identical.

Contested services in Class 42

The contested scientific laboratory services in the characterization and quantification of molecules, including analysis of biological samples for protein concentration and size of molecules are included in the broad category of, or at least overlap with, the opponent’s scientific 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 business customers with specific professional knowledge or expertise within the medical sector.

Considering the specialised nature and purpose of the relevant goods and services, the public’s degree of attention will be average to high. In particular, in relation to the relevant goods in Class 10 and the effects that they may have on the health of human beings, the public’s degree of attention will be high and consumers will choose them carefully.

c) The signs

FIDIA	FIDA
Earlier trade mark	Contested sign

The relevant territory is Italy.

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).

Both the earlier mark and the contested sign are word marks, ‘FIDIA’ and ‘FIDA’ respectively.

It cannot be excluded that the sole element of the earlier word mark, ‘FIDIA’, will be recognised by some of the Italian public, namely those with a certain knowledge of culture and art history, as a reference to the ancient Greek sculptor Phidias. However, given that only a small part of the relevant public will be familiar with this meaning, and a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, the Opposition Division finds it appropriate to focus the examination on the substantial part of the Italian public for which the term is meaningless and, therefore, distinctive.

The sole element of the contested sign, ‘FIDA’, is an Italian word meaning ‘lease agreement for pasture land, which requires payment of a certain amount per head of cattle’ (extracted from Grande Dizionario Italiano on 27/07/2020 at https://www.grandidizionari.it/Dizionario_Italiano/parola/F/fida.aspx?query=fida). In addition, ‘FIDA’ is also the third person singular form of the verb fidare (although normally only used in its reflexive form), which means ‘trust’ in English (extracted from Grande Dizionario Italiano on 27/07/2020 at https://www.grandidizionari.it/Dizionario_Italiano/parola/F/fidare.aspx?query=fidare). Given that the goods and services at issue consist of various medical apparatus and instruments, software and scientific services, this word has an average degree of distinctiveness as it conveys no relevant information on the characteristics of the goods.

Both signs are word marks. Word marks protect the words themselves and not their specific depictions. Therefore, they contain no elements that are clearly more eye-catching than others.

Visually and aurally, all the letters of the contested sign, ‘FIDA’, are entirely incorporated in the earlier mark, ‘FID*A’, and in the same order. The earlier mark differs only in its fourth letter, ‘I’, which, however, is not particularly striking visually or aurally, and is located in the middle section of the earlier mark, where it is more likely to be overlooked by the public. Therefore, the signs are visually and aurally highly similar.

Conceptually, although the public in the relevant territory will perceive the meaning of the contested sign, as explained above, the earlier mark does not convey any meaning for the part of the public on which the examination focuses. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association that can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabel, EU:C:1997:528, § 22).

In the present case, the goods and services are partly identical, partly similar and partly dissimilar. The current global assessment will proceed for the identical and similar goods and services only.

The signs are visually and aurally highly similar and conceptually not similar. The earlier mark has a normal degree of distinctiveness in relation to the relevant goods and services. The goods and services target medical professionals, who will have an average to high degree of attention.

Both marks are verbal and consist of single words of similar lengths (five and four letters, respectively). All the letters of the contested sign, ‘FIDA’, are entirely incorporated in the beginning and end of the earlier mark, ‘FIDIA’, and in the same order. It is settled case-law that 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. Therefore, the fact that the signs coincide in their beginnings is of particular importance.

The only different element of the earlier mark, the letter ‘I’, is in its middle section, where it is more likely to be overlooked by that public displaying an average degree of attention. 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).

Moreover, 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). Therefore, the fact that the signs are conceptually not similar is compensated by the identity of some of the goods and services and the high visual and aural similarity between the signs.

Bearing in mind the above, the differences between the signs are not sufficient to outweigh their similarities, and the overall impression that the signs produce on the relevant public is that they are similar to each other.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the relevant public in Italy (for whom the word ‘FIDIA’ is meaningless), and therefore the opposition is partly well founded on the basis of the opponent’s Italian trade mark registration No 302 019 000 004 257. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to those of the earlier trade mark.

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.

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

Gueorgui IVANOV

Patricia LOPEZ FERNANDEZ DE CORRES

Jakub MROZOWSKI

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.