OPPOSITION Nо B 3 118 926

 

Genomed-Diagnosticos de Medicina Molecular, S.A., Edifício Egas Moniz, Avenida Professor Egas Moniz, Piso 3, Sala P343, 1050-014 Lisbon, Portugal (opponent), represented by J. Pereira Da Cruz, S.A., Rua Victor Cordon, 14, 1249-103 Lisbon, Portugal (professional representative) 

 

a g a i n s t

 

Genomed DNA, Omirou 70 Nea Smirni, 17121 Athens, Greece (applicant).

On 28/04/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 118 926 is partially upheld, namely for the following contested goods and services:

Class 5: Food supplements.

Class 44: Medical services; health counselling; alternative medicine services; medical analysis services for diagnostic and treatment purposes provided by medical laboratories.

2.	European Union trade mark application No 18 191 601 is rejected for all the above goods. It may proceed for the remaining goods (namely for cosmetics and cosmetic preparations in Class 3). .
3.		Each party bears its own costs.

 

REASONS

 

On 11/05/2020, the opponent filed an opposition against all the goods and services of European Union trade mark application No 18 191 601 for the figurative mark . The opposition is based on Portuguese trade mark registration No 380 345 for the word mark ‘GENOMED’. The opponent invoked  Article 8(1)(b) EUTMR.

 

 

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

 

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

 

 

a) The goods and services

 

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

 

Class 44: Laboratory services, namely medical analysis and diagnosis, services provided in the field of medical, pharmaceutical and medical diagnosis information; technical advice and opinion in the field of medicine, pharmacy.

The contested goods and services are the following:

 

Class 3: Cosmetics and cosmetic preparations.

Class 5: Food supplements.

Class 44: Medical services; health counselling; alternative medicine services; medical analysis services for diagnostic and treatment purposes provided by medical laboratories.

As a preliminary remark, an interpretation of the wording of the list of services required to determine the scope of protection of these services. The term ‘namely’, used in the opponent’s list to show the relationship of individual services to a broader category, is exclusive and restricts the scope of protection only to the services specifically listed.

 

Furthermore, 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 3

The contested cosmetics and cosmetic preparations in Class 3 are not similar to any of the opponent’s services. The latter are services related to the maintenance or improvement of health via the diagnosis, treatment and prevention of disease, illness, injury and other physical and mental impairments in human beings. They differ from the applicant’s Class 3 goods in their nature, methods of use, producers/providers and distribution channels. They are neither complementary, nor in competition. Admittedly, it cannot be excluded that some of the goods in Class 3 may be used to provide the opponent's services for health care purposes. However, it is not common for the providers of the earlier services (doctors and health care professionals) to actually manufacture and sell their own brand of cosmetics or related goods. They usually use or sell goods which have been manufactured by a third party and which do not bear their own mark. The sale of any such goods would, if anything, be merely ancillary. From the consumer's standpoint, the goods and services do not stem from the same company or economically linked companies. Even though a certain link cannot be denied due to the common goal of enhancing and improving the physical condition of patients, the differences in nature and especially in usual origin of these goods and services clearly outweigh any similarities.

Contested goods in Class 5

The contested food supplements in this class and the opponent’s services under comparison are aimed at the same consumers, namely both professionals and the general public, and they pursue the same general aim of preventing and treating disease. Food supplements may be sold in pharmacies, which offer healthcare services and advice. Thus, these goods and services may share the same distribution channels. Finally, these goods and services may be complementary insofar as the services are important or even indispensable for use of the goods. In particular, the provision of medical services may necessarily require the administration of pharmaceutical products. For this reason, the relevant public may believe that the same undertaking is responsible for both manufacturing the goods and providing the services. Taking all of the above factors into account, there is similarity between these goods and services.

Contested services in Class 44

The contested medical services; health counselling; alternative medicine services; medical analysis services for diagnostic and treatment purposes provided by medical laboratories are all identical to at least one of the opponent’s services provided in the field of medical, pharmaceutical and medical diagnosis information in the same class, either because the contested services include, as a broader category, the opponent’s services or they overlap with the opponent’s services. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, all the contested services in Class 44 are considered identical to at least one of the above mentioned earlier services.

 

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 are directed essentially at the public at large as well as at professionals in the health care field. The degree of attention will be relatively high.

It is indeed 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 Court has established the same principles for other goods in Class 5 such as dietary supplements (13/05/2015, T-169/14, Koragel / CHORAGON, EU:T:2015:280, § 37-40) and the degree of attention is also relatively high for the sales-related services regarding those goods. The same holds true for the services in Class 44, which all affect the public’s state of health.

Given that the general public is more prone to confusion, the examination will proceed on this basis.

 

c) The signs

 

GENOMED
Earlier trade mark	Contested sign

 

The relevant territory is Portugal.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark is a pure word mark consisting of the term ‘GENOMED’. The contested sign is a figurative mark, consisting of the words ‘GENOMED DNA’, in a rather standard, brownish typeface, preceded by a figurative element that is likely to be seen as a meaningless figurative component (or, alternatively, even if less probably, as a stylised bold letter ‘D’ or as a reversed, stylised, bold letter ‘G’), depicted in the same color but in a bigger size than the letters in the expression, ‘GENOMED DNA’, that follows it.

The earlier mark as a whole does not exist as such in the Portuguese language. However, it follows from case law that the public may perceive one-word signs as being composed of different elements, in particular where one of the parts (or all) have a clear and evident meaning. The Portuguese-speaking public under analysis is therefore likely to dissect the earlier mark as ‘GENO’ and ‘MED’. ‘GENO’ may be understood as expressing the notion of ‘gene’ and ‘MED’ will be understood as ‘medical’. The same holds true for the contested sign, in which, however, part of the relevant public taken into account will not perceive the meaning of the term ‘DNA’ (the Portuguese equivalent being ‘ADN’, standing for ‘ácido desoxirribonucleico’) but will see it as a meaningless component.

Bearing in mind that the relevant goods and services are medical-related, it is reasonable to assume that the relevant public will perceive the common strings of letters ‘GENO’ and ‘MED’ as being somewhat allusive in relation the relevant goods/services. However, as a whole, the component ‘GENOMED’ is sufficiently imaginative and, as a whole, of somewhat weaker distinctiveness.

In any event, the coinciding component in the signs are both on equal footing as concerns their distinctiveness. Consequently, it is the differences in the additional elements of the contested application that are decisive for the comparison of signs in the present case.

In the contested sign, the additional element ‘DNA’ and the figurative element (whether perceived as meaningless and fanciful or as a stylised letter) are distinctive to a normal degree.

However, the element ‘DNA’, due to its the position in the sign, namely at the end, will have less impact than the component ‘GENOMED’ (and, if perceived as such, than the stylised letter ‘D’, or reversed ‘G’, preceding it) since 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.

Thus, the relevant public will focus mainly on the first verbal component 'GENOMED' and the depiction of what could be seen as a stylised letter (if perceived as such) or of a meaningless figurative element. In case of the latter, however, the fact remains that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T 312/03, Selenium-Ace, EU:T:2005:289, § 37). Therefore, where the first element will be seen as an abstract figurative element, which is the most likely scenario, the consumer will certainly refer to the contested sign by referring to its verbal components, and in the first place to ‘GENOMED’, and not by describing its figurative aspects.

The minimal stylisation of the letters in the contested sign will be seen as merely decorative and therefore it has no distinctive value.

Furthermore, as regards the contested sign, it has no element that could be considered clearly more dominant than other elements. Indeed, even if a stylised letter would be perceived in the beginning of the sign, despite its bigger size, it is not considered more eye-catching, taken into account the length of the word that follows, ‘GENOMED’.

Visually and aurally, the signs are similar, to an average degree, to the extent that they coincide in ‘GENOMED’, which constitutes the entire earlier mark and is certainly not devoid of distinctiveness. The signs differ in the additional component ‘DNA’ of the contested sign and in the contested sign’s figurative element (which could be perceived as a fanciful, meaningless element, or as a stylised letter) which have or could have less impact than the coinciding term ‘GENOMED’ (either because of its position and/or because the relevant public may refer to the contested sign by ‘GENOMED DNA’, or ‘GENOMED’, as seen above). The signs also differ in the (remaining) figurative aspects of the contested sign, namely the minimal stylization of the letters, which however is seen as purely decorative.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs refer to the same concepts related to ‘gene’ and ‘medical’, conveyed by the common element and notwithstanding the latter may be somewhat weaker distinctive (as detailed above), the signs are considered conceptually similar to an average degree only, on account of the differing elements.

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, as seen above, the earlier trade mark may be allusive to a characteristic of the goods/services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark is considered somewhat lower than average, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

 

The contested goods and services were found partially identical or similar and partially dissimilar. The relevant public consists of, inter alia, the public at large, whose degree of attention is relatively high.

The marks were found visually, aurally and conceptually similar to an average degree, on the account of the same verbal component ‘GENOMED’ in both marks. The earlier mark is entirely comprised in the contested sign, in which it also forms its beginning (or, where the figurative element in the beginning is perceived as a stylised letter, is in any event not placed at the end).

As a rule, when the earlier trade mark, or the only distinctive element, is wholly incorporated in the contested sign and performs an independent and distinctive role therein, this is an indication that the two signs are similar (13/06/2012, T‑519/10, SG Seikoh Giken, EU:T:2012:291, § 27; 24/01/2012, T‑260/08, Visual Map, EU:T:2012:23, § 32; 22/05/2012, T‑179/11, Seven Summits, EU:T:2012:254, § 26).

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).

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.

It is highly conceivable that the relevant consumer will perceive the contested sign as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates.

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 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).

Therefore, taking into account the principle of interdependence and the imperfect recollection of the relevant public, despite some differences between the signs, which are, however, incapable of maintaining a sufficient distance between the overall impressions given by the signs, a likelihood of association between the signs cannot be excluded, in relation to goods and services that are identical or similar, despite the higher degree of attention that will be displayed.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the general public. Given that a likelihood of confusion for only part of the relevant public is sufficient to reject the contested application, there is no need to analyse the remaining part of the Portuguese public. Therefore the opposition is partly well founded on the basis of the opponent’s Portuguese trade mark registration.

It follows from the above that the contested sign 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 are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these 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

 

 

Félix ORTUÑO LÓPEZ	Edith Elisabeth VAN DEN EEDE		Gonzalo BILBAO TEJADA

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.