DECISION

of the Second Board of Appeal

of 26 September 2017

In Case R 2402/2016-2

Vitromed
Wildenbruchstrasse 15 07745 Jena Germany	Applicant / Appellant

represented by Michael Linß, Domplatz 22, 99084 Erfurt, Germany

v

Vitromed Healthcare
A-27, Bais Godam Industrial Estate Jaipur 302 006 India	Opponent / Respondent

represented by Manitz Finsterwald Patentanwälte PartMbB, Martin-Greif-Str. 1, 80336 München, Germany

APPEAL relating to Opposition Proceedings No B 2 618 026 (European Union trade mark application No 14 459 903)

The Second Board of Appeal

composed of S. Stürmann (Chairperson), H. Salmi (Rapporteur) and C. Negro (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 12 August 2015, Vitromed (hereinafter ‘the applicant’) sought to register the figurative mark in colour

for the following list of goods and services:

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.

2. The application was published on 11 September 2015.

3. On 1 December 2015, Vitromed Healthcare (hereinafter ‘the opponent’) filed an opposition against the registration of the published trade mark application in its entirety.

4. The grounds of opposition were those laid down in Article 8(1)(b) EUTMR.

5. The opposition was based on the following earlier right:

• European Union trade mark registration No 4 141 081

Vitromed

filed on 17 November 2004 and registered on 3 February 2006 for the following goods:

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.

6. By decision of 28 October 2016 (hereinafter ‘the contested decision’), the Opposition Division partially upheld the opposition on the grounds that there was a likelihood of confusion 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.

The contested mark was accepted for the remaining goods and services. Each party was ordered to bear its own costs. The Opposition Division gave, in particular, the following grounds for its decision:

• The contested goods in Class 5 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.

• The contested goods in Class 10 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.

• The contested goods in Classes 1 and 9 and the contested services in Class 42 are dissimilar to the goods of the earlier mark

• 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.

• The distinctiveness of the earlier mark must be seen as normal.

• The signs are highly similar at a visual level, aurally identical and possibly conceptually identical too.

• There is a likelihood of confusion on the part of the English-speaking public and 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.

7. On 21 December 2016, the applicant filed an appeal against the contested decision, requesting that the contested decision is set aside to the extent that the opposition was accepted and the application rejected. The statement of grounds of the appeal was received on 18 February 2017 in which the applicant requested that the contested decision be annulled, and the opposition rejected in its entirety.

8. In its observations in reply received on 6 April 2017, the opponent requested that the contested decision be upheld, the appeal rejected and the costs of the appeal borne by the applicant.

Submissions and arguments of the parties

9. The applicant requests the Board to annul the contested decision and reject the opposition in its entirety. Its arguments raised in the statement of grounds may be summarised as follows:

• The opposition is inadmissible and unfounded; the opponent has not used its mark for the ‘declared goods’.

• The opposition is partially inadmissible and unfounded with respect to Class 5; the earlier mark is only registered for goods in Class 10.

• The goods manufactured and traded by the opponent are completely different from those of the applicant. The opponent trades in the consumer market whereas the applicant is exclusively present in the medical specialist market.

• The relevant public is different. Even if it were the same, the relevant public can be assumed to have such expert professional knowledge and expertise that it will be able to distinguish the goods and the marks.

• The figurative element before the word ‘VITROMED’ is the main element of the contested mark due to its foremost position and design.

• The signs differ from a visual, phonetic and conceptual point of view.

• The applicant is market leader of its trade mark products across Germany and Europe, so that among the relevant public an increased highly accepted and noticeable distinctive character is inherent to the contested mark

10. The arguments raised in reply to the appeal may be summarised as follows:

• Use of the earlier trade mark is irrelevant for the present case.

• The fact that the earlier mark is only registered for goods in Class 10, does not mean that these goods cannot be similar to those in Class 5.

• The goods at issue are identical or similar.

• The figurative element and the word ‘Germany’ of the contested mark are not distinctive.

• As far as the distinctive character of ‘Vitromed’ is concerned, it is not relevant for which goods it is used at this stage of the procedure.

Reasons

Preliminary remark on the applicable Regulations

11. The EU trade mark application was filed on 12 August 2015, that is, before the entering into force on 23 March 2016 of the new European Trade Mark Regulation which was introduced by Amending Regulation (EU) No 2015/2424. Therefore, the former Community Trade Mark Regulation (CTMR) is applicable to this appeal (04/10/2016, T-549/14, Castello / Castellò (fig.) et al., EU:T:2016:594, § 33), at least for non-strictly procedural provisions (13/06/2013, C‑346/12 P, Milram, EU:C:2013:397, § 2). However, for easy reference the Board will refer to ‘EUTMR’ and the new terminology introduced by the amending Regulation, albeit the material changes in the Regulation will not be applied to the case at hand.

12. Since the new European Union Trade Mark Implementing Regulation (EUTMIR) will not enter into force until 1 October 2017, the Board will keep on referring to the current Community Trade Mark Implementing Regulation (EC) No 2868/95 (CTMIR).

Admissibility of the appeal

13. The appeal complies with Articles 58, 59 and 60(1) EUTMR and Rules 48 and 49 CTMIR. The appeal is, therefore, admissible.

Admissibility of the opposition

14. Insofar as the applicant mentions that the opposition is inadmissible because the opponent has not used its mark for the ‘declared goods’, the Board notes that this is not a ground for inadmissibility of the opposition. The same applies to the applicant’s statement that the opposition is inadmissible insofar as it is directed against Class 5 of the contested mark because the earlier mark is only registered for goods in class 10.

Scope of appeal

15. The scope of appeal is limited to the extent it was appealed by the applicant, that is to the extent the opposition was successful. The opponent did not file an appeal or a response seeking a decision annulling or altering the contested decision on a point not raised in the appeal in the sense of Article 8(3) BoA-RP. The contested decision has, therefore, become final with respect to the acceptance of the contested mark in relation to the contested goods and services in Classes 1, 9, and 42.

Likelihood of confusion

16. Article 8 EUTMR provides:

‘1. Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered:

…

(b) if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods and services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.

…’

17. A likelihood of confusion lies in the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 29 and 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17).

18. A likelihood of confusion on the part of the public must be assessed globally, taking into account all factors relevant to the circumstances of the case (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, §16 and 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18).

Use of the earlier mark

19. The applicant argues in the statement of grounds that all rights in connection with the earlier trade mark registration lapse due to lack of use.

20. It should be noted that the Office may only assess if the earlier mark is (partially) genuinely used if the applicant makes such a request within the time-limit before the Opposition Division as set out in Rule 22(1) CTMIR. Since this condition was not fulfilled, the Board has to consider, for the purpose of the present proceedings, that the earlier mark is deemed to be registered for all goods as mentioned above (see paragraph 5). Therefore, the applicant’s argument fails.

Relevant public

21. The perception of the marks in the mind of the relevant public for the goods in question plays a decisive role in the global assessment of the likelihood of confusion. In this assessment account should be taken of the average consumer of the category of products concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 42 and the case-law cited).

22. The opposition is based on an earlier European Union trade mark. Thus the relevant territory for the likelihood of confusion assessment is the entire European Union. Earlier European Union trade marks may be relied on in opposition to any subsequent application to register a trade mark which infringes their protection, even if it does so only in the perception of the consumers of part of the European Union. A ‘part’ of the European Union can consist of only one Member State (14/12/2006, T‑81/03, T‑82/03 & T‑103/03, Venado, EU:T:2006:397, § 76 and 83 last sentence). Thus, the opposition has to be upheld even if there is only a likelihood of confusion between the contested trade mark and the earlier European Union trade mark for a significant part of the public in one Member State.

23. The relevant public of the goods that were found by the Opposition Division 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 Board considers that even though there might be a small difference in attention concerning the goods in Classes 5 and 10, the relevant and coinciding public of these goods is rather attentive and aware.

Comparison of the goods

24. Taking into account that a request for proof of use for the first time before the Board is inadmissible, the examination of a possible similarity between the goods and services covered by the mark applied for and by the earlier mark - within the context of opposition proceedings initiated on the basis of Article 8(1)(b) EUTMR by the proprietor of an earlier trade mark - must be carried out by reference to the list of goods covered by those two marks and not to the goods or services actually marketed under those marks (04/04/2014, T‑568/12, Focus extreme, EU:T:2014:180, § 30 and case-law cited). 

25. Bearing in mind also that the goods upon which the opposition is based are as mentioned in paragraph 5 above, the goods to be compared are the following:

    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.

    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.

    Contested mark

    Earlier EUTM

26. Insofar as the applicant argues that the opposition is unfounded with respect to Class 5 because the earlier mark is only registered for goods in Class 10, it is to be noted that goods may not be regarded as being dissimilar from each other on the ground that they appear in different Classes under the Nice Classification (Rule 2(4) CTMIR).

27. According to settled case-law, in assessing the similarity of the goods or services concerned, all the relevant features of the relationship between them should be taken into account, including, inter alia, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned, or the fact that the goods are often sold in the same specialist sales outlets, which is likely to facilitate the perception by the relevant consumer of the close connections between them and strengthen the perception that the same undertaking is responsible for the production of those goods (18/06/2013, T‑522/11, Apli-Agipa, EU:T:2013:325, § 32 and the case-law cited) or that the goods are usually produced by the same manufacturer.

28. The goods in question concern the medical field and are intended for medical use. In addition, they can have a complementary relationship. They may be aimed at the same specialist, have the same origin and distribution channels. Thus, the contested Class 5 goods are similar to the Class 10 goods of the earlier mark.

29. Furthermore, the Board endorses the Opposition Division’s finding of identity between the contested Class 10 goods and the Class 10 goods of the earlier mark.

Comparison of the marks

30. With regard to the comparison of the signs, the likelihood of confusion must be determined by means of a global appraisal of the visual, phonetic and conceptual similarities between the signs, on the basis of the overall impression given by them, bearing in mind in particular their distinctive and dominant components (11/11/1997, C–251/95, Sabèl, EU:C:1997:528, §23).

31. In general terms, two signs are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, namely the visual, aural and conceptual aspects (23/10/2002, T–6/01, Matratzen, EU:T:2002:261, § 30 upheld on appeal by order of 28/04/2004,  C‑3/03 P, Matratzen, EU:C:2004:233).

32. The signs to be compared are:

    	Vitromed
    Contested sign	Earlier EUTM

33. The Board will follow the approach taken by the Opposition Division, that is, to focus the comparison of the signs on the perception of the English-speaking public.

34. As considered by the Opposition Division:

‘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’.

35. Although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details the fact remains that, when perceiving a verbal sign, he will break it down into elements which, for him, suggest a concrete meaning or which resemble words known to him (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57 and the case‑law therein cited).

36. The Board considers it likely that the word ‘Vitromed’ will be linked by the relevant professional public with ‘in vitro’ which can be defined, as by the Opposition Division, as: ‘performed or taking place in a test tube, culture dish, or elsewhere outside a living organism’. Furthermore, this professional public will perceive the second element, ‘med’, as an abbreviation for ‘medical’. In relation to the contested Class 5 and Class 10 goods as well as the goods of the earlier mark that are similar or identical to those goods, the word as a whole has a weak distinctive character.

37. In spite of the previous paragraph, the component ‘VITROMED’ is not negligible at all within the overall impression of the contested sign.

38. First of all, the Board agrees with the Opposition Division that the element ‘Germany’ 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 the goods. Moreover, it is of considerably smaller size than the word ‘VITROMED’.

39. As to the figurative element, a significant part of the relevant public, even though it is highly attentive, will not immediately perceive it as an acronym of the two components ‘VITRO’ and ‘MED’ but as a purely decorative component. Moreover, even for the part of the public that will perceive the figurative element as a stylised acronym of the two components ‘VITRO’ and ‘MED’ (or as containing the sole letter ‘V’ in blue and something abstract in grey), the element will not be able to divert the public’s attention away from the word element ‘VITROMED’.

40. In the light of the foregoing, most weight has to be given to the element ‘VITROMED’ in the overall impression of the contested sign. However, the smaller sized figurative element which is at the beginning of the contested mark is not negligible, contrary to the non-distinctive and small sized word component ‘Germany’ under the word ‘VITROMED’.

41. Taking into account the above considerations, as well as that there is nothing special about the typeface of the word ‘VITROMED’, that the difference in uppercase (‘VITROMED’) versus upper- and lowercase (‘Vitromed’) is banal and that the earlier mark is fully contained within the contested sign, the Board agrees with the following considerations in the contested decision:

‘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, (…) 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’.

42. From a conceptual point of view, it is likely that the relevant public will associate the common term ‘VITROMED’ with the meaningful words ‘in vitro’ and ‘medical’. Insofar as the figurative element in the contested sign could be perceived as the acronym of ‘VITROMED’, this would only strengthen the semantic link between the signs. As to the differentiating word ‘Germany’, this will be associated with the country bearing the same name. Bearing in mind the above considerations concerning the distinctive and dominant components in the signs, the signs are conceptually highly similar.

Distinctive character of the earlier mark

43. The more distinctive the trade mark, the greater will be the likelihood of confusion, and therefore marks with a high distinctive character, either per se or because of their recognition by the public, enjoy broader protection than marks with less distinctive character (27/06/2012, T‑344/09, Cosmobelleza, EU:T:2013:40, § 96 and the case-law cited).

44. The Board firstly stresses that the earlier mark is validly registered as a European Union trade mark. This validity cannot be called into question in the context of proceedings which merely concerns the likelihood of confusion (be it an opposition or cancellation proceedings before the Office) (23/04/2013, T‑109/11, Endurace, EU:T:2013:211, § 80). Therefore, the mark has at least a minimum degree of distinctiveness throughout the European Union (15/07/2014, T‑576/12, Protekt, EU:T:2014:667, § 56-58 and case‑law cited therein).

45. Furthermore, bearing in mind the above comparison of the signs (see paragraph 36), the earlier mark has a weak inherent distinctive character for the goods which are identical or similar to those of the contested mark.

46. The opponent did not claim or prove that its earlier mark has obtained an enhanced distinctiveness.

47. The applicant argues, but did not submit any corroborating evidence thereto, that it is the market leader of the products bearing the contested mark. However, reputation or renown or otherwise enhanced distinctive character of the mark applied for is irrelevant; only the reputation or enhanced distinctiveness of the earlier mark, if such were claimed, and not that of the mark applied for, is to be taken into account in assessing whether there is a likelihood of confusion (13/05/2015, T‑608/13, easyAir-tours (fig.) / international airtours (fig.) et al., EU:T:2015:282, § 40 and case‑law cited therein).

Overall assessment of the likelihood of confusion

48. A global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, the similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24 and 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

49. The goods in question are identical or similar and are directed at a professional public with a high level of attention. Overall, the signs at issue have a high visual, phonetic and conceptual similarity from the perception of the professional English‑speaking public. In spite of the high level of attention, the Board agrees with the Opposition Division that the relevant public will believe that the contested sign is simply a figurative version of the earlier mark.

50. For the purpose of the present proceedings and from the perception of the professional English‑speaking public, the distinctive character of the earlier mark is weak. However the finding of a weak distinctive character for the earlier mark does not preclude a finding that there is a likelihood of confusion in the present case. While the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one of a number of elements entering into that assessment. Even in a case involving an earlier mark of weak distinctive character, on the one hand, and a trade mark applied for which is not a complete reproduction of it, on the other, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (13/12/2007, T‑134/06, Pagesjaunes.com, EU:T:2007:387, § 70).

51. In light of all the foregoing considerations, taking also into account the principles of interdependence, in spite of the weak distinctive character of the earlier mark and the high level of attention of the relevant public, there is reason to assume that the relevant English‑speaking professional public in the European Union may be misled into thinking that the identical and similar goods bearing the overall highly similar conflicting signs come from the same undertaking or, as the case may be, from undertakings that are economically‑linked.

52. Consequently, the Opposition Division did not err in rejecting the contested mark because there is a likelihood of confusion between the trade mark applied for and the earlier EUTM with respect to the contested goods that form the scope of appeal, namely:

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.

53. The appeal is dismissed.

Costs

54. Pursuant to Article 85(1) EUTMR, the applicant, as the losing party, shall bear the costs incurred by the opponent in the appeal proceedings. Pursuant to Article 85(6) EUTMR and Rule 94(3) last sentence CTMIR, the applicant is, therefore, ordered to reimburse the opponent with the costs of professional representation for the appeal proceedings to the amount of EUR 550 in accordance with Rule 94(7)(d) CTMIR. The contested decision had already correctly ordered that each party bear their own costs with respect to the opposition proceedings. This remains unchanged. The total amount is EUR 550.

Order

On those grounds,

THE BOARD

hereby:

1. Dismisses the appeal;

2. Orders the applicant to bear the costs of the appeal proceedings;

3. Fixes the amount of costs to be paid by the applicant to the opponent for the appeal proceedings at EUR 550.

Signed S. Stürmann

Signed H. Salmi

Signed C. Negro

Registrar: Signed H. Dijkema