OPPOSITION No B 2 618 026

Vitromed Healthcare, A-27, Bais Godam Industrial Estate, Jaipur 302 006, India (opponent), represented by Manitz, Finsterwald & Partner GBR, Martin-Greif-Str. 1, 80336 Munich, Germany (professional representative)

a g a i n s t

Vitromed, Wildenbruchstrasse 15, 07745 Jena, Germany (applicant), represented by Albrecht Sass, Eppendorfer Landstr. 33, 20249 Hamburg, Germany (professional representative).

On 28/10/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 618 026 is partially upheld, namely for the following contested goods:

Class 5: Biological preparations for medical purposes; Biological tissue cultures for medical purposes.

Class 10: Pipetting instruments for medical use; Pipetting instruments for medical use; Pipetting instruments for medical use; Pipetting instruments for surgical use; Capillary tubes for delivering reagents; Capillary tubes for samples; Injection needles for medical use; Injection sleeves for medical use; Injection instruments without needles; Injectors for medical purposes; Capillary pipettes of plastic for medical purposes; Capillary tubes for medical purposes.

2. European Union trade mark application No 14 459 903 is rejected for all the above goods. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 459 903. The opposition is based on European Union trade mark registration No 4 141 081. The opponent invoked Article 8(1)(b) 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.

1. The goods and services

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

Class 10: Surgical, medical, dental and veterinary apparatus and instruments, in particular healthcare disposables and medical disposables, as far as contained in Class 10, suture materials.

The contested goods and services are the following:

Class 1: Media for cell culture for use in the biotechnological industry; biological tissue cultures other than for medical or veterinary purposes; culture media for microbiology.

Class 5: Biological preparations for medical purposes; biological tissue cultures for medical purposes.

Class 9: Pipettes; petri dishes; petri dishes used in laboratory research.

Class 10: Pipetting instruments for medical use; pipetting instruments for medical use; pipetting instruments for medical use; pipetting instruments for surgical use; capillary tubes for delivering reagents; capillary tubes for samples; injection needles for medical use; injection sleeves for medical use; injection instruments without needles; injectors for medical purposes; capillary pipettes of plastic for medical purposes; capillary tubes for medical purposes.

Class 42: Research relating to biotechnology; consultancy relating to biotechnology.

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

The term ‘in particular’, used in the opponent’s list of goods, 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 (see the judgment of 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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 1

The contested goods are very specific products for use in in the microbiology and biotechnology industries. They include substances intended to support the growth and maintenance of cells and tissues. The earlier goods are apparatus and instruments to be used in a surgical, medical, dental and veterinary environment. Although, some of the goods at issue have a connection to a medical environment, this is not sufficient to find similarity between them. Furthermore, as regards Biological tissue cultures, it is specifically excluded that they are used for medical or veterinary purposes. The opponent argues that the contested goods could be used in the area of in vitro fertilisation and in such a context these goods would be used in conjunction with the opponent’s goods, especially insofar as they cover ‘medical disposables’. However, goods are complementary if there is a close connection between them, in the sense that one is indispensable (essential) or important (significant) for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking (see, to that effect, judgments of 11/05/2011, T-74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T-558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T-504/11, Dignitude, EU:T:2013:57, § 44). The Opposition Division does not believe that this is the case here. Specialised microbiology companies will be responsible for the production of the contested goods but not the earlier goods. The goods will be distributed through different channels, ultimately serve different purposes and are not in competition with one another. These goods are therefore dissimilar.

Contested goods in Class 5

The contested goods are specific products destined for medical use, namely biological preparations and tissue cultures. Unlike the goods in Class 1, which are reserved for the sphere of biotechnology and microbiology, the contested goods in Class 5 will be used in a medical environment, quite possibly by doctors and other medical specialists. The earlier goods include medical apparatus and instruments. Therefore, the goods share a similar purpose, namely medical, they may be distributed through the same channels and aimed at the same consumers. These goods are therefore similar.

Contested goods in Class 9

The contested goods are specific articles for use in a laboratory since Class 9 covers scientific research products for use in a laboratory, and not medical goods. The earlier goods are apparatus and instruments to be used in a surgical, medical, dental and veterinary environment. Although the contested goods could conceivably be found in a medical environment, for example in a hospital pathology laboratory, this is not sufficient to find similarity between them. The goods will be produced by different companies, they serve different purposes, will be aimed at different consumers and distributed through different channels. Nor are they complementary or in competition with one another. These goods are therefore dissimilar.

Contested goods in Class 10

The contested goods are specific instruments for medical or surgical use. As such, they fall under the broader earlier goods surgical and medical apparatus and instruments. These goods are therefore identical.

Contested services in Class 42

The contested services are specific research and consultancy services relating to the field of biotechnology. The earlier goods are apparatus and instruments to be used in a surgical, medical, dental and veterinary environment. As a starting point, there are numerous differences between goods and services. By their nature goods are generally dissimilar to services. This is because goods are articles of trade, wares, merchandise, or real estate. Their sale usually entails the transfer of title in something physical, i.e. movables or real estate. Services, on the other hand, consist in the provision of intangible activities. Fundamentally, the opponent’s goods have a different purpose to the applicant’s services. Furthermore, these goods and services will be provided by completely different companies, aimed at different consumers and there is no complementary relationship between them. The contested services are therefore dissimilar to the earlier goods.

2. 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 or similar are specialised and directed at business customers with specific professional knowledge or expertise such as specialists in the medical field. The degree of attention will range from average for the goods in Class 10, which are medical articles used on a daily basis, to high for the Class 5 goods, which are likely to be used in specialised medical procedures meaning a higher degree of attention will be paid.

3. The signs

Vitromed
Earlier trade mark	Contested sign

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 is a word mark consisting solely of the word ‘Vitromed’.

The contested sign is a figurative mark consisting of the word ‘VITROMED’ in blue standard capital letters. The word ‘Germany’ appears underneath in much smaller grey print. On the left hand side, there is a device element consisting of a grey square with a blue ‘V’ and what may be perceived as a grey letter ‘M’ below, depicted in a highly stylised fashion. This logo might be seen as incorporating the letters ‘V’ and ‘M’ which stand for Vitromed. However, due to the stylisation of the letters, it is by no means clear that all consumers will perceive letters.

The word ‘Vitromed’, common to both marks, is an invented word and is unlikely to be dissected in an artificial manner. Nevertheless, there is a possibility that some consumers may see the first element, ‘vitro’, as being linked with ‘in vitro’ which means ‘performed or taking place in a test tube, culture dish, or elsewhere outside a living organism’. Most consumers will see the second element, ‘med’, as an abbreviation for ‘medical’. However, consumers will be more likely to read the word as a complete entity. The word ‘Germany’ in the contested sign refers to the country with the same name.

Despite consisting of two elements which allude to a meaning, the earlier mark has no elements that could be considered clearly more distinctive than other elements since the word will appear as fanciful and invented.

The element ‘Germany’ of the contested sign will be associated with the country bearing the same name. This element will be seen as non-distinctive for all the goods since it simply denotes their geographical origin or the location of the company providing them.

Also, as regards the contested sign, it is composed of an allusive but distinctive verbal element, ‘Vitromed’, and a less distinctive figurative element of a purely decorative nature. Therefore, the verbal element is more distinctive than the figurative element.

The earlier mark has no element that could be considered more dominant (visually eye-catching) than other elements.

The element ‘VITROMED’ in the contested sign is the dominant element as it is the most eye-catching.

Visually, the signs coincide in ‘VITROMED’. However, they differ in ‘Germany’ in the contested sign although, as explained above, the impact of this word is low due to its smaller size and lack of distinctiveness. They also differ in the device element of the contested sign, which will also be viewed as having less distinctive weight than the word ‘VITROMED’ due to its decorative nature. They also differ in the colours used in the contested sign.

Therefore, taking into account the remarks made above about the differing elements in the contested sign, the signs are highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘VITROMED’, present identically in both signs. This word is the most distinctive element of the contested sign and is the word which will most likely be used to refer to the contested sign. In the view of the Opposition Division, ‘GERMANY’ will not be pronounced since it is not distinctive enough to be taken into account by consumers. Furthermore, the figurative element of the contested sign will have little or no impact at an aural level since consumers will naturally refer to the mark by the readily pronounced word ‘VITROMED’.

Therefore, taking all this into account, the signs can be said to be identical at an aural level.

Conceptually, some consumers may see the word ‘VITROMED’ as alluding to two different ideas, as described above. If this is the case, the signs are conceptually identical. Other consumers will not see a meaning in ‘VITROMED’ and no conceptual comparison is possible. For the reasons already described above, ‘GERMANY’ in the contested sign will have no impact at a conceptual level.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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 public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The signs have been found highly similar at a visual level, aurally identical and possibly conceptually identical too. The goods and services have been found identical, similar and dissimilar.

The earlier mark is an invented, fanciful term, even it is conceded that it may allude to some concepts. In this regard, the Opposition Division considers it rather unlikely that consumers will dissect the word ‘VITROMED’. So, though suggestive of certain ideas, the word is perfectly distinctive in connection with the goods at issue. The earlier mark is reproduced in the contested sign. It is the word which consumers will use to identify the contested sign visually and aurally, since no heed will be paid to the word ‘Germany’, both because of its small size and its lack of distinguishing power. The device element will be seen as decorative, possibly containing a ‘V’ and ‘M’.

To conclude, consumers will confuse the signs, believing that the contested sign is simply a figurative version of the earlier mark. The signs coincide in a fully distinctive word and the differences displayed in the contested mark cannot detract from this since the extra elements contained in the contested sign are either decorative or not distinctive.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration. 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 found to be identical and similar to those of the earlier trade mark.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods and services cannot be successful.

COSTS

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

María Clara IBÁÑEZ FIORILLO

Lucinda Jane CARNEY

Julie GOUTARD

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.