OPPOSITION No B 3 094 505

Universidad de Malaga, Plaza del Ejido, s/n., 29071 Malaga, Spain (opponent), represented by Iberpatent S.L., Félix Boix, 9-1° Derecha, 28036 Madrid, Spain (professional representative)

a g a i n s t

Centro Medico Uma S.r.l., Corso Venezia 8, 20121 Milan, Italy (applicant), represented by Studio Professionale Associato a Baker & McKenzie, Piazza Filippo Meda, 3, 20121 Milano, Italy (professional representative).

On 10/07/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 094 505 is upheld for all the contested services.

2. European Union trade mark application No 18 054 801 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 18 054 801 (figurative mark). The opposition is based on, inter alia, Spanish trade mark registration No 3 641 562 (figurative 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 Spanish trade mark registration No 3 641 562.

1. The goods and services

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

Class 5: Pharmaceutical products, preparations for medical and veterinary use; hygienic and sanitary products for medical use; food and dietetic substances for medical or veterinary use, food for babies; food supplements for people or animals; emplastos, material for apositos; material for dental compresses and impresses; disinfectants.

Class 10: Surgical, medical, odontological and veterinary instruments and instruments; members, eyes and artificial teeth; orthopedic items; suture material.

Class 35: Written communications registration and transcription services; page composition services for advertising purposes; collection of business information; data systematization in databases; help services in the management of business or commercial functions of an industrial or commercial company; sales management services; commercial administration; office work; advertising and marketing services; search for sponsors; import, export services; commercial representations and exclusive sales services; sales management services; product presentation services in any media for your retail sale; market study and commercial business assessment service; opinion surveys.

Class 41: Education services; training; entertainment services; sports and cultural activities; facilitation of information related to education, entertainment and sports; organization of fairs and exhibitions for cultural or educational purposes; publication services for books and non-advertising texts; book edition; non-download online electronic publications supply services; facilitation of publications from a global informatic network or internet that can be consulted; online library services, in concrete, provision of electronic library services with newspapers, magazines, photographs and images through an online informatic network; organization and direction of competitions (educational or recreational activities), organization of prizes; organization of colloquies, conferences and congresses; museum services (presentations, exhibitions); production services of live theater shows and representations.

Class 42: Scientific and technological services, as well as research and design services in these areas; industrial analysis and research services; design and development of computer and software equipment; software maintenance and update; application services provider services; advisory services and consultancy on computers and computer software.

Class 44: Medical services; veterinary services; hygiene and beauty treatments for people or animals; agriculture, horticulture and silviculture services.

The contested services are the following:

Class 35: Advertising; Business management; Business administration; Office functions; Procurement services for third parties (acquisition of goods and services for other companies); Updating of advertising material; Office machines and equipment rental; Cost price analysis; Advisory services for business management; Assistance in management of business activities; Marketing studies; Accounting; Tax preparation; Market studies; Retailing or wholesaling of pharmaceutical and sanitary preparations and of medical supplies.

Class 41: Arranging of conferences, colloquiums, events, seminars, conferences and symposiums in the pharmaceutical, parapharmaceutical, scientific, medical, dietetic, nutritional, diet, nutraceutical, probiotic, prebiotic, symbiotic, biochemical, chemical, chiropractic, physiotherapy, gynaecology, urology and gastroenterology sector; Organisation of congresses, colloquiums, events, seminars, conferences and symposiums in the ophthalmology, otorhinolaryngology, immunology, cardiovascular, dermatology, oral hygiene, orthopaedic, osteoarticular, neuropathy and cosmetic sector; Providing of training and teaching in the pharmaceutical, parapharmaceutical, science, medical, dietetic, nutritional, food, nutraceutical, probiotic, prebiotic, symbiotic, biochemistry, chemistry, gynaecology, urology, gastroenterology, immunology, cardiovascular, dermatology, oral hygiene, orthopaedic, osteoarticular, neuropathy and cosmetic sector; Publication, including online, of scientific texts; Publications, including online, of clinical study results.

Class 44: Medical assistance; Medical clinic services; Medical equipment rental; Rental of sanitation facilities; Hygienic and beauty care for human beings; Weight control treatment; Therapeutic treatment of the body; Therapeutic treatment of the face; Professional consultancy relating to health; Nutrition consultancy; Treatment of allergies; Advice relating to allergies; Advice relating to the personal welfare of elderly people [health]; Consultation relating to bio-rhythms; Nutrition counseling; Professional consultancy relating to health care; Nutrition and dietetic consultancy; Plastic surgery; Physical therapy; Dentistry; Electro therapy services for physiotherapy; Psychologist (Services of a -); Beauty salons; Medical services; Opticians' services; Therapy services; Medical nursing; Mental health services; Pharmaceutical services; Health care services offered through a network of health care providers on a contract basis; Health care in the nature of health maintenance organizations; Health spa services; Human tissue bank services; Oxygen bar services; Nursing home services; Hospices; Respite care services in the nature of home nursing aid; Respite care services in the nature of nursing aid services; Services rendered by a dietician; Stress management services; Lymphodrainage services; Foot massage services; Meditation services; Microdermabrasion services; Hospital nursing home services; Addiction treatment services; Weight management services; Services for the planning of weight reduction programmes; Weight reduction services; Reiki services; Health care relating to acupuncture; Dentistry; Fitting of hearing aids; Speech and hearing therapy; Home-visit nursing care; Assisting individuals to stop smoking; Health care relating to chiropraxis; Health care relating to fasting; Health care relating to homeopathy; Chiropractics; Health screening; Providing weight loss program services; Provision of health care services in domestic homes; Providing physical rehabilitation facilities; Providing long-term care facilities; Managed health care services; Dietary and nutritional guidance; Hydrotherapy; Health assessment surveys; Arranging of accommodation in rest homes; Arranging of accommodation in convalescent homes; Genetic counseling; Counseling relating to occupational therapy; Osteopathy; Health risk assessment surveys; Diet planning and supervision; Weight reduction diet planning and supervision; Thalassotherapy; Antismoking therapy; Music therapy for physical, psychological and cognitive purposes; Fitness testing; Weight control evaluation.

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 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).

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 services in Class 35

Advertising; marketing studies; market studies are identically contained in both lists of services (market study in singular).

The contested updating of advertising material is included in the broad category of the opponent’s advertising. Therefore, they are identical.

The contested office functions overlap or are synonymous with the opponent’s office work. Therefore, they are identical.

The contested accounting are included in the broad category of, or overlap with, the opponent’s office work. Therefore, they are identical.

The contested tax preparation is included in the broad category of the opponent’s commercial business assessment service. Therefore, they are identical.

The contested office machines and equipment rental is included in the broad category of, or overlaps with, the opponent’s office work. Therefore, they are identical.

The contested business administration overlaps with the opponent’s commercial administration. Therefore, they are identical.

The contested business management; assistance in management of business activities; advisory services for business management are included in, or overlap with, and are therefore identical to the broad category of the opponent’s help services in the management of business or commercial functions of an industrial or commercial company.

The contested cost price analysis are essential in the management of business affairs when making financial decisions associated with engagement in a project. It is therefore considered that these services are included in the broad category of the opponent’s help services in the management of business or commercial functions of an industrial or commercial company, and they are, therefore, identical.

The contested procurement services for third parties (acquisition of goods and services for other companies) are a commercial trading service aimed at supporting or helping other businesses to carry out or improve their business. The opponent’s import, export services relate to the movement of goods and normally require the involvement of customs authorities in both the country of import and the country of export. These services are often subject to import quotas, tariffs and trade agreements. These services are therefore similar, as they can coincide in providers, distribution channels and relevant public.

Retail services concerning the sale of specific goods are similar to an average degree to these specific goods. Although the nature, purpose and method of use of these goods and services are not the same, they are similar because they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

The goods covered by the retail services and the specific goods covered by the other mark have to be identical (either because they include, are included in, or overlap with these goods) in order to find an average degree of similarity between the retail services of those goods and the goods themselves, that is to say, they must either be exactly the same goods or fall under the natural and usual meaning of the category.

The same principles apply to services rendered in connection with other types of services that consist exclusively of activities revolving around the actual sale of goods, such as wholesale services in Class 35.

Therefore, the contested retailing or wholesaling of pharmaceutical and sanitary preparations and of medical supplies are similar to an average degree to the opponent’s pharmaceutical products, preparations for medical and veterinary use; hygienic and sanitary products for medical use in Class 5. They are complementary and can have the same distribution channels and relevant public.

Contested services in Class 41

The contested arranging of conferences, colloquiums, events, seminars, conferences and symposiums in the pharmaceutical, parapharmaceutical, scientific, medical, dietetic, nutritional, diet, nutraceutical, probiotic, prebiotic, symbiotic, biochemical, chemical, chiropractic, physiotherapy, gynaecology, urology and gastroenterology sector; organisation of congresses, colloquiums, events, seminars, conferences and symposiums in the ophthalmology, otorhinolaryngology, immunology, cardiovascular, dermatology, oral hygiene, orthopaedic, osteoarticular, neuropathy and cosmetic sector are included in the broad category of, or overlap with, the opponent’s organization of colloquies, conferences and congresses. Therefore, they are identical.

The contested providing of training and teaching in the pharmaceutical, parapharmaceutical, science, medical, dietetic, nutritional, food, nutraceutical, probiotic, prebiotic, symbiotic, biochemistry, chemistry, gynaecology, urology, gastroenterology, immunology, cardiovascular, dermatology, oral hygiene, orthopaedic, osteoarticular, neuropathy and cosmetic sector are included in the broad categories of the opponent’s education services; training. Therefore, they are identical.

The contested publication, including online, of scientific texts; publications, including online, of clinical study results are included in the broad category of, or overlap with, the opponent’s publication services for books and non-advertising texts. Therefore, they are identical.

Contested services in Class 44

Medical services are identically contained in both lists of services.

The contested hygienic and beauty care for human beings is included in the broad category of the opponent’s hygiene and beauty treatments for people or animals. Therefore, they are identical.

The contested medical assistance; medical clinic services; medical equipment rental; rental of sanitation facilities; weight control treatment; therapeutic treatment of the body; therapeutic treatment of the face; professional consultancy relating to health; nutrition consultancy; treatment of allergies; advice relating to allergies; advice relating to the personal welfare of elderly people [health]; consultation relating to bio-rhythms; nutrition counseling; professional consultancy relating to health care; nutrition and dietetic consultancy; plastic surgery; physical therapy; dentistry; electro therapy services for physiotherapy; psychologist (services of a -); beauty salons; opticians' services; therapy services; medical nursing; mental health services; pharmaceutical services; health care services offered through a network of health care providers on a contract basis; health care in the nature of health maintenance organizations; health spa services; human tissue bank services; oxygen bar services; nursing home services; hospices; respite care services in the nature of home nursing aid; respite care services in the nature of nursing aid services; services rendered by a dietician; stress management services; lymphodrainage services; foot massage services; meditation services; microdermabrasion services; hospital nursing home services; addiction treatment services; weight management services; services for the planning of weight reduction programmes; weight reduction services; reiki services; health care relating to acupuncture; dentistry; fitting of hearing aids; speech and hearing therapy; home-visit nursing care; assisting individuals to stop smoking; health care relating to chiropraxis; health care relating to fasting; health care relating to homeopathy; chiropractics; health screening; providing weight loss program services; provision of health care services in domestic homes; providing physical rehabilitation facilities; providing long-term care facilities; managed health care services; dietary and nutritional guidance; hydrotherapy; health assessment surveys; arranging of accommodation in rest homes; arranging of accommodation in convalescent homes; genetic counseling; counseling relating to occupational therapy; osteopathy; health risk assessment surveys; diet planning and supervision; weight reduction diet planning and supervision; thalassotherapy; antismoking therapy; music therapy for physical, psychological and cognitive purposes; fitness testing; weight control evaluation are included in the broad categories of, or overlap with, and are therefore identical, or are at least similar to the opponent’s medical services; hygiene and beauty treatments for people or animals. They have at least the same purpose in a broad sense, namely people’s health/beautification, can have the same providers, distribution channels, and relevant public.

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 identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to higher than average, depending on the price, specialised nature, or terms and conditions of the goods and services purchased.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Spain.

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 figurative, consisting of the verbal element ‘uma.es’ in black (‘uma.’) and blue (‘es’) lower case letters. The last part of the sign ‘.es’ will be associated with an internet top-level domain for Spain. The earlier sign’s element ‘.es’ is widely known and used throughout the relevant territory as the top-level domain originally corresponding to commercial sites on the internet. It will therefore not be perceived as an indicator of the commercial origin of the goods and services at issue. Consequently, the impact of this non-distinctive element is limited when assessing the likelihood of confusion between the marks at issue (21/11/2012, T-338/11, Photos.com, EU:T:2012:614, § 22; 12/12/2007, T-117/06, Suchen.de, EU:T:2007:385, § 29).

Below is the additional element ‘UNIVERSIDAD DE MÁLAGA’, meaning ‘University of Malaga’, in standard upper case black letters. This element is descriptive of the fact that the goods and services originate from or are designed/developed/provided at/by the University of Malaga. Therefore, it is also non-distinctive.

The contested sign is also a figurative mark, consisting of the verbal element ‘UMA’ in upper case standard letters inside a half circled blue line and a blue/green underline. On top of the verbal element ‘UMA’ is a circular figurative element in various blue shades.

The element ’UMA’, contained in both marks, has no meaning for the relevant public and is, therefore, distinctive.

The circular figurative element of the contested sign has no meaning for the relevant public and no relation to the services in question and is, therefore, distinctive.

Neither the earlier mark nor the contested have any element that could be considered clearly more dominant than other elements.

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).

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 distinctive verbal element ‘UMA’. The marks also coincide somewhat in the blue colours. However, the marks differ in the verbal elements ‘.es’ and ‘Universidad de Málaga’ of the earlier sign, which are however both non-distinctive as described above, and in their stylisations and the figurative elements of the contested sign.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘UMA’, present identically in both signs. This element is distinctive. The pronunciation differs in the sound of the full stop/letters ‘.es’ and ‘Universidad de Málaga’ of the earlier mark, which are however both non-distinctive.

Therefore, the signs are aurally highly similar.

Conceptually, although the public in the relevant territory will perceive the meanings of the elements ‘.es’ and ‘Universidad de Málaga’ of the earlier sign as explained above, the other sign has no meaning in that territory. 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.

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 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, despite the presence of some non‑distinctive elements in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

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 goods and services are partly identical and partly similar. The earlier mark enjoys a normal degree of distinctiveness and the degree of attention is average to higher than average.

The signs are visually similar to an average degree and aurally similar to a high degree. Conceptually, the signs are not similar.

The signs coincide in the verbal element ‘UMA’, which is fully distinctive in both signs. Moreover, the verbal element ‘UMA’ is placed in the first/top position in the earlier sign, where consumers tend to focus their attention as described above, and is the single verbal element in the contested sign.

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, 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 Spanish trade mark registration No 3 641 562. It follows that the contested trade mark must be rejected for all the contested services.

As the earlier Spanish trade mark registration No 3 641 562 leads to the success of the opposition and to the rejection of the contested trade mark for all the 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

Martin MITURA

Lena FRANKENBERG GLANTZ

Katarzyna ZANIECKA

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.