OPPOSITION Nо B 3 111 898

 

DeVilbiss Healthcare LLC, 100 DeVilbiss Drive, 15501 Somerset, United States of America (opponent), represented by Cabinet Nuss, 10, rue Jacques Kablé, 67080 Strasbourg Cédex, France (professional representative) 

 

a g a i n s t

 

HCmed Innovations Co., Ltd., Rm. B, 10f, No. 319, Sec. 2, Dunhua S. Rd., Da'an Dist., 106 Taipei City, Taiwan, People’s Republic of China, (applicant), represented by Sakellarides Law Offices, Adrianou Str. 70, 10556 Athens, Greece (professional representative).

On 11/05/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 111 898 is rejected in its entirety.

 

2.	The opponent bears the costs, fixed at EUR 300.

 

REASONS

 

On 18/02/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 133 605 (figurative mark). The opposition is based on: 

1) Austrian trade mark registration No 138 787, ‘PULMO AIDE’ (word mark);

2) German trade mark registration No 2 024 618, (figurative mark);

3) Spanish trade mark registration No M1 656 096, (figurative mark);

4) French trade mark registration No 1 690 954, ‘PULMO-AIDE’ (word mark);

5) Italian trade mark registration No 614 163, (figurative mark);

6) Italian trade mark registration No 986 023, (figurative mark);

7) Italian trade mark registration No 1 462 766, (figurative mark).

8) United Kingdom trade mark registration No 1 476 116, ‘PULMO-AIDE’ (word mark).

The opponent invoked Article 8(1)(b) EUTMR. 

PRELIMINARY REMARK ON UNITED KINGDOM NATIONAL TRADE MARK REGISTRATION NO 1 476 116

On 01/02/2020, the United Kingdom (UK) withdrew from the European Union (EU) subject to a transition period until 31/12/2020. During this transition period EU law remained applicable in the UK. As from 01/01/2021, UK rights ceased ex-lege to be earlier rights protected ‘in a Member State’ for the purposes of proceedings based on relative grounds. The conditions for applying Article 8(1) EUTMR, worded in the present tense, must also be fulfilled at the time of decision taking. It follows that United Kingdom trade mark registration No 1 476 116 no longer constitutes a valid basis of the opposition.

 

Therefore, United Kingdom national trade mark registration No 1 476 116 cannot be taken into account and in the present proceedings this earlier right must be rejected as a basis of the opposition.

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 more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Austrian trade mark registration No 138 787, Spanish trade mark registration No M1 656 096, French trade mark registration No 1 690 954, Italian trade mark registration No 1 462 766.

a) The goods

 

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

Austrian trade mark registration No 138 787 (Earlier Mark 1)

Class 10: Surgical, medical, dental and veterinary apparatus and instruments; compressed air nebulizers and air compressors for the operation of nebulizers for medical applications; artificial limbs, eyes and teeth; orthopaedic articles; chirurgical suture materials.

Spanish trade mark registration No M1 656 096 (Earlier Mark 3)

Class 10: Surgical, medical, dental and veterinary apparatus and instruments in particular air nebulizers operated by air, air compressors for operating nebulizers for medical application; artificial limbs, eyes and teeth; orthopaedic articles; suture material.

French trade mark registration No 1 690 954 (Earlier Mark 4)

Class 10: Nebulizers operated by air and air compressors for operating said nebulizers used for medical applications; surgical, medical, dental and veterinary apparatus and instruments; artificial limbs, eyes and teeth; orthopaedic articles; suture materials.

Italian trade mark registration No 1 462 766 (Earlier Mark 7)

Class 10: Surgical, medical, dental and veterinary instruments and appliances, artificial limbs, eyes and teeth; orthopaedic articles; suture material; such as air-operated nebulizers and air compressors to operate nebulizers for medical applications.

The contested goods are the following:

Class 10: Anaesthetic apparatus; inhalers; insufflators; vaporizers for medical purposes; anaesthetic masks; medical apparatus and instruments; respirators for artificial respiration; apparatus for artificial respiration; aerosol dispensers for medical purposes; fumigation apparatus for medical purposes.

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

  

The term ‘in particular’, used in the opponent’s list of goods, indicates that the specific goods 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).

The contested anaesthetic apparatus; inhalers; insufflators; vaporizers for medical purposes; anaesthetic masks; medical apparatus and instruments; respirators for artificial respiration; apparatus for artificial respiration; aerosol dispensers for medical purposes; fumigation apparatus for medical purposes are either identically contained in both lists, or included in the broad category of the opponent’s surgical and medical apparatus and instruments covered by the earlier marks 1, 3, 4 and 7. Therefore, they are identical.

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 its arguments, the opponent states that the average consumer is the relevant public, and the degree of attention is consequently considered from relatively low to average. Nevertheless, the Opposition Division considers that the goods found to be identical are directed at business customers with specific professional knowledge or expertise and the goods in question have consequences on patients´ health. Therefore, the degree of attention is considered to be relatively high and the opponent’s argument must be set aside.

Even if some of the goods would target the public at large and be available in pharmacies, e.g. inhalers, consumers will still approach these goods with a high attention due to the same reasons mentioned above, namely health status is concerned.

 

c) The signs

 

Earlier Mark 1 PULMO AIDE Earlier Marks 3 Earlier Mark 4 PULMO-AIDE Earlier Mark 7
Earlier trade marks	Contested sign

 

The relevant territories are Austria (for Earlier mark 1), Spain (for Earlier Mark 3), France (for Earlier Mark 4) and Italy (for Earlier Marks 7).

 

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).

Earlier Mark 1 is the word mark ‘PULMO AIDE’.

Earlier Mark 4 is the word mark ‘PULMO-AIDE’. The hyphen is a mere typographical element, with no distinctiveness.

Earlier Marks 3are figurative marks composed of the verbal element ‘PulmoAide’ written in bold italics upper and lower-case letters in standard typeface.

Earlier Mark 7 is a figurative mark composed of the verbal element ‘PulmoAide’ written in italics upper and lower-case grey letters in standard typeface.

The earlier marks have no elements that could be considered clearly more dominant (visually eye-catching) than other elements.

The contested sign is a figurative mark consisting of the verbal element ‘Pulmogine’ written in standard grey capitalized letters, and a figurative element of a purely decorative nature since it is essentially made up of two smaller geometric figures made of dots placed above the last three letters of the verbal element. Therefore, the element ‘Pulmogine’ is the dominant element as it is the most eye-catching.

Regarding the perception of the verbal elements, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).

Consequently, while the rule is that marks are perceived as a whole, the exception to the rule is that, under certain circumstances, consumers could break them down into smaller parts. Since this is an exception, it has to be applied restrictively, for example, when all the parts suggest a concrete meaning known to the relevant public or when only one part has a clear meaning, which are the cases at hand. Therefore, in the present case, due to the meaning explained below, the consumers will break down the verbal elements into ‘Pulmo’ and ‘gine’ in the contested sign.

Regarding the Earlier Marks 1 and the contested sign, the coinciding element ‘Pulmo’ will be understood by the relevant public as referring to ‘lung’ (information extracted from Duden on 05/05/2021 at https://www.duden.de/rechtschreibung/Pulmo). Since this element is descriptive of the goods at hand, it is non-distinctive. The verbal element ‘Aide’ of the Earlier Marks 1 will be understood as referring to the term ‘helper; aide’ (information extracted from Duden on 05/05/2021 at https://www.duden.de/rechtschreibung/Aide). Bearing in mind that the relevant goods are medical apparatus and instruments, this element is weak, since it refers to the service of assisting patients.

The opponent argues that the verbal element ‘gine’ is referring to ‘angina’ in German and diseases including this wording (i.e ‘unestable angina’), which are likely to be treated by the products at hand. The Opposition Division does not agree with this point of view and considers it too far-fetched to take the view that a substantial part of the relevant public would perceive the word ‘angina’ in the verbal element ‘gine’ of the contested sing. This claim is, therefore, set aside. Consequently, the verbal element ‘gine’ is meaningless for the substantial part of the relevant public under analysis and is, therefore, distinctive.

Regarding Earlier Mark 3, the coinciding element ‘Pulmo’ will be understood by the relevant public as referring to ‘lung’ (‘pulmón’ in Spanish information extracted from Diccionario de la Real Academia on 05/05/2021 at https://dle.rae.es/pulm%C3%B3n). Since this element is descriptive of the goods at hand, it is non-distinctive. The verbal element ‘Aide’ of the earlier mark is meaningless. Therefore, it is distinctive. The verbal element ‘gine’ might be associated by the relevant public under analysis with gynecology/gynecologist (ginecólogo/ginecología in Spanish information extracted from Diccionario de la Real Academia on 05/05/2021 at https://dle.rae.es/ginec%C3%B3logo). Since it is a branch of medical science and bearing in mind that goods are hand are medical apparatus and instruments, this element is weak.

Regarding Earlier Mark 4, the coinciding element ‘Pulmo’ will be understood by the relevant public as referring to lung diseases (maladies pulmonaires in French information extracted from Larousse on 05/05/2021 at https://www.larousse.fr/dictionnaires/francais/pulmonaire/65041). Since this element is descriptive of the goods at hand, it is non-distinctive. The verbal element ‘Aide’ of the earlier sign will be understood as referring to the term ‘help’ (information extracted from Larousse on 05/05/2021 at https://www.larousse.fr/dictionnaires/francais/aide/1840). Bearing in mind that the relevant goods are medical apparatus and instruments, this element is weak, since it refers to the service of assisting patients. The verbal element ‘gine’ of the contested sign is meaningless for the public under analysis. Therefore, it is distinctive.

Regarding Earlier Mark7 the coinciding element ‘Pulmo’ will be understood by the relevant public as alluding to lung due to the fact that is an English medical term (information extracted from the medical dictionary on 22/04/2021 at https://medical-dictionary.thefreedictionary.com/pulmo) and scientists are generally considered to be more familiar with the use of technical and basic English vocabulary than the average consumer, irrespective of territory 09/03/2012, T-207/11, Isense, EU:T:2012:121, § 21-22 for German professionals in the medical field). In addition, it cannot be discarded that the relevant public under analysis might associate ‘Pulmo’ with ‘polmone’ (lung in Italian information extracted from Treccani on 05/05/2021 at https://www.treccani.it/vocabolario/polmone/) due to its similar spelling and pronunciation. Hence, this element is descriptive of the goods at hand and is, therefore, non-distinctive. The verbal element ‘Aide’ of the earlier mark is meaningless. Therefore, it is distinctive. The verbal element ‘gine’ has no meaning as such. However, it cannot be discarded that part of the relevant public might perceive this element as referring to gynaecologist (‘ginecologo’) in Italian.

Visually, the signs coincide in the verbal element ‘Pulmo’. Although, the signs also coincide in the vowels ‘i’ and ‘e’ these letters, they belong to different verbal elements ‘Aide’ and ‘gine’, which convey a rather different visual impression due to the different consonant used and the structure of the syllables – three in the ‘Aide’- one consonant (‘D’), two in ‘gine’ – two consonants ‘G’ and ‘N’.

The signs differ in the remaining decorative or stylisation elements, as described above.

Therefore, considering the lack of distinctiveness of the coinciding element of the signs, all the signs are visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the signs coincide in the sound of the letters ‘Pulmo’, considered to lack distinctiveness. The signs also coincide in the sound of the letters ‘I’ and ‘e’, placed identically in both signs. However, these vowels belong to the different verbal elements ‘Aide’ and ‘gine’, that are pronounced differently.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs are conceptually dissimilar because they overlap in a non-distinctive element and the differentiating elements convey different concepts or are meaningless. Consequently, the overlap has no impact.

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 marks

 

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 marks are particularly distinctive by virtue of intensive use or reputation. Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se.

The earlier marks 3) and 7) as a whole have no meaning for any of the goods and services from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal, despite the presence of non-distinctive elements in the marks as stated above in section c) of this decision.

Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier marks 1) 4) must be seen as low for all the goods in question, as correctly pointed out by the opponent. However, the earlier marks are considered to have at least a minimum degree of inherent distinctiveness. Earlier marks, whether EUTMs or national marks, enjoy a ‘presumption of validity’. The Court made it clear, in its judgment of 24/05/2012, C-196/11, F1-Live, EU:C:2012:314, § 40-41, that ‘in proceedings opposing the registration of a European Union trade mark, the validity of national trade marks may not be called into question’. The Court added that ‘it should be noted that the characterisation of a sign as descriptive or generic is equivalent to denying its distinctive character’.

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 are identical. They are mostly directed at business customers with specific professional knowledge or expertise, but also at public at large, with a high the degree of attention.

The distinctiveness of the earlier marks 3) and 7) is normal whereas the distinctiveness of the earlier marks 1) 4) is low.

The signs are visually similar to a low degree, aurally similar to a below average degree, and conceptually dissimilar. The reason for these low similarities is in the non-distinctive character of their coinciding element ‘Pulmo’ which though at the beginning of the signs, cannot serve as identifier of commercial origin.

According to the Common Practice, when marks share an element with no distinctiveness, the assessment will focus on the impact of the non-coinciding components on the overall impression of the marks. The assessment will take into account the similarities/differences and distinctiveness of the non-coinciding components. A coincidence only in non-distinctive components does not lead to a likelihood of confusion.

Therefore, in the present case, the Opposition Division considers that confusion will not arise taking into consideration that the coincidence lies in a non-distinctive component. The additional distinctive, or low distinctive components, ‘Aide’ and ‘gine’, even placed at the end of the signs, are sufficient to counterbalance the similarity between them, including regarding identical goods as in the present case, since the identity of these goods cannot compensate the low similarity of the signs. This is all the more taking into account that the relevant public will pay a high degree of attention regarding the goods concerned.

Considering all the above, even considering that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

The opponent has also based its opposition on the following earlier marks:

 German trade mark registration No 2 024 618, (figurative mark), protected for goods in class 10.

 Italian trade mark registrations No 614 163, (figurative mark), protected for goods in class 10.

 Italian trade mark registrations No 986 023, (figurative mark), protected for goods in class 10.

However, since these marks essentially cover the same or narrower scope of goods in class 10 for territories already tackled above, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, the opposition must also be rejected as regards these earlier rights.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

 

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

 

 

 

The Opposition Division

 

 

María Clara IBÁÑEZ FIORILLO

Inés GARCÍA LLEDÓ

Manuela RUSEVA

 

 

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.