OPPOSITION No B 2 636 291

Fundacio Step By Step, Dolors Aleu, 19-21, 3º 3ª, 08908 l’Hospitalet de Llobregat, Spain (opponent), represented by March & Asociados, Passeig de Gràcia, 103, 7ª Planta, 08008 Barcelona, Spain (professional representative)

a g a i n s t

Novartis AG, 4002 Basel, Switzerland (applicant), represented by Milojevic Sekulic & Associates, S.L., C/ Clara Campoamor NUM. 5 BW-107, 03540 Alicante, Spain (professional representative).

On 05/06/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 636 291 is upheld for all the contested services:

Class 41: Educational and training services in the field of multiple sclerosis; publication of information relating to multiple sclerosis; arranging and conducting classes, seminars and workshops relating to multiple sclerosis.

Class 44: Providing medical information relating to multiple sclerosis; medical services relating to multiple sclerosis.

2. European Union trade mark application No 14 583 306 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 14 583 306. The opposition is based on Spanish trade mark registration No 2 874 740. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of Spanish trade mark No 2 874 740.

The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The contested application was published on 09/10/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Spain from 09/10/2010 to 08/10/2015 inclusive.

Furthermore, the evidence must show use of the trade mark for the services on which the opposition is based, namely the following:

Class 44: medical services; medical rehabilitation services; neurorehabilitacion services.

According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 13/07/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 18/09/2016 to submit evidence of use of the earlier trade mark. On 16/09/2016, within the time limit, the opponent submitted evidence of use.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

The evidence to be taken into account is the following:

• Ten invoices relating to the provision of physiotherapy and hydrotherapy services between March 2014 and July 2016 (six invoices relating to the relevant period). The invoices are addressed to clients in Barcelona (and one from 2016 is addressed to a client in Lleida).

• Copies of leaflets showing the trade mark in relation to medical and rehabilitation services and stating that the opponent’s company is a non-profit organisation devoted to the rehabilitation of people affected by neurological disease. The leaflets are not dated. The evidence is in Spanish with a partial translation.

• Various press articles referring to a collaboration between FC Barcelona and Fundació Step by Step and to other activities of the Foundation. The articles are in Spanish; translations of some of the titles were submitted:

• A copy of a press article entitled ‘FC Barcelona will collaborate in the investigation of spinal diseases’, published in the online newspaper elEconomista.es on 06/02/2012.

• A copy of a press article entitled ‘FC Barcelona signs an agreement with an association of spinal injured rehabilitation’, published in the online newspaper ABC.es on 06/02/2012.

• A copy of a press article entitled ‘FC Barcelona will collaborate in the investigation of spinal diseases’, published in the online newspaper 5telecino.es on 06/02/2012 and in the online newspaper epsocial on 07/02/2012.

• A copy of a press article entitled ‘FC Barcelona and Fundación Step by Step, have signed a collaborative agreement in order to spread investigation projects in the spinal injuries field’, published on the website NoticiasMedicas.es on 02/2012.

• A copy of an article entitled ‘Teaming up with the Fundación Step by Step’, published in Esport Catalá on 06/02/2012.

• A copy of an article entitled ‘FC Barcelona will collaborate in the investigation of spinal diseases’, published online on 06/02/2012.

• A copy of an article entitled ‘Fundación Step by Step presents the first exoskeleton of Tenerife’, published on the website laopinion.es on 21/04/2016.

• A copy of an article entitled ‘La Fundación Step by Step presenta mañana en la Isla un exoesqueleto robotizado’, published on the website laopinion.es on 20/04/2016.

• A copy of a press article entitled ‘Los Expertos aconsejan mantener la actividad tras una lesión medular’. The article is not dated.

• A copy of a press article entitled ‘De la silla de ruedas a andar con exoesqueleto’, published in the newspaper El Mundo on 05/02/2013.

• Screenshots of the opponent’s website dated 06/09/2016.

• A copy of a report entitled ‘Fundación step by step’, from 2015, in which the mark is displayed in relation to rehabilitation services. The report is in Spanish.

• Photos showing people wearing T-shirts bearing the words ‘step by step’, seemingly at various trade fairs, exhibitions, charity events and medical conferences. Most of the photos are not dated.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, and 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

The invoices, the press articles and the report show that the place of use is Spain. This can be inferred from the language of the documents (Spanish) and the addresses of clients in Barcelona. Therefore, the evidence relates to the relevant territory.

Some items of evidence are dated within the relevant period, namely the invoices issued by the opponent between 07/03/2014 and 07/09/2015, the press articles dated between 06/02/2012-05/02/2013 and the report ‘Fundación step by step’, which bears the date 2015.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The documents filed – namely six invoices dated between 07/03/2014 and 07/09/2015 demonstrating that the opponent has provided medical rehabilitation services; numerous press articles dated between 2012 and 2013 demonstrating that the opponent’s activities in the field of rehabilitation, in particular the collaboration with FC Barcelona, received a certain amount of attention in the press; and the photos demonstrating the use of the opponent’s trade mark – provide the Opposition Division with sufficient information concerning the extent of use. Although the invoices do not demonstrate the provision of a particularly large volume of services, the articles demonstrate that the opponent was making public use of the mark in 2012, and from the nature of the activities mentioned it can be inferred that the use of the mark was not merely token; on the contrary, there is evidence that the mark was used with the intention of finding and maintaining a position on the market in the relevant field. Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish use of the earlier trade mark during the relevant period in the relevant territory.

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

The evidence, in particular the invoices, press articles, report and photos, shows that the earlier sign was used in such a way as to establish a clear link between the services and the company responsible for their marketing. Therefore, the evidence demonstrates that the opponent’s mark was used to identify the commercial origin of the services in question, that is, used in a trade mark sense.

The earlier sign is registered as a figurative trade mark; in some of the documents, the trade mark is used as a word mark without the figurative element (a stylised depiction of a wheelchair) or the mark is presented in black and white. The Opposition Division considers that this is acceptable alteration, and this use is therefore considered valid use of the registered trade mark.

In view of the above, the Opposition Division considers that most of the submitted evidence demonstrates use of the sign as a trade mark and as registered within the meaning of Article 15(1) second subparagraph, point (a) EUTMR.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods and services covered by the earlier trade mark. According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

In the present case, the evidence (in particular the articles and the invoices) demonstrates that the opponent has rendered various types of rehabilitation services. Therefore, the abovementioned evidence proves that the opponent has used its trade mark in relation to spinal injuries, rehabilitation services, physiotherapy services and hydrotherapy services. The press articles demonstrate that these kinds of rehabilitation services were offered to clients in Spain. Therefore, the Opposition Division concludes that the evidence submitted demonstrates that the opponent’s trade mark was used in relation to medical rehabilitation services; neurorehabilitacion services in Class 44.

However, the evidence does not succeed in establishing that the trade mark was put to genuine use for the rest of the services on which the opposition is based, namely medical services. This term is very broad and subcategories can be identified within it. The evidence does not show use for the entire broad category but merely, as stated above, for rehabilitation services. The services mentioned above, for which the mark is also registered, namely medical rehabilitation services, form an independent subcategory of medical services. Since use was proven for only this subcategory of these services, the Opposition Division will consider only the following of the opponent’s services in its further examination of the opposition:

Class 44: medical rehabilitation services; neurorehabilitacion services.

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 services on which the opposition is based are the following:

Class 44: Medical rehabilitation services; neurorehabilitacion services.

The contested services are the following:

Class 41: Educational and training services in the field of multiple sclerosis; publication of information relating to multiple sclerosis; arranging and conducting classes, seminars and workshops relating to multiple sclerosis.

Class 44: Providing medical information relating to multiple sclerosis; medical services relating to multiple sclerosis.

Contested services in Class 41

The contested educational and training services in the field of multiple sclerosis; publication of information relating to multiple sclerosis; arranging and conducting classes, seminars and workshops relating to multiple sclerosis are similar to the opponent’s medical rehabilitation services; neurorehabilitacion services in Class 44, as they are often provided by the same companies; it is common for service providers specialising in the provision of medical rehabilitation services to provide courses and training in that field. Moreover, the services under comparison are often provided through the same channels and they target the same consumers.

Contested services in Class 44

The contested providing medical information relating to multiple sclerosis; medical services relating to multiple sclerosis are similar to the opponent’s medical rehabilitation services, as they are often provided by the same companies; it is common for service providers specialising in the provision of medical rehabilitation services to also provide other types of medical services, such as services relating to multiple sclerosis. The same entities would also provide related information. Moreover, the services under comparison have the same purpose, they are often provided through the same channels and they target the same consumers.

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 services found to be similar are directed at the public at large. Moreover, the contested services in Class 41 also target professionals in the medical field. The degree of attention is relatively high, as the services affect consumers’ state of health.

1. The signs

Earlier trade mark	Contested sign

The relevant territory is Spain.

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 sign is a figurative trade mark consisting of a combination of English and Catalan words in a stylised blue font and in different sizes. To the left of the word elements is a stylised depiction of a wheelchair in green and blue. The Catalan word ‘fundació’ will be understood by Spanish speakers. The word means ‘foundation’ and is non-distinctive, as it indicates only the type of legal entity that the service provider is, that the services provided are supported by a foundation or that the service provider itself belongs to a foundation. The stylised depiction of a wheelchair may be perceived as alluding to the type of services provided. Therefore, the English verbal element ‘step by step’, which has no meaning for the Spanish public, is the most distinctive element in the earlier sign.

The contested sign is also a figurative mark, containing the word ‘step’ in grey, followed by a colon. The first three letters of the word element are surrounded by a grey rectangle with an opening in it; this will be perceived by the relevant public as a purely decorative element. The most distinctive part of the contested sign is the English word ‘step’.

Visually, the signs coincide in the word ‘step’, which appears twice in the earlier sign and, as stated above, is the most distinctive element in the contested sign. The signs differ in their colours and in their figurative elements, which, as stated above, have purely decorative natures or are allusive. In addition, the earlier sign contains a non‑distinctive element, ‘fundació’, and the short underlined word ‘by’.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the verbal element ‘step’ and differs in all the remaining verbal elements of the earlier mark. However, the additional element ‘fundació’ of the earlier mark is non-distinctive and the word ‘by’ is short and not particularly noticeable as it appears between the repeated words ‘step’. In view of the fact that the distinctive elements of the earlier mark (‘step’) are the only verbal element of the contested mark, are repeated and have only a short syllable in between them, the marks are aurally similar to a high degree.

Conceptually, the contested sign has no meaning in the relevant territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar. However, the conceptual differences are of limited relevance to the overall assessment of the similarity of the marks because the concepts from which they result are all to be found in the earlier sign and are non-distinctive (foundation) or allusive (wheelchair).

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, despite the presence of a non-distinctive element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

In the present case, the signs are visually and aurally similar, aurally even to a high degree. The services are similar and they target the public at large, whose degree of attention is relatively high. Although the relevant public may perceive certain visual and aural differences between the signs, the likelihood that the signs might be associated with each other is high. It is likely that the relevant consumer would perceive the contested sign as a variation of the earlier mark, configured in a different way.

Considering all the above, there is a likelihood of confusion on the part of the Spanish public and therefore the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 2 874 740.

It follows from the above that the contested trade mark must be rejected for all the contested services.

COSTS

According to Article 85(1) EUTMR, 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) and (6) and Rule 94(7)(d)(i) EUTMIR, 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

Michaela SIMANDLOVA

Liina PUU

Loreto URRACA LUQUE

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.

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) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.