OPPOSITION No B 2 879 388

Médis - Companhia Portuguesa de Seguros de Saúde, S.A., Av. Dr. Mário Soares (Tagus Park). Edifício 10, Piso 1, 2744 Porto Salvo, Portugal (opponent), represented by Gastão da Cunha Ferreira, Lda., Rua dos Bacalhoeiros, nº. 4, 1100-070 Lisboa,

Portugal (professional representative)

a g a i n s t

Medisky Sp. z o.o., ul. Trębacka 4, 00-074 Warszawa, Poland (applicant), represented by S.C. Weizmann Ariana & Partners Agentie de Proprietate Intelectuala S.R.L., str. 11 IUNIE, nr. 51, sc. A, etaj 1, ap. 4, sector 4, 040171 Bucharest, Romania (professional representative).

On 20/08/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 879 388 is upheld for all the contested services.

2. European Union trade mark application No 15 969 512 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 15 969 512 for the figurative mark , namely against all the services in Classes 36 and 44. The opposition is based on inter alia, Portuguese trade mark registration No 519 701 for the word mark ‘MÉDIS’. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s earlier Portuguese trade mark registration No 519 701.

Preliminary remarks

In the notice of opposition the opponent mistakenly identified the services registered in Class 36 of the earlier Portuguese trade mark registration No 519 701 on which it wished to base the present opposition, namely repeated the services registered in Class 44 of the same Portuguese registration. However, in the certificate of the said registration filed together with the notice of opposition the services in Class 36 have been correctly identified and these services will be taken into account in further analysis of the opposition. Furthermore, in the notice of opposition the opponent chose to base the opposition on all the goods and services in relation to the above-mentioned Portuguese registration, however, it mentioned only services in Classes 36 and 44. In this regard, since no further information as to the scope of the opposition has been transmitted to the Office within the opposition period, namely until 18/04/2017, the Opposition Division will take into account the earlier services as identified by the opponent within the opposition period (the notice of opposition together with the relevant certificates).

1. The services

The services on which the opposition is based, according to the original Portuguese certificate, are the following:

Class 36: Insurance; financial services, credit, investment and insurance services, including those provided via the Internet or via other means of telecommunication.

Class 44: Health care, including the services of doctors, hospitals and other health care providers.

The contested services are the following:

Class 36: Insurance underwriting; administration of insurance business; administration of insurance plans; administration of insurance claims; administration of group insurance plans; dental health insurance administration; insurance agencies; life insurance agencies; insurance consultancy; insurance information; insurance brokerage; brokerage of casualty insurance; brokerage of non-life insurance; life assurance brokerage; private health insurance; medical insurance; life insurance; health insurance; accident insurance; providing insurance information; consultancy and brokerage services relating to life insurance; consultancy and brokerage services relating to accident insurance; consultancy and brokerage services relating to health insurance; advisory services relating to life insurance; medical insurance services provided to companies; insurance services relating to life; personal insurance services; insurance services for the provision of emergency cash; insurance services relating to nursing homes; administration of insurance portfolios; administration of group insurance; consultancy services relating to insurance.

Class 44: Dentistry; medical services; medical and healthcare services; professional consultancy relating to health care; professional consultancy relating to health; health care consultancy services [medical]; consulting services relating to health care; advisory services relating to health; information services relating to health care; medical assistance; medical assistance; medical assistance; medical assistance consultancy provided by doctors and other specialized medical personnel; dental assistance.

An interpretation of the wording of the list of the opponent’s services is required to determine the scope of protection of these services.

The term ‘including’, used in the opponent’s list of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested services in Class 36

The contested insurance agencies; life insurance agencies; insurance consultancy; insurance information; insurance brokerage; brokerage of casualty insurance; brokerage of non-life insurance; life assurance brokerage; private health insurance; medical insurance; life insurance; health insurance; accident insurance; providing insurance information; consultancy and brokerage services relating to life insurance; consultancy and brokerage services relating to accident insurance; consultancy and brokerage services relating to health insurance; advisory services relating to life insurance; medical insurance services provided to companies; insurance services relating to life; personal insurance services; insurance services for the provision of emergency cash; insurance services relating to nursing homes; consultancy services relating to insurance are included in, or overlap considerably with, the broad category of the opponent’s insurance in Class 36. Therefore, they are identical.

Providing insurance services consists of accepting liability for certain risks and losses. Insurers usually provide monetary compensation and/or assistance in the event that a specified contingence occurs, such as death, accident, sickness, contract failure or, in general, any event giving rise to damages.

Therefore, the remaining contested insurance underwriting; administration of insurance business; administration of insurance plans; administration of insurance claims; administration of group insurance plans; dental health insurance administration; administration of insurance portfolios; administration of group insurance are all services aimed at supporting or helping insurance agents. Consequently, they are considered similar to the opponent’s insurance since they are all aimed at promoting the launch and/or sale of the opponent’s insurance services and they may target the same end users seeking help when dealing with the insurance company and be provided in combination.

Contested services in Class 44

All the contested services in Class 44, namely dentistry; medical services; medical and healthcare services; professional consultancy relating to health care; professional consultancy relating to health; health care consultancy services [medical]; consulting services relating to health care; advisory services relating to health; information services relating to health care; medical assistance (mentioned three times); medical assistance consultancy provided by doctors and other specialized medical personnel; dental assistance are included in, or overlap with, the broad category of the opponent’s health care, including the services of doctors, hospitals and other health care providers. Therefore, they are identical.

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 identical or similar are directed at the public at large and at professional public with specific knowledge or expertise. In relation to all the relevant services the public will display a higher degree of attention either because they will affect its state of health or they will have important financial implications for its business.

Given that the general public is more prone to confusion, the examination will proceed on this basis.

3. The signs

MÉDIS
Earlier trade mark	Contested sign

The relevant territory is Portugal.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark is one word mark ‘MÉDIS’. In case of word marks, it is the word as such that is protected and not its written form.

The contested sign is a figurative mark composed of the word element ‘MEDISKY’, written in standard uppercase white letters in bold, followed below by the word ‘INTERNATIONAL’, written in considerably smaller standard uppercase letters in white. Above the verbal elements, in the upper-right corner, there is a figurative representation of a butterfly accompanied by three white stars. All these elements are depicted on a blue quadratic background.

The term ‘Médis’ present in the earlier mark does not convey any concrete meaning as a whole. However, it cannot be completely ruled out that the relevant public may perceive this word as allusive of something that is related to the medical field or to medicine, because this word shares a common root with the equivalent words in Portuguese, ‘medicina’, ‘medicamento’.

The first element of the contested sign ‘MEDISKY’, considered as a whole, has no clear meaning for the relevant public in the relevant territory. However, it cannot be excluded that the relevant public may perceive the element ‘MED’/‘MEDI’ at the beginning of the contested sign as referring to the meaning mentioned above (something that is related to the medical field or to medicine). The fact that in the contested sign the letter ‘E’ does not appear with an acute accent is not particularly relevant, as this minor detail is likely to go unnoticed to the public, especially in signs which have no clear meaning and are not known words, but only allude to certain concepts.

In the context of the relevant services in Class 44, the elements ‘MÉDIS’ and/or ‘MEDI’ present in both signs may be associated by the relevant public, as analysed above, with something related to the medical field and, therefore, their distinctiveness per se will be below the average in relation to them. The remaining letters placed at the end of the first element of the contested sign ‘KY’ do not convey any meaning for the relevant public. These elements are normally distinctive in relation to the relevant services in Class 36.

The second element of the contested sign, the English/French term ‘INTERNATIONAL’, will be understood by the relevant Portuguese public as such due to the proximity of the equivalent word in Portuguese - ‘INTERNACIONAL’, meaning ‘between or involving different countries’. As regards the relevant services this term suggests the cross-border scope of the services and is, therefore, non-distinctive in relation to them.

The figurative elements of the contested sign will rather have a limited impact as indicators of origin for the relevant services. The blue background will be clearly perceived by the relevant public as an essentially ornamental resource, intended to embellish the sign and to draw attention to the verbal elements displayed. The stars depicted below the representation of a blue butterfly will allude to the high quality of services offered by the applicant and in relation to them the distinctiveness of this element is low. Although the representation of the blue butterfly is normally distinctive per se, as mentioned above, when perceived in this sign, it will be viewed mainly as graphic embellishment of the mark; consumers are used to such elements accompanying the verbal elements of trade marks and, therefore, will afford more trade mark significance to the verbal elements of the mark and, mostly, to the element ‘MEDISKY’.

The signs in question have no elements that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually and aurally, contrary to the applicant’s view, the Opposition Division observes that the signs coincide in the letters ‘M-E-D-I-S’, forming the verbal element of the earlier mark and the beginning of the contested sign. Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right and from top to bottom, which makes the part placed at the left and top of the sign (the initial part) the one that first catches the attention of the reader.

The signs differ visually and aurally in the way in which the shared letter ‘E’ is represented in the contested sign, namely without an acute accent placed on the letter ‘E’, the remaining letters ‘K-Y’ , the non-distinctive element ‘INTERNATIONAL’ and the figurative elements (only visually) of the contested sign.

Nevertheless, as regards the graphical depiction of the contested sign, it should be noted that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal elements than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37). In addition, as mentioned above, the stylisation of the contested sign, although rich in elements, will play an ancillary role of bringing the verbal elements to the attention of the public.

Consequently, it is considered that the signs coincide in the letters constituting the initial part of the contested sign and the only element of the earlier mark. This coincidence will not go unnoticed by the relevant public and it gives rise to at least a low degree of visual similarity and an average degree of aural similarity between the signs.

Conceptually, as mentioned above, the term ‘MÉDIS’/’MEDIS’ or ‘MEDI’ does not have a clear meaning as such. However, as analysed above, the relevant public may perceive these terms as allusive of something that is related to the medical field or to medicine, because they share a common root with the equivalent words in Portuguese, ‘medicina’, ‘medicamento’.The impact of the second element of the contested sign ‘INTERNATIONAL’ will be minimal, due to its non-distinctive character in relation to the services at issue. The same limited role will be assigned to the figurative elements of the contested sign which either allude to the quality of the contested services (depiction of stars), play an essentially decorative role within the sign (blue quadratic background) or are less relevant/important (depiction of butterfly).

Therefore, taking into account the above-mentioned allusion contained in both signs, the marks are conceptually similar to at least a low degree in relation to the relevant services in Class 44 and similar to an average degree in relation to the relevant services in Class 36.

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

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the distinctiveness of the earlier mark as a whole is below the average in relation to the services in Class 44. The earlier mark is normally distinctive in relation to the relevant services in Class 36.

5. Global assessment, other arguments and conclusion

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 services at issue are identical and similar and they are directed at the public at large with a higher than average degree of attention.

The distinctiveness per se of the earlier trade mark as a whole is average in relation to the relevant services in Class 36, which have been found identical and similar. The inherent distinctiveness of the earlier mark is below the average in relation to the relevant services in Class 44, which have been found identical.

Although the distinctive character of an earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, 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 (see 16/03/2005, T-112/03 ‘Flexi Air’).

While it is true that the more distinctive the earlier mark, the greater will be the likelihood of confusion, given the identity of the services covered by the respective marks, combined with a visual and phonetic similarity of the signs they consist of, suffice to create a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR. Since likelihood of confusion is the specific prerequisite for protection of the earlier mark, that protection applies irrespective of whether the earlier mark has only weak distinctiveness (see 12/01/2006, T-147/03 ‘Quantum’).

In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, §  54).

In the case at stake the signs are considered visually similar to at least a low degree and aurally similar to an average degree. From the conceptual perspective, they are similar to at least a low degree in relation to the relevant services in Class 44 which have been found identical and the signs are conceptually similar to an average degree in relation to the identical and similar services in Class 36. In particular, the marks are similar to the extent that they include the element ‘MEDIS’ that is placed at the beginning of the contested sign where the attention of the relevant public is normally focused and this element is the only element of the earlier mark.

Furthermore, the element ‘MEDIS’ is also present at the beginning of the more distinctive verbal element of the contested sign, as the other verbal element ‘INTERNATIONAL’ is entirely non-distinctive. The differences related to the remaining letters and the figurative elements of the contested sign are not enough to dispel the existence of the above-mentioned similarity between the signs as they refer essentially to the final letters ‘K-Y’ and the figurative elements of the contested sign, which are either lowly distinctive or, in any case, have a smaller impact as indicators of commercial origin of the services in question for the general Portuguese public.

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.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). It cannot be excluded that in the present case, the public may perceive the contested sign as a new version of the earlier mark ‘MÉDIS’, whereby the additional letters ‘KY’ placed at the end of the first verbal element of the contested sign and its figurative components may be perceived as a reference to new services line of the opponent’s services offered on the international scale.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that many trade marks include the element ‘MEDI’. In support of its argument the applicant refers to some European Union trade mark registrations, in particular ‘MEDIQ’, ‘MedicX’, ‘Mediplus’, ‘Medica Polska’.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element ‘MEDI’ or ‘MEDIS’ in Portugal. Under these circumstances, the applicant’s claims must be set aside.

Considering all the above and, in particular, the principle of interdependence, the Opposition Division finds that there is a likelihood of confusion on the part of the general Portuguese public and, therefore, the opposition is well founded on Portuguese trade mark registration No 519 701. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use/reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier Portuguese trade mark registration No 519 701 leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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 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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Gueorgui IVANOV

Monika CISZEWSKA

Manuela RUSEVA

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.