OPPOSITION Nо B 3 124 010

 

Clean - Air Společnost S Ručením Omezeným, Luční 1391, 46601 Jablonec nad Nisou, Czech Republic (opponent), represented by Kamil Kolátor, Dobiášova 1264/29, 46006 Liberec, Czech Republic (professional representative)

a g a i n s t

Yuehu Zhang, Zutphensestraat 111C, 7325XE Apeldoorn, The Netherlands (applicant).

On 02/07/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 124 010 is upheld for all the contested goods, namely

 

	Class 9: Anti-pollution masks for respiratory protection; protective masks.
2.		European Union trade mark application No 18 224 615 is rejected for all the contested goods. It may proceed for the remaining goods.

 

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

 

REASONS

 

On 16/06/2020, the opponent filed an opposition against some of the goods of European Union trade mark application No 18 224 615 (figurative mark), namely against some of the goods in Class 9. The opposition is based on European Union trade mark registration No 17 282 609, ‘MedicAER’ (word mark). The opponent invoked Article 8(1)(a) EUTMR and 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

The goods on which the opposition is based are, inter alia, the following:

Class 9: Life-saving apparatus and instruments included in this class; protective respiratory apparatus for personal use, with forced clean air supply; protective masks and half masks with fixed or replaceable filters; filters for respiratory masks and half masks; elastic fastening tapes for respiratory filter devices; respiratory filter devices; respiratory masks for protection against dust and chemicals; filter diaphragms for laboratory use; all the aforementioned goods in the field of respiratory protection.

The contested goods are the following:

Class 9: Anti-pollution masks for respiratory protection; protective masks.

The contested anti-pollution masks for respiratory protection overlap with the opponent's protective masks and half masks with fixed or replaceable filters; all the aforementioned goods in the field of respiratory protection. Therefore, they are identical.

The contested protective masks include the opponent’s protective masks with fixed or replaceable filters; all the aforementioned goods in the field of respiratory protection. These goods must be considered identical since the Office cannot dissect ex officio the broad category of the applicant’s goods.

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 also at business customers with specific professional knowledge or expertise.

The degree of attention is considered to vary from average to high, considering that, for instance, anti-pollution masks for respiratory protection and protective masks may be important to preserve the health of their users.

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

c) The signs

MedicAER
Earlier trade mark	Contested sign

  

The relevant territory is the European Union.

 

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

 

The earlier mark is a word mark, ‘MedicAER’. The contested sign is figurative. It contains the verbal elements ‘MEDI’ and ‘CARE’ reproduced using fanciful black letters. On the left, a figurative element lies, namely a stylized depiction of a sort of heart above which a black circle is placed, all included within an interrupted oval frame.

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

For a part of the relevant public who does not speak English, such as the Lithuanian-speaking part of the public, the signs in dispute are devoid of any meaningful content with the exception of their beginnings, ‘MEDI’ and ‘Medic’, which will be understood as alluding to the word ‘medicina’, meaning ‘medicine’. Bearing in mind that the relevant goods can be related to the preservation of human (or animal) health and well-being, it is considered that the components ‘MEDI’ and ‘Medic’ are non-distinctive for all these goods, as they merely provide information about the medical or therapeutic purpose of the goods or of their general reference to the medical field. The remaining components ‘CARE’ of the earlier mark and ‘AER’ of the contested sign have no particular meaning for the Lithuanian-speaking part of the relevant public and therefore possess an average degree of distinctiveness.

The Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public for whom the marks elements ‘CARE’ and ‘AER’ are meaningless such as, for instance, the Lithuanian-speaking part of the public.

As regards the contested sign’s figurative element, it is considered to be normally distinctive, since the meaning behind it, if a heart is recognized, will not be associated to the goods.

However, account must be taken of the fact 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).

Visually, the signs coincide in all of their letter, although they are reproduced using a fanciful typeface in the contested sign and display a different order in their last two letters, which result to be inverted, being ‘-RE’ in the earlier mark and ‘-er’ in the contested sign. The signs also differ due to the presence of the figurative element in the contested sign. Account must be taken of the fact that the letters ‘MEDI/Medic’ constitute recognizable elements devoid of distinctive character.

In view of all the foregoing, the signs are considered to be visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of their first three syllables ‛ME/DI/CA’, while they differ in the last syllables ‘RE’ of the earlier mark and ‘er’ of the contested sign, which are nevertheless made of the same sounds, only in an inverted position. Even considering the lack of distinctiveness of their initial parts, the Opposition Division deems that, in view of all their coincidences and similarities, the signs must be considered aurally similar to, at least, an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the components ‘MEDI/Medic’ of both marks, which are found to be non-distinctive for the relevant part of the public. To this extent, the signs are conceptually similar to a low degree.

 

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, despite the presence of a non-distinctive element in the mark, as stated above in section c) of this decision.

 

e) Global assessment, other arguments and conclusion

 

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association that can be made with the registered mark and the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The contested goods target the general public and business customers, whose degree of attention varies form average to relatively high. The earlier mark enjoys an average degree of inherent distinctiveness, which affords it a normal scope of protection. The signs are visually and aurally similar to at least an average degree, and conceptually similar to a low degree.

The verbal elements of both signs display a part that is non-distinctive and a part that is normally distinctive. They are both composed of eight letters, of which six are identical and in the same order and two are identical but placed in an inverted position, namely the last two letters ‘-RE’ and ‘-er’. Although the common beginning of both signs is non-distinctive, the differences between the signs only lie in their last two letters, which form also the last of four syllables, and in the additional figurative element of the contested sign.

It must be kept in mind that the 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).

Taking into account that the goods are identical, it is recalled that 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). In the present case, the identity between the goods is sufficient to outweigh the average degree of similarity that exists between the signs, and also the fact that the signs are only conceptually similar to a low degree.

The Opposition Division deems that a likelihood of confusion exists, in particular on the part of the public for whom the second parts of the verbal elements of the signs are meaningless and therefore distinctive, such as for the Lithuanian-speaking part of the public, and in particular the general public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, so that there is no need to analyse the remaining part of the public.

The Opposition Division also considers that as a result of the aforementioned imperfect recollection, there is even a likelihood of confusion for the part of the public who has a relatively high degree of attention.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 17 282 609. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) EUTMR.

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

Victoria DAFAUCE MENÉNDEZ

Andrea VALISA

Edith Elisabeth VAN DEN EEDE

 

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.