OPPOSITION No B 2 157 785
Consolidated Artists B.V., Lijnbaan 68, 3012 EP Rotterdam, Netherlands (opponent), represented by Cabinet Degret, 24 place du Général Catroux, 75017 Paris, France (professional representative)
a g a i n s t
Mango Health Inc., 539 Bryant Street, Suite 402, 94107 San Francisco, United States (applicant), represented by Lane IP Limited, 2 Throgmorton Avenue, London EC2N 2DG, United Kingdom (professional representative).
On 20/11/2018, the Opposition Division takes the following
1. Opposition No B 2 157 785 is upheld for all the contested goods and services.
2. European Union trade mark application No 11 299 815 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
The opponent filed an opposition against all the goods and services of European Union trade mark application No 11 299 815 ‘MANGO HEALTH’. The opposition is based on European Union trade mark registration No 5 880 935 ‘ ’ for which the opponent invoked Article 8(1)(b) EUTMR, and on European Union trade mark registration No 9 850 785 ‘ ’ for which the opponent invoked Article 8(1)(b) and Article 8(5) 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 goods and services on which the opposition is based are, inter alia, the following:
(1) European Union trade mark registration No 5 880 935:
Class 41: Sporting and cultural activities; gymnastic and health clubs; provision of sports facilities; entertainment services; leisure services; club services (entertainment or education); organisation, production and presentation of shows; entertainer services; music-halls; orchestra services, organising theatrical, musical, cinematographic and variety events; discothèque services; organization of balls; organisation and conducting of colloquiums, conferences, congresses, seminars and symposiums; organization of exhibitions for cultural and educational purposes; arranging and conducting of training workshops; rental of sports equipment except vehicles; party planning (entertainment); swimming pools (entertainment).
(2) European Union trade mark registration No 9 850 785:
Class 9: Sunglasses, eyeglasses for sports practice; Frames (casings) for spectacles and sunglasses; Spectacle and sunglasses cases; Camcorders; Scientific (other than for medical purposes), nautical, surveying, photographic, cinematographic, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Apparatus for recording, transmission or reproduction of sound or images; cameras (cinematographic cameras); Photography screens; Projection screens; Fluorescent screens; Video screens; Monitors (computer hardware); Radio, including for vehicles; receivers (audio, video); Television apparatus; Video recorders; Cassette players; Compact disc players; Readers (data processing equipment); DVD players; Optical character readers; Timetables (Electronic -); Pocket calculators; Electronic pocket translators; Satellite navigational apparatus; Navigation apparatus for vehicles (on board computers); Batteries, electric; Magnetic cards; Smart cards with chips; Compact discs (audio-video), Optical discs, Compact discs [read-only memory]; Compact discs with read-only memory and interactive compact discs; Optical and magnetic data media; Audio-visual teaching apparatus; Instructional and teaching material, in the form of CD-ROMs; Software [recorded programs]; Downloadable software; Electronic publications, downloadable; Exposed cinematographic film; Transparency projection apparatus; Transparencies [photography]; Data-processing apparatus and equipment; Computers; Peripherals adapted for use with computers; Computer memory devices; Modems; Automatic vending machines and mechanisms for coin-operated apparatus; Cash registers; Calculators; Clothing and footwear for protection against accidents, irradiation and fire; Protective helmets and masks; Diving suits, gloves for divers and divers' masks; Magic lanterns; Juke boxes, musical; Personal stereos; Headphones; Walkie-talkies; Telephone receivers; Telephones including mobile telephones; Carrying cases for portable telephones; Cases adapted for mobile phones; Battery chargers for portable telephones; Battery chargers for portable telephones for use in vehicles; Covers for mobile phones; Portable telephones including large keys and numbers intended to help people with sight and dexterity problems; Computer applications software for portable telephones; Computer software designed to enable the transmission of photographs to portable telephones; Devices for hands-free use of mobile phones; Digital cellular phones; Hands free kits for phone; Keyboard for cellular phone; Laptop computers; Straps for portable telephones; Radio pagers; Video telephones; Answering machines; Hands free kits for phones; Loudspeakers and cabinets for loudspeakers; Amusement apparatus adapted for use with an independant display screen or a monitor; Apparatus for games adapted for use with an external display screen or monitor; Facsimile machines; Make-up removing appliances electric; Electrical irons.
The contested goods and services are the following:
Class 9: Downloadable software and software applications for mobile phones, namely, software for use in obtaining, storing, managing and tracking drug prescriptions, medical appointments and healthcare-related information, for providing reminders and tracking the history of same, and for recording, aggregating, organizing and retrieving information, advice, educational materials and instructions from doctors, dentists and other medical professionals.
Class 41: Entertainment services, namely, contest and incentive award programs designed to reward program participants who take their medications timely and as prescribed, and engage in other health-promoting activities.
Class 42: Application service provider (ASP) featuring software for use in obtaining, storing, managing and tracking drug prescriptions, medical appointments and healthcare-related information, for providing reminders and tracking the history of same, and for recording, aggregating, organizing and retrieving information, advice, educational materials and instructions from doctors, dentists and other medical professionals; software as a service (SAAS) services featuring software for use in obtaining, storing, managing and tracking drug prescriptions, medical appointments and healthcare-related information, for providing reminders and tracking the history of same, and for recording, aggregating, organizing and retrieving information, advice, educational materials and instructions from doctors, dentists and other medical professionals.
An interpretation of the wording of the list of 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 goods of earlier mark (2), 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).
However, the term ‘namely’, used in the applicant’s list of goods and services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods and services specifically listed.
As a preliminary remark, 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 9
The contested goods in Class 9, which consist of software with specific characteristics, are included in the broad category of the opponent’s software [recorded programs] of earlier mark (2). Therefore, they are identical.
Contested services in Class 41
The contested services in Class 41, which consist of specific entertainment services, are included in the broad category of the opponent’s entertainment services of earlier mark (1). Therefore, they are identical.
Contested services in Class 42
The contested services in Class 42, which consist of application service provider (ASP) and software as a service (SaaS), are software distribution models in which a third-party provider hosts applications and makes them available to customers over the internet. They are similar to software [recorded programs] of earlier mark (2) because they can coincide in producers, relevant public and distribution channels. Furthermore they are in competition.
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 at the public at large and at business customers with specific professional knowledge or expertise.
The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased.
c) The signs
(1) European Union trade mark registration No 5 880 935
(2) European Union trade mark registration No 9 850 785
Earlier trade marks
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.
The earlier marks are figurative marks consisting of the word ‘MANGO’ in relatively standard black upper case letters. In earlier mark (1) the verbal element is depicted on a rectangular light grey background.
The contested sign is a word mark consisting of the words ‘MANGO HEALTH’.
The common element ‘MANGO’ will be understood by a part of the public in the relevant territory, such as the English-speaking part of the public, as a fleshy, oval, yellowish-red tropical fruit that is eaten ripe or used green for pickles or chutneys. Given that it keeps no relation whatsoever with the goods and services in question, it is distinctive to an average degree.
The English word ‘HEALTH’ of the contested sign will also be understood by this part of the public as the state of being free from illness or injury. Since it informs the public about the field of activity the goods and services are related to, this word has a low degree of distinctiveness for the English-speaking part of the public.
Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public in the territory for which the word ‘HEALTH’ is lowly distinctive.
As regards the earlier mark (1), it is also composed of a non-distinctive figurative element, the rectangular background, which only has a purely decorative nature. Therefore, the verbal element is more distinctive than the figurative element.
Moreover, 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 the distinctive word ‘MANGO’, placed at the beginning of the contested sign, and in its corresponding sound. They differ in the additional word/sound ‘HEALTH’ of the contested sign, which has however a weak distinctive character, and in the stylization and decorative element of the earlier marks which, in any case, are not particularly elaborate or sophisticated and will not lead the consumer’s attention away from the verbal elements as such.
Taking into consideration that the only distinctive element of both earlier trade marks is entirely reproduced in the contested sign and that they are only differentiated by an additional weak element, the signs are visually and aurally highly similar.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning, the signs are conceptually highly similar. In spite of the additional concept evoked by the word ‘HEALTH’ in the contested sign, this difference has little impact conceptually because of its limited distinctiveness as already explained above.
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 marks
The distinctiveness of the earlier marks 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 earlier European Union trade mark registration No 5 880 935 is particularly distinctive by virtue of intensive use or reputation. However, the opponent did claim that the earlier European Union trade mark registration No 9 850 785 enjoys reputation but did not file any evidence in order to prove such a claim.
Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal.
e) Global assessment, other arguments and conclusion
According to settled case-law, the likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C-39/97, Canon, EU:C:1998:442, §16).
Furthermore, 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). Moreover, for the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect.
In the present case, the goods and services are partly identical and partly similar. The signs are visually, aurally and conceptually highly similar because the only distinctive elements of the two earlier marks are entirely reproduced in the contested sign. The differentiating elements only have a secondary role within the signs as already outlined above and will have very little impact on consumers, if any at all. Therefore, in view of the insufficient differences between the signs, even when displaying a higher degree of attention in relation to the goods and/or services concerned, the public will not be able to differentiate between them.
Likelihood of confusion also 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.
Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark 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 (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).
Considering all the above, there is a likelihood of confusion, including a likelihood of association, on the English-speaking part of the public in the relevant territory. 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.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registrations No 5 880 935 and No 9 850 785. It follows that the contested trade mark must be rejected for all the contested goods and services.
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(5) EUTMR.
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 (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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
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.