OPPOSITION Nо B 3 121 738

 

Unilab LP, 966 Hungerford Drive, Suite 3B, 20850 Rockville, United States of America (opponent), represented by Kondrat & Partners, Al. Niepodległości 223/1, 02-087 Warszawa, Poland (professional representative) 

 

a g a i n s t

 

Werner Trenker, Zemendorfergasse 13, 2700 Wr. Neustadt, Austria (applicant), represented by Preslmayr Rechtsanwälte Og, Universitätsring 12, 1010 Wien, Austria (professional representative).

On 16/06/2021, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 3 121 738 is upheld for all the contested goods, namely

 

Class 5: All the contested goods in this class. Class 10: All the contested goods in this class.

 

2.	European Union trade mark application No 18 191 309 is rejected for all the contested goods. It may proceed for the remaining  services.

 

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

 

REASONS

 

On 18/05/2020, the opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 191 309 INOVO (word mark),  namely against all the goods in Classes 5 and  10. The opposition is based on, inter alia, Polish  trade mark registration No R 323 609, INOVOX. 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.

 

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 Polish  trade mark registration No R 323 609.

 

a) The goods

 

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

Class 5: Pharmaceutical products; medicated health care preparations; medical products; vitamin preparations for medical purposes; minerals for medical purposes; mineral food supplements; mineral water for medical purposes; treatment support preparations; dietary supplements; dietary supplements for medical use; dietary supplements for dietetic use; nutritional dietary supplements; dietetic foodstuffs for medical purposes; food for special medical purposes; dietetic substances adapted for medical use; herbal preparations for medical purposes; medicinal herbs; herbal teas for medical purposes; biocidal products for medical purposes; biological products for medical purposes; bactericidal products for medical purposes; vaccines for humans; sera; blood products; biotechnology products for medical purposes; pharmaceutical preparations for skin care; anti-acne preparations; dental preparations and articles and medicated dentifrices; pharmaceutical liquids; medicated cosmetics; baby food; plasters, materials for dressings; wraps for medical purposes; sanitary preparations for medical purposes; disinfectants; veterinary drugs; chemical preparations and diagnostic materials for medical purposes; diagnostic preparations for medical purposes; therapeutic suppositories; enzyme preparations for medical purposes; chewing gums for medical purposes; beverages, medicinal herbs; medicinal infusions; strengthening drugs.

Class 10: Medical devices such as medical apparatus and instruments; medical clothing; orthopedic articles and mobility aids; prostheses and artificial implants; body support wraps; ice packs for healing injuries; apparatus and instruments for physiotherapy and rehabilitation; cooling patches for medical purposes; silicone gel patches for healing scars; furniture and bedding for medical purposes, equipment for moving patients.

The contested goods are the following:

Class 5: Plasters, materials for dressings; Medicated plasters; Adhesive tapes for medical purposes; Dressings, medical; Disinfectants; Disinfectants for hygiene purposes; Disinfectants for veterinary use; Disinfectants for medical use; Medicinal drinks; Pharmaceuticals; Veterinary preparations; Diagnostic preparations for veterinary purposes; Diagnostic agents for medical use; Diagnostic agents for pharmaceutical use; Nutritional supplements; Food supplements; Nutritional supplements for veterinary use; Sanitary preparations for medical purposes; Hygienic preparations for veterinary use; Sanitary preparations and articles; Chemical preparations for the diagnosis of diabetes; Pharmaceutical preparations for the prevention of diabetes; Pharmaceutical preparations for treating diabetes; In vitro diagnostic preparations for medical use; Dietary supplements and dietetic preparations; Diagnostic preparations for medical purposes; Diagnostic preparations and materials; Pharmaceutical preparations; Medical preparations; Dietetic preparations adapted for medical use; Dietetic substances adapted for veterinary use; Medical diagnostic test strips; Test strips for measuring blood glucose levels.

Class 10: Medical test kits for diabetes monitoring for home use; Apparatus for carrying-out diagnostic tests for medical purposes; Tools for medical diagnostics; Medical diagnostic apparatus for medical purposes; Blood testing apparatus; Sphygmotensiometers; Electronic blood pressure meters [for medical use]; Blood pressure monitors; Injectors for medical purposes; Lancets; Fleams; Cannulae; Medical apparatus and instruments; Medical and veterinary apparatus and instruments; Veterinary apparatus and instruments; Syringes for medical purposes; Apparatus for use in the investigation of metabolic disorders; Medical therapy instruments; Needles for medical purposes; Blood glucose testing apparatus; Glucometers; Blood glucose monitoring apparatus; Medical apparatus for testing the level of glucose in the blood.

The applicant claims that both companies are active within two different fields, having diverse consumer types in mind, as well as different distribution channels. In this regard, it should be pointed out that the comparison of the goods and services must be based on the wording indicated in the respective lists of goods and/or services. The actual or intended use of the goods and services not stipulated in the list of goods and/or services is not relevant for the examination (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71). Consequently, the applicant’s claim must be set aside.

Specific marketing strategies are not relevant. The Office must take the usual circumstances in which the goods covered by the marks are marketed as its benchmark, that is, those circumstances that are expected for the category of goods covered by the marks. The particular circumstances in which the goods covered by the marks are actually marketed have, as a matter of principle, no impact on the assessment of the likelihood of confusion because they may vary in time depending on the wishes of the proprietors of the trade marks (15/03/2007, C-171/06 P, Quantum, EU:C:2007:171, § 59; 22/03/2012, C-354/11 P, G, EU:C:2012:167, § 73; 21/06/2012, T-276/09, Yakut, EU:T:2012:313, § 58).

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

 

The term ‘such as’, 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).

Contested goods in class 5

The contested pharmaceutical preparations for the prevention of diabetes; pharmaceutical preparations for treating diabetes are included in the opponent's broad category of pharmaceutical products. Therefore, they are identical.

Plasters, materials for dressings; sanitary preparations for medical purposes; disinfectants; pharmaceuticals; pharmaceutical preparations; medicated plasters; dressings, medical; medical preparations; Diagnostic preparations and materials; Diagnostic preparations for medical purposes; Veterinary preparations; Sanitary preparations and articles are identically contained in both lists of goods (including synonyms).

The contested Diagnostic preparations for veterinary purposes; Diagnostic agents for medical use; Diagnostic agents for pharmaceutical use; In vitro diagnostic preparations for medical use; Medical diagnostic test strips; Test strips for measuring blood glucose levels; Chemical preparations for the diagnosis of diabetes are identical to the opponent’s diagnostic materials for medical purposes; diagnostic preparations for medical purposes, because the opponent’s goods include, are included in, or overlap with, the contested goods.

The contested Disinfectants for hygiene purposes; Disinfectants for veterinary use; Disinfectants for medical use; are included in the broad category of the opponent’s disinfectants. Therefore, they are identical.

The contested Adhesive tapes for medical purposes; Medicinal drinks; are included in the broad category of the opponent’s medical products. Therefore, they are identical.

The contested Nutritional supplements; Food supplements; Nutritional supplements for veterinary use; Dietary supplements and dietetic preparations; Dietetic preparations adapted for medical use; Dietetic substances adapted for veterinary use are identical to the opponent’s dietary supplements; dietary supplements for medical use; dietary supplements for dietetic use; nutritional dietary supplements; dietetic foodstuffs for medical purposes, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, are included in, or overlap with, the contested goods.

The contested Hygienic preparations for veterinary use include, as a broader category the opponent’s disinfectants. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Contested goods in class 10

The contested Medical test kits for diabetes monitoring for home use; Apparatus for carrying-out diagnostic tests for medical purposes; Tools for medical diagnostics; Medical diagnostic apparatus for medical purposes; Blood testing apparatus; Sphygmotensiometers; Electronic blood pressure meters [for medical use]; Blood pressure monitors; Injectors for medical purposes; Lancets; Fleams; Cannulae; Medical apparatus and instruments; Medical and veterinary apparatus and instruments; Veterinary apparatus and instruments; Syringes for medical purposes; Apparatus for use in the investigation of metabolic disorders; Medical therapy instruments; Needles for medical purposes; Blood glucose testing apparatus; Glucometers; Blood glucose monitoring apparatus; Medical apparatus for testing the level of glucose in the blood are all included in the broad categories of the opponent’s Medical devices such as medical apparatus and instruments. 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 the present case, the goods found to be identical are directed at the public at large and at customers with specific professional knowledge or expertise.

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.

 

The degree of attention is high. 

 

c) The signs

 

INOVOX	INOVO
Earlier trade mark	Contested sign

 

The relevant territory is Poland.

 

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 elements INOVOX and INOVO are meaningless, contrary to the applicant’s allegations. The applicant did not put forward any coherent explanations nor dictionary references to prove its allegations. As the words are meaningless, they are therefore, distinctive.

 

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.

 

Visually and aurally, the signs coincide in their first five letters INOVO and the sounds produced when pronouncing these. The signs differ in the last letter X of the earlier mark. 

 

Therefore, the signs are visually and aurally highly similar.  

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, 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 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 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

 

The contested goods have been found identical. The marks have been found highly similar visually and aurally, while the conceptual comparison is neutral due to the lack of meaning of the marks.

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 covered are from the same or economically linked undertakings.

The marks coincide in the letters INOVO, forming the only word of the contested mark and being distinctive, placed in the beginning of the earlier mark. The signs differ in the last letter X of the earlier mark.

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).

The applicant argues that its EUTM has a reputation and filed various items of evidence to substantiate this claim.

 

The right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings.

 

Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

 

Considering all the above, there is a likelihood of confusion on the part of the public.

 

Therefore, the opposition is well founded on the basis of the opponent’s Polish trade mark registration No R 323 609. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right, Polish trade mark registration No R 323 609, leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

 

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

 

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

 

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

 

 

 

The Opposition Division

 

 

Gonzalo BILBAO TEJADA

Erkki MÜNTER

Aldo BLASI

 

 

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.