OPPOSITION Nо B 3 090 193

Aeneas Gmbh & Co.Kg, Mikroforum Ring 2, 55234 Wendelsheim, Germany (opponent), represented by Schaafhausen Patentanwälte Partgmbb, Prinzregentenplatz 15, 81675 Munich, Germany (professional representative)

a g a i n s t

Atlas Antibodies Ab, Voltavägen 13a, SE-168 69 Bromma, Sweden (applicant), represented by Karin Österman, Gräskö Byväg 21, SE-76017 Blidö, Sweden (professional representative).

On 11/06/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 090 193 is upheld for all the contested goods and services.

2. European Union trade mark application No 18 054 717 is rejected in its entirety.

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

REASONS

On 29/07/2019, the opponent filed an opposition against all the goods and services of European Union trade mark application No 18 054 717 ‘ATLAS PROTEOMICS’ (word mark) namely against all the goods and services in Classes 1, 5 and 42. The opposition is based on inter alia, German trade mark registration No 302 017 029 930 ‘ATLAS’ (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 German trade mark registration No 302 017 029 930 ‘ATLAS’ (word mark).

a) The goods and services

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

Class 5: Medical, chemical and biological test kits and test reagents for medical purposes, included in Class 5; antiserums for diagnostic purposes; chemical reagents for medical diagnostic, medical or veterinary purposes; medical or veterinary chemical test reagents; diagnostic preparations for medical or veterinary purposes; diagnostic preparations; diagnostic preparations for medical, pharmaceutical or veterinary purposes; diagnostic biomarker reagents for medical purposes; diagnostic testing materials for medical use; diagnostic reagents for medical use; diagnostic substances for medical use; immunoassay reagents for medical or medical diagnostic purposes; in vitro diagnostic preparations for medical use; indicators for medical diagnosis; medical diagnostic test strips; medical diagnostic reagents and assays for testing of body fluids; medical diagnostic reagents; preparations of microorganisms for medical or veterinary use; preparations for detecting genetic predispositions for medical purposes; preparations for detecting mutation in prion genes for medical purposes; reagents for use in analysis [for veterinary purposes]; reagents for analysis purposes (for medical diagnostic, medical or veterinary purposes); reagents for use in diagnostic tests [for veterinary purposes]; clinical diagnostic reagents; reagents for in-vitro laboratory use [for veterinary purposes]; reagents for in-vitro laboratory use [for medical purposes]; reagents for blood grouping [for medical purposes]; reagents for use with testing apparatus for medical or medical diagnostic purposes; reagents for use in diagnostic tests or in analyses for medical purposes; reagents for use with testing apparatus for medical diagnostic or veterinary purposes; reactants for medical or veterinary diagnosis; veterinary diagnostic reagents; clinical medical reagents; biological reagents for medical, medical diagnostic or veterinary purposes; chemical reagents for medical, medical diagnostic or veterinary purposes; chemical reagents for medical or veterinary purposes; reagents for microbiological analysis, for medical or veterinary purposes; genetic identity tests, consisting of reagents for medical purposes; reagents and media for medical and veterinary diagnostic purposes; reagents for medical use; reagents for medical or veterinary genetic testing; chemical preparations for use in DNA analysis [medical]; chemical preparations for medical or medical diagnostic purposes; blood for medical or medical diagnostic purposes; biological preparations for medical, medical diagnostic or veterinary purposes; mixed biological preparations for medical or medical diagnostic purposes; blood plasma; blood components; blood protein fractions; enzymes for medical, medical diagnostic or veterinary purposes; enzyme preparations for medical or veterinary purposes; by-products of the processing of cereals for medical or medical diagnostic purposes; nucleic acid sequences for medical diagnostic, medical or veterinary purposes.

Class 10: Medical apparatus and instruments; analysers for medical use; diagnostic apparatus for medical purposes; automated testing apparatus for bodily fluids, for medical or medical diagnostic purposes; diagnostic, examination, and monitoring equipment; laser pointers for medical use; laser beam delivery instruments for medical use; medical instruments; medical instruments incorporating lasers; tools for medical diagnostics; medical diagnostic apparatus for medical purposes; medical and veterinary apparatus and instruments; apparatus for carrying-out diagnostic tests for medical purposes; apparatus for analysing images [for medical use]; apparatus for DNA and RNA exams for medical purposes; apparatus for analysing bacteria in biological samples [for medical use]; capillary tubes for delivering reagents; specimen cup holders; laboratory apparatus for the transmission of liquids, for medical or medical diagnostic purposes; laboratory apparatus for mixing liquids, for medical or medical diagnostic purposes; laboratory apparatus for administering liquids, for medical or medical diagnostic purposes; laboratory apparatus for thinning liquids, for medical or medical diagnostic purposes); laboratory apparatus for incubating liquids, for medical or medical diagnostic purposes; medical or immunological testing apparatus; electronic analyzers for medical purposes; photometric analyzers for medical use; automatic analyzers for medical diagnosis; body composition analyzers for medical purposes; analysers for bacterial identification for medical purposes; physical analyzers for medical use; blood centrifuging tubules [for medical use]; blood filters for extracorporeal use; hypodermic needles; medication injectors; injectors for medical or medical diagnostic purposes.

Class 42: Laboratory services.

Class 44: Services of a doctor; medical services; veterinary services; medical analysis relating to the treatment of individuals; pharmaceutical advice; advisory services relating to medical apparatus and instruments; providing information relating to the rental of medical machines and apparatus; DNA screening for medical purposes; medical diagnostic services [carrying-out of diagnostic tests and analyses]; medical testing services relating to the diagnosis and treatment of diseases; medical and health services relating to DNA, genetics and genetic testing; pharmacy advice; advisory services in the pharmacy; advisory services relating to medical or medical diagnostic instruments; advice relating to immunology or autoimmunology; consultancy and information services relating to medical or medical diagnostic products; medical consultancy services; medical diagnostic consultancy services; medical analysis services for the diagnosis of cancer; medical analysis services for the diagnosis of autoimmune diseases; medical laboratory services for the analysis of blood samples taken from patients; medical laboratory services for the analysis of samples taken from patients; medical analysis for the diagnosis and treatment of persons; medical analysis services for the diagnosis and the prognosis of cancer; medical analysis services for the diagnosis and the prognosis of autoimmune diseases; medical analysis services relating to the treatment of patients; medical analysis services relating to the treatment of persons; medical analysis services relating to the treatment of persons provided by a medical laboratory; RNA or DNA analysis for the diagnosis and the prognosis of cancer; RNA or DNA analysis for the diagnosis and the prognosis of autoimmune diseases.

The contested goods and services are the following:

Class 1: Chemical reagents for use in biotechnology, other than for medical or veterinary use.

Class 5: Biotechnological preparations for medical use.

Class 42: Biological research, clinical research and medical research; scientific research and development; scientific research and analysis; biochemistry research services; biomedical research services; research and development in the field of biotechnology.

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 are chemical reagents for the purpose of biotechnology, whereas the opponent’s chemical reagents for medical diagnostic, medical or veterinary purposes in Class 5 are also chemical reagents but for medical diagnostics, medical or veterinary purposes. Biotechnology is the technology that utilises biological systems, living organisms or parts of this to develop or create different products. Therefore, the opponent’s goods and the contested goods have the same nature, same distribution channels and producers/providers. Therefore, they are considered similar to a low degree.

Contested goods in Class 5

The contested biotechnological preparations for medical use include, as a broader category, the opponent’s medical, and biological test kits and test reagents for medical purposes, included in Class 5. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Contested services in Class 42

The contested biological research, clinical research and medical research; scientific research and development; scientific research and analysis; biochemistry research services; biomedical research services; research and development in the field of biotechnology are included in the broad category of the opponent’s laboratory 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 and similar to a low degree are directed at the public at large and at professionals with specific knowledge or expertise.

Therefore, the public’s degree of attentiveness is higher than average.

c) The signs

ATLAS	ATLAS PROTEOMICS
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 signs are word marks. Therefore, they have no element that could be considered clearly more dominant than any other element.

The element ‘PROTEOMICS’ is an English word referring to the study or analysis of the set of proteins expressed by an organism, its relationship to the genes coding for them, and to physiological and pathological processes; the branch of molecular biology concerned with this’ (information extracted from the Oxford English Dictionary on 10/06/2021 at https://www.oed.com/view/Entry/252481?rskey=wyaRXY&result=2&isAdvanced=false#eid%3C9 ), the equivalent of which is ‘PROTEOMIK’ in German (https://en.pons.com/translate/german-english/proteomics?bidir=1). Due to its close similarity, ‘PROTEOMICS’ will easily be associated with the German equivalent.

Therefore, the element ‘PROTEOMICS’ is descriptive of the characteristics of the relevant goods in Classes 1 and 5, and of the subject matter of the services in Class 42 for the German-speaking part of the professional public. The professional public know the terms used in their own field of professional activities. In principle, those professionals are aware of descriptive terms used in their field. Therefore, this element is non distinctive for this part of the public. However, this element is meaningless and, therefore, distinctive for the non-professional, German-speaking part of the public.

The common element ‘ATLAS’ refers to a book containing maps and/or to a Titan condemned by Zeus to hold up the celestial heavens for eternity (Greek mythology) and/or to a mountain range in northern Africa. This element is distinctive because the meanings do not describe or allude to any characteristics of the relevant goods and services. However, the applicant argued that ‘ATLAS’ has a low degree of distinctiveness given that many trade marks include this element. In support of its argument the applicant referred to a few trade mark registrations.

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. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the word ‘ATLAS’. Under these circumstances, the applicant’s claims must be set aside.

Visually, the signs coincide in the element ‘ATLAS’, which is the entire earlier mark and is identically contained at the beginning of the contested sign. The signs differ in the element ‘PROTEOMICS’, placed at the end of the contested sign, which is non-distinctive for a part of the relevant public.

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 contested sign (the initial part) the one that first catches the attention of the reader. Therefore, the difference resulting from the element ‘PROTEOMICS’ has a somewhat lesser impact in the visual comparison of the signs.

Despite the signs’ differing lengths, and considering that the earlier mark is entirely reproduced at the beginning of the contested sign, the signs are similar to an average degree.

Aurally, the signs coincide in the sound of the letters ‘ATLAS’, present identically in both signs. The pronunciation differs in the sound of the additional element ‘PROTEOMICS’ of the contested sign (albeit non-distinctive for part of the public), which has no counterpart in the earlier mark. However, the impact of this difference does not counteract the aural similarity created by the identical pronunciation of the element ‘ATLAS’. Therefore, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning on account of the element ‘ATLAS’, the signs are conceptually similar to a high degree, irrespective of whether the element ‘PROTEOMICS’ is understood or not, since when understood it will be seen as non-distinctive.

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, and the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). 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, Sabèl, EU:C:1997:528, § 22).

Account must also be 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).

The contested goods and services are partly identical and partly similar to a low degree to the opponent’s goods and services. They target the public at large and professionals whose degree of attention is higher than average. The earlier mark is endowed with an average degree of inherent distinctiveness, which affords it a normal scope of protection.

The signs are visually and aurally similar to an average degree. The similarity between the signs results from the fact that the earlier mark is identically reproduced at the beginning of the contested sign that first catches the attention of the relevant public. Conceptually, the signs are similar to a high degree. Therefore, the differences between the signs are insufficient for safely ruling out any likelihood of confusion.

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 or services covered are from the same or economically linked undertakings. Indeed, it is highly conceivable that the public under analysis 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 that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, and taking into account the principle of imperfect recollection, the Opposition Division concludes that there is a likelihood of confusion on the part of the relevant public and therefore the opposition is well founded on the basis of the opponent’s German trade mark registration No 302 017 029 930 ‘ATLAS’ (word mark).

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

As the earlier German trade mark registration No 302 017 029 930 ‘ATLAS’ (word mark) 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

Richard BIANCHI

Cristina CRESPO MOLTO

Pierluigi M. VILLANI

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.