OPPOSITION No B 1 835 852

Médis - Companhia Portuguesa de Seguros de Saúde, S.A., Av. Dr. Mário Soares (Tagus Park). Edifício 10, Piso 1, 2744 Porto Salvo, Portugal (opponent), represented by Gastão da Cunha Ferreira, Lda., Rua dos Bacalhoeiros, nº. 4, 1100-070 Lisboa, Portugal (professional representative)

a g a i n s t

Isoft Sanidad S.A., Calle Severo Ochoa 41, Parque Tecnológico de Andalucía, 9590 Campanillas (Málaga), Spain (applicant), represented by Clarke Modet y Cía. S.L., Rambla de Méndez Núñez 12 - 1º Puerta 2 bis, 03002 Alicante, Spain (professional representative).

On 27/02/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 1 835 852 is partially upheld, namely for the following contested goods:

Class 16: Paper, cardboard; bookbinding material; articles of stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; plastic materials for packaging (not included in other classes).

2. European Union trade mark application No 9 657 321 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 9 657 321, namely the goods and services in Classes 9, 16 and 42. Following the partial rejection of the EUTM application in parallel opposition proceedings, the opposition was maintained against the remaining goods in Classes 9 and 16. The opposition is based on the following four earlier trade marks: (1) European Union trade mark registration No 6 656 466 ‘e-Medis’ (word mark) registered for goods and services in Classes 9, 16, 36 and 38, (2) Portuguese trade mark registration No 309 187 ‘ ’ (figurative mark) registered for services in Class 42, (3) European Union trade mark registration No 6 647 093 ‘ ’ (figurative mark) registered for goods and services in Classes 9, 16, 36 and 38 and (4) Portuguese trade mark registration No 339 011 ‘ ’ (figurative mark) registered for services in Classes 36 and 42. The opponent invoked Article 8(1)(a), Article 8(1)(b) and Article 8(5) EUTMR.

SUBSTANTIATION

According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party shall also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

According to Rule 19(3) EUTMIR, the information and evidence referred to in paragraphs 1 and 2 shall be in the language of the proceedings or accompanied by a translation. The translation shall be submitted within the time limit specified for submitting the original document.

In the present case the evidence filed by the opponent is not in the language of the proceedings.

On 12/05/2011, the opponent filed a notice of opposition against the registration of European Union trade mark application No 9 657 321 claiming as the basis of the opposition, inter alia, Portuguese trade mark registration No 309 187 and Portuguese trade mark registration No 339 011 (hereinafter collectively referred to as the ‘Portuguese Marks’). The notice of opposition was not accompanied by any evidence as regards the Portuguese Marks.

On 26/05/2011, the opponent was given two months, commencing after the ending of the cooling-off period, to submit the required evidence and respective translations. Following the opponent’s request for an extension of term, this time limit expired on 07/12/2011.

On 07/12/2011, the opponent submitted arguments in support of its opposition. As regards the substantiation of the Portuguese Marks, it filed (as Attachments No 1 and No 2) two pages in Portuguese, entitled ‘Certificado de Registro’. However, the opponent did not submit the necessary translations of these documents into the language of the proceedings (i.e. English).

According to Rule 19(4) EUTMIR, the Office shall not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office.

It follows that the evidence filed by the opponent cannot be taken into account.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition shall be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on the Portuguese Marks.

The examination of the opposition will continue in relation to the remaining two earlier rights, European Union trade mark registrations No 6 656 466 and No 6 647 093.

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 European Union trade mark registration No 6 647 093.

1. The goods and services

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

Class 9: Encoded credit and debit cards, magnetic, and encoded cards, magnetic, for banking operations and healthcare-related operations.

Class 16: Printed publications, brochures, prospectuses, stationery used for banking and business operations, calendars and diaries, paper, cardboard and goods made from these materials, not included in other classes; printed matter; credit cards, not magnetic; printed matter, namely cards for use in bank transactions, magazines, periodicals.

Class 36: Insurance underwriting and financial services including those provided via the Internet or via other means of telecommunications.

Class 38: Telecommunications and electronic transmission in relation to financial matters.

The contested goods are the following:

Class 9: Signalling, life-saving apparatus and instruments; automatic vending machines and mechanisms for coin-operated apparatus; cash registers; fire-extinguishing apparatus.

Class 16: Paper, cardboard; bookbinding material; articles of stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); plastic materials for packaging (not included in other classes); printers' type; printing block.

An interpretation of the wording of the list of the opponent’s goods and services is required to determine the scope of protection of these goods and services.

The term ‘including’, used in the opponent’s list of services in Class 36, indicates that the specific services 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 (see the judgment of 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’, used in the opponent’s list of goods in Class 16 to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to 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 9

The contested goods for which protection is sought in this class (i.e. signalling, life-saving apparatus and instruments; automatic vending machines and mechanisms for coin-operated apparatus; cash registers; fire-extinguishing apparatus) have a different nature and serve a very specific and distinct purpose (e.g. for giving off warnings, for putting out fire, for registering and calculating transactions at a point of sale) than the opponent’s goods and services in Classes 9, 16, 36 and 38. In addition, they are not necessarily in competition or complementary thereto and it is not likely that they have the same commercial origin or distribution channels. For the sake of completeness, it is noted that the mere fact that some of the opponent’s goods in Class 9 (for instance encoded credit and debit cards […] for banking operations) could be used for purchasing items dispensed from the contested automatic vending machines in the same class is a too weak connection to find a similarity between them. As explained above, the nature and purpose of these goods is different and so are their methods of use. Moreover, consumers are aware that these goods do not share the same commercial origin and are not in competition. Therefore, the Opposition Division considers all the contested goods in this class to be dissimilar to all the earlier goods and services.

Contested goods in Class 16

The contested paper and cardboard are also protected under the earlier mark. They are, therefore, identical.

The contested bookbinding material overlaps with the opponent’s paper insofar as both categories of goods include book repair paper for book binding. Therefore, they are identical.

The contested articles of stationery include, as a broader category the opponent’s stationery used for banking and business operations. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested adhesives for stationery purposes overlap with the opponent’s stationery used for banking and business operations and are, therefore, identical thereto.

The contested artists' materials overlap with the opponent’s paper and respectively cardboard. Therefore, they are considered identical to the opponent’s goods.

The contested adhesives for household purposes have the same nature and serve the same purpose as the opponent’s stationery used for banking and business operations. In addition, they can originate from the same manufacturers. Therefore, the goods are considered similar.

The contested plastic materials for packaging (not included in other classes) have the same purpose as the opponent’s paper, which is broadly defined and covers, inter alia, wrapping paper. The goods are in competition, target the same consumers and can be distributed through the same channels in trade. Therefore, they are similar.

The contested paint brushes cover, among other things, also brushes used by artists. To this extent the goods are similar to a low degree the opponent’s paper, as they target the same consumers, can be distributed through the same channels in trade and share the same commercial origin.

The remaining contested typewriters and office requisites (except furniture); printers' type and printing block are considered to be dissimilar to the opponent’s goods and services in Classes 9, 16, 36 and 38. The contested goods have a very specific nature and purpose, which is not shared by the opposing goods and services. They are not in competition or complementary. Moreover, they are unlikely to have the same commercial origin or to be distributed through the same channels.

2. 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 relevant goods are directed at the public at large and at a more specialised public, with specific professional knowledge or expertise. The degree of attention is considered to be average.

3. The signs

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 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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

The marks to be compared are figurative marks.

The earlier mark shows a dark blue rectangle, against which are depicted: a green, slightly stylised cross and below it the verbal element ‘Médis’, in white, slightly stylised title case letters. There is an acute accent above the second letter ‘e’. ‘Médis’ of the earlier sign does not exist as such in English. However, it cannot be completely ruled out that at least part of the public may perceive this word as allusive of something that is related to the medical field or to medicine, because this word shares a common root with the equivalent words in the relevant language (‘medical’/’medicine’). The figurative elements of the earlier sign will convey to the public the concepts of the shapes they represent (a rectangle and a cross). Furthermore, it has to be noted that the element of the cross in combination with the colour green is widely used throughout the relevant territory as a professional symbol for pharmacies. In addition, it reinforces the concept of the verbal element for those consumers that perceive ‘Médis’ as somewhat alluding to the medical domain.

The contested sign is composed of the word ‘eMeDis’ reproduced in black letters, the second letter, ‘M’, and the fourth letter, ‘D’, being in upper case, whereas the remaining letters are in lower case. The words ‘electronic Medication Dispending’ appear below it in smaller characters, ‘electronic’ being written in lower case whereas ‘Medication Dispending’ is written in title case. ‘eMeDis’ of the contested sign does not exist as such in English, either. Given the presence of ‘electronic Medication Dispending’ and the way ‘eMeDis’ is depicted in the contested sign, it is likely that consumers perceive it as a whole as being a coined term formed of the initial letter(s) of the words composing that expression. The lowercase letter ‘e’ at the beginning of the contested sign is thus likely to be associated with a prefix referring to electronic (and/or indicating the involvement of the internet), given also its frequent and widespread use as an abbreviation for this word (for instance ‘e-mail’, ‘e-business’, ‘e-money’). As regards the element ‘MeDis’, the considerations stated above for the earlier mark (on a certain allusiveness to the medical domain) may also apply. The word ‘electronic’ means, inter alia, involving or concerned with the representation, storage, or transmission of information by electronic systems or having or operating with the aid of small components that control and direct an electric current, the word ‘Medication’ denotes treatment with drugs or remedies, whereas ‘Dispending’ is as an obsolete term meaning distributing/dispensing. Finally, the combination of these three words does not form a logical and conceptual unit for the relevant public, other than the sum of its parts.

In terms of distinctiveness, ‘Médis’ of the earlier mark will be attributed most trade mark significance than the figurative elements, not only because of their simplicity (the cross) and/or merely decorative role (the dark blue rectangle) but also since in signs consisting of both verbal and figurative components, it is, in principle, the verbal component that usually has a stronger impact on consumers given that they 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; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). With particular reference to the components ‘Médis’/’(*)MeDis’, it is also noted that albeit some of the relevant goods could be used in connection with the medical field (for example articles of stationery or stationery used for […] business operations insofar they could cover goods related to (business operations in) the medical field), there is nothing in their description to the effect that they relate to goods specifically linked with this area and therefore their distinctiveness must be deemed to an average degree (see by analogy 26/03/2015, T- 581/13, Royal County of Berkshire POLO CLUB (fig.)/BEVERLEY HILLS POLO CLUB et al., EU:T:2015:192, § 49). As regards the first letter ‘e’ of ‘eMeDis’ and the component ‘electronic’ in the contested sign, it is not likely that at least part of consumers would attach particular importance to them when used in the context of marketing of goods, as they could perceive them as alluding to the fact that the goods could be available online/by electronic means in internet shops.

Finally, the earlier mark has no element that could be considered more dominant (visually eye-catching) than other elements, whereas the element ‘eMeDis’ in the contested sign is the dominant element as it catches the eye first by virtue of its size and position.

Visually, there is similarity to the extent where the dominant element of the contested sign ‘eMeDis’ reproduces, in identical order, the letters forming the only verbal element of the earlier mark ‘Médis’. The signs differ in the way the shared letters are portrayed in each mark, in the first letter ‘e-’ and the expression ‘electronic Medication Dispending’ of the contested mark, in the figurative elements of the earlier sign as well as in the overall stylisation of the marks, as described above. Bearing in mind the limited impact of the figurative elements of the earlier mark and the secondary position of ‘electronic Medication Dispending’ of the contested mark as well as, where applicable the limited impact of some of the differing verbal elements, as explained, it is considered that overall the degree of visual similarity is average.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛m/e/d/i/s’, present identically in both signs. The pronunciation differs in the sound of the first letter ‘e’ of the contested mark, which has no counterpart in the earlier sign. Further differences arise from the sound of the letters ‘e/l/e/c/t/r/o/n/i/c m/e/d/i/c/a/l d/i/s/p/e/n/d/i/n/g’ also included in the contested sign, to the extent where, given their secondary position, they will be referred to orally by the relevant public. Overall, the marks are aurally similar to an average degree.

Conceptually, and bearing in mind the above considerations on the concept(s) with which the marks will be associated, there is a link to the extent where both marks will convey the notion of medical/something related to the medical field (on account of the cross in the earlier mark and the element ‘medication’ in the contested one and, where applicable, the components ‘Médis’/’(e)MeDis’). The overall degree of conceptual similarity is deemed to be average.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The contested goods are partly identical, partly similar to various degrees and partly dissimilar to the opponent’s goods and services.

The visually dominant element of the contested sign reproduces all the letters forming the only verbal element of the earlier mark which has led to a finding of an average degree of visual, aural and conceptual similarity, as explained in detail in section c) above. The differences between the signs, confined to secondary and/or (where the case) less distinctive verbal elements and less distinctive figurative components are not of such a nature as to significantly influence the overall impressions of the signs to the extent where a likelihood of confusion on the part of the public could be excluded. Therefore, when encountering the contested sign, consumers will make an association with the earlier mark which will lead them to believe that the identical or similar goods originate from the opponent or, as the case may be, from an economically linked undertaking. The same conclusion must be reached as regards the goods that were found similar to a low degree only, since in this case the similarity of the signs is of such a nature as to offset the lesser degree of similarity of the goods.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 6 647 093. 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.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar (including to a low degree) 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)(b) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent and in relation to identical and similar goods. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Finally, as regards the dissimilar goods there is no need to further proceed to the comparison of the signs for the non-English-speaking part of the relevant public since the outcome of the present decision would still be the same.

The opponent has also based its opposition on European Union trade mark registration No 6 656 466 ‘e-Medis’ (word mark) registered for goods and services in Classes 9, 16, 36 and 38. Since this mark covers the same or a narrower scope of goods and services, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods because the signs and the goods are obviously not identical.

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 shall 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 of 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: the 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.

1. Reputation of the earlier trade marks

As a preliminary remark it is noted that in relation to European Union trade mark registration No 6 656 466 ‘e-Medis’ the opponent invoked in the notice of opposition the grounds of Article 8(5) EUTMR however it failed to indicate the Member State(s) in which, and the goods and/or services for which, the mark has a reputation. Bearing in mind that the above indications are relative admissibility deficiencies that can be remedied after the expiry of the opposition period and that in its submissions of 07/12/2011 the opponent lists all the earlier marks on which the opposition was based and explicitly states that its trade marks ‘are highly well-known in Portugal and also enjoy a reputation’, the Opposition Division will take into account in its further examination of the grounds of Article 8(5) EUTMR, also European Union trade mark registration No 6 656 466.

According to the opponent, the earlier trade marks have a reputation in Portugal.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case, the contested trade mark was filed on 13/01/2011. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in Portugal prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely:

European Union trade mark registration No 6 656 466 ‘e-Medis’

Class 9: Magnetic credit and debit cards and magnetic cards for banking operations and operations relating to health services.

Class 16: Credit cards, not magnetic.

Class 36: Insurance and financial services including those provided via the Internet or via other means of telecommunications.

Class 38: Telecommunications and electronic transmission in the field of finance.

European Union trade mark registration No 6 647 093 ‘ ’

Class 9: Encoded credit and debit cards, magnetic, and encoded cards, magnetic, for banking operations and healthcare-related operations.

Class 16: Printed publications, brochures, prospectuses, stationery used for banking and business operations, calendars and diaries, paper, cardboard and goods made from these materials, not included in other classes; printed matter; credit cards, not magnetic; printed matter, namely cards for use in bank transactions, magazines, periodicals.

Class 36: Insurance underwriting and financial services including those provided via the Internet or via other means of telecommunications.

Class 38: Telecommunications and electronic transmission in relation to financial matters.

In order to determine the marks’ level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade marks, the intensity, geographical extent and duration of their use, and the size of the investment made by the undertaking in promoting them.

On 07/12/2011, the opponent submitted the following evidence:

• Annex 3: Copy of the market survey ‘Imagem Médis - Stakeholders’, conducted in 2009 by the Nielsen Company (document in Portuguese). The opponent states in its written submissions that ‘the trade marks ‘Médis’ are well-known by great part of the Portuguese population, are recognised as a ‘Reliable Trade mark’ and enjoy a high level of satisfaction’, referring to support such claims to three pages of the survey (67, 72 and 73).

• Annex 4: Copy of an article in Portuguese containing a reference to ’30 Superbrands’, the year 2010 and ‘Medis’.

• Annex 5: An undated photograph showing a person holding a document entitled ‘Superbrands’ and an award inscribed with the sign .

• Annex 6: A printout from the opponent’s website showing a communication entitled ‘Médis eleita Marca de Confiança 2011’ (document in Portuguese).

• Annex 7: Copy of the front cover of the magazine ‘Médis mais’ (document in Portuguese).

• Annex 8: A printout from the opponent website containing references to ‘Revista mais Médis’ (document in Portuguese).

For the sake of completeness it is noted that there are slight discrepancies between the evidence filed (as listed above) and the opponent’s submissions insofar as the numbering of the annexes and/or their content is concerned. According to the opponent’s observations, the documents in Annexes 4, 5 and 6 are aimed at demonstrating that the earlier trade marks received ‘5 times the award of Portuguese Superbrand granted by International Organisation Superbrands’, the document in Annex 7 at showing that the mark ‘Médis’ was elected by the Portuguese consumers as ‘Reliable Trade mark of 2011’, which is an award attributed by Readers Digest Selections while those in Annexes 8 and 9 at evidencing that the opposing party is the owner of a magazine called ‘Mais Médis’. Finally, the opponent also refers to an Annex 10 which would be intended at demonstrating its ‘serious investment on advertising, including in television’. However, the evidence on file is as listed above; in particular, there are no Annexes 9 and 10 and Annex 7 (together with Annex 8) refers to the ‘Mais Médis’ magazine and not to the award attributed by Readers Digest Selections. Bearing in mind that pursuant to Rule 19(2)(c) EUTMIR the burden of putting forward and proving the relevant facts and evidence lies with the opponent, which is expressly required to provide ‘evidence attesting that the earlier mark has a reputation’ and that no further documents have been filed on or before the relevant date set for the opponent to substantiate the opposition, the Opposition Division can only rely for the purposes of the present assessment on the evidence filed on 07/12/2011, as it was described above.

Having examined the material listed above, the Opposition Division finds that the evidence submitted by the opponent does not clearly demonstrate that the earlier trade marks have acquired a reputation in the relevant territory in connection with the goods and services in Classes 9, 16, 36 and 38 for which reputation has been claimed.

In the present case, despite providing certain indications on the degree of recognition of the trade marks by the relevant public, the evidence falls short on giving sufficient information that would allow the Opposition Division to draw solid conclusions about the degree of recognition of the earlier marks by the relevant public (and particularly the goods and/or services for the marks are known), the market share held by the marks, the position they occupy in the market in relation to competitors’ goods and/or services, the duration, extent and geographical area of their use or the extent to which they were promoted.

It is noted from the outset that the documents filed with a view to prove the reputation of the earlier marks are in Portuguese. According to Rule 19(1) and Rule 19(2)(c) EUTMIR, the evidence of reputation may be submitted either together with the notice of opposition, or subsequently within the time limit set for the opponent to substantiate the opposition. If the evidence is not in the correct language, it will have to be translated into the language of the proceedings within the same period, as required by Rules 16(1) and 17(3) EUTMIR. It is true that, in view of the volume of documents often needed for proving reputation, it is sufficient to translate only the material parts of long documents or publications. Similarly, it is not necessary to translate in their entirety documents or parts of documents that contain mainly figures or statistics, the meaning of which is evident, as is often the case with invoices, order forms, diagrams, brochures, catalogues etc. However, in the present case, aside from some explanations in its written submissions of 07/12/2011 the opponent did not submit any English translations of the evidence that would support its assertions.

In particular, the market survey in Annex 3 shows high percentages in connection with ‘Médis’. It is also evident that it was conducted by an independent and reliable research institute (the Nielsen Company). However, in the absence of a translation into English the Opposition Division cannot evaluate the methods and circumstances in which the survey has been carried out, whether the percentages correspond to the total amount of persons questioned or only to those who actually replied or whether the questions were open and unassisted. Moreover, it cannot be ascertained which are the goods and/or services for which the earlier marks are known to the relevant consumers.

From the documents in Annexes 4 to 6 and the opponent’s submissions it can be inferred that ‘Médis’ is one of the 30 Superbrands of the year 2010 and that it was awarded the title of ‘Reliable Trade mark of 2011’. However, this part of the evidence essentially suffers from the same flaw as the survey in Annex 3, since in the absence of a translation it is not possible to ascertain with the required degree of certainty which are the goods and/or services for which the marks are recognised or which were the criteria on the basis of which the 2011 award was given.

Finally, in the absence of further objective evidence, the picture of the front cover of one ‘Médis mais’ magazine and some references thereto on the opponent website (filed as Annexes 7 and 8) are clearly insufficient to prove the degree of knowledge the relevant customers have of the opponent’s marks and cannot be deemed to reinforce the evidential value of the assertions made in the opponent’s submissions either.

Under these circumstances, the Opposition Division concludes that the opponent has failed to prove that the trade marks on which the opposition is based have 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.

In any case, the Opposition Division also notes that the opponent did not provide any facts, arguments or evidence which could support the conclusion that the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade marks.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Lena FRANKENBERG GLANTZ

Oana-Alina STURZA

Marianna KONDÁS

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.