OPPOSITION No B 3 090 426

Fundación Gala-Salvador Dalí, Torre Galatea, Pujada del Castell, 28, 17600 Figueres (Girona), Spain (opponent), represented by Javier Vazquez Salleras, Aribau 198, 08036 Barcelona, Spain (professional representative)

a g a i n s t

Sinopharm Zhijun (Shenzhen) Pharmaceutical Co. Ltd, No.16, LanqingYilu, High-tech Zone, Guanlan, Longhua New District, Shenzhen, Guangdong, People’s republic of China (applicant), represented by Würth & Kollegen, Auf dem Berge 36, 28844 Weyhe, Germany (professional representative).

On 17/09/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 090 426 is partially upheld, namely for the following contested goods:

Class 10: Medical apparatus and instruments; dental apparatus and instruments; surgical implants [artificial materials]; suture materials.

2. European Union trade mark application No 18 056 017 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 18 056 017 for the figurative mark . The opposition is based on international trade mark registration No 224 671 for the mark ‘Dali’ designating, inter alia, Austria. 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 international trade mark registration No 224 671 designating several countries. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s international trade mark registration No 224 671 designating Austria.

a) The goods

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

Class 5: Drugs, products for the destruction of animals and plants, disinfectants.

The contested goods are the following:

Class 10: Massage apparatus; medical apparatus and instruments; dental apparatus and instruments; heating cushions, electric, for medical purposes; soporific pillows for insomnia; baby feeding dummies; sex toys; surgical implants [artificial materials]; orthopedic articles; suture materials.

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 medical apparatus and instruments; dental apparatus and instruments and suture materials are similar to a low degree to the opponent’s drugs. These are complementary goods that coincide in distribution channels and relevant public.

The contested surgical implants [artificial materials] are also lowly similar to the opponent’s drugs. These goods coincide at least in distribution channels and relevant public (medical professionals).

The rest of the contested goods are dissimilar to all the opponent’s goods.

Part of the contested goods are physical therapy equipment’s articles such heating cushions, electric, for medical purposes, massage apparatus, or orthopaedic articles. The contested soporific pillows for insomnia are medical equipment. These articles mainly serve to help regain and restore the pain free and/or comfortability that a person experienced prior to an injury, illness or disability. The use of these goods is not indispensable for the use of the opponent’s goods and vice versa. To this extent they are neither in competition, nor they are complementary. In principle, the contested goods are purchased by business customers such as physiotherapists, hospitals or in orthopaedic shops. Even if some of the contested goods that could be of interest for non-professionals, coincide with the opponent’s goods in distribution channels (pharmacies), they are usually displayed in different sections or shelves.

The contested baby feeding dummies serve to nourish the baby. These goods have a different purpose and nature from the opponent’s goods and are neither in competition, nor they are complementary. They do not coincide in the relevant public, either and usually are produced by different companies. Though coincidence in certain commercial channels (pharmacies, drug shops) is not excluded, this alone is not a reason for finding similarity since the goods occupy different sections.

As to the contested sex toys, these goods target a particular public and are distributed in specialised shops. They have a different purpose and nature from the opponent’s goods and are manufactured by different undertakings. They are neither complementary, not they are in competition.

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 found to be similar to a low degree are directed at the public at large and at professionals in the medical sector.

In any event, the degree of attention is considered to be high, due to the specialised nature of the goods, namely with impact over somebody’s health, the frequency of purchase and their price.

c) The signs

Dali
Earlier trade mark	Contested sign

The relevant territory is Austria.

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 signs consist of the same verbal element, that in the contested sign is depicted in stylised modern typeface where the letters are not rounded, but rather aslant and are in blue. However, these features of the contested sign play a secondary role in the consumer’s perception of the signs since consumers are accustomed to the stylisation of verbal elements in marks and will not pay significant attention to them as indicators of commercial origin.

The verbal element ‘DALI’ will be associated by the vast majority of the relevant public with the world famous Spanish artist Salvador Dali. This element is distinctive in relation to the goods in question since it does not describe any of their characteristics.

Consequently, the signs are aurally and conceptually identical, whilst, because of their different stylisation, mainly noticeable in the contested sign, they are visually highly 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 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

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 goods have been found partly similar to a low degree and partly dissimilar. The earlier mark is of normal distinctiveness.

The signs are visually highly similar, while aurally and conceptually they are identical.

In fact, their identical verbal element would preclude consumers to safely distinguish the marks, even considering that their attention will be high when purchasing the goods. The stylised typeface of the contested sign is not enough to offset the overwhelming similarities between the signs for the reasons explained above.

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 covered are from the same or economically linked undertakings. Indeed, it is highly conceivable that the relevant consumers 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 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 and therefore the opposition is partly well founded on the basis of the opponent’s international trade mark registration No 224 671 designating Austria. Taking into account the interdependence principle mentioned above, the opposition must be upheld for all the goods found to be similar to a low degree to the opponent’s goods.

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.

The opponent has also based its opposition on international trade mark registration No 224 671 designating Benelux, Germany, Czech Republic, France, Hungary Croatia, Portugal, Italy ,Romania, Slovakia. Since these marks are identical to the one which has been compared and cover the same scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

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

The Opposition Division

Valeria ANCHINI

Meglena BENOVA

Tzvetelina IANTCHEVA

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.