OPPOSITION Nо B 3 128 956

Gesticlub, Unipessoal, LDA., Avenida da República, Nº50, Piso 1, 1050‑196 Lisboa, Portugal (opponent), represented by Simões, Garcia, Corte-Real & Associados - Consultores, LDA., Rua Castilho, 167, 2º andar, 1070‑050 Lisboa, Portugal (professional representative)

a g a i n s t

Johny Klensch, 153, ulitsa Rakovski, Entrance B, Appartment 6, 1000 Sofia, Bulgaria (applicant).

On 06/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 128 956 is rejected in its entirety.

2. The opponent bears the costs.

REASONS

On 19/08/2020, the opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 247 509 ‘Medclub’ (word mark), namely against all the services in Class 35. The opposition is based on European Union trade mark registration No 13 357 199 (figurative mark). 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 services

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

Class 35: Sales and promotion of cards of an integrated service network in the field of healthcare and well-being.

The contested services are the following:

Class 35: Digital marketing; affiliate marketing; advertising and marketing; market campaigns; advertising, marketing and promotional services; development of marketing strategies and concepts; online advertisements.

The opponent’s promotion of cards of an integrated service network in the field of healthcare and well-being is included in, or overlaps with, the contested digital marketing; affiliate marketing; advertising and marketing; market campaigns; advertising, marketing and promotional services; development of marketing strategies and concepts; online advertisements. 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 services found to be identical are specialised services directed at business customers with specific professional knowledge or expertise, namely companies that seek assistance in the field of advertising and promotion in order to become successful, expand their business activities, or take advantage of business opportunities. The relevant public’s degree of attention is relatively high, as the services in question are normally contracted on an infrequent basis for a very specific purpose, may be quite expensive and may have serious consequences for the functioning of a business.

c) The signs

	Medclub
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).

Although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, the fact remains that, when perceiving a verbal sign, they will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58; 06/10/2004, T‑356/02, VITAKRAFT, EU:T:2004:292, § 51).

Therefore, the relevant public will immediately perceive the verbal component ‘*club’ in the contested sign, which is also included as a separate component in the earlier mark. ‘Club’ is a basic English term, which will be understood by the relevant public throughout the European Union as, inter alia, ‘a closed group or association of people with common aims or interests’ (information extracted from Collins Dictionary on 03/08/2021 at https://www.collinsdictionary.com/dictionary/english/club), therefore highlighting the prestigious and luxurious character of the services at issue. In this case, it has a laudatory concept and, therefore, this element is weak in relation to the relevant services (02/07/2020, R 2995/2019‑5, Salmon club / Salmos et al.).

In addition to ‘Club’, which is depicted in a red handwritten-style font, the earlier mark contains the verbal component ‘MEDICARE’, depicted in a standard black font underlined with a red line.

‘Medi*’ is a common prefix that, with regard to the services at issue, refers to ‘medicine’, ‘medical’ or ‘medic’ and features in many word combinations. The equivalent terms for ‘medicine’ are very similar in many, if not all, languages of the relevant territory, such as ‘медицина’ in Bulgarian, ‘medicin’ in Danish, ‘meditsiin’ in Estonian, ‘médicine’ in French, ‘medizin’ in German, ‘medicina’ in Italian, ‘medicina’ in Latvian, ‘medycyna’ in Polish, ‘medicina’ in Portuguese, ‘medicina’ in Romanian and ‘medicina’ in Spanish, due to their Latin origin, ‘medicina’. In any event, the average professional consumer of services in Class 35 will be familiar with the basic English term ‘medicine’ and/or be able to grasp the reference to ‘medicine’ from similar terms in other languages (12/07/2012, T‑470/09, Medi, EU:T:2012:369; 01/10/2013, R 1869/2012‑1 – MediLED / mediFLEX, § 32). This concept will be seen as a reference to the opponent’s services, as they relate to the field of healthcare and well-being. Therefore, this element has a very limited degree of distinctiveness.

The English-speaking part of the public will understand the component ‘*CARE’, of the earlier mark, in the context of the relevant services as ‘to provide physical needs, help, or comfort (for)’, ‘careful or serious attention’ (information extracted from Collins Dictionary on 23/07/2021 at https://www.collinsdictionary.com/dictionary/english/care on 23/07/2021). They will understand the juxtaposed components ‘MEDI*’ and ‘*CARE’ as ‘professional attention of medical practitioners’ (information extracted from Collins Dictionary on 23/07/2021 at https://www.collinsdictionary.com/dictionary/english/medical-care). Consequently, the verbal element of the earlier mark will be understood by the English-speaking part of the relevant public as referring to a ‘medical care club’, which, following the same reasoning as above, with respect to the component ‘MEDI*’, also has a very limited degree of distinctiveness.

For the other part of the relevant public the component ‘*CARE’, as such, may have a meaning, for example, ‘king/tsar’ in Croatian (vocative case). However, considering the relevant services, it will likely be perceived as an unknown foreign word and is, therefore, distinctive to a normal degree.

The red line underneath ‘MEDICARE’ is a purely decorative element that cannot serve as an indication of commercial origin.

The earlier mark further comprises as its first element a figurative device comprising a white cross against a round red background. Since it is placed next to the verbal component ‘MEDI*’, and in the context of the relevant services (despite the reversed colour combination of the common depiction), it will inevitably evoke the concept of the sign of the International Committee of the Red Cross and is, therefore, weak for the relevant services.

The earlier mark includes the registered trade mark symbol ® (depicted at the end of the sign). This is an informative indication that the sign is purportedly registered and is not part of the trade mark as such. Consequently, this will not be taken into consideration for the purposes of comparison.

The earlier mark does not have any element that could be considered clearly more dominant (visually eye-catching) than other elements.

The component ‘Med*’ of the contested sign could be perceived by a part of the relevant public as referring to ‘medical’ or ‘Mediterranean’. Consequently, it will allude to the subject of the services, or to their geographical origin and, therefore, it has a reduced degree of distinctiveness. For the remaining part of the relevant public, the component ‘Med*’ may be either meaningless or have various meanings, for example, ‘honey’ in Bulgarian, Croatian, Czech, Slovakian and Slovenian, or ‘with’ in Swedish, none of which relate to the services in question. Therefore, it has a normal degree of distinctiveness for this part of the public.

At this point, the Opposition Division deems it appropriate to proceed the examination from the perspective of the relevant public, who will perceive the verbal component ‘Med*’ in the contested sign as ‘medical’ as in this case there will be a common concept in the signs and this is the most advantageous scenario for the opponent.

Visually, the signs coincide in the string of letters ‘Med*’ and in the verbal component ‘club’ which, as explained above, have a reduced degree of distinctiveness. The signs differ in the figurative elements and the string of letters ‘*ICARE’ of the earlier sign. The verbal element of the earlier mark is longer than the contested sign (twelve letters versus seven letters). This difference is reinforced by the depiction of the verbal element of the earlier mark on two rows, and by the handwritten-style font of the coinciding element ‘club’. Although the figurative device also has a reduced degree of distinctiveness, it will not remain unnoticed, especially since it is at the beginning of the earlier sign, where consumers normally pay more attention. Therefore, even from the perspective of the English-speaking public, for whom all the differing elements also have a reduced degree of distinctiveness, the signs 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 coincides in the sounds of the letters ‘MED*’ and ‘CLUB’. The pronunciation differs in the sound of the letters ‘*ICARE’ of the earlier mark, which have no counterparts in the contested sign. Although in the middle of the sign, these differing letters create a very different length, rhythm and intonation in the earlier sign. Therefore, even from the perspective of the English-speaking public, for whom the differing elements also have a reduced degree of distinctiveness, the signs are aurally similar to a lower than average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs coincide in the semantic content of the components ‘Medi*’/‘Med*’ and ‘club’, which, even though they have a very limited degree of distinctiveness, are associated with a concept. Therefore, they are conceptually similar to a lower than average 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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for the services in question from the perspective of the English-speaking part of the public. From the perspective of the part of the public that will not understand the component ‘*CARE’ as its English meaning, the distinctiveness of the earlier mark is normal.

e) Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

In the present case, the services are identical and the degree of attention of the public, who are business consumers, is high. The distinctiveness of the earlier mark is low from the perspective of the English-speaking public and normal for the remaining part of the public.

The signs are visually similar to a low degree and aurally and conceptually similar to a lower than average degree. The similarities between the signs are in the elements that have a reduced degree of distinctiveness and, therefore, are of little relevance in the overall assessment of the signs. The length of the verbal elements in both signs differs significantly. Moreover, the layout of the signs is different, as the earlier mark is depicted on two rows. Even though the figurative elements and the verbal component ‘*CARE’ of the earlier mark have a reduced degree of distinctiveness from the perspective of part of the public, they do reinforce the above differences between the signs.

Based on the above, the Opposition Division considers that it is unlikely that the common string of letters ‘Med*’ and the laudatory element ‘club’ will provoke the relevant consumers to make an association between the earlier mark and the contested sign ‘Medclub’, or believe that they originate from the same or economically linked undertakings. The differences produced by ‘*ICARE’ and the figurative elements of the earlier mark are sufficient for the relevant business consumers displaying a relatively high degree of attentiveness to safely distinguish between the signs, even in the case of identical services, and even when considering the earlier mark has a normal degree of distinctiveness. Therefore, the similarities between the signs are not sufficient to lead to a likelihood of confusion on the part of the public.

Considering all the above, there is no likelihood of confusion on the part of the public that will perceive the verbal component ‘Med*’ in the contested sign as referring to ‘medical’.

This absence of a likelihood of confusion also applies to the remaining part of the public for whom the verbal component ‘Med’ of the contested sign is not related with ‘medical’. This is because, as a result of the additional differing concept of ‘MEDI*’ of the earlier mark and possibly of ‘Med*’ in the contested sign, that part of the public will perceive the signs as even less similar.

Therefore, the opposition must be rejected.

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

Carlos MATEO PÉREZ

Inés GARCÍA LLEDÓ

Enrico D’ERRICO

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.