OPPOSITION No B 3 096 078

Joaquin Palomares Belda, Calle Diputado Miralles 20, 9A, 03015 Alicante, Spain (opponent)

a g a i n s t

FuQuan Toboom Technologies Co., Ltd, Standardization plant No.3, MaChangPing Town Office Industry Zone, Fuquan City, Guizhou Province, People’s Republic of China (applicant), represented by Sakellarides Law Offices, Adrianou Str. 70, 10556 Athens, Greece (professional representative).

On 23/10/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 096 078 is upheld for all the contested goods, namely

Class 10: Artificial teeth; pins for artificial teeth; dental apparatus and instruments; dental apparatus, electric; mirrors for dentists; knives for surgical purposes; lamps for medical purposes.

2. European Union trade mark application No 18 059 023 is rejected for all the above goods. It may proceed for the remaining goods.

3. The applicant bears the costs, fixed at EUR 320.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 18 059 023 for the figurative mark , namely against some of the goods in Class 10. The opposition is based on Spanish trade mark registration No M 3 745 387 for the word mark ‘DENTAL BOOM’. 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 services on which the opposition is based are the following:

Class 35: Retail and/or wholesale services, including online, of dental apparatus and instruments, dental preparations and articles, and medicated dentifrices, dental prostheses, sterilisers for dental instruments and dental ovens.

The contested goods are the following:

Class 10: Artificial teeth; pins for artificial teeth; dental apparatus and instruments; dental apparatus, electric; mirrors for dentists; knives for surgical purposes; lamps for medical purposes.

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.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘including’, used in the opponent’s list of 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).

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.

Therefore, the contested dental apparatus and instruments are similar to the opponent’s retail services of dental apparatus and instruments and the contested artificial teeth are similar to the opponent’s retail services of dental prostheses.

The remaining contested pins for artificial teeth; dental apparatus, electric; mirrors for dentists; knives for surgical purposes; lamps for medical purposes fall under the broad category of dental apparatus and instruments. Therefore, these goods are also similar to the opponent’s retail services of dental apparatus and instruments.

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 are directed at the public at large and at medical professionals.

Considering the possible impact of the relevant goods on the health of the consumers or patients, as well as the prices of some of the relevant goods (for example, artificial teeth), the degree of attention of the relevant public is considered to be high.

c) The signs

DENTAL BOOM
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).

Although the relevant public usually perceives marks as a whole, according to settled case-law, the relevant consumers, when perceiving a verbal element, may break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58).

The earlier mark is a word mark and, therefore, it is the word as such that is protected and not its written form. Consequently, it is irrelevant whether the sign is represented in upper- or lower-case characters.

In fact, the verbal element ‘DENTAL’, written separately from the word ‘BOOM’, present in the earlier trade mark means in the Spanish language ‘relating to teeth’ (information extracted from https://dle.rae.es/dental on 09/10/2020). As such, it will be perceived as a mere indication about the nature and purpose of the goods retailed and is, therefore, non-distinctive.

The public will understand the element ‘BOOM’ in the earlier mark as ‘success or increase, especially of a book (‘Éxito o auge repentino de algo, especialmente de un libro’, information extracted from https://dle.rae.es/boom
on 09/10/2020). Contrary to the applicant’s opinion, ‘boom’ is distinctive for the retailed goods which are not books but dental apparatus and related goods. The relevant territory is Spain and, therefore, the Opposition Division will not take into account the meaning in other Member States.

The stylisation of the letters of the contested sign is a rather common stylisation, and, consequently, non-distinctive.

The contested sign has no meaning and is distinctive. Contrary to the opponent, the public will not split the words ‘to’ and ´boom´.

Visually and aurally, the signs coincide in the word ‘boom’. The signs differ in the non-distinctive word ‘DENTAL’ of the earlier mark and the two letters ‘TO’ and the slight stylisation of the contested sign, which is also non-distinctive and has, therefore, a very limited impact for the outcome of the comparison. Therefore, the signs are similar to an average degree.

Conceptually, 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 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 a non‑distinctive element in the mark, as stated above in section c) of this decision.

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 which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (eleventh recital 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).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods or services may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).

As has been concluded above, the earlier mark is considered to enjoy a normal degree of inherent distinctiveness. Furthermore, the contested goods were found similar. The public’s degree of attentiveness is high. The marks in dispute have been found to be visually and aurally similar to an average degree. The only distinctive element of the earlier mark is entirely included in the contested sign.

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). Contrary to the applicant’s opinion the earlier mark is distinctive.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and, therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration.

It follows from the above that the contested trade mark must be rejected for all the contested 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. 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 costs.

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. In the present case, the opponent did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

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The Opposition Division

Beatrix STELTER

Martin EBERL

Peter QUAY

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.