CANCELLATION No 22 583 C (INVALIDITY)
BMA Brandstätter Rechtsanwälte GmbH, Wallnerstraße 3/18, 1010 Wien, Austria (applicant), represented by BMA Brandstätter Rechtsanwälte GmbH, Wallnerstr. 3, 1010 Wien, Austria (professional representative)
a g a i n s t
Buro Medische Automatisering B.V., De Molen 1, 3994 DA Houten, the Netherlands (EUTM proprietor), represented by Heffels Spiegeler Advocaten, Lange Voorhout 102, 2514 EJ Den Haag, the Netherlands (professional representative).
The application for a declaration of invalidity is upheld.
European Union trade mark No 13 732 706 is declared invalid for all the contested services, namely:
Class 41: Education, providing of training, coaching for medical computer hardware and software.
The European Union trade mark remains registered for all the uncontested goods and services, namely:
Class 10: Medical apparatus, devices and instruments for diagnostics, monitoring, recording and screening; obstetric devices.
Class 42: Design and development of medical computer software as well as (customized) consultancy; advice and support in this field; implementation of medical software including project management.
The EUTM proprietor bears the costs, fixed at EUR 1 080.
The applicant filed an application for a declaration of invalidity against some of the goods and services of European Union trade mark No 13 732 706 , namely against all the services in Class 41. The application, is based on, among others, European Union trade mark registration No 11 693 884 for the figurative mark . The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.
SUMMARY OF THE PARTIES’ ARGUMENTS
The applicant argues that there is a likelihood of confusion between the contested EUTM and the earlier registered trade marks since the dominant part of the contested figurative mark ‘BMA’ is identical to the dominant part of the earlier trade marks.
In its reply, the EUTM proprietor requested the applicant to furnish proof of use of the marks on which the invalidity declaration is based. Furthermore, it denied any similarity between the services in conflict as the earlier services are so general and comprehensive and are not addressed to the specific services in relation to the very specific described products, namely medical apparatus, devices and instruments for diagnostics, monitoring, recording and screening. It also claims that considering the layout, style and combination of the letters, it must be concluded that the signs are visually and aurally not similar.
PROOF OF USE
The EUTM proprietor requested that the applicant provide the proof of the use of the earlier European Union registrations on which the application is based.
The EUTM proprietor, however, did not submit the request for proof of use by way of a separate document as required by Article 19(2) EUTMDR. Therefore, the request for proof of use is inadmissible pursuant to Article 19(2) EUTMDR.
LIKELIHOOD OF CONFUSION — ARTICLE 60(1)(a) EUTMR IN CONNECTION WITH 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 application is based on more than one earlier trade mark. The Cancellation Division finds it appropriate to first examine the application in relation to the applicant’s European Union trade mark registration No 11 693 884.
a) The services
The services on which the application is based are among others the following:
Class 41: Education; Providing of training; Entertainment; Sporting and cultural activities; Translation; Videotaping; Education information; Recreation information; Providing karaoke services; Vocational retraining; Vocational guidance [education or training advice]; Discotheque services; Bookmobile services; Club services [entertainment or education]; Boarding schools; Providing casino facilities [gambling]; Holiday camp services [entertainment]; Health club services [health and fitness training]; Providing golf facilities; Nursery schools; Providing museum facilities [presentation, exhibitions]; Night clubs; Providing amusement arcade services; Providing sports facilities; Sport camp services; Recording studio services; Music-halls; Amusement parks; Lending libraries; Coaching [training]; Practical training [demonstration]; Electronic desktop publishing; Entertainer services; Providing recreation facilities; News reporters services; Disc jockey services; Language interpreter services; Personal trainer services [fitness training]; Services of schools [education]; Zoological garden services; Sign language interpretation; Conducting fitness classes; Presentation of live performances; Educational examination; Ticket agency services [entertainment]; Photographic reporting; Subtitling; Academies [education]; Tuition; Television entertainment; Correspondence courses; Film production, other than advertising films; Movie studios; Cinema presentations; Photography; Gambling; Gymnastic instruction; Publication of texts, other than publicity texts; Entertainment information; Calligraphy services; Music composition services; Layout services, other than for advertising purposes; Microfilming; Modelling for artists; Videotape editing; Orchestra services; Production of music; Game services provided on-line from a computer network; Providing on-line electronic publications, not downloadable; Publication of electronic books and journals on-line; Arranging and conducting of conferences; Arranging and conducting of congresses; Arranging and conducting of concerts; Arranging and conducting of symposiums; Organization of fashion shows for entertainment purposes; Party planning [entertainment]; Booking of seats for shows; Production of shows; Religious education; Radio entertainment; Dubbing; Theatre productions; Animal training; Physical education; Amusements; Organization of sports competitions; Arranging and conducting of seminars; Arranging and conducting of workshops [training]; Arranging and conducting of colloquiums; Organization of exhibitions for cultural or educational purposes; Organization of balls; Operating lotteries; Arranging of beauty contests; Organization of shows [impresario services]; Organization of competitions [education or entertainment]; Scriptwriting services; Writing of texts, other than publicity texts; Rental of audio equipment; Rental of lighting apparatus for theatrical sets or television studios; Rental of show scenery; Rental of movie projectors and accessories; Rental of cine-films; Rental of radio and television sets; Games equipment rental; Toy rental; Rental of sports equipment, except vehicles; Rental of sports grounds; Rental of skin diving equipment; Rental of stadium facilities; Rental of tennis courts; Rental of stage scenery; Rental of sound recordings; Rental of camcorders; Publication of books; Videotape film production; Rental of videotapes; Rental of video cassette recorders; Timing of sports events; Circuses; Production of radio and television programmes.
The contested services are the following:
Class 41: Education, providing of training, coaching for medical computer hardware and software.
The contested education, providing of training are identically included in the list of the earlier mark.
The contested coaching for medical computer hardware and software are included in the broad category of the applicant’s coaching [training]. The services are identical.
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 services found to be identical are directed at the public at large, as well as at professional customers. The degree of attention is considered to vary from average to high, depending on the price, terms and conditions of the services purchased.
c) The signs
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 earlier mark is a complex mark in colour, composed of several verbal and figurative elements, as shown in the table above.
The letter combination ‘BMA’ is meaningless and distinctive in relation to the relevant services at hand. Below the letters ‘BMA’ in much smaller typeface, the expression ‘Brandstätter Rechtsanwälte GMBH’ appears. This expression as a whole will be seen as a name of a law firm at least by the German speaking part of the public. The word ‘Brandstätter’ will most likely be recognised as a surname of German origin or as a foreign word, probably German, by reason of the presence of the umlaut on the word ‘Brandstätter’ and consequently it will be perceived as a distinctive element. The word ‘Rechtsanwälte’ will be understood at least by the German speaking part of the public as ‘a law firm’. Whether understood or not, it has an average degree of distinctiveness, as it does not directly describe or allude to any characteristic of the services in question. The ending ‘GMBH’ is short for the German legal form Gesellschaft mit beschränkter Haftung, which stands for a company with limited liability, and is therefore non-distinctive for the public, even for those that do not exactly know what the letters stand for. This would be because even if the public does not understand the letters GMBH, they still know it is a legal form for German companies, on account of its wide use in trade. As a whole the expression ‘Brandstätter Rechtsanwälte GMBH’ will be seen as an indication of the name of the provider of the services.
The contested sign is also a complex mark composed of several verbal and figurative elements. The component ‘BMA’ does not refer to anything in particular with respect to the relevant services and is of a normal distinctiveness.
The combinations ‘Healthcare IT Solutions’ and ‘Specialist in Obstetrics’ are considered to be descriptive slogans whose function is to give indications in relation to the services. Therefore, if understood, these slogans are considered to be non-distinctive. Moreover, the expressions ‘Healthcare IT Solutions’ and ‘Specialist in Obstetrics’ are depicted in a much smaller typeface as compared to the letters ‘BMA’. For the reasons mentioned, the public will not pay as much attention to this element as to the other elements of the contested sign. For the remaining part of the public that might not understand ‘Healthcare IT Solutions’ and ‘Specialist in Obstetrics’, these expressions are considered to be distinctive to an average degree.
As regards the figurative elements included in both marks, the Court stated that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and 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).
The element ‘BMA’ clearly dominates the earlier mark and it is therefore considered to be the dominant element. The element ‘BMA’ together with the figurative element are, due to their size and position in relation with the remaining word elements, the co-dominant elements in the contested sign.
Visually, the signs coincide in the letters ‘BMA’. They differ in their respective additional verbal and figurative elements, that is, in the words ‘Brandstätter Rechtsanwälte GMBH’ in the earlier mark and ‘Healthcare IT Solutions’ and ‘Specialist in Obstetrics’ in the contested sign as well as in the colour and the graphical representation and elements of the signs.
When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and 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; 19/12/2011, R 233/2011-4, BEST TONE (FIG.MARK) / BETSTONE, § 24; 13/12/2011, R 53/2011-5, JUMBO (FIG. MARK) / DEVICE OF AN ELEPHANT (FIG. MARK ), § 59).
Therefore, and taking into account the respective distinctive character of the components of the marks (detailed above) and that the identical elements are distinctive, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‘BMA’, present in both of the signs. The pronunciation differs in the sound of the wording ‘Brandstätter Rechtsanwälte GMBH’ of the earlier mark and ‘Healthcare IT Solutions’ and ‘Specialist in Obstetrics’ of the contested mark.
Moreover, the General Court has already assessed that, only the dominant part of the mark would normally be pronounced when enunciated by consumers (03/07/2013, T‑206/12, LIBERTE american blend, EU:T:2013:342, § 44; 30/11/2011, T‑477/10, SE© Sports Equipment, EU:T:2011:707, § 55) and the relevant consumer will tend to shorten long signs (11/01/2013, T‑568/11, interdit de me gronder IDMG, EU:T:2013:5, § 44).
Given the less dominant position and the fact that the expressions ‘Healthcare IT Solutions’ and ‘Specialist in Obstetrics’ are non-distinctive for the services for at least a part of the public, it is reasonable to assume that they will not be pronounced by the relevant public. Also, normally when faced with marks that include many verbal elements, consumers have a tendency to shorten them to the elements they find easy to identify and remember. Therefore, it is very likely that all the marks will be referred to as ‘BMA’. Consequently, the signs are aurally identical.
Conceptually, reference is made to the previous findings concerning the semantic content and the distinctiveness of the elements of the marks. The elements ‘Brandstätter Rechtsanwälte GMBH’ will be understood at least by the German speaking public in the relevant territory with the meaning explained above. However, these elements do not significantly influence the perception of the coinciding and dominant element ‘BMA’ and will not catch the attention of the relevant public who will rather be caught by the fanciful and dominant verbal element ‘BMA’. The fact that the word ‘Brandstätter’ would be seen as a name is on its own neutral for the purposes of the conceptual comparison.
Since the combinations ‘Healthcare IT Solutions’ and ‘Specialist in Obstetrics’ are considered to be descriptive slogans for at least a part of the public, the conceptual aspect does not influence the similarity between the signs for this part of the public. The same is valid for the public that will not understand any of the mentioned words.
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.
The applicant 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 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, despite the presence of a non-distinctive element as mentioned in the section c) of this decision.
Global assessment, other arguments and conclusion
The contested services are identical to the applicant’s services. They target both the public at large and professional consumers with a degree of attention varying from average to high. The distinctiveness of the earlier mark is normal.
The signs coincide in the element ‘BMA’, which is the dominant element in the earlier mark and also co-dominant element in the contested sign. The signs differ in the graphic depiction and in the additional words ‘Brandstätter Rechtsanwälte GMBH’ of the earlier mark and the words ‘Healthcare IT Solutions’ and ‘Specialist in Obstetrics’ of the contested mark and also in the figurative elements included in both signs. Although the stylisation, colours and additional verbal elements of the marks create some differences between the signs, they are not capable of outweighing the abovementioned similarities. The mentioned elements have a secondary role in the assessment of the likelihood of confusion or are non-distinctive in relation to the services at hand. Therefore, it is highly conceivable that the relevant consumers will confuse the marks or alternatively perceive the contested sign as a sub-brand or variation of the earlier mark, configured in a different way according to the type of services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).
Considering all the above, and bearing in mind also the principle of interdependence, according to which a lower degree of similarity between signs may be offset by a greater degree of similarity between the services and vice-versa, the Cancellation Division finds that the differences between the signs are not sufficient to counteract the similarity resulting from their coinciding element, ‘BMA’, and that, for identical services, there is a likelihood of confusion, including a likelihood of association, on the part of the public.
Therefore, the application is well founded on the basis of the applicant’s European Union trade mark registration. It follows that the contested trade mark must be declared invalid for all the contested services.
The applicant has also based its cancellation application on European Union trade mark registrations No 11 432 978, No 11 691 086, 13 474 201 and Austrian Trade Mark registration No 229 058. As the earlier EUTM No 11 693 884 lead to the success of the application and the cancellation of the contested trade mark for all the services against which the application was directed, there is no need to examine the other earlier rights invoked by the applicant (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).
According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein.
The Cancellation 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 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.