OPPOSITION No B 2 672 734

Medi Care System, S.L., Abat Escarré, 15 -17, 1ª planta, 08302 Mataró (Barcelona), Spain (opponent), represented by Manresa Industrial Property, Calle Aragó, N° 284, 4° 2°, 08007 Barcelona, Spain (professional representative)

a g a i n s t

Kögel GmbH., Hagenfeldstr. 4, 75038 Oberderdingen, Germany (applicant), represented by Meyer & Partner, Jungfernstieg 38, 20354 Hamburg, Germany (professional representative)

On 30/01/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 672 734 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 14 808 001 for the figurative mark . The opposition is based on European Union trade mark registration No 7 312 408 for the figurative mark . 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, now Article 47(2) and (3) EUTMR), 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 the trade mark on which the opposition is based, namely European Union trade mark registration No 7 312 408 for the figurative mark .

The contested application was published on 14/12/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 14/12/2010 to 13/12/2015 inclusive.

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.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based. In this respect, the Opposition Division notes that during the opposition proceedings, a revocation action was filed against the earlier mark and the opposition was suspended awaiting the outcome of those proceedings (Case 11326 C). By its decision of 09/03/2017 the Cancellation Division initially revoked the earlier mark in its entirety but, following an appeal (decision of 12/06/2018 in Case R 878/2017-1), on 09/01/2019 the Cancellation Division issued a subsequent decision only partially revoking the earlier mark. This decision has become final and the goods on which the opposition is based and for which the earlier mark is still registered (in the relevant classes) are therefore the following:

Class 10: Orthopaedic articles, in particular bibs, belts, vests and strips for securing individuals in wheelchairs, beds and other furniture for taking rest; belts for medical, orthopaedic and abdominal purposes; limb immobilisers.

Class 20: Furniture, namely boards for the transport of the physically handicapped, those of reduced mobility and invalids; fittings, accessories and spare parts for the aforementioned goods included in this class.

According to Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), 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 or services in respect of which it is registered and on which the opposition is based.

On 14/09/2016, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 19/11/2016 to submit evidence of use of the earlier trade mark. On 21/11/2016, within the time limit (since 19/11/2016 fell on a Saturday), the opponent submitted evidence of use.

The evidence to be taken into account is the following:

 Item 1:

o Affidavit signed on 03/11/2015 by the CEO of the company Medi Care System, S.L. including, inter alia, a table with the total invoicing amounts in euros under the earlier mark during the period between 2010 and 2015 broken down by a range of different EU Member States and a table indicating the total amount of advertising expenditure for the same years; and

o Around 20 declarations signed in November 2015 by European clients of the opponent (e.g. in Spain, Germany, the United Kingdom, France and Italy) attesting to their knowledge of the earlier mark, since when they have been clients of the opponent and the names of the products they have purchased;

 Item 2: Around 25 invoices issued between 2010 and 2015, approximately half of which are invoices issued by different companies to the opponent and half of which are invoices issued by the opponent to different companies;

 Items 3 to 13: Product catalogues dated between 2010 and 2015 concerning different products, such as 'Medicovers', 'Salvaclip', 'Salvapad', 'Bodyfix', 'Salvafast', 'Salvacel', 'Salvafix', 'Ortocel' and 'Medi-roller';

 Items 14 to 16: Photographs which the opponent indicates are of its stand during the Medica Exhibition 2013, 2014 and 2015 respectively; and

 Items 17 to 18: A few pages from Guia Puntex, a Spanish hospital yearbook catalogue (from 2011 and 2012 respectively), with some information about the opponent and its products.

In its observations, the opponent also included a number of Youtube links to different promotional videos but did not submit any extracts of the same.

Assessment of the evidence – factors

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; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

According to Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), 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 or services in respect of which it is registered and on which the opposition is based. These requirements are cumulative (05/10/2010, T-92/09, STRATEGI, EU:T:2010:424, § 43) and the opponent must thus prove each of these requirements. However, the sufficiency of the evidence as to the place, time, extent and nature of use has to be determined by considering the evidence submitted in its entirety.

Place

The invoices submitted show that the place of use is Spain, France and Germany. This can be inferred from the language of the documents and/or the addresses in the invoices and of the companies concerned. Furthermore, the declarations submitted are from clients in, inter alia, these three countries. Therefore, the evidence relates to the relevant territory (the European Union).

Time

Most of the evidence is dated and concerns all the relevant years from 2010-2015. Therefore, the evidence of use sufficiently indicates the time of use.

Extent

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 assessment of genuine use entails a degree of interdependence between the factors to be taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

In this respect, even if the opponent only submitted relatively few invoices, they have been issued to clients in different countries, namely Germany, France and Spain and concern all the relevant years between 2010 and 2015. Furthermore, all the invoices concern sales of a number of different products as identified by their specific product names and/or article numbers and which are also depicted in the product catalogues submitted, which also concern the years between 2010 and 2015. Moreover, even if the client declarations submitted do not indicate the volume of business involved in their relationship with the opponent, they still show that the use of the earlier mark has been geographically widespread (since the clients are located in numerous different EU Member States) and also include information as to from when the companies concerned have been clients of the opponent (indicating years between 1995 and 2014).

Although the concept of genuine use excludes all minimal and insufficient use as the basis for a finding that a mark is being put to real and effective use on a given market, the requirement of genuine use does not seek to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade mark protection to the case where large-scale commercial use has been made of the marks (16/06/2015, T-660/11, EI du Pont de Nemours (POLYTETRAFLON), ECLI:EU:T:2015:387, § 44).

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.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa.

Therefore, and bearing in mind that use of the mark need not be quantitatively significant for it to be deemed genuine, the Opposition Division considers that the evidence in its entirety gives sufficient indications concerning the extent of the use of the earlier mark.

Nature of use

In the context of Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

The evidence submitted shows use of the earlier mark, in particular, as follows in the product catalogues submitted and photographs from the opponent’s stand at the Medica Exhibition:

The evidence also shows some use of the earlier mark as follows:

The applicant argues that use of the above signs is not use of the earlier mark as registered and claims that the proof of use therefore shows no use of the earlier mark invoked in these proceedings. However, this issue was already considered by the Boards of Appeal which found that use of the above signs could not be considered use in a form that alters the distinctive character of European Union trade mark No 7 312 408 (the earlier mark in these proceedings) as registered (see to this effect 12/06/2018, R 878/2017-1, MEDI CARE SYSTEM (fig.), § 26-40). Therefore, use of the above signs must be considered use of the earlier mark withing the meaning of Article 18(1), second subparagraph, point (a) EUTMR.

The applicant also argues that the documents submitted do not contain any information as to whether the goods 'Salvafix', 'Salvaclip', 'Salvapad', 'Bodyfix', 'Medicovers' and 'Salvafast', etc. were marked with the earlier mark at all and that there are therefore no indications that the corresponding products had any trade mark association with the earlier mark. However, although it is true that it is unclear in relation to most of the specific goods concerned whether or not they are actually affixed with the earlier mark, this is not the case at least with the 'Salvafix' product concerned which clearly features the 'MEDICARE SYSTEM' logo both on the product packaging and on the product itself as can be seen from the pictures below:

('Salvafix' restraining belt)

Furthermore, it is not, in any event, necessary that the mark concerned be affixed to the goods for there to be genuine use of the mark in relation to those goods. It suffices that the use of the mark establishes a connection between the mark and the sale of its goods (see, to that effect, 06/03/2014, ANNAPURNA, T-71/13, EU:T:2014:105, § 44 and 60). In this respect, it is clear from the catalogues submitted as well as the pictures from the opponent’s exhibition stands that the 'MEDICARE SYSTEM' logo is used as a house mark for the different products sold by the opponent. Moreover, use of the 'MEDICARE SYSTEM' logo cannot be considered to constitute a mere reference to the opponent’s company name, Medi Care System, S.L. Therefore, these arguments of the applicant must be set aside as unfounded.

As a result, it must be considered that the evidence of use of the earlier mark shows a link between the use of the mark and orthopaedic articles (such as supportive abdominal bands and shoulder slings and medical knee braces) as well as bibs, belts, vests and strips for securing individuals in wheelchairs, beds and other furniture for taking rest, limb immobilisers and equipment for moving or positioning patients (such as transfer boards, padded tubulars and sliding sheets).

Therefore, the evidence of use shows use of the earlier mark in relation to the following goods for which it is registered and on which the opposition is based:

Class 10: Orthopaedic articles, in particular bibs, belts, vests and strips for securing individuals in wheelchairs, beds and other furniture for taking rest; belts for medical, orthopaedic and abdominal purposes; limb immobilisers.

However, as regards the goods in Class 20, furniture, namely boards for the transport of the physically handicapped, those of reduced mobility and invalids; fittings, accessories and spare parts for the aforementioned goods included in this class, the Opposition Division does not consider that the evidence submitted shows any use of the earlier mark in relation to goods that belong to this class. In this respect, from the outset it must be noted that transfer boards for moving patients from one place to another cannot be considered to constitute furniture, which consist of movable, generally functional, articles that equip and/or decorate a room, house or other establishments. Moreover, even if such goods were considered to be special furniture for medical use it is clear from the explanatory note to Class 20 (see the 9^th edition of the Nice Classification which was applicable at the time of filing of the earlier mark on 14/10/2008) that this class did not (and does not) include, in particular, special furniture for medical use which rather belong to Class 10 (and which is also expressly mentioned in the explanatory note to this class). In addition, specific equipment for medical use, such as wheeled stretchers, also clearly belong to Class 10 (see the alphabetical list of goods in Class 10, including from the 9^th edition of the Nice Classification). In addition, it should also be noted that, inter alia, equipment for moving patients is part of one of the taxonomy group titles in Class 10 and TMclass (the Office’s classification tool) currently contains terms such as slings specially adapted for transporting persons with disabilities, lifting appliances for invalids, patient lifting hoists, apparatus for the turning of patients and patient positioning tools in this class. Therefore, goods such as transfer boards, padded tubulars and sliding sheets for moving or positioning patients did not belong to Class 20 at the time of filing the earlier mark nor do they currently belong to that class. Moreover, none of these goods can be considered to be included in any of the goods covered by the earlier mark in Class 10 as listed above. Therefore, the evidence of use cannot be considered to show any use of the earlier mark in relation to goods covered by the earlier mark in Class 20.

Conclusion

In view of all the above and taking into account the evidence submitted in its entirety, the Opposition Division finds that the opponent has proven that the earlier mark has been genuinely used in the market within the relevant time period but only in relation to some of the goods for which it is registered and on which the opposition is based.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

In the present case, for the reasons set out in detail above, the goods for which the earlier mark is registered and for which it may be considered to have been used are the following:

Class 10: Orthopaedic articles, in particular bibs, belts, vests and strips for securing individuals in wheelchairs, beds and other furniture for taking rest; belts for medical, orthopaedic and abdominal purposes; limb immobilisers.

Consequently, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

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.

a) The goods

The goods on which the opposition is based and for which genuine use has been proven are the following:

Class 10: Orthopaedic articles, in particular bibs, belts, vests and strips for securing individuals in wheelchairs, beds and other furniture for taking rest; belts for medical, orthopaedic and abdominal purposes; limb immobilisers.

Following a limitation of the contested application, the contested goods are the following:

Class 20: Furniture for hospitals and doctors' surgeries, fitted furniture, racks (furniture), shelving units, worktables and packing tables, furniture inserts, in particular basket inserts and tubs; Separators for cabinets and drawers, small items of furniture, rolling containers and frames, included in class 20; Office furniture, Filing cabinets, Medicine cabinets, medicine storage cabinets; Storage boxes (furniture), laboratory furniture, partitions in the form of furniture, showcases, none of the aforesaid goods being for the physically handicapped, individuals with reduced mobility and invalids.

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 applicant’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 (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

For the sake of clarity, the Opposition Division notes that the opponent’s list of goods also includes the use of ‘in particular’, namely in the term orthopaedic articles, in particular bibs, belts, vests and strips for securing individuals in wheelchairs, beds and other furniture for taking rest. However, bibs, belts, vests and strips for securing individuals (in wheelchairs, etc.) cannot be considered to be orthopaedic articles, which are articles designed to help correct or ameliorate the discomfort of disorders of the spine and joints. Therefore, although bibs, belts, vests and strips for securing individuals in wheelchairs, beds and other furniture for taking rest must be considered to be covered by the earlier mark since they were expressly listed in its specification and are also goods for which genuine use has been proven, they cannot be considered to be examples of items included in the preceding category of orthopaedic articles.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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 20

The contested furniture for hospitals and doctors' surgeries, fitted furniture, racks (furniture), shelving units, worktables and packing tables, furniture inserts, in particular basket inserts and tubs; separators for cabinets and drawers, small items of furniture, rolling containers and frames, included in class 20; office furniture, filing cabinets, medicine cabinets, medicine storage cabinets; storage boxes (furniture), laboratory furniture, partitions in the form of furniture, showcases, none of the aforesaid goods being for the physically handicapped, individuals with reduced mobility and invalids essentially consist of regular items of furniture such as trolleys, cabinets, shelving units and worktables (desks) but which may have been designed to fit the needs of a hospital or operating room and/or been made of sterile material. These contested goods do not include any special furniture for medical use which are specialised goods such as armchairs especially made for dental, medical or surgical purposes, air beds for medical purposes, childbirth mattresses, armboards [surgical splints] and tables for surgery, etc. and belong to Class 10 as already mentioned above.

In any event, the opponent’s goods in Class 10 do not include any special furniture for medical use but essentially consist of orthopaedic articles (such as supportive abdominal bands and shoulder slings and medical knee braces), fastening devices and limb immobilisers for securing patients when seated or resting. Therefore, the goods at issue have a different nature, purpose and methods of use. Furthermore, they are not in competition with each other. According to the opponent, the contested goods are complementary to the orthopaedic articles covered by the earlier mark in Class 10. However, the Opposition Division cannot see how orthopaedic articles would be essential or important for the use of the contested items of furniture in Class 20 or vice versa. Nevertheless, at least the broad category of the contested furniture for hospitals includes hospital beds and the opponent’s goods in Class 10 include bibs, belts, vests and strips for securing individuals in beds. Therefore, admittedly there can be a degree of complementarity at least between the contested furniture for hospitals and the opponent’s bibs, belts, vests and strips for securing individuals in beds in Class 10 insofar as the opponent’s goods are, or may be, intended to be used to secure patients in hospital beds. However, that complementarity is not sufficiently pronounced to conclude that these goods are similar. In this respect, while the opponent also claims that the contested goods are often produced or sold by the same undertakings as those of the earlier mark, the opponent did not adduce any evidence to this effect and bearing in mind the very different nature and purpose of the goods concerned and taking into account that their production processes require completely different know-how, skill sets and technical means, the Opposition Division finds it highly unlikely that the producers of orthopaedic articles and fastening devices to secure patients (whether to wheelchairs or beds) would also usually produce items of furniture, even if they are designed to be fitted and used in a medical environment and even if at least some of the contested goods also include hospital beds.

Furthermore, for the same reasons and without any evidence to the contrary, the Opposition Division also finds it unlikely that the goods at issue would usually be distributed by the same suppliers or found in the same specialised shops as argued by the opponent. Moreover, as regards the opponent’s argument that the consumer may expect that the main product and the accessories are produced under the control of the same entity, first of all it is unclear exactly to which goods this argument relates since the opponent refers to the contested 'parts and fittings', a term which is not included in the contested application. In any event, it is clear that in relation to the vast majority of the goods concerned, there can be considered to be no overlap in main products and accessories sold in relation to the same. In addition, even if the contested goods include hospital beds and the opponent’s goods include fastening devices to secure patients in beds and these goods may therefore be used in combination, an accessory is an article that usually fulfils a useful technical or decorative purpose and is something extra that improves or completes the main product. This cannot be considered to be the case here where the opponent’s goods are intended to secure patients and not to improve or complete (whether technically or aesthetically) hospital beds. Therefore, fastening devices to secure patients in beds cannot be considered accessory articles to hospital beds, even if they may be used in combination. As a result, the Opposition Division does not consider that the contested furniture for hospitals could be considered main products of the opponent’s goods which the consumers would expect to be produced under the control of the same entity. Therefore, even if the goods concerned may target the same relevant public, and even if some of them may have a degree of complementarity, this is insufficient on its own to find any similarity between them for the reasons set out above and they must therefore be considered to be dissimilar.

For the sake of clarity, even assuming that the earlier mark could be considered to cover boards for the transport of the physically handicapped, those of reduced mobility and invalids, for the reasons set out above, such goods are not covered by the contested application in Class 20 and these goods cannot therefore be considered to be identical. Moreover, as also explained above, these goods effectively consist of equipment for moving patients which do not have the same nature, purpose or methods of use as the contested goods and even if they may target the same relevant public, for the same reasons as those outlined above, in the absence of any evidence to the contrary they cannot even be considered to be similar.

Nevertheless, for the sake of completeness and since it cannot in any event change the outcome of the present proceedings, the Opposition Division will assume that all the contested goods and the opponent’s goods (orthopaedic articles and fastening devices to secure patients) in Class 10, apart from targeting the same relevant public, are also usually found in the same distribution channels and produced by the same undertakings and that consumers would therefore, on this basis, perceive them as similar.

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 goods assumed to be similar are partly directed at the public at large and at business customers with specific professional knowledge or expertise (e.g. orthopaedic articles in Class 10) and partly at a professional public only (e.g. furniture for hospitals and doctors' surgeries in Class 20).

Bearing in mind the specialised nature of the goods concerned in Class 10, that they are not purchased on a frequent basis, and that orthopaedic articles are used in the treatment of medical conditions, the degree of attention of the relevant public will be relatively high. However, insofar as the goods in Class 20 are concerned, the degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

c) The signs

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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The earlier mark is a figurative mark consisting of the verbal element 'MEDI CARE SYSTEM' depicted over two lines in standard black upper case letters above which there is a figurative element consisting of three blue vertical columns with a circle at the top of the middle column.

The contested sign is a figurative mark consisting of the verbal element 'medi-system' depicted in standard blue lower case letters except for the dot over the letter 'i' which is red. The letter 'm' in the word 'medi' is encapsulated by a relatively thick circular red line.

As regards the common element ‘medi’, the General Court has confirmed that 'medi' is non-distinctive in relation to, inter alia, orthopaedic articles for the English-speaking public. Apart from being a dictionary abbreviation, 'medi' was also found to be non-distinctive since it is the root of a variety of words that all refer to the medical field (see to this effect 12/07/2012, T-470/09, medi, EU:T:2012:369, § 20, 22-23 and 39 – confirmed by 16/10/2013, C‑410/12 P, medi v OHIM, C:2013:702). Moreover, as regards the German-speaking public, the General Court has also confirmed that even if 'medi' does not appear in German-language dictionaries as an abbreviation for 'medicine', it is also used in a number of compound German words relating to this field and will therefore be associated with this meaning in relation to goods belonging to that sector (see to this effect 06/11/2011, T-247/10, deutschemedi.de, EU:T:2011:579, § 41-43). As a result, even if 'medi' may not be a formal abbreviation of the words 'medical' or 'medicine' in all relevant languages, bearing in mind that 'medi' is the root of terms such as ‘medicine’ in most, if not all, languages throughout the relevant territory (e.g. ‘medicin’ in Danish and Swedish, ‘meditsiin’ in Estonian, ‘médicine’ in French, ‘Medizin’ in German, ‘medicina’ in Italian, Spanish, Portuguese and Lithuanian, ‘medicīna’ in Latvian, 'medicină' in Romanian, ‘medycyna’ in Polish and ‘medicína’ in Czech) by analogy with the case-law cited, it must be considered that the word 'medi' will as such be perceived by the public throughout the relevant territory as describing that the goods concerned in Classes 10 and 20 respectively are for medical purposes and therefore perceive it as non-distinctive.

Furthermore, as regards the common element ‘system’, it will also be understood by the public throughout the relevant territory since it is either identical (e.g. in English, German, Swedish and Danish) or very close in the corresponding official languages (e.g. 'sistema' in Spanish, Italian, Portuguese and Lithuanian, 'système' in French, 'systeem' in Dutch, 'süsteem' in Estonian, 'sistēma' in Latvian, 'sistem' in Slovenian and Romanian and 'systém' in Czech). In this respect, the word ‘system’ refers to 'a way of working, organizing, or doing something which follows a fixed plan or set of rules' or 'a set of equipment or parts [related to a specific field, such as water, heat or electricity]' (information extracted from Collins English Dictionary at www.collinsdictionary.com/dictionary/english/system on 28/01/2020).

It follows from the above considerations that the public throughout the relevant territory will perceive the verbal element 'medi-system' of the contested sign as a conceptual unit conveying a merely informative message that the goods concerned in Class 20 are part of a set of furniture or furnishings intended for the medical sector and thus as a non-distinctive element.

As regards the verbal element 'MEDI CARE SYSTEM' of the earlier mark, medical care is an English term referring to 'the professional attention of medical practitioners' (information extracted from Collins English Dictionary at www.collinsdictionary.com/dictionary/english/medical-care on 28/01/2020). Therefore, the English-speaking public in the relevant territory will perceive the verbal element of the earlier mark as a merely informative message that the goods concerned in Class 10 are goods, or form part of a set of equipment, for the medical care of patients. As a result, for this part of the public, the verbal element of the earlier mark is also non-distinctive. However, for the non-English-speaking public in the relevant territory that may not understand the English word 'CARE' (but who would still perceive it as a foreign word within the verbal element of the earlier mark), it will be perceived as a fanciful word without any particular meaning. Therefore, for this part of the public, the word 'CARE' will be perceived as distinctive to a normal degree whereas the words 'MEDI' and 'SYSTEM' will still be understood in their descriptive sense as outlined above and thus perceived as non-distinctive as such.

As regards the figurative element of the earlier mark, regardless of whether or not consumers perceive it as evoking a concept, for example that of a human figure representing either a patient or a doctor, in view of its abstract nature it will be perceived as distinctive.

However, the figurative element in the contested sign, since it essentially consists of a simple circular device, it will be perceived as a decorative element which is, therefore, weak.

Neither of the signs has any element that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the signs are similar to the extent that they both include the words ‘medi’ and ‘system’ which are however depicted in upper and lower case letters respectively, in different colours and they are non-distinctive as such. Furthermore, the signs differ in all other aspects as described above and whereas the verbal element 'MEDI CARE SYSTEM' of the earlier mark is depicted over two lines, the verbal element 'medi-system' of the contested sign is depicted on one line together with a hyphen. The opponent argues that the signs are also similar in view of the predominant use of the same colour (blue). However, even if the figurative element of the earlier mark is depicted partly in light blue and partly in dark blue or purple, the figurative element of the contested sign is red and the verbal element is in a plain bright blue colour with a red dot over the letter 'i', which is also in contrast to the verbal element of the earlier mark depicted in black. Therefore, even if the colour blue is present in both signs, their overall colour scheme is rather different.

The opponent argues that the verbal element is the more distinctive force in the signs in dispute and while it is true 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 does not always apply. In the present case, the figurative element of the earlier mark is distinctive as explained above, it is positioned at the top of the sign and occupies more space than the verbal element 'MEDI CARE SYSTEM'. Therefore, in the case at hand, the figurative element of the earlier mark must be considered, if not more important, at least as important as its verbal element in the overall visual impression given by that mark (see, by analogy, 03/06/2015, T-559/13, Giovanni Galli, EU:T:2015:353, § 63-64).

The opponent argues also that since the signs in dispute begin with the same word 'medi', this is a relevant circumstance as the first part is generally the one that primarily catches the consumer’s attention and therefore will be remembered more clearly than the rest of the sign. However, the assessment of the similarity between the marks must take into account the overall impression created by those marks (16/05/2007, T-158/05, Alltrek, EU:T:2007:143, § 70; 08/09/2010, T-369/09, Porto Alegre, EU:T:2010:362, § 29; 06/07/2004, T-117/02, Chufafit, EU:T:2004:208, § 54) and bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabel, EU:C:1997:528, § 23). It is settled case-law that a descriptive component of a composite mark cannot dominate the overall impression of the mark, and thus on its own cannot establish a likelihood of confusion (07/07/2005, T-385/03, Biker Miles, EU:T:2005:276, § 44; 03/07/2003, T-129/01, Budmen, EU:T:2003:184, § 53). Bearing in mind that the coinciding word 'medi' will be perceived as non-distinctive by the public throughout the relevant territory, even if it is the first word in both signs, it will not dominate the overall impression produced by the signs or be remembered more clearly than the rest of the sign as argued by the opponent.

Therefore, the signs are visually similar to, at most, a very low degree overall.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the words ‛MEDI’ and ‛SYSTEM’, present identically in both signs but which are however non-distinctive. The pronunciation differs in the sound of the word ‛CARE’ present in the middle of the earlier mark, which has no counterpart in the contested sign and which will be perceived as non-distinctive as well by part of the public but as distinctive to a normal degree by another part of the public. However, regardless of whether or not the additional word ‛CARE’ will be perceived as distinctive by the relevant public, bearing in mind the non-distinctive character of the coinciding words ‛MEDI’ and ‛SYSTEM’ for the whole of the relevant public, the sound of the additional word ‛CARE’ in the middle of the earlier mark will not go unnoticed by consumers.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As explained above, the English-speaking public will associate the verbal element of the earlier mark with the concept of goods intended for the medical care of patients whereas the verbal element of the contested sign will be associated with the concept of goods intended for the medical sector both of which are non-distinctive concepts. The non-English-speaking public in the relevant territory will associate the verbal element of the earlier mark with the concepts of 'medi' and 'system' as set out above, which are also present in the verbal element of the contested sign. However, since these concepts are non-distinctive, this part of the public will be attracted by the additional word 'CARE' in the earlier mark, which will convey no meaning to those consumers. Furthermore, to the extent that the figurative element in the earlier mark may evoke a concept, since it would be associated with the representation of either a patient or a doctor, it would merely reinforce the concept of goods (orthopaedic articles and fastening devices) intended for the medical care of patients, which is not the same concept as that conveyed by the verbal element of the contested sign as explained above.

Therefore, regardless of whether the verbal element 'MEDI CARE SYSTEM' in the earlier mark is understood as a whole or only in part and regardless of whether or not its figurative element will be perceived as conveying a concept, the signs are conceptually similar only to a low degree overall.

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

d) 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, bearing in mind the abstract nature of the figurative element, the earlier trade mark as a whole has no direct 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 in the mark of the non‑distinctive verbal element 'MEDI CARE SYSTEM', or at least the words 'MEDI' and 'SYSTEM', as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

As already mentioned above, 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).

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

In the present case, the goods at issue have been assumed to be similar and the degree of attention of the relevant public may vary from average to high depending on the specific goods in question.

The signs have been found to be visually similar to, at most, a very low degree, aurally similar to an average degree and conceptually similar to a low degree on account of their coincidence in the non-distinctive words 'medi' and 'system'.

Whereas a company is certainly free to choose a trade mark with descriptive and non-distinctive words, and use it on the market, it must also accept, however, in so doing that competitors are equally entitled to use trade marks with similar or identical descriptive components (23/05/2012, R 1790/2011-5, 4REFUEL (fig. mark)/REFUEL, § 15).

Where the similarities arise in relation to non-distinctive elements of a mark, the importance of differences must increase proportionately to the degree that a mark or its constituent elements may be considered to be non-distinctive (14/05/2001, R 257/2000-4, e plus (fig. mark)/PLUS, § 22). Where a mark is largely descriptive, small differences may suffice to avoid confusion since the average consumer, when perceiving something largely descriptive, will recognise that to be so and expect others to use similar descriptive marks and thus be alert for detail which would differentiate one producer or provider from another. Furthermore, even if the figurative element of the contested sign has been found to be weak, where all the elements are weak, that is have descriptive or decorative character, and have been combined to create a distinctive whole, the general public will be more likely to recall the totality of the sign and rely on that as a distinguisher of the commercial origin of the goods or services concerned. Therefore, a later encounter with trade marks that contain individually any of the weaker (or in this case even non-distinctive) components are not likely to create circumstances that lead to a risk of confusion.

Taking all the above into account, the average degree of aural similarity between the signs in dispute is insufficient to counteract their very low degree of visual similarity and the low degree of conceptual similarity between them. Therefore, bearing in mind the lack of distinctiveness of the coinciding words 'medi' and 'system' within the respective signs, the overall impression they produce is not sufficiently similar to lead to a likelihood of confusion on the part of the public, regardless of whether an average or high degree of attention is displayed at the time of purchase of the goods concerned.

Considering all the above, even assuming that the goods concerned are similar, which cannot however be considered to be the case for the reasons set out in detail above in section a) of this decision, there is still no likelihood of confusion on the part of the public. Therefore, the opposition must, in any event, be rejected.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

María del Carmen COBOS PALOMO

Sam GYLLING

Kieran HENEGHAN

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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.