OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
OPPOSITION No B 2 505 330
Francisco Manuel Bosch Martin, Pasaje De Las Rosas, 54, Vilassar de Mar, Spain (opponent), represented by A2 Estudio Legal, Calle Hermosilla, 59 Bajo izquierda, 28001 Madrid, Spain (professional representative)
a g a i n s t
Arta Plast AB, Antennvägen 1 A, 135 48 Tyresö, Sweden (applicant), represented by Awapatent AB, Box 45086, 104 30 Stockholm, Sweden (professional representative).
trade mark application No
3. The applicant bears the costs, fixed at EUR 650.
opponent filed an opposition against all the goods of Community trade
mark application No
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.
The goods on which the opposition is based are the following:
Class 5: Pharmaceutical and veterinary preparations; Sanitary preparations for medical purposes; Dietetic substances adapted for medical use, food for babies; Plasters, materials for dressings; Material for stopping teeth, dental wax; Disinfectants; Preparations for destroying vermin; Fungicides, herbicides.
Class 10: Needles and cannulae for medical purposes.
The contested goods are the following:
Class 10: Lancettes, needles and syringes for medical purposes; medical instruments.
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.
Needles for medical purposes are identically contained in both lists of goods.
The contested medical instruments include, as a broader category, the opponent’s needles and cannulae for medical purposes. 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 syringes for medical purposes are highly similar to the opponent’s goods in Class 10, as they can coincide in their producers, end users and distribution channels. They are also used in a complementary way to the opponent’s goods.
The contested lancettes for medical purposes are similar to the opponent’s goods in Class 10, as they can coincide in their producers, end users and distribution channels.
Earlier trade mark
The relevant territory is the European Union.
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’, § 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 Spanish-speaking part of the relevant public.
Visually, in the case of word marks, the word itself is protected and not its written form. Therefore, it is irrelevant whether the marks are written in upper or lower case letters, or in a combination thereof. The signs are similar to the extent that they coincide in the letters ‘UNI*LANCE’. However, they differ in the letter ‘G’ only present in the earlier mark.
Aurally, the pronunciation of the signs coincides in the sound of the letters [uni-lance] present in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the letter [g] of the earlier sign, which has no counterpart in the contested mark.
Conceptually, neither of the signs has a meaning for the Spanish-speaking 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 highly similar.
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 than other elements.
The marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.
Distinctiveness of the earlier mark
The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.
The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the Spanish-speaking public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
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 found to be identical and similar to varying degrees are directed at experts with specific professional knowledge or expertise. The level of attention the relevant public’s degree of attention is relatively high.
Global assessment, other arguments and conclusion
The goods in conflict are identical and similar to varying degrees.
In the absence of any meaning in Spanish, the earlier mark possesses an average distinctive character. The signs are visually and aurally highly similar because the only difference between them is the additional letter ‘G’ of the earlier mark. Furthermore, they are not distinguished by the relevant public from the conceptual point of view as they do not convey any conceptual content.
Account should also be taken of the fact that consumers only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (judgment of 22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323).
Considering all the above, there is a likelihood of confusion on the part of the Spanish-speaking part of the public. As stated above in section b) 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 Community trade mark registration No 10 436 442. It follows that the contested trade mark must be rejected for all the contested goods.
According to Article 85(1) CTMR, 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 Rule 94(3), (6) and (7)(d)(i) CTMIR, 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 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.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) CTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Article 2(30) CTMFR) has been paid.