OPPOSITION No B 3 121 688

Ada Health GmbH, Karl-Liebknecht-Straße 1, 10178 Berlin, Germany (opponent), represented by Stobbs, Widenmayerstr. 34, 80538 München, Germany (professional representative)

a g a i n s t

Smart Health Heidelberg, Handschuhsheimer Landstr. 9/1, 69120 Heidelberg, Germany (applicant).

On 09/07/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 121 688 is rejected in its entirety.

2. The opponent bears the costs.

REASONS

On 18/05/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 187 019 ‘Ida’ (word mark), namely against all the goods in Class 9. The opposition is based on:

1) European Union trade mark registration No 16 193 931 ‘ADA’ (word mark),

2) European Union trade mark registration No 18 074 397 (figurative mark),

3) German trade mark registration No 302 018 016 109 (figurative mark),

4) United Kingdom trade mark registration No 3 155 984 ‘ADA’ (word mark),

5) United Kingdom trade mark registration No 3 403 310 (figurative mark),

6) United Kingdom trade mark registration No 3 156 968 (figurative mark).

The opponent invoked Article 8(1)(b) EUTMR and Article 8(5) EUTMR.

EARLIER UK RIGHTS

On 01/02/2020, the United Kingdom (UK) withdrew from the 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) and (5) EUTMR, worded in the present tense, must also be fulfilled at the time of decision taking. It follows that United Kingdom trade mark registrations indicated above as earlier marks 4, 5 and 6 no longer constitute a valid basis of the opposition.

The opposition must therefore be rejected as far as it is based on these earlier rights.

The opposition will continue in relation to the European Union trade mark registrations and German trade mark registration, indicated above as earlier marks 1, 2 and 3.

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, inter alia, the following:

European Union trade mark registration No 16 193 931 (earlier mark 1)

Class 9: Downloadable electronic publications; audio visual, audio, video and multimedia materials; all of the aforesaid goods exclusively relating to the area of healthcare.

European Union trade mark registration No 18 074 397 (earlier mark 2)

Class 9: Artificial intelligence apparatus; artificial intelligence software; humanoid robots with artificial intelligence; artificial intelligence software for analysis; artificial intelligence software for healthcare; artificial intelligence software for surveillance; artificial intelligence and machine learning software; computer software, computer programs and computer software platforms; computer software applications, downloadable; computer application software; computer software for authorising access to data bases and stored information; mobile telephone software; downloadable smartphone software applications; application software for mobile devices, wireless devices and cloud computing services; computer software to facilitate online health assessment; business technology software; collaboration software; collaboration tools [software]; computer programming software; computer software for use as an application programming interface (api); computer software packages; computer software to enable the searching of data; downloadable electronic publications; audio visual, audio, video and multimedia materials; all of the aforesaid goods being in the field of human medicine and healthcare and/or veterinary services.

German trade mark registration No 302 018 016 109 (earlier mark 3)

Class 9: Electronic publications, downloadable; audiovisual, audio, video and multimedia materials [optical and magnetic data carriers], all of the aforesaid being exclusively related to the healthcare sector.

The contested goods are the following:

Class 9: Mobile apps.

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 mobile apps include as a broader category, or overlap with, the opponent’s downloadable smartphone software applications; all of the aforesaid goods being in the field of human medicine and healthcare and/or veterinary services (earlier mark 2). Since the Opposition Division cannot dissect ex office the broad category of the contested goods, they are considered identical to the opponent’s goods.

For the sake of completeness, it must be mentioned, that the contested mobile apps are also similar to the opponent’s downloadable electronic publications; all of the aforesaid goods exclusively relating to the area of healthcare covered by earlier mark 1, and electronic publications, downloadable; all of the aforesaid being exclusively related to the healthcare sector covered by earlier mark 3. Downloadable electronic publications are electronic versions of traditional media, like e-books, electronic journals, online magazines, online newspapers, etc. It is common to distribute books, magazines and newspapers to consumers in the form of electronic publications through tablet reading devices and smartphones, by means of software applications (apps). Consequently, a complementary relationship between the contested mobile apps and the opponent’s downloadable electronic publications exists. Their producers can be the same, they have the same distribution channels and the public is generally the same.

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 similar (depending on the earlier right) are mainly directed at the public at large. The degree of attention is considered to be average.

c) The signs

ADA (earlier mark 1) (earlier marks 2 and 3)	Ida
Earlier trade marks	Contested sign

The relevant territories are the European Union (earlier marks 1 and 2) and Germany (earlier mark 3).

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 and the contested sign are both word marks comprising one verbal element, ‘ADA’ and ‘Ida’, respectively. Earlier marks 2 and 3 are figurative marks comprising the verbal element ‘ada’, depicted in stylised lower-case letters.

One or both verbal elements, ‘ADA’ of the earlier marks and ‘Ida’ of the contested sign, will be perceived by a significant part of the relevant public, such as the Czech-, English-, German-, Hungarian-, Italian-, Latvian-, Lithuanian-, Polish- and Romanian-speaking parts of the public, as referring to female given names of different origin. The Spanish-speaking part of the public may perceive ‘Ida’ as referring to ‘departure’ or ‘mad lady’. The Bulgarian-speaking public may perceive ‘ADA’ as referring to ‘hell’, and ‘Ida’ as referring to the first person singular of the verb ‘to go’. In addition to the above definitions, the verbal element ‘ADA’ also means ‘the enzyme adenosine deanimase’ or ‘(The name of) a high-level programming language used chiefly in real-time control systems, e.g. for aircraft navigation’ (information extracted from Oxford English Dictionary on 22/06/2021 at https://www.oed.com/). However, it is very unlikely that these specific meanings will be known by the general public or come to mind in relation to downloadable smartphone software applications. Furthermore, it cannot be excluded that part of the public might perceive both verbal elements as meaningless. In any case, the verbal element ‘ADA’ of the earlier marks and ‘Ida’ of the contested sign are not directly related to the goods in question and, therefore, have an average degree of distinctiveness.

When comparing signs, their lengths may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words, small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.

Visually, the opponent claimed that the signs are highly similar, as they both have the letters ‘*DA’ at their ends. The opponent emphasised that the examination of the similarity between trade marks must take account of the overall impression given by them, that the elements at the beginning and at the end of the sign are equally important in the context of short word signs, and that since two of the three letters are identical and in the same sequence, the difference in a single letter does not constitute a significant visual difference between the signs. To support its arguments the opponent referred to the following judgments:

1. 23/09/2020, T‑421/18, MUSIKISS / KISS et al., EU:T:2020:433,

2. 13/03/2019, T‑297/18, supr / Zupr, EU:T:2019:160,

3. 15/07/2011, T‑220/09, ERGO / URGO, EU:T:2011:392,

4. 23/10/2002, T‑388/00, ELS / iLS, EU:T:2002:260.

The opponent also argued that in all the abovementioned judgments, it was established that the differences at the beginning of the verbal elements were not enough to counteract the coincidences in the signs’ remaining letters. However, three out of four judgments cited by the opponent relate to signs containing more different, and importantly, longer verbal elements and are, therefore, not comparable to the present case. As already mentioned above, the relevant public’s perception in relation to longer signs is not necessarily the same as in relation to short signs.

Only quoted judgment 4, involving short three-letter signs, can be considered comparable, to some extent, to the present case, insofar as the signs under comparison both comprise three letters, the second and third of which coincide. However, the Court has established the principle that, in the case of word marks that are relatively short, even if two marks differ by no more than a single consonant, it cannot be found that there is a high degree of visual similarity between them (16/01/2008, T‑112/06, Idea, EU:T:2008:10, § 54). Moreover, each case has to be dealt with separately and with regard to its particularities. Considering that the signs in the present case are not identical to those in the judgment quoted by the opponent, the outcome will not necessarily be the same when all relevant circumstances are taken into account and the signs are compared as a whole.

The signs clearly differ in their first letters, ‘A*’ of the earlier marks and ‘I*’ of the contested sign. The earlier marks contain the same vowel twice, ‘A’, separated by the letter ‘D’, whereas, the vowels in the contested sign are different, ‘I’ and ‘a’. Therefore, the striking repetition of the same vowel in the earlier marks creates a clearly perceptible visual difference between the signs, and will definitely be noticed by the relevant consumers. These differences are further reinforced by the stylisation of earlier marks 2 and 3, which, although rather decorative, still has an impact on the visual perception of the marks. Taking all the above into account, and that the signs are short marks, the earlier marks and the contested sign are visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs will coincide in the sound of the letters ‘*DA’. However, the pronunciation of the signs clearly differs in the sound of their first letters, ‘A’ of the earlier marks and ‘I’ of the contested sign.

The opponent’s argument that the pronunciation of the signs would be nearly identical in many European languages was not proven. On the contrary, the differing first letters will create clearly perceptible aural differences in the pronunciation of the earlier marks ‘ADA’ and the contested sign ‘Ida’, especially taking into account that in the majority of the relevant languages, the same vowel will be repeated twice in the earlier marks. Therefore, contrary to the opponent’s assertions, the signs are aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For a significant part of the relevant public, the earlier marks and/or the contested sign convey different meanings and, therefore, are conceptually not similar. For the part of the public that might perceive the earlier marks and the contested sign as meaningless words, a conceptual comparison is not possible and the conceptual aspect does not influence the assessment of the similarity of the signs.

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 marks is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier trade marks have a high degree of distinctiveness and reputation in the European Union and Germany, in connection with some of the goods and services for which they are registered, namely, the goods and services in Classes 9, 38, 41, 42 and 44. This includes downloadable electronic publications; all of the aforesaid goods exclusively relating to the area of healthcare or electronic publications, downloadable; all of the aforesaid being exclusively related to the healthcare sector; downloadable smartphone software applications; all of the aforesaid goods being in the field of human medicine and healthcare and/or veterinary services in Class 9. This claim must be properly considered given that the distinctiveness of the earlier trade marks must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier marks, the greater will be the likelihood of confusion, and, therefore, marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted evidence to support this claim. As the opponent requested that certain commercial data contained in the evidence be kept confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. The evidence consists of the following documents:

 Witness statement, dated 21/12/2020 and signed by an authorised representative of the opponent. The document states that the company ‘Ada Health GmbH’ was established in 2011 by doctors, scientists and industry pioneers to create new possibilities for personal health. The opponent develops a mobile application software called ‘ADA’, its core product, which is publicly available. In addition to the core product, the opponent also offers enterprise solutions, and works with organisations, institutions and academics under the mark ‘ADA’. ‘ADA’ is a mobile app that is free to download for all Android and iPhone users, via the Google Play Store and Apple App Store. Users can type their questions and symptoms into the app and it will diagnose their medical conditions and provide medical advice accordingly. From its first launch in Sweden in 2016, the ‘ADA’ app became instantly popular in that territory. Following that, the company launched the ‘Ada’ app on iOS systems, via the Apple App Store, in Belgium, Denmark, Ireland, Spain, France, Italy, the Netherlands, Austria and Poland. In 2017, the Company launched ‘ADA’ in Germany and the United Kingdom. ‘ADA’ is available in all countries of the EU, in many European languages. The ‘ADA’ mobile app has become a very popular medical mobile app among Android and iOS users. Over the last few years, it has entered the Top 10 medical apps in the UK, and major EU countries, such as Germany, Spain and France, and become the No 1 medical app in Germany and the UK (for Android). As of November 2020, ‘ADA’ had 286 240 customer reviews on the Google Play Store, with an overall rating of 4.7 out of 5. In the Apple Store, ‘ADA’ is ranked in the Top 54 medical apps with an overall customer rating of 4.7 out of 5. The witness statement further provides information about the customer base, relevant market, additional services provided by the opponent, information related to the opponent’s advertising campaigns, social media accounts, published videos, awards, press exposure and investors. In addition, the witness statement introduces and explains further evidence, submitted as exhibits 1-14, below.

 Exhibit 1: Confidential information (emanating from the opponent) indicating the number of users of the ‘ADA’ app in the European Union in December 2020.

 Exhibit 2: 35 undated pictures showing how the ‘ADA’ app appears on an iPhone mobile device. The app is shown in English, French, Portuguese and Spanish.

 Exhibit 3: Five pictures emanating from the opponent, containing excerpts from the App Store and Google Play, showing the ‘ADA’ app among trending apps and/or in the top position of medical apps on 23/07/2020 and 03-05/09/2020 in Germany; 03/09/2020, 2016 and 2018 in the UK, and from 03/04/2020 to 31/07/2020 in Spain. Four screen shots from the App Store and Google Play, dated 24/11/2020, showing the ‘ADA’ app, some customer reviews (one dated in 2019 and two in 2018), and ranking 4.7 (105 Ratings) in the App Store and 4.7 on Google Play. Pictures also showing a total number of 287 119 reviews on Google Play, and three reviews dated in November 2020.

 Exhibit 4: Two undated printouts of Google Search results lists with the search terms ‘medical diagnosis app’ and ‘blood tests results’, showing results containing the ‘ADA’ app. Undated printout from ‘appgrooves’ containing the articles ‘We Recommend the Best Apps’, showing the ‘ADA’ app in first position, and ‘Feeling sick? There’s an app for that! – The Big Symptom Checker Review’ from ‘TMF The Medical Futurist’, dated 11/04/2019, related to the ‘most widely used’ symptom checkers: ‘Mayo Clinic’, ‘WebMD’, ‘Symptomate’, ‘Your.MD’ and ‘Ada’.

 Exhibit 5: Collection of 17 articles related to, or abstracts and summaries from, scientific studies on symptom assessing apps and their diagnosis accuracy, dated from 2017 to 2020. These include, or are in relation to, the opponent’s ‘ADA’ app and were published on ‘WIRED’ (www.wired.co.uk), ‘PMC US National Library of Medicine National Institutes of Health’ website (www.ncbi.nlm.nih.gov) and the related ‘PublMed.gov’ website (www.pubmed.ncbi.nlm.nih.gov). In addition, they were published on websites ‘Springer’ (www.springer.com); ‘BMC Part of Springer Nature’ (www.ojrd.biomedcentral.com); ‘PULSE’ (www.pulsetoday.co.uk); ‘ScienceDirect’ (www.sciencedirect.com); ‘medRxiv’ (www.medrxiv.org), which is a free online archive and distribution server for complete but unpublished manuscripts (preprints) in the medical, clinical, and related health sciences; and ‘figshare’ (www.figshare.com), a repository where users can make all of their research outputs available.

 Exhibit 6: Two tables showing figures related to the company’s annual turnover and annual advertising expenditure from 2016 to 2020 (EUR). Although it is indicated in the witness statement that these figures are related to the EU, there is no indication in the evidence as regards the territory.

 Exhibit 7: Two undated printouts containing stills from the opponent’s YouTube videos, uploaded on 12/06/2018 and 17/06/2019, related to the ‘ADA’ app (showing 2 435 413 and 950 277 views, respectively); five undated printouts from the opponent’s social media accounts, including Facebook (419 520 followers), Instagram (45 400 followers), Linkedin (12 969 followers), Twitter (4 306 followers) and YouTube.

 Exhibit 8: 10 pages of posts from the opponent’s German, Spanish and United Kingdom Twitter and Facebook accounts, dated 2017, 2018, 2019 and 2020.

 Exhibit 9: Printout from the ‘GERMAN INNO VATION AWARD’ website, showing ‘GERMAN INNO VATION AWARD ’19 GOLD’ for ‘ADA’ in the Excellence in Business to Consumer Medical & Health category. The witness statement lists more awards purportedly received by the opponent. However no evidence was submitted to support these claims.

 Exhibit 10: Nine articles dated from 16/05/2017 to 23/07/2019 in English and one in German, published on the Forbes, PC, Monocle, Business Insider, Fastcompany, TechCrunch, Spiegel, Bloomberg and VentureBeat websites. The articles refer to artificial intelligence, AI technologies and AI chat bots. One of these indicates the opponent among the ‘30 coolest tech companies in Berlin’. Some also mention ‘ADA’ among other AI algorithms, or as a ‘start up’, ‘a London and Berlin-based health tech startup’, or a ‘new AI app’, and one contains an interview with the cofounder and CEO of the opponent.

 Exhibit 11: Collection of articles, all dated in 2020 (after the relevant date), in English and German. These relate to digital science; the most influential women in UK technology; StuffThatWorks (an Israeli startup that has built a platform for people to look up various health conditions); free digital healthcare apps; artificial intelligence for health care; and U.S. healthcare system related aspects due to COVID-19. These were published in online journal DIGITALE WELT, and on the Computer Weekly, TechCrunch, Handelsbatt, Sifted, Lab Manager, Financial Times and MobiHealthNews websites. Some mention the opponent and the ‘ADA’ symptom assessment app.

 Exhibit 12: Article from Forbes entitled ‘Ada Health Launches World’s First AI-Powered Health App In Swahili’, dated 12/02/2019, and an article from the Financial Times, entitled ‘Tanzania’s digital doctor learns to speak Swahili’, dated 16/05/2020, both referring to the launch of the Swahili version of the opponent’s ‘ADA’ app.

 Exhibit 13: Printout from dealroom.co containing information about the opponent’s company, its evaluation (between EUR 160-240 million according to dealroom.co estimate in October 2017) and funding.

 Exhibit 14: Article from TC entitled ‘Berlin’s Ada Health raises $47M to become the Alexa of healthcare’, dated 31/10/2017, referring to the funding raised and that it will be used to improve the product, hire staff and open a new office in the United States. The article also mentions that ‘Ada’ became one of the world’s fastest-growing medical apps in 2017, and since its launch in late 2016, the company claims that over 1.5 million people have used it.

As a preliminary remark, it must be noted, that some of the evidence was filed in French, German, Portuguese and Spanish, without a translation into English, the language of the proceedings. However, the opponent is not under any obligation to translate the evidence filed with a view to showing the enhanced distinctiveness and reputation of the earlier mark, unless it is specifically requested to do so by the Office (Article 7(4) EUTMDR in conjunction with Article 24 EUTMIR). Moreover, it is up to the opponent to decide whether a complete translation of all the evidence is necessary. Since some of the evidence is self-explanatory, and the subject matter and content of the remaining non-translated evidence was briefly explained in witness statement and the opponent’s observations, the Opposition Division does not consider it efficient to unnecessarily delay the proceedings in order to request a translation of this evidence, as it would not have an impact on the outcome of the assessment, even if translated. Therefore, the assessment of the evidence of reputation will proceed without requesting a translation.

The opponent has submitted, inter alia, evidence relating to the United Kingdom (UK) with a view to demonstrating the enhanced distinctiveness and reputation of the earlier European Union trade marks. However, it follows from Article 8(1)(b) EUTMR, worded in the present tense, that the conditions for applying it must also be fulfilled at the time of taking the decision. As the UK is no longer a member of the EU, the evidence relating to its territory cannot be taken into account to prove enhanced distinctiveness and reputation ‘in the EU’.

Assessment of evidence

Having examined the evidence submitted by the opponent, listed above, the Opposition Division finds that it is not sufficient to demonstrate that the earlier trade marks have acquired a high degree of distinctiveness or reputation in the European Union and Germany through their use.

The abovementioned evidence indicates that the earlier marks have been used since 2016 for a healthcare app in some countries of the EU. However, the evidence does not provide sufficient indications of the degree of recognition of the opponent’s trade mark by the relevant public in the European Union and Germany, nor does it indicate the market share of the trade mark and sales volumes in relation to the goods and services for which enhanced distinctiveness and/or reputation is claimed.

Although the company’s annual turnover and annual advertising expenditure figures for 2016-2020, submitted by the opponent (exhibit 6), are relatively high and demonstrate sustainable growth, at least during some years, they seem to reflect the company’s business in general and do not contain any indication to which goods and/or services, or to which territories these figures refer. The information submitted by the opponent as regards the number of users of the ‘ADA’ app in the European Union in December 2020 (exhibit 1), is not supported by any evidence on how this information was obtained, to which countries it refers and, moreover, the figures relate to the date, which is almost a year later than the filing date of the contested sign (22/01/2020). Therefore, these do not reflect the situation at the time of the relevant date. The same applies to the excerpts from the App Store and Google Play, showing the ‘ADA’ app among trending apps and/ or in top position (exhibit 3), as in relation to Germany and Spain the opponent indicated dates after the relevant date, 22/01/2020. Moreover, the fact that the three first excerpts refer to Germany cannot be established from the excerpts themselves, and the excerpts related to the United Kingdom are not relevant, for the reasons explained above.

The only information that can be established from the selection of articles between 2017-2020, from various media sources (exhibits 10-14), is that the opponent’s mark ‘ADA’, or its company, are mentioned in the majority of them and, admittedly, the articles demonstrate that the opponent and its ‘ADA’ app have received some degree of media attention. However, the reach of these publications is unknown, and without being supported by other evidence related to its trade marks for goods and services in relation to which enhanced distinctiveness and/or reputation is claimed (i.e. market surveys or information related to market share in the particular business sector when compared to other companies providing the same kind of goods and/or services, or any other similar documents), they do not contribute much to a finding that the earlier marks acquired reputation in the European Union or Germany. The same applies to the collection of articles, abstracts and summaries from scientific studies from 2017-2020 (exhibit 5), published on websites that seem to be aimed at researchers and scientists. Many of these websites have restricted access and require a log in and, therefore, it is not clear if the full content of the studies on these websites is freely available to the public, especially the general public, which is the target consumer of the opponent’s symptom assessing app. Moreover, the collection of articles submitted as exhibit 11 are dated after the relevant date. In addition, at least some of the articles relate to studies funded by the opponent itself, and many of the websites originate from the United States of America and, despite the global nature of the internet, their relation to the relevant public in the European Union and Germany was not clarified.

The printout from the German Innovation Award, showing the gold award for ‘ADA’ in 2019 (exhibit 9), seems to relate to the technical solutions of the product awarded. Although the witness statement listed more awards received by the opponent, no evidence was submitted to support these claims. Taking into account that statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence, and the absence of any further evidence, including information on how widely these awards were known or advertised, or what media coverage they received, the evidence submitted merely relates to the opponent’s business, and does not provide any information related to the recognition of the opponent’s marks. The same applies to the undated pictures (exhibit 2), printouts of Google Search results (exhibit 4), printouts containing stills from two opponent’s YouTube videos that show the number of viewers, from the opponent’s Facebook, Linkedin and Twitter accounts, showing the number of followers (exhibit 7), and posts from the opponent’s Twitter and Facebook accounts (exhibit 8), which are either undated or, due to the global nature of social media pages, do not provide any information regarding which territories the followers and viewers are from.

The opponent did not submit any additional evidence, such as declarations from independent third parties (in particular, chambers of commerce and/or other professional associations) attesting to the intensive use or recognition of its earlier mark. Nor did it submit verifiable data showing the market share held by the opponent, opinion polls or market surveys, which are the most suitable means of evidence for providing information about the degree of knowledge of the marks, the market share they have, or the position they occupy in the market in relation to competitors’ goods and/or services. In addition, the opponent did not submit any other documents issued by third parties that would confirm the opponent’s claims as regards the enhanced distinctiveness and/or reputation of the earlier marks in the European Union and Germany. Although the abovementioned evidence indicates that the earlier trade marks ‘ADA’ had been used for symptom assessing apps for some years before the relevant date, it does not provide sufficient indications of the degree of recognition of the opponent’s trade marks by the relevant public in the relevant territories.

Therefore, the information and evidence submitted by the opponent, when taken as a whole, is not sufficient to demonstrate that the earlier trade marks, ‘ADA’, are known by a significant part of the public in the European Union and Germany. Moreover, no direct evidence was submitted in relation to the opponent’s services and the goods other than symptom assessing apps. Under these circumstances, the Opposition Division concludes that the opponent failed to prove, to the requisite legal standard, that its trade marks ‘ADA’ have acquired a high degree of distinctiveness or reputation through their use in the European Union and Germany.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole do not directly refer to any of the characteristics of the relevant goods, namely downloadable electronic publications; all of the aforesaid goods exclusively relating to the area of healthcare or electronic publications, downloadable; all of the aforesaid being exclusively related to the healthcare sector; downloadable smartphone software applications; all of the aforesaid goods being in the field of human medicine and healthcare and/or veterinary services from the perspective of the public in the relevant territories. Therefore, the distinctiveness of the earlier marks must be seen as normal and the opponent’s arguments related to enhanced distinctiveness of the earlier marks are not relevant.

e) Global assessment, other arguments and conclusion

In determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

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/or 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 contested goods are either identical or similar to the opponent’s goods. The relevant goods mainly target the public at large whose degree of attention is average. The degree of distinctiveness of the earlier mark is normal.

The earlier marks and the contested sign all have three letters; all are, consequently, short marks and because they differ in their first letter and in stylisation of earlier marks 2 and 3, these are relevant factors to consider when evaluating the likelihood of confusion between the signs.

The signs are similar insofar as they have two letters in common. However, as explained in detail in section c), this commonality only leads to a finding of a low degree of visual and aural similarity. Taking into account that the marks are short signs, the completely different first letters, which, in the case of the earlier marks, create a striking repetitive pattern when they are perceived as a whole, is sufficient to transform the visual and aural perception of the marks, and differentiate them from the contested sign. In addition, the conceptual aspect further separates the signs from each other as, for a significant part of the public, the earlier marks and the contested sign convey different meanings.

In its observations, the opponent emphasised the enhanced distinctiveness of the earlier marks and claimed that the relevant consumers would immediately be confused due to the nature and extent of the opponent’s reputation. However, as explained in detail in section d) of this decision, the evidence submitted by the opponent is insufficient to prove, to the requisite legal standard, that its trade marks ‘ADA’ have acquired a high degree of distinctiveness or reputation through their use in the European Union and, therefore, the opponent’s arguments in this regard must be set aside as unfounded.

The Opposition Division agrees with the opponent 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). However, in the absence of any conceptual link between the signs, the overall visual and aural similarity between them is clearly insufficient to assume that relevant consumers when encountering the contested sign in the absence of the earlier marks, using their general recollection of marks, would be likely to be confused and believe that the contested sign was the same as, or somehow related to, the earlier marks.

Therefore, even taking into account the abovementioned principle of interdependence and the fact that the goods are identical (or similar), the differences between the marks clearly outweigh their similarities. Consequently, it can be safely assumed that the relevant consumers, even with an average degree of attention, will not confuse the marks in question, nor be led to believe that the goods at issue come from the same or economically linked undertakings.

Considering all the above, the Opposition Division finds that there is no likelihood of confusion on the part of the public.

Therefore, the opposition must be rejected insofar as it is based on Article 8(1)(b) EUTMR.

Since the opposition is not successful under Article 8(1)(b) EUTMR, the examination continues under Article 8(5) EUTMR invoked by the opponent.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

 The signs must be either identical or similar.

 The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

 Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

a) Reputation of the earlier trade marks

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade marks has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

Since it has been established above in section d) of this decision that the evidence submitted by the opponent is insufficient to prove enhanced distinctiveness or reputation of the earlier marks in relation to the goods and services in Classes 9, 38, 41, 42 and 44 for which reputation was claimed, including downloadable electronic publications; all of the aforesaid goods exclusively relating to the area of healthcare or electronic publications, downloadable; all of the aforesaid being exclusively related to the healthcare sector; downloadable smartphone software applications; all of the aforesaid goods being in the field of human medicine and healthcare and/or veterinary services in Class 9, the same finding extends to the claim of reputation under Article 8(5) EUTMR.

Therefore, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade marks acquired a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade marks have a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected insofar as this ground is concerned.

Conclusion

Considering all the above, the opposition is not well founded under Article 8(1)(b) and Article 8(5) EUTMR and must, therefore, be rejected in its entirety.

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

The Opposition Division

Irena LYUDMILOVA LECHEVA

Rasa BARAKAUSKIENĖ

Biruté SATAITE-GONZALEZ

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.