OPPOSITION Nо B 3 104 558

Fleming Medical Ltd, Corcanree Business Park, Dock Rd, Limerick, Ireland (opponent), represented by FRKELLY, 27 Clyde Road Ballsbridge, Dublin 4, Ireland (professional representative)

a g a i n s t

Yangao Man, No. 14310 Dewar Bay, Bottenville City, United States of America, Liandong Li, Room 403, Unit 1, Building 8, 601, No. 3 Jiaojunchang Street, Zhuozhou City, Hebei Province, People’s Republic of China and Deqiang Cheng, No. 1, Unit 5, Building 6, 499 Huafu Avenue 1st Section, Huayang, Tianfu New District, Chengdu, People’s Republic of China (applicants), represented by Würth & Kollegen, Auf Dem Berge 36, 28844 Weyhe, Germany (professional representative).

On 28/10/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 104 558 is partially upheld, namely for the following contested goods:

Class 5: Medicinal alcohol; anaesthetics; antiseptics; bacteriological preparations for medical and veterinary use; pharmaceutical preparations; analgesics; drugs for medical purposes; febrifuges; first-aid boxes, filled; medicines for human purposes; glucose for medical purposes; antibiotics.

2. European Union trade mark application No 18 110 514 is rejected for all the above goods. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 110 514 (figurative mark), namely against some of the goods in Class 5. The opposition is based on Irish trade mark registration No 144 557 ‘MEDICARE’ (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.

a) The goods

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

Class 5: Pharmaceutical and sanitary preparations; dietetic substances adapted for medical use, food for babies; plasters for medical purposes; materials for dressings; material for stopping teeth, dental wax; disinfectants (other than for laying and absorbing dust).

The contested goods are the following:

Class 5: Medicinal alcohol; anaesthetics; antiseptics; bacteriological preparations for medical and veterinary use; capsules for medicines; pharmaceutical preparations; analgesics; drugs for medical purposes; febrifuges; first-aid boxes, filled; medicines for human purposes; glucose for medical purposes; antibiotics.

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 pharmaceutical preparations are identically contained in the opponent’s list of goods.

The contested anaesthetics; bacteriological preparations for medical and veterinary use; analgesics; drugs for medical purposes; febrifuges; medicines for human purposes; glucose for medical purposes; antibiotics are included in the broad category of the opponent’s pharmaceutical preparations. Therefore, they are identical.

The contested medicinal alcohol; antiseptics are included in the broad category of, or overlap with, the opponent’s disinfectants (other than for laying and absorbing dust). Therefore, they are identical.

The contested first-aid boxes, filled are boxes usually containing equipment needed to give immediate medical help in an emergency. They are at least similar to the opponent’s pharmaceutical preparations and plasters for medical purposes, which are standard items of these contested goods. They are complementary and can coincide in producer and relevant public.

The remaining contested capsules for medicines are preparations that are designed to hold a certain dosage of medicines. Even though the purpose of these goods and the opponent’s pharmaceutical preparations, very broadly speaking, is a medical one, the concrete purpose of each of these items differs. The purpose of the opponent’s goods is to heal or prevent illness, whereas the purpose of capsules is only to hold a certain dosage of medicines (in the form of powder or liquid), allowing them to be taken orally. On the other hand, the same medicine can be offered to consumers in the form of tablets. Their producers, targeted public and distribution channels are different. Therefore, the contested goods are considered dissimilar to the opponent’s pharmaceutical preparations.

Furthermore, the contested capsules for medicines have nothing in common with the remaining opponent’s goods in Class 5, which cover sanitary, medical and dental preparations, dietetic substances for medical use and food for babies. Their nature, purpose and method of use are different. They do not coincide in their producer and do not share the same distribution channels. Furthermore, these goods are neither complementary nor in competition and target different end users. Therefore, they are dissimilar.

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 identical or at least similar are directed at the public at large and at business customers with specific professional knowledge or expertise in the medical or health field.

In relation to some of the relevant goods, which belong to the category of pharmaceutical preparations, it is apparent from the case-law that, insofar as pharmaceutical preparations, whether or not issued on prescription, are concerned, the relevant public’s degree of attention is relatively high (15/12/2010, T‑331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T‑288/08, Zydus, EU:T:2012:124, § 36). In particular, medical professionals have a high degree of attentiveness when prescribing medicines. Non-professionals also have a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health.

With respect to the remaining conflicting goods (e.g. the contested medicinal alcohol; antiseptics), which also have an impact on a person’s health, it is expected that the degree of attention of the relevant public when purchasing these goods will be higher than average.

To sum up, in the present case, the degree of attention is considered higher than average for all goods concerned.

c) The signs

MEDICARE
Earlier trade mark	Contested sign

The relevant territory is Ireland.

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 a word mark consisting of a single verbal element, ‘MEDICARE’. Part of the public from the relevant territory will understand this verbal element as referring to a health insurance programme in the United States (information extracted from Collins Dictionary on 26/10/2020 at https://www.collinsdictionary.com/dictionary/english/medicare). Albeit not directly descriptive, this element may be perceived as alluding to the fact that the relevant goods in Class 5 are rendered under the abovementioned insurance programme (e.g. with the aim of preventing clients’ health issues). Therefore, its distinctiveness is slightly reduced to a below-average degree.

However, another part of the relevant public will perceive the element ‘MEDICARE’ as the sum of its meaningful components, ‘MEDI’ (the adjective of ‘medical’) and ‘CARE’, that is to say with the meaning ‘the professional attention of medical practitioners’ (information extracted from Collins Dictionary on 26/10/2020 at www.collinsdictionary.com/dictionary/english/medical-care). This part of the public will perceive the element as providing information that the goods concerned in Class 5 are intended for the medical care of patients. Therefore, for this part of the public, the verbal element ‘MEDICARE’ of the earlier mark is weak.

The contested sign is a figurative mark consisting of the verbal elements ‘MEDICARE’ and ‘RECOVERY CENTER’, separated by an ampersand symbol, ‘&’, and all written in a standard black upper-case typeface. Above the verbal elements, there are some Asian characters, and to the left of these elements there is an abstract elliptical figurative element. This figurative element, as correctly pointed out by the opponent, has no recognisable significance for the relevant public and, without any further information provided to the contrary by the applicants, it is impossible for the Opposition Division to discern any concept.

The verbal element ‘MEDICARE’ of the contested sign will be perceived by the relevant public with the same meaning and distinctiveness as mentioned above. Reference is made to those findings, which are equally applicable here. The remaining verbal element of the sign, ‘RECOVERY CENTER’, will be associated with a place offering, for instance, physical or mental health treatment programmes. As it may allude to the purpose of the relevant goods in Class 5 that may be used in healing/recovering programmes, it is a weak element of the sign. Finally, the ampersand symbol, ‘&’, of the contested sign is a commonly used symbol representing the conjunction ‘and’ and has a reduced trade mark significance in the perception of the consumers, as it is a simple connector.

The relevant public will most likely perceive the Asian characters in the contested sign as Chinese. Since Chinese script as a whole is illegible for the relevant public in Ireland and consumers will not and cannot try to pronounce it or link it to a definite meaning, these characters are likely to be perceived as meaningless abstract signs (04/09/2017, R 1780/2016‑5, DEVICE OF CHINESE CHARACTERS (fig.), § 39). As they are located just above the verbal element depicted in English, the public will probably assume that these characters are the transliteration of the verbal element ‘MEDICARE & RECOVERY CENTER’ into a corresponding language (most likely Chinese). In any event, the relevant public will not be able to verbalise these Asian characters, and, therefore, they will not be easily memorised. As a consequence, they have a lower-than-average degree of distinctiveness (04/09/2017, R 1780/2016‑5, DEVICE OF CHINESE CHARACTERS (fig.), § 40).

Likewise, the figurative element (the ellipse) on the left-hand side of the contested sign does not convey any specific meaning for the relevant public and is rather abstract. Although it is distinctive to a normal degree for the relevant goods, the fact remains that 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).

The earlier mark has no dominant element due to its nature (word mark). The contested sign does not have any element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the verbal element ‘MEDICARE’; this means that the earlier mark is completely reproduced as the contested sign’s first verbal element, which first catches the attention of the consumers.

However, they differ in the additional elements of the contested sign, all of which are either weak / less distinctive (the verbal element ‘RECOVERY CENTER’ and the Asian characters) or have less weight in the comparison of the signs (i.e. the abstract figurative element and the ampersand symbol, ‘&’) for the reasons explained in detail above.

Therefore, the signs are visually similar to a below-average degree.

Aurally, the pronunciation of the signs coincides in the sound of the verbal element ‘MEDICARE’, present identically in both signs. The pronunciation differs in the sound of the weak verbal element ‘RECOVERY CENTER’ and the ampersand symbol of the contested sign (pronounced as ‘and’), which have no counterparts in the earlier mark.

As outlined above, the Asian characters in the contested sign will not be pronounced so they will not be taken into consideration when assessing aural similarity (09/02/2017, R 539/2016‑5, C@BONUS BONUSLINE (fig.) / bonus net (fig.), § 33).

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 and their individual elements.

As the signs coincide in the concept of the verbal element ‘MEDICARE’ explained above (irrespective of its degree of distinctiveness) and differ only in the concept stemming from the weak verbal element ‘RECOVERY CENTER’ in the contested sign, they are conceptually similar to an average degree.

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, considering what has been explained in section c) of this decision concerning the meaning of the verbal element ‘MEDICARE’ for the relevant public and in relation to the goods at issue, the earlier mark, which is this word only, is distinctive to a low or below-average degree, depending on the meaning that the relevant public will attribute to its verbal element.

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).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Accordingly, a greater degree of similarity between the goods and services may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

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).

As stated above, the contested goods are partly identical, partly at least similar and partly dissimilar to the opponent’s goods. Those found to be identical and at least similar target the public at large and business customers who pay a higher-than-average degree of attention.

The earlier trade mark has a low or below-average degree of inherent distinctiveness for the relevant goods. However, the finding of a low or below-average degree of distinctiveness for the earlier trade mark does not preclude a finding that there is a likelihood of confusion. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor involved in that assessment. Therefore, even in a case involving an earlier mark of a low or below-average degree of distinctiveness, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (13/12/2007, T‑134/06, Pagesjaunes.com, EU:T:2007:387, § 70).

The conflicting signs are visually similar to a below-average degree and aurally and conceptually similar to an average degree, as explained in detail above in section c) of this decision. This is because the signs coincide in the verbal element ‘MEDICARE’, which is the sole verbal element of the earlier mark and the first verbal element of the contested sign to which consumers usually pay more attention.

It should be reminded that when marks have an element with a low degree of distinctiveness in common, the assessment of likelihood of confusion should focus on the impact of the non-coinciding elements on the overall impressions created by the signs. However, as stated above in section c) of this decision, all the differing elements of the signs are equally weak or have a reduced weight in the assessment of the similarity of the signs. Consequently, they will not help to differentiate the signs to a significant extent in the perception of the relevant consumers. Therefore, despite the low / below-average degree of distinctiveness of the earlier mark, the differences between the signs are not sufficient to counteract their similarities and to exclude the likelihood of confusion, even if the public displays a higher-than-average degree of attention.

Based on an overall assessment 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 public in the relevant territory and, therefore, the opposition is partly well founded on the basis of the opponent’s Irish trade mark registration No 144 557.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or at least similar to those of the earlier trade mark.

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.

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

Boyana NAYDENOVA

Martin MITURA

Kieran HENEGHAN

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.