OPPOSITION No B 3 100 390

Wagner S.R.L., Via Brusafiera, 12, 33170 Pordenone, Italy (opponent), represented by Bugnion S.P.A., Viale Lancetti, 17, 20158 Milano, Italy (professional representative)

a g a i n s t

CSL Behring GmbH, Emil-von-Behring Str. 76, 35041 Marburg, Germany (applicant), represented by Frank Schöne de la Nuez, Emil-von-Behring-Strasse 76, 35041 Marburg, Germany (employee representative).

On 17/08/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 100 390 is upheld for all the contested goods and services.

2. European Union trade mark application No 18 082 301 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 18 082 301 for the word mark ‘PARSIFAL’, namely against all the goods and services in Classes 16, 41 and 44. The opposition is based on European Union trade mark registration No 17 976 518 for the word mark ‘PARSIFAL’. The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK

Although Article 8(1)(b) EUTMR is the only invoked ground in this case, Article 8(1)(a) EUTMR will also be examined. Notwithstanding that the specific conditions under Article 8(1)(a) and (b) EUTMR differ, they are related. Consequently, in oppositions dealing with Article 8(1) EUTMR, if Article 8(1)(b) EUTMR is the only ground claimed but identity between the signs and part or all the goods/services is established, the Opposition Division will still examine the case under Article 8(1)(a) EUTMR.

DOUBLE IDENTITY – ARTICLE 8(1)(a) EUTMR AND LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

Pursuant to Article 8(1)(a) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for will not be registered if it is identical to the earlier trade mark and the goods or services for which registration is applied for are identical to the goods or services for which the earlier trade mark is protected.

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 9: Computer software.

Class 38: Networking, printed publications, electronic display and transmission of data and information, in particular satellite transmission of data by means of online global computer networks; Data bank interconnection services; Providing access to databases.

Class 41: Advice relating to medical training; Arranging and conducting of conferences, congresses and symposiums (for the medical sector); Providing of training and instruction in the medical sector and for specialist staff.

Class 44: Medical services; Consultancy in relation to medical assistance provided by doctors and other specialist medical staff.

The contested goods and services are the following:

Class 16: Printed materials, namely, newsletters, articles and case studies featuring blood conditions, medicines and treatments; Printed publications, namely, brochures, booklets, newsletters, articles, case studies, and teaching materials in the field of blood conditions, medicines and treatment; printed educational materials in the field of blood conditions, medicines and treatment.

Class 41: Healthcare education services, namely, providing educational and awareness programs for patients, caregivers and/or healthcare professionals concerning blood conditions, medicines and treatment, as well as, its impact on patients, patient families, caregivers and/or healthcare professionals; planning and conducting educational conventions and educational meetings related to blood conditions, medicines and treatment, as well as, its impact on patients, patient families, caregivers and/or healthcare professionals; Electronic transmission of information posted to user newsgroups and discussion groups via a global computer network.

Class 44: Healthcare information services, namely, providing information concerning blood conditions, medicines and treatment, as well as, its impact on patients, patient families, caregivers and/or healthcare professionals; Healthcare information services, namely, patient chart analysis; Healthcare information services, namely, assessing dosing, frequency, bleed rates, and consumption of medicine.

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 ‘namely’, used in the applicant’s list of goods and services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods and services specifically listed.

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 16

The contested goods printed materials, namely, newsletters, articles and case studies featuring blood conditions, medicines and treatments; printed publications, namely, brochures, booklets, newsletters, articles, case studies, and teaching materials in the field of blood conditions, medicines and treatment; printed educational materials in the field of blood conditions, medicines and treatment are essential for the opponent’s Class 41 services providing of training and instruction in the medical sector and for specialist staff. Therefore, these goods and services are complementary. The providers of training and instructions services often use or even hand out these goods to participants as learning supports in educational sessions, courses, workshops, programs, etc. In view of the close relationship between the goods and services at issue, the identical target group, the common origin, the identical distribution channels and, their complementary character, these goods and services are considered similar.

Contested services in Class 41

The contested healthcare education services, namely, providing educational and awareness programs for patients, caregivers and/or healthcare professionals concerning blood conditions, medicines and treatment, as well as, its impact on patients, patient families, caregivers and/or healthcare professionals; planning and conducting educational conventions and educational meetings related to blood conditions, medicines and treatment, as well as, its impact on patients, patient families, caregivers and/or healthcare professionals, are included in the broad category of the opponent’s providing of training and instruction in the medical sector and for specialist staff. Therefore, they are identical.

The contested electronic transmission of information posted to user newsgroups and discussion groups via a global computer network are similar to the opponent’s computer software in Class 9. Although their natures are different, they may have a similar purpose and can coincide in producer/provider and end user. It is common to transmit and disseminate and/or publish posts of user and discussion groups through software applications. Therefore, there is also a certain complementarity relationship between the goods and services under comparison.

Contested services in Class 44

The contested healthcare information services, namely, providing information concerning blood conditions, medicines and treatment, as well as, its impact on patients, patient families, caregivers and/or healthcare professionals; healthcare information services, namely, patient chart analysis; healthcare information services, namely, assessing dosing, frequency, bleed rates, and consumption of medicine are included in the broad category of the opponent’s medical services. The services are, therefore, identical.

2. The signs

PARSIFAL	PARSIFAL
Earlier trade mark	Contested sign

The signs are identical.

2. Global assessment and conclusion

The signs are identical and some of the contested services, as established above in section a) of this decision, are identical. Therefore, the opposition must be upheld under Article 8(1)(a) EUTMR for these services. Furthermore, the remaining contested goods and services were found to be similar to those covered by the earlier trade mark. Given the identity of the signs, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition must also be upheld for these goods and services.

It follows that the contested trade mark must be rejected for all the contested goods and services.

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

Denitza STOYANOVA- VALCHANOVA

María Helena GRANADO CARPENTER

Martin EBERL

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.