OPPOSITION No B 2 441 569
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
Health CoCon GmbH, Altrottstraße 31, 69190 Walldorf, Germany (applicant), represented by Patent- und Rechtsanwälte Ullrich & Naumann Partnerschaftsgesellschaft mbB, Schneidmühlstraße 21, 69115 Heidelberg, Germany (professional representative).
On 02/03/2017, the Opposition Division takes the following
Class 9: EDP hardware, EDP software, in particular programs and databases.
Class 38: Providing access to a computer network, providing internet chatrooms, communications by means of computer terminals and by means of communications technology terminals, electronic mail; providing access to databases.
Union trade mark application No
3. Each party bears its own costs.
opponent filed an opposition against all the goods and services of
European Union trade mark application No
Preliminary remark on the admissibility of Portuguese trade mark registration No 519 701
According to Article 41(1)(a) EUTMR, the proprietors of earlier marks referred to in Article 8(2) EUTMR as well as licensees authorised by the proprietors of those trade marks may give notice of opposition (on the grounds of Article 8(1) and 8(5) EUTMR) to registration of a European Union trade mark application, within a period of three months following the publication of the application.
The notice of opposition has to be filed in writing and must contain, in order to be admissible, the indications and elements laid down in Rule 15(1), (2) (a)-(c) EUTMIR (inter alia, a clear identification of the earlier mark or earlier right on which the opposition is based). Furthermore, it must be noted that the opponent can only complete or extend the notice of opposition, on its own initiative, during the three-month opposition period following the publication of the European Union trade mark application concerned.
In the notice of opposition filed on 01/12/2014, the opponent indicated as the basis of the opposition the two European Union trade mark registrations mentioned above. However, in its further observations of 18/05/2015, it indicates that it is also the owner of the Portuguese trade mark registration No 519 701 ‘MÉDIS’ (word mark) and files as Exhibit 1 a copy of the certificate of registration (document in Portuguese) and its English translation.
Since this other earlier mark was not claimed as a basis of the opposition during the three-month opposition period and, as indicated above, the opposing party cannot extent the basis of the opposition once the opposition period has expired, the opposition must be rejected as inadmissible, as far as it is based on this earlier mark.
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.
The goods and services
Following the partial refusal of the earlier mark in opposition proceedings, 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 and services are the following:
Class 9: EDP hardware, EDP software, in particular programs and databases.
Class 35: Computerised file management, compilation and systemisation of data in computer databases; document reproduction; commercial administration of the licensing of services of others; business enquiries, opinion polling; commercial information agencies.
Class 38: Providing access to a computer network, providing internet chatrooms, communications by means of computer terminals and by means of communications technology terminals, electronic mail; providing access to databases.
An interpretation of the wording of the lists of goods and services of both marks is required to determine the scope of protection of these goods and/or services.
The terms ‘including’ used in the opponent’s list of services in Class 36 and respectively ‘in particular’ used in the applicant’s list of goods in Class 9, indicate that the specific goods and respectively services are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce 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 EDP hardware and EDP software, in particular programs and databases show relevant connections with the opponent’s telecommunications and electronic transmission in relation to financial matters in Class 38. EDP (electronic data processing), an infrequently used term for what is today usually called ‘IS’ (information services or systems) or ‘MIS’ (management information services or systems) refers to the processing of data by a computer and its programs in an environment involving electronic communication. Telecommunication services are those that allow people to communicate with one another by remote means. Since the 1990s the boundary between telecoms equipment and IT hardware/software has become blurred as a result of the growth of the internet and its increasing role in the transfer of telecoms data. Equipment used for purposes of telecommunication, like, inter alia, modems or routers is also considered to cover the telecommunications control software that must be in place to successfully support telecommunications activities. Any software that provides the ability to perform telecommunication activities operations can be considered telecommunications control software. Clearly, a link exists therefore between the above goods in Class 9 and the opponent’s services in Class 38. These goods and services are similar given their complementary character. Moreover, although their nature is different, their purpose and distribution channels are the same (judgment of 12/11/2008, T-242/07, Q2web, EU:T:2008:488, § 24-26).
Contested services in Class 35
The services for which protection is sought in this class (i.e. computerised file management, compilation and systemisation of data in computer databases; document reproduction; commercial administration of the licensing of services of others; business enquiries, opinion polling; commercial information agencies) are specialised services aimed at supporting or helping other business do or improve their business. They essentially consist of organising people and resources efficiently so as to direct activities toward common goals and objectives, of services aimed at performing day-to-day operations that are required by a business to achieve its commercial purpose, of services provided by specialised companies which study their client’s needs and provide all the necessary information and advice for the marketing of their products and services. Their nature, purpose and methods of use are different from those of the opponent’s goods in Classes 9 and 16, which are essentially debit and credit cards, printed matter, articles of stationery, paper, cardboard and goods made from these materials. Furthermore, they do not usually share the same commercial origin or distribution channels. The contested services do not share relevant connections with the earlier services in Classes 36 and 38 either. In particular as regards the opponent’s services in Class 36, although financial companies often provide advice relating to financial services, they do not provide business management advice or business enquiry services and companies who handle other's investments (e.g. a bank, or investment fund or pension fund) operate on a different field of business than business consultants. The services under comparison have a different purpose, are not in competition or necessarily complementary to each other and do not have the same providers. Against this background it must be concluded that the contested services in Class 35 are dissimilar to all the earlier goods and services.
Contested services in Class 38
Despite the applicant’s claims to the contrary, the mere fact that the earlier telecommunications are rendered in relation to financial matters does not necessarily exclude a finding of identity with the contested services. This is because the contested providing access to a computer network, providing internet chatrooms, communications by means of computer terminals and by means of communications technology terminals, electronic mail and providing access to databases are various telecommunication services that partially coincide with the opponent’s telecommunications […] in relation to financial matters. They are, therefore, identical.
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 a more specialised public, with specific professional knowledge or expertise. The degree of attention may vary from average to high, depending on the nature, price and frequency of the purchase of the relevant goods and services.
Earlier trade mark
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 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 a word mark, composed of the single eight-letter word ‘MedisApp’, which does not exist as such in English. It must be recalled, however, that the relevant 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 English-speaking public will, therefore, naturally dissect the word ‘-App’ and understand it as a short for application program. As regards ‘Medis-’, the same considerations stated above for the earlier mark are equally applicable. For the sake of completeness, it is noted that for those consumers that perceive ‘Medis-’ as alluding to the medical field, ‘MedisApp’ taken as a whole will be understood as an application related to the medical domain.
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). The same applies to ‘Medis-’ of the contested sign, since the element ‘-App’ in the context of the relevant goods and services is not able to function as an indicator of commercial origin. Indeed, this element conveys obvious and direct information regarding the kind, intended purpose and/or content of the goods or of rendering of the services, or other characteristics such as how the services are rendered. Finally, with particular reference to the component ‘Medis-’ in the contested sign and that part of the public that perceive it as alluding to the medical domain (as explained), it is noted that albeit some of the relevant goods and/or services could be used/provided in connection with the medical field (for example EDP software or providing internet chatrooms insofar as they could cover goods/services related to the medical field), there is nothing in their description to the effect that they relate to goods/services specifically linked with this area and therefore its 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).
None of the marks has an element that could be considered more dominant (visually eye-catching) than other elements.
Visually, there is similarity to the extent where the letters forming the only verbal of the earlier mark ‘Médis’ are reproduced in identical order in the beginning of the contested sign. This is especially important given that consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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. The signs differ in the way the shared letters are portrayed in each mark, in the remaining letters ‘-App’ of the contested mark and in the figurative elements of the earlier sign and its overall stylisation, as described above. Bearing in mind the limited impact of the figurative elements of the earlier mark and the fact that ‘-App’ of the contested mark is not distinctive, as explained, it is considered that overall the degree of visual similarity is at least average.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛m/e/d/i/s’, present identically in both signs and differs in the sound of the remaining letters ‘a/p/p’ of the contested mark. Bearing in mind the weight attributed to the differentiating letters, it is concluded that overall, the marks are aurally similar to a high degree.
Conceptually, and bearing in mind the above considerations on the concepts with which the marks will be associated, there is a link for those consumers that grasp in both marks the notion of medical/something related to the medical field and to that extent the overall degree of conceptual similarity is deemed as high. For the remaining consumers, that will in any event associate the earlier mark with the concept conveyed by the figurative element of the cross (but deem ‘Médis’/’Medis’ as meaningless), the signs are not conceptually similar. It is noted for the sake of completeness, that ‘-App’ of the contested sign will not constitute a point of conceptual difference between the signs, since it cannot function as a badge of origin, as already explained.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
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 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.
Global assessment, other arguments and conclusion
The contested goods and services are partly identical, partly similar and partly dissimilar to the opponent’s goods and services.
The signs are visually and aurally similar and, where applicable, also conceptually similar (to varying degrees) on account of the element ‘Medis’, as explained in detail in section c) above. The differences between the signs, confined to the non-distinctive element ‘-App’ in the contested sign and respectively to secondary and/or decorative figurative component(s) in the earlier mark 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 and services originate from the opponent or, as the case may be, from an economically linked undertaking.
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 and services found to be identical or similar to those of the earlier trade mark.
The rest of the contested services are dissimilar. As similarity of goods and/or services is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this article and directed at these services 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 or similar goods and services. 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 services, as the similarity of goods and/or 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 services 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 services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those services.
As the opposition is not entirely successful on the basis of Article 8(1)(b) EUTMR, the Opposition Division will further examine the present opposition in relation to the dissimilar services in Class 35 on the grounds of Article 8(5) EUTMR, which was also invoked by the opponent in relation to the European Union trade mark registration No 6 647 093.
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.
Reputation of the earlier trade mark
According to the opponent, the earlier European Union trade mark registration No 6 647 093 ‘ ’ (figurative mark) has 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 15/07/2014. Therefore, the opponent was required to prove that the European Union trade mark registration No 6 647 093 had acquired a reputation in Portugal prior to that date. The evidence must also show that the reputation was acquired for the services for which the opponent has claimed reputation, namely:
Class 36: Insurance underwriting and financial services including those provided via the Internet or via other means of telecommunications.
For the sake of completeness it is noted that at the moment of filing the opposition, reputation was also claimed for services in Class 44 (i.e. health care, including the services of doctors, hospitals and other health care providers), for which however the earlier mark has been subsequently refused protection as a result of opposition proceedings.
In order to determine the mark’s 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 mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.
On 18/05/2015, the opponent submitted evidence with a view to prove the reputation of the earlier mark.
The Opposition Division notes that the evidence was provided in a clearly structured manner and will hereinafter refer to the documents submitted by using the inventory numbering system specified in the opponent’s submissions and on the documents themselves.
Exhibits 2 and 3: Printouts from the opponent’s website located at http://www.medis.pt displaying at the top left corner the earlier mark (two pages in Portuguese). The opponent states in its written observations that its company was ‘the Portuguese pioneer company to introduce a Managed Care integrated system and created a vast net which enable the access by the public to health specialised professionals and clinic throughout all the country of Portugal’.
Exhibit 4: Excerpts (in Portuguese and partial English translation) from the market survey ‘Estudos de Mercado’ conducted by the Portuguese company Causa e Efeito. In the section dealing with the satisfaction levels with health insurance companies, the evidence shows for ‘Médis’ 25% of very satisfied clients and 90% of very satisfied and satisfied clients of a total of 168 interviewed. In addition, the document displays for ‘Médis’ high percentages in the sections ‘Comparative notoriety of the brands’ (96% and 74% out of 1006 interviewed) and ‘Comparative notoriety of the brands – Owners vs non-owners’ (95% and 70% out of 601 interviewed and 96% and 62% of 405 interviewed). The evidence is undated, however, according to the information provided in the opponent’s submissions, the survey dates back in 2005.
Exhibit 5: Extracts from the market survey ‘Imagem Médis/Médis Image - Stakeholders’, conducted in 2009 by the Nielsen Company (two pages in Portuguese and English translation). The evidence shows that the level of confidence the internal collaborators have in the company’s ability is high. Out of 272 internal collaborators questioned more than 90% considered ‘Médis’ the market leader in the health care market, more than 85% believed ‘Médis’ will grow in the future and more than 84% thought ‘Médis’ worked well even under adverse economic conditions. In addition, the documents show Médis’s Strengths and Weaknesses. 82% of the 272 people that were interviewed considered ‘the Brand of Confidence and Prestige’ as the main strength of the brand, followed by ‘The Service Provider Network (doctors)’ with 61% and ‘the 24th telephone Line’ with 49%.
Exhibit 6: Copy of the article ‘Superbrands elects brands of excellence’ published on 26/09/2005 in Diário de Notícias and containing a reference to ‘Medis’ being one of the elected brands to the included in the book ‘Superbrands Portugal 2005’ (document in Portuguese and partial English translation).
Exhibit 7: Printout from http://www.meiosepublicidade.pt, showing the article ’34 Portuguese brands are Superbrands’ published on 29/09/2006 and containing a reference to Medis being considered a brand of excellence by Superbrands Portugal (document in Portuguese and partial English translation). The evidence also mentions the five criteria necessary for nominating a brand as ‘Brand of Excellence’, namely market dominance, longevity, goodwill, loyalty and acceptance.
Exhibit 8: Printout from http://www.meiosepublicidade.pt, showing the article ‘The 37 Superbrands of 2008 were revealed’ published on 19/03/2008 and containing a reference to ‘Médis’ being among the brands appointed by the Superbrands Council and voted by consumers.
Exhibit 9: Copy of the article ‘Médis is doubly awarded’ published on 02/08/2009 in the online version of the opponent’s magazine (document in Portuguese and partial English translation). According to the evidence, ‘Médis’ was awarded in 2009 with two distinctions (‘Brand of Trust’ and ‘Superbrands’) and was considered as the brand in which the Portuguese trust the most in the category of Health Insurance, according to a survey presented by the magazine Selecções do Reader’s Digest in February 2009.
Exhibit 10: Copy of the article ‘Superbrands launches edition of 2010 and present Brand Equity Research’ published in Briefing The new marketing aggregator containing a reference to ‘Médis’ being one of the 30 Superbrands of 2010 (document in Portuguese and partial English translation).
Exhibit 11: Printout from http://www.meiosepublicidade.pt, showing the article ’24 marcas consideradas Superbrands’ published on 29/06/2011 and containing a reference to ‘Médis’ (document in Portuguese).
Exhibit 12: Printout from the opponent’s website located at http://www.medis.pt and showing the article ‘Médis, your Trust Brand 2013!’ published on 01/03/2013 (document in Portuguese and English translation). According to the evidence, it is the fifth time that ‘Médis’ is recognised with the distinction of ‘Trust Brand’, with 48% spontaneous replies in the category of health insurance. The document provides further information on the ‘Trust Brand’ award (an award reached through the readers of Selecções do Reader’s Digest; the results are achieved through the method of open questions and spontaneous reply and the representative sample is from the Portuguese population).
Exhibit 13: Copy of a press release from the opponent issued on 19/11/2014 showing that ‘Médis’ is the ‘Consumers’ Choice’ in Portugal for the second consecutive year and elected as ‘Senior Choice’ (document in Portuguese and partial English translation). The evidence further informs that the ‘Consumers’ Choice’ is an evaluation system aimed at establishing the degree of satisfaction and acceptability of consumers with respect to a certain good or service.
Exhibit 14: Copy of the article ‘Médis – The most famous brand in 2013’ published on 09/09/2013 on the opponent’s website, http//:www.medis.pt (document in Portuguese and English translation). According to the evidence, ‘Médis’ ranked in the 1st place in the ‘Marktest Reputation Index (MRI) 2013’ in the insurance category. The document also provides information on the ‘MRI’ (a study carried out by Marktest with a view to evaluate the reputation of brands, monitor their evolution and position them in relation to the competing brands).
Exhibit 15: Copy of an article published in February 2011 in the Marketeer reporting on the launch by the opponent of its new magazine ‘Médis mais’ (document in Portuguese and partial English translation).
Exhibits 16 and 17: Copies of the articles ‘Médis more responsible’ and ‘Médis Kids and Make a Wish unite in achieving the dream of 3 children’ published in 2011 in the Marketeer and reporting on some social solidarity activities undertaken and respectively partnerships entered into by the opponent’s company (documents in Portuguese and partial English translation).
Exhibit 18: Copy of an interview with the chief director of the insurance company AXA Portugal published in 2012 (document in Portuguese and partial English translation). The evidence reports on the partnership between the opponent’s company and AXA Portugal, contains references to doctors selected from the ‘Médis’ network and states inter alia, that ‘the association with a prestigious brand like Médis in healthcare is a winning experience’.
Exhibit 19: Copy of an interview with Pedro Mateo, the General Director of the health clinic Clinica Parque dos Poetas and reporting on the partnership with ‘Médis’ (document in Portuguese and partial English translation). The evidence states, among other things, that ‘Médis played a key role in developing the private healthcare market in Portugal’ and that ‘Médis has always been an insurer with a very innovative offer for their customers with a reputable entity to the associated with that matter’.
Exhibits 20 to 22: Internet printouts (3 pages in Portuguese and partial English translations) reporting on the opponent’s sponsoring and/or organising activities/events.
Exhibits 22 to 25: Copies of three judgments issued by the Commerce Court of Lisbon, the Judicial Court of Guarda Judicial District and the Intellectual Property Court in 2012, 2006 and 2014 respectively and one refusal notice issued by the Trade mark and Patent Direction, Opposition and Litigation Department in 2010, in proceedings involving the opponent’s ‘Médis’ trade mark registrations (inter alia in some cases, the mark ‘ ’) successfully invoked against later trade marks and, respectively a company name that included the element ‘Medis’ (documents in Portuguese and partial English translations).
Having evaluated all the documents listed above, the Opposition Division concludes that an overall assessment of the evidence does not clearly indicate that the earlier trade mark has acquired a reputation in the relevant territory for the services on which the opposition is based and for which the opponent claimed reputation.
In the present case, the evidence filed by the opponent with a view to prove the reputation of the earlier mark consists of extracts from two market surveys, several articles and internet printouts (some from independent sources and some emanating from the opponent) and four decisions of the Portuguese courts/administration authorities.
Despite providing certain indications on the degree of recognition of the earlier trade mark 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 mark by the relevant public (and more specifically in relation to the services for the mark is known), the market share held by the mark, the position it occupies in the market in relation to competitors’ goods and/or services, the duration, extent and geographical area of its use or the extent to which it was promoted.
In particular, the documents that contain references to the relevant services for which reputation was claimed are those filed as Exhibits 4, 9, 12 and 14.
The market survey in Exhibit 4 displays high percentages of satisfaction for ‘Médis’ as a health insurance company. However, this document is dated (according to the opponent) in 2005, that is nine years prior to the filing date of the contested EUTM. Moreover, except for mentioning the number of interviewed persons, no other relevant information has been provided which would have enabled the Opposition Division to evaluate the credibility of the survey (the methods and circumstances in which it has been carried out, whether the percentages correspond to the total amount of persons questioned or only to those who actually replied, whether the questions were open and unassisted or whether the source of the evidence is reliable).
The evidence in Exhibits 9 and 12 reports on ‘Médis’ being awarded several times the ‘Brand of Trust’ (an award reached through the readers of Selecções do Reader’s Digest) in the category of health insurance. The documents in Exhibit 14 mention that ‘Médis’ ranked in the 1st place in the ‘Marktest Reputation Index (MRI) 2013’ in the insurance category. Nevertheless, this part of the evidence essentially suffers from the same flaws as the survey in Exhibit 4 insofar as there is little or no information about the entities granting the award/ranking and the criteria on the basis of which they were given. In this regard it is recalled that the probative value of opinion polls and market surveys/rankings is determined by the status and degree of independence of the entity conducting it, by the relevance and the accuracy of the information it provides, and by the reliability of the applied method. In the present case, aside from a reference in one article (emanating from the opponent) that the results for the ‘Brand of Trust’ are achieved through the method of open questions and spontaneous replies (see Exhibit 12 above), no further information and/or evidence from independent sources was provided so that it can be determined with the required level of certainty the probative value that can be attributed to such award/ranking. For example, no information has been provided on the number and profile of the interviewees in order to evaluate whether the results of the survey are representative of the different kinds of potential consumers of the services in question.
The market survey in Exhibit 5 shows ‘Médis’ as the market leader in the health care market and provides information on the strengths and weakness of the brand. The documents filed as Exhibits 6 to 8, 10, 11 and 13 report on ‘Médis’ being chosen as one of the ‘Superbrands’ in Portugal and respectively on ‘Médis’ being elected as the Consumers’ Choice’ in the same territory. Nevertheless, the evidence does not contain references to the relevant services in Class 36 for which reputation was claimed that would enable the Opposition Division to determine the level of brand awareness of the earlier mark. For the sake of completeness it is noted that the term health care essentially relates to the organized provision of medical care to individuals or a community and, in the absence of further explicit information in the evidence, the data in Exhibit 5 cannot be construed as to also relate to the relevant services in Class 36, without resorting to probabilities and assumptions.
In the absence of further objective evidence, the documents filed as Exhibits 2, 3 and 15 to 22 are clearly insufficient to prove the degree of knowledge the relevant customers have of the opponent’s mark and cannot be deemed to reinforce the evidential value of the assertions made in the opponent’s submissions either.
The same is valid as regards the judgements of the Portuguese courts and respectively the decision of the Trade mark Office. In this regard it is noted that the opponent’s assertions on the ‘high awareness and special reputation of the trade marks MEDIS in Portugal’ having been recognised by several court decisions do not really find support in the evidence submitted. Admittedly in one judgement only (i.e. the one of the Judicial Court of Guarda Judicial District) there is a reference to the well-known character of the ‘Medis’ mark (‘Medis is a well-known trade mark, with a strong connection between the trade mark and the rendering of healthcare services’). However, this is not sufficient to support a finding of reputation of the earlier mark, not only because there is no information on the conditions of law and facts on the basis of which such conclusion was reached but also since there are no references to the relevant services in Class 36 or to the earlier mark ‘ ’, for that matter.
It must be recalled that, as follows from Article 76(1) EUTMR, in inter partes proceedings the Office is restricted in its examination to the acts, evidence and arguments submitted by the parties. Therefore, in assessing whether the earlier mark enjoys reputation, the Office may neither take into account facts known to it as a result of its own private knowledge of the market, nor conduct an ex officio investigation, but should base its findings exclusively on the information and evidence submitted by the opponent. The evidence must be clear, convincing and ultimately reveal facts necessary to safely conclude that the mark is known by a significant part of the public (decision of the Boards of Appeal of 06/11/2014, R 0437/2014-1, SALSA/SA SALSA (fig. mark) et al.).
Under these circumstances, it is considered that despite showing some degree of awareness of the earlier mark, the evidence falls short on information that clearly shows which are the services for which such recognition of the earlier mark exists in the relevant market. In other words, the materials submitted do not support, without resorting to probabilities and assumptions, a conclusion that the earlier mark was known by a significant part of the relevant consumers for the services concerned. Under these circumstances, the Opposition Division concludes that the opponent has failed to prove that the trade mark on which the opposition is based has 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 mark has 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 mark.
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 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
Lena FRANKENBERG GLANTZ
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.