OPPOSITION No B 2 499 252

Mathys AG Bettlach, Güterstr. 5, 2544 Bettlach, Switzerland (opponent), represented by Baker & McKenzie, Bethmannstr. 50-54, 60311 Frankfurt/Main, Germany (professional representative).

a g a i n s t

Cellular Biomedicine Group HK Limited, Unit 402, 4th Floor, Fairmont House No.8 Cotton Tree Drive, Admiralty, Hong Kong Special Administrative Region of the People’s Republic of China (applicant), represented by Nextmarq, 1 Rue Chabrier 13100 Aix-en-Provence, France (professional representative).

On 08/12/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 499 252 is partially upheld, namely for the following contested goods

Class 5: Pharmaceutical preparations; stem cells for medical purposes; biological tissue cultures for medical purposes; surgical dressings; gases for medical purposes; surgical implants [living tissues].

Class 10: Surgical apparatus and instruments; medical apparatus and instruments; dental apparatus; bandages for joints, anatomical; protection devices against x-rays, for medical purposes; radiological apparatus for medical purposes; galvanic therapeutic appliances; testing apparatus for medical purposes; testing instruments for medical diagnostic purposes; apparatus for blood analysis [for medical use]; apparatus for use in medical analysis; analysis (apparatus for use in medical -).

2. Community trade mark application No 13 581 111 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 of Community trade mark application No 13 581 111. The opposition is based on Community trade mark registration No 5 436 035. The opponent invoked Article 8(1)(b) CTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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.

1. The goods

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

Class 5: Plasters, material for dressings, tooth-filling materials, bone cement, bone substitute materials, in particular hydroxylapatite granules.

Class 10: Surgical apparatus and instruments; dental and veterinary implants, instruments and apparatus (including artificial limbs, eyes and teeth); artificial endo-joint-prostheses, in particular hip prostheses; implants, instruments and apparatus for oral implantology, in particular dental implants, dental anchoring pins and screws, dental crowns, dental sheathings, dental bridges, dental attachments, place holder caps, and bone drills, bone milling cutters, ratchets and instrument boxes; orthopaedic articles; suture materials.

The contested goods are the following:

Class 5: Pharmaceutical preparations; stem cells for medical purposes; biological tissue cultures for medical purposes; medicines for human purposes; drugs for medical purposes; depuratives; dietetic substances adapted for medical use; surgical dressings; nutritive substances for microorganisms; gases for medical purposes; surgical implants [living tissues].

Class 10: Surgical apparatus and instruments; medical apparatus and instruments; dental apparatus; bandages for joints, anatomical; protection devices against x-rays, for medical purposes; radiological apparatus for medical purposes; galvanic therapeutic appliances; testing apparatus for medical purposes; testing instruments for medical diagnostic purposes; apparatus for blood analysis [for medical use]; apparatus for use in medical analysis; analysis (apparatus for use in medical -).

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The terms ‘in particular’ and ‘including’, used in the opponent’s list of goods, indicate 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 (see the judgment of 09/04/2003, T‑224/01, ‘Nu‑Tride’).

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 5

The contested pharmaceutical preparations are similar to the opponent’s plasters, as they both have medical-related purposes, they have the same distribution channels, such as pharmacies or the same sections of supermarkets, and they target the same consumers, namely those in need of a cure or medication.

The contested stem cells for medical purposes are similar to the opponent’s bone substitute materials. Indeed, stem cells for medical purposes can also be used – as bone substitute materials are – to repair or create, ex novo, human or animal bones. Therefore, these goods have the same purpose. In addition, these goods are in competition with each other, since they can have the same purpose, namely to synthetically or biologically generate a skeletal element, and they target the same consumers, namely those who need bone repair or bone replacement.

The contested biological tissue cultures for medical purposes are similar to the opponent’s bone substitute materials. Indeed, because it is possible to form bone tissue in culture from isolated bone cells, these goods may have the same purpose of repairing or creating, ex novo, human and animal bones. Moreover, the goods are in competition, since they may have the same purpose, namely to synthetically or biologically generate a skeletal element, and they target the same consumers, namely those who need bone replacement.

The contested medicines for human purposes; drugs for medical purposes; nutritive substances for microorganisms; dietetic substances adapted for medical use; depuratives are substances with specific medical or dietary purposes, used to treat and prevent disease, and also to feed microscopic living organisms. As against the applicant’s goods, the opponent’s goods in Classes 5 and 10 have different natures (material, instruments and equipment for adjusting, substituting, cutting and suturing body parts versus dietetic and pharmaceutical compounds), purposes (adjusting, substituting, cutting and suturing body parts versus curing disease and supplementing the diet through the use of specific pharmaceutical and dietetic compounds), methods of use (instruments and elements used by doctors in the sphere of medical implants or prosthetic surgery versus curing disease and supplementing the diet through the use of specific dietary or pharmaceutical remedies) and distribution channels (highly specialised suppliers versus pharmacies or large-scale distribution channels). In addition, the goods are not in competition; indeed, the opponent’s goods are for adjusting, substituting, cutting and suturing body parts, whereas the applicant’s goods are specific pharmaceutical and dietetic compounds that serve to treat and prevent disease. Therefore, the goods are dissimilar.

The contested surgical dressings is included in the broad category of the opponent’s material for dressings. Therefore, they are considered identical.

The contested gases for medical purposes are similar to the opponent’s surgical apparatus and instruments. Indeed, they have the same nature and intended purpose, since they are all goods that can be used during a surgical operation (the most common gas used for medical purposes is oxygen). In addition, they may be complementary. This is because gases for medical purposes are also used to power surgical equipment during various procedures. Lastly, these goods have the same distribution channels, namely specific retailers that supply equipment for use in clinics and by doctors.

The contested surgical implants [living tissues] are similar to the opponent’s dental and veterinary implants, instruments and apparatus (including artificial limbs, eyes and teeth). Indeed, these goods have the same intended purpose and method of use (i.e. to surgically implant a missing or damaged body part). In addition, these goods target the same public, namely surgical professionals.

Contested goods in class 10

Surgical apparatus and instruments are identically contained in both lists of goods. Therefore, these goods are identical.

Medical apparatus and instruments are, notwithstanding a slightly different wording, also contained in the opponent’s list of goods in Class 10 as medical apparatus and instruments. Therefore, these goods are identical.

Dental apparatus is, notwithstanding a slightly different wording, also contained in the opponent’s list of goods in Class 10 as dental and veterinary implants, instruments and apparatus (including artificial limbs, eyes and teeth). Therefore, these goods are identical.

The contested bandages for joints, anatomical are included in the broad category of the opponent’s orthopedic articles. Therefore, these goods are identical.

The contested protection devices against x-rays, for medical purposes; radiological apparatus for medical purposes; galvanic therapeutic appliances; testing apparatus for medical purposes; testing instruments for medical diagnostic purposes; apparatus for blood analysis [for medical use]; apparatus for use in medical analysis; analysis (apparatus for use in medical -) are similar to the opponent’s surgical apparatus and instruments. Indeed, these goods have the same nature and intended purpose since they can be used in a medical environment. In addition, these goods have the same distribution channels, namely specialised retailers that supply equipment for use in clinics and by doctors, and they target the same relevant public (i.e. medical personnel). Lastly, these goods may have the same producers, namely companies that manufacture medical equipment.

2. The signs

CENTRIS
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The earlier word mark consists of the word ‘Centris’. The contested figurative sign is composed of the word ‘CentrixT’, depicted in black standard letters; all of these letters are lower case except for the first letter, ‘C’, and the final letter, ‘T’.

The unitary character of the Community trade mark means that an earlier Community trade mark can be relied on in opposition proceedings against any application for registration of a Community 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 (judgment of 08/09/2008, C‑514/06 P ‘Armacell’, paragraph 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 part of the public for whom the signs do not convey any meaning, such as the Hungarian-speaking part of the relevant public.

Visually, the signs are similar to the extent that they coincide in their first six letters, ‘CENTRI’. However, they differ in their final letters, namely ‘S’ in the opponent’s mark and ‘XT’ in the contested sign.

Aurally, the pronunciation of the signs coincides in the sound of their first six letters, namely ‛CENTRI’, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the final letter, ‘S’, of the earlier sign and in the final two letters, ‘XT’, of the contested mark.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

Taking into account the abovementioned visual and aural coincidences, the signs under comparison are similar.

3. Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

The marks under comparison have no elements which could be considered clearly more distinctive or more dominant (visually eye‑catching) than other elements.

4. 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, some of the goods found to be identical or similar are directed at the public at large and some of the goods at issue are specialised goods directed at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to high. For instance, for some goods in Class 5, in particular plasters, the level of attention is deemed to be average due to the ordinary price level and the expendable nature of these goods. Conversely, for some goods in Classes 5 and 10, for instance stem cells for medical purposes or artificial endo-joint-prostheses, the degree of attention is considered high due to the specialised nature of these goods.

5. Global assessment, other arguments and conclusion

The contested goods are partly identical, partly similar and partly dissimilar.

The signs are visually similar to the extent that they coincide in their first six letters, ‘CENTRI’. However, they differ in their final letters, namely ‘S’ in the earlier mark and ‘XT’ in the contested sign.

Aurally, the signs are similar to the extent that they coincide in their first six letters, ‘CENTRI’. However, they are aurally dissimilar in their final letters, namely ‘S’ in the earlier mark and ‘XT’ in the contested sign.

Conceptually, both signs have no meaning for the relevant Hungarian-speaking public.

The abovementioned visual and aural similarities relate to the first parts of the marks. The first part of a mark is generally the one that primarily catches the consumer’s attention and, therefore, will be remembered more clearly than the rest of the sign. This means that, in general, the beginning of a sign has a more significant influence on the general impression made by the mark (judgment of 15/12/2009, T‑412/08, ‘Trubion’, paragraph 40; and judgment of 25/03/2009, T‑109/07, ‘Spa Therapy’, paragraph 30). Therefore, if signs only differ in their endings, this difference is often insufficient to exclude similarity.

It follows that, in the case at issue, the signs’ differentiating elements – the final letter of the earlier mark and the final two letters of the contested sign – are not of a nature or importance that can dispel a risk of confusion.

Consequently, regardless of the relevant public – which in part d) was deemed to be composed of general consumers and consumers with professional expertise – and their level of attention – which has been evaluated as being from average to high – the Opposition Division finds that, in view of the similarities between the marks, there is a likelihood of confusion on the part of the Hungarian-speaking public, even in the case of more attentive and knowledgeable consumers, and, therefore, the opposition is partially well founded on the basis of the opponent’s Community trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods 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 services is a necessary condition for the application of Article 8(1) CTMR, the opposition based on this article and directed at these goods cannot be successful.

COSTS

According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) CTMR, 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

Andrea VALISA

Karin KUHL

Michele M. BENEDETTI-ALOISI

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 has been paid.