OPPOSITION Nо B 3 108 065

 

sfm medical devices Gmbh, Brückenstraße 5, 63607 Wächtersbach, Germany (opponent), represented by Hans-Herbert Stoffregen, Friedrich-Ebert-Anlage 11b, 63450 Hanau/Main, Germany (professional representative) 

 

a g a i n s t

 

Medacta International SA, Strada Regina, 6874 Castel San Pietro, Switzerland (applicant), represented by Bugnion S.P.A., Viale Lancetti, 17, 20158 Milano, Italy (professional representative).

On 13/08/2021, the Opposition Division takes the following

 

 

DECISION:

1.	Opposition No B 3 108 065 is partially upheld, namely for the following contested goods and services: Class 10: Apparatus and instruments for diagnostics, examination and monitoring; arthroscopic apparatus and instruments; arthroscopic column and related instruments; orthopaedic implants and prostheses; devices and instruments for fixing and inserting prosthetics and implants; surgical apparatus and instruments; orthopedic articles. Class 44: Medical, surgical and diagnostic services; consultancy and assistance relating to medical, surgical and orthopaedic equipment and instruments; professional consultancy in relation to medical technology, medical surgery and orthopaedics; pre-operative and rehabilitation assistance; telemedicine services.
2.		European Union trade mark application No 18 133 205 is rejected for all the above goods and services. It may proceed for the remaining goods and services.
3.			Each party bears its own costs.

REASONS

 

On 08/01/2020, the opponent filed an opposition against all the goods and services of European Union trade mark application No 18 133 205 (figurative mark). The opposition is based on European Union trade mark registration No 15 546 567 ‘Nextaro’ (word mark). The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK

According to Article 2(2)(i) EUTMDR, the opposition may contain an indication of the goods and services against which the opposition is directed. In the absence of such an indication, the opposition will be considered to be directed against all of the goods and services of the opposed mark. If the opponent indicates that the opposition is only directed against part of the goods and services of the EUTM application, it must list these goods clearly. In this case, the opponent indicated in the notice of opposition that it was directed against all the goods and services of the contested sign.

In its further facts dated 5/10/2020, the opponent’s observations appear to be directed only against part of the goods and services of the contested mark, i.e. all the goods in Class 10 and some of the services in Class 42 (design services; design of surgical instruments, prostheses, implants and orthopedic articles; customised design of surgical instruments, prostheses, implants and orthopedic articles) and Class 44 (consultancy and assistance relating to medical, surgical and orthopaedic equipment and instruments). However, no express restriction of the extent of the opposition in relation to the goods in Class 9 or the remaining services in Classes 42 and 44 was filed.

In its allegations of 08/04/2021, the opponent reiterates that the opposition was directed only against all the goods in Class 10 and some of the services in Class 42 and 44. However, when listing the contested services in Class 44, the opponent included some additional services (i.e. professional consultancy in relation to medical technology, medical surgery and orthopaedics) which were included in the notice of opposition but did not appear in the opponent’s further facts dated 5/10/2020. Nor was an express restriction of the extent of the opposition filed at that point.

In view of the above and the fact that the opponent’s observations contain contradictory indications with respect to its purported intention to limit the extent of the opposition only to part of the goods and services of the contested application, the restriction of the extent of the opposition cannot be considered clear, express and unambiguous. Therefore, the Opposition Division will proceed on the basis of the extent of the opposition stated in the notice of opposition, namely that the opposition is directed against all the goods and services of the contested sign.

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 goods on which the opposition is based are the following:

Class 10: Surgical, medical, dental and veterinary apparatus and instruments; medical syringes; cannulae; particle filters and sterile filters for medical purposes; implantation needles; catheters and catheter sets (included in class 10) for medical applications; medical apparatus, namely transfer systems for medical substances comprising interconnectable containers of metal, plastic or glass; insertion mandrels (medical instruments) for the removal of medicines or medical liquids; hoses being parts of medical instruments.

The contested goods and services are the following:

 

Class 9: Augmented reality display devices; smartglasses; virtual reality apparatus and instruments.

Class 10: Apparatus and instruments for diagnostics, examination and monitoring; arthroscopic apparatus and instruments; arthroscopic column and related instruments; orthopaedic implants and prostheses; devices and instruments for fixing and inserting prosthetics and implants; surgical apparatus and instruments; orthopedic articles.

Class 42: Design services; design of surgical instruments, prostheses, implants and orthopedic articles; 3D design services; digitization of images; providing of software online for developing two-dimensional images into three-dimensional goods; customised design of surgical instruments, prostheses, implants and orthopedic articles.

Class 44: Medical, surgical and diagnostic services; consultancy and assistance relating to medical, surgical and orthopaedic equipment and instruments; professional consultancy in relation to medical technology, medical surgery and orthopaedics; pre-operative and rehabilitation assistance; telemedicine services. 

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 opponent’s list of goods 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 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 9

The opponent’s goods in Class 10 are mainly surgical, medical, dental and veterinary apparatus and instruments (and their components). These goods have nothing in common with the contested augmented reality display devices; smartglasses; virtual reality apparatus and instruments. The possibility that some of the contested goods might be used together with the opponent’s goods is not sufficient to find a degree of similarity between them. The relevant goods belong to totally different market sectors (while the contested goods belong to the audio-visual or electronic sector, the opponent’s goods are, inter alia, medical apparatus and instruments). Consumers will not think that the goods in question come from the same producers, since the technology and know-how needed to manufacture them is different. Moreover, the goods are sold through completely different distribution channels, targeting a different public. Moreover, they have different purposes and methods of use, are neither complementary, nor in competition. They are therefore dissimilar.

The opponent’s goods in Class 10

Surgical apparatus and instruments are identically contained in both list (including synonyms).

Contrary to the applicant’s view, the contested apparatus and instruments for diagnostics, examination and monitoring; arthroscopic apparatus and instruments; arthroscopic column and related instruments; orthopaedic implants and prostheses; devices and instruments for fixing and inserting prosthetics and implants are all included in the opponent’s broad category of surgical, medical apparatus and instruments. Consequently, they are identical.

The contested orthopedic articles are similar to a low degree to the opponent’s medical apparatus and instruments as they usually coincide in producer and the relevant public. Furthermore, they are complementary.

Contested services in Class 42

The contested design services; design of surgical instruments, prostheses, implants and orthopedic articles; customised design of surgical instruments, prostheses, implants and orthopedic articles are rendered by design engineering companies with a very specific technology and know-how. Therefore, they are dissimilar to all the opponent’s goods in Class 10. The mere fact that the design services may refer to medical or surgical apparatus or instruments is not sufficient to find similarity. The services have a different nature and purpose. They are normally offered through different distribution channels, target a different public and originate from different undertakings.

The contested 3D design services; digitization of images; providing of software online for developing two-dimensional images into three-dimensional goods are services normally undertaken by software developers. They are dissimilar to all the opponent’s goods because they have nothing in common. The mere fact that some medical apparatus and instruments incorporate software is not sufficient to find similarity. The services have a different nature and purpose. They are normally offered through different distribution channels, target a different public and originate from different undertakings.

Contested services in Class 44

The contested medical, surgical and diagnostic services; consultancy and assistance relating to medical, surgical and orthopaedic equipment and instruments; professional consultancy in relation to medical technology, medical surgery and orthopaedics; pre-operative and rehabilitation assistance; telemedicine services are medical services which are similar to the opponent’s surgical, medical apparatus and instruments.

The opponent’s broad category of surgical, medical apparatus and instruments includes not only equipment that is strictly meant to be used by the medical professionals when providing medical services but also medical appliances that are used by the patient under the supervision and/or by instruction of a medical/healthcare practitioner (e.g. glucometers) or they are meant to be implanted in the human body (e.g. pacemakers) and as such they target the professional as well as the general public. These goods in Class 10 and the services in Class 44 are similar insofar as they both target the general public. The goods and services serve the same purpose (to restore and maintain human’s health) and there is a complementarity between them.

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 and services found to be identical or similar to varying degrees are directed at the general public at large and business customers with specific professional knowledge or expertise in the medical field.

The public’s degree of attention is high given that all the goods and services relate to health and are generally expensive.

c) The signs

 

Nextaro
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The common verbal element ‘Next’ and the verbal element ‘AR’ of the contested sign are meaningful in certain territories, for example in those countries where English is understood. Consequently, for reasons of procedural economy, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public for whom the verbal elements will not be associated with any meaning and who will therefore not artificially dissect the signs (such as the Spanish-speaking part of the public), where a likelihood of confusion is most likely to arise.

The earlier mark’s verbal element ‘Nextaro’ and the contested sign’s verbal element ‘NEXTAR’ have no meaning for the relevant public. Therefore, they are distinctive.

Regarding the contested sign’s figurative element depicting a star, the public will perceive it as a decorative element and, therefore, although distinctive, with a lower impact.

The typeface of the contested sign’s verbal elements will merely be perceived as a graphical way of bringing the verbal elements to the relevant public’s attention and its impact on the comparison of the signs is, therefore, limited.

Contrary to the applicant’s view, the contested sign has no element that could be considered clearly more dominant than other elements. The opponent claims that ‘Nextaro’ is the dominant element of the earlier mark. However, it should be noted that word marks have no dominant elements because, by definition, they are written in a standard typeface. The length of the words or the number of letters is not an issue of dominance but of overall impression.

Visually and aurally, the signs coincide in the string of letters ‘Nextar*’ (and their sounds) which is the entire verbal element of the contested sign and entails the majority of the letters of the earlier mark (placed, in addition, at its beginning). They differ in the last letter ‘o’ of the earlier mark which has no counterpart in the contested sign. Account must be taken of the fact that 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.

The signs also differ in the figurative element of the contested sign and its typeface, which have less impact on the public. 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).

Therefore, the signs are visually and aurally similar to a high degree.

Conceptually, although the public in the relevant territory will perceive the meaning of the contested sign’s figurative element depicting a star 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.

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 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.

e) 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.

The goods are partly identical or similar to varying degrees and partly dissimilar and target the public at large and professionals in the field of health. The relevant public’s degree of attention is high. The degree of distinctiveness of the earlier mark is normal.

The signs are visually and aurally similar to a high degree and conceptually not similar as they coincide in the string of letters/ sounds ‘Nextar*’ which is the entire verbal element of the contested sign and entails the majority of the letters/sounds of the earlier mark (placed, in addition, at its beginning). They only differ in the additional letter ‘o’ of the earlier mark and the figurative elements and typeface of the contested sign, which have less impact on the public.

It should be noted 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).

Considering the above, there is a likelihood of confusion on the part of the public for whom the verbal elements will not be associated with any meaning and who will therefore not artificially dissect the signs (such as the Spanish-speaking part of the public). As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is partly well founded on the basis of the European Union trade mark No 15 546 567. It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods and services are dissimilar. As the identity or similarity of goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this Article and directed at these goods and services 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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

 

 

The Opposition Division

 

Cynthia DEN DEKKER

Fernando AZCONA DELGADO

Loreto URRACA LUQUE

 

 

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.