OPPOSITION No B 2 874 264

medipa Dienstleistungen im Gesundheitswesen, Brunshofstr. 12, 45470 Mühlheim an der Ruhr, Germany (opponent), represented by Goldberg Rechtsanwälte, Friedrichstr.51, 42105 Wuppertal, Germany (professional representative)

a g a i n s t

MM sp. z o.o., ul. Strzegomska 236 A, 54-432 Wrocław, Poland (applicant), represented by Triloka Czarnik Ożóg Kancelaria Patentowa i Adwokacka sp.p. ul. Kornela Ujejskiego 12/7, 30-102 Kraków, Poland (professional representative).

On 30/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 874 264 is partially upheld, namely for the following contested services:

Class 36: Insurance underwriting; Consumer insurance underwriting; Financial consultancy and insurance consultancy; Consumer financial consultancy and insurance consultancy; Insurance information; Consumer insurance information; Insurance brokerage; Private insurance brokerage; Consumer insurance brokerage; Provision of information relating to insurance and financial services; Provision to consumers of information relating to insurance and financial services; Financial and monetary services, and banking; Financing and funding services; Private financing and funding services; Consumer financing and funding services; Facilitating and arranging financing; Facilitating and arranging financing for consumers; Provision of finance for health care; Conducting of financial transactions; Financial brokerage services; Consumer financial brokerage services; Savings schemes relating to health care; Private savings schemes relating to health care; Consumer savings schemes relating to health care; Savings schemes relating to health insurance; Private savings schemes relating to health insurance; Consumer savings schemes relating to health insurance; Financial management services relating to medical institutions.

2. European Union trade mark application No 16 002 421 is rejected for all the above services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 16 002 421 for the word mark ‘MEDIPE’ namely against all the services in Classes 36, 43 and 44. The opposition is based on, inter alia, European Union trade mark registration No 15 370 539 for the word mark ‘medipa’. The opponent invoked Article 8(1)(b) EUTMR.

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

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

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 European Union trade mark registration No 15 370 539.

1. The services

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

Class 35: Administrative data processing; Accountancy, book keeping and auditing; Business consultancy and advisory services; Business inquiries; Business advisory and information services; Outsourcing services in the field of business operations; Outsource service provider in the field of customer relationship management; Industrial management consultation including cost/yield analyses; Outsourcing services in the nature of arranging service contracts for others; Human resources management and recruitment services; Management advice relating to the placing of staff; Business records keeping; Business office services; Management assistance to commercial companies; Administration of business affairs; Computerised business information processing services; Consultancy relating to data processing; Data processing services in the field of payroll; Data processing services in the field of healthcare; Data entry and data processing; Systemization of information into computer databases; Data processing verification; Business consultancy to firms; Payroll preparation; Public relations services; Advertising.

Class 36: Clearing, financial; Debt recovery and collection agencies; Factoring agency services; Debt collection; Debt recovery; Financial analysis and consultancy.

Class 41: Coaching; Conducting of correspondence courses; Providing computer-delivered educational testing and assessments; Publication of electronic books and journals on-line.

The contested services are the following:

Class 36: Insurance underwriting; Consumer insurance underwriting; Financial consultancy and insurance consultancy; Consumer financial consultancy and insurance consultancy; Insurance information; Consumer insurance information; Insurance brokerage; Private insurance brokerage; Consumer insurance brokerage; Provision of information relating to insurance and financial services; Provision to consumers of information relating to insurance and financial services; Financial and monetary services, and banking; Financing and funding services; Private financing and funding services; Consumer financing and funding services; Facilitating and arranging financing; Facilitating and arranging financing for consumers; Provision of finance for health care; Conducting of financial transactions; Financial brokerage services; Consumer financial brokerage services; Savings schemes relating to health care; Private savings schemes relating to health care; Consumer savings schemes relating to health care; Savings schemes relating to health insurance; Private savings schemes relating to health insurance; Consumer savings schemes relating to health insurance; Financial management services relating to medical institutions.

Class 43: Temporary accommodation; Arranging and providing temporary accommodation; Hotel services; Hotel accommodation services; Booking of hotel accommodation.

Class 44: Human healthcare services; Medical services; Opticians' services; Health centers; Medical and healthcare clinics; Sanatoriums; Outpatient and inpatient care services; Arranging of accommodation in sanatoria; Arranging of accommodation in convalescent homes; Health assessment surveys; Development of individual physical rehabilitation programmes; Professional consultancy relating to health care; Information services relating to health care; Human hygiene and beauty care; Spas.

An interpretation of the wording of the list of 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 (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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 services in Class 36

Financial consultancy is identically contained in both lists of services (including synonyms).

The contested consumer financial consultancy is included in the broad category of the opponent’s financial consultancy. Therefore, they are identical.

The contested provision of information relating to financial services, provision to consumers of information relating financial services, financial and monetary services and banking are included in the broad category of, or overlap with, the opponent’s financial consultancy. Therefore, they are identical.

The contested financing and funding services; private financing and funding services; consumer financing and funding services; facilitating and arranging financing; facilitating and arranging financing for consumers; provision of finance for health care overlap with, the opponent’s financial analysis and consultancy, as financial analysis and consultancy are a part of the process of obtaining funding. Therefore, these services are identical.

Likewise, the contested savings schemes relating to health care; private savings schemes relating to health care; consumer savings schemes relating to health care, financial management services relating to medical institutions overlap with the opponent’s financial consultancy, as the former usually also include some financial consultancy. Therefore, they are identical.

The contested conducting of financial transactions; financial brokerage services; consumer financial brokerage services are at least highly similar to the opponent’s clearing, financial. Those services are often offered to the same parties by the same providers, such as clearing brokers. Clearing brokers handle orders to buy and sell securities. Moreover, they help to make sure that trade exchanges are settled appropriately and that the transactions are successful. Once an order is executed, the clearing broker works with a clearing corporation to make sure all funds are handled and transferred properly. Therefore, the services under comparison have the same purpose and are complementary to each other.

The contested insurance underwriting; consumer insurance underwriting; insurance consultancy; consumer insurance consultancy, insurance information; consumer insurance information; insurance brokerage; private insurance brokerage; consumer insurance brokerage; provision of information relating to insurance, provision to consumers of information relating to insurance, savings schemes relating to health insurance; private savings schemes relating to health insurance; consumer savings schemes relating to health insurance are all different insurance services. Just like the opponent’s financial analysis, they are of a financial nature. Moreover, contrary to what the applicant claims, financial analysis is closely related to insurance. In fact financial analysts usually work in banks and insurance companies. Furthermore, most banks that carry out financial analysis also offer insurance services, including health insurance, or act as agents for insurance companies, with which they are often economically linked. Additionally, it is not unusual to see financial institutions and an insurance company in the same economic group. Therefore, the services under comparison are similar.

Contested services in Class 43 and 44

The contested services in Class 43 and 44 include different kinds of temporary accommodation and human healthcare and beauty services. On the other hand the opponent’s services in Classes 35, 36 and 41 include specialized services in the fields of business operations and consultancy, data processing, human resources management and recruitment services, advertising, book keeping but also financial services and educational and publishing services. Therefore, the services under comparison have a different purpose and nature as well as different distribution channels. It is apparent that they have different providers and target different publics. They are not in competition or complementary. Therefore, the services under comparison are dissimilar.

In its submissions the opponent claims that its services such as business consulting, advising the management of human resources or company management are ‘universal services’, therefore, in this case, the similarity to the contested services must be assumed. In this regard, it must be noted that the assessment of similarity of goods and services in opposition proceedings is never based on assumptions. Examining the similarity requires an analysis of all the relevant factors mentioned above. The services that the opponent finds similar to the contested services are aimed at supporting or helping other businesses to do or improve business. They are therefore in principle directed at the professional public. These services are provided by management consultants, human resources consultants or accountants. This is obviously not the case of the contested services in Class 43 and 44. These are mainly directed at the general public and are provided by different undertakings. Nobody would expect a business consultant to render accommodation services and even less healthcare services. Therefore, the above mentioned arguments of the opponent must be put aside.

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 to varying degrees are directed at the public at large and business customers with specific professional knowledge or expertise. Since such services are specialised services that may have important financial consequences for their users, consumers’ level of attention would be quite high when choosing them (03/02/2011, R 719/2010‑1, f@ir Credit (fig.) / FERCREDIT, § 15; 19/09/2012, T‑220/11, F@ir Credit, EU:T:2012:444, dismissed; 14/11/2013, C‑524/12 P, F@ir Credit, EU:C:2013:874, dismissed).

3. The signs

medipa	MEDIPE
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).

Neither of the marks, as a whole, has a meaning for the relevant public. Nevertheless, in its observations, the applicant claims that the relevant consumers will perceive the first letters of both signs, ‘MEDI’, as a descriptive prefix alluding to the medical sector. In its opinion, the attention of the public will be, therefore, put on the endings of the marks ‘PA’ and ‘PE’, respectively. The Opposition Division does not agree with the applicant’s arguments in this regard. Firstly, the public will not artificially dissect the element ‘MEDI’ in the contested trade mark; rather, it will perceive the mark as a whole. Most of the services in question are not related to medicine; therefore, there is no reason to believe that the public will make a medical association with this prefix. Moreover, in the view of the Opposition Division, even for the services that could be regarded as somehow relating to health (such as provision of finance for health care; savings schemes relating to health care; private savings schemes relating to health care; consumer savings schemes relating to health care; savings schemes relating to health insurance; private savings schemes relating to health insurance; consumer savings schemes relating to health insurance; financial management services relating to medical institutions), a possible allusion to medicine on part of the public will not materially affect the distinctiveness of the marks as a whole. The public will not recognise two independent parts within the marks and, consequently, it will not consider that one part is descriptive and should be disregarded in the comparison. The sings will be rather perceived as a whole as a fanciful term. Therefore, they must be considered distinctive.

Both trade marks are word marks. Therefore, it must be noted that the protection offered by the registration of word marks applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (judgment of 22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43). Consequently, it is irrelevant whether the word mark is depicted in lower or upper case letters.

Visually and aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the signs coincide in ‘MEDIP’. They differ in their last letters, ‘E’ and ‘A’, of the contested and earlier mark, respectively. It must be borne in mind that 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, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Therefore, the signs are visually and aurally highly similar.

Conceptually, neither of the signs has a meaning as a whole for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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

4. Distinctiveness of the earlier mark

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

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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 likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

In the present case, the services are partly identical, partly similar to varying degrees and partly dissimilar. The relevant public’s degree of attention is quite high. The signs are visually and aurally similar to a high degree. No conceptual comparison is possible so it does not influence the case.

In the present case, five letters of the earlier mark are included in the same positions in the contested mark. The only differing letter is placed at the end of the sign, where the attention of the relevant public will not be focused. It must be borne in mind that the average consumers normally perceive a mark as a whole and do not proceed to analyse its various details. It should also be noted that even the attentive consumers only rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of the signs (21/11/2013, T 443/12, ancotel, EU:T:2013:605, § 54). Consequently, small differences between the signs can easily be overlooked, especially when they are placed at the end of the signs and the signs do not convey any concept that could help the public to distinguish between them or to memorize small spelling differences. Therefore, in the view of the Opposition Division, in the present case, the signs are similar enough to result in a likelihood of confusion even for the part of the public that pays a higher than average degree of attention.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 15 370 539.

It follows from the above that the contested trade mark must be rejected for the services found to be identical or similar to those of the earlier trade mark.

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

The opponent has also based its opposition on the following earlier trade marks:

• European Union trade mark registration No 15 377 146 for the figurative mark

• German trade mark registration No 39 956 062 for the figurative mark

• German trade mark registration No 302 010 038 651 for the word mark ‘medipa’

The other earlier rights invoked by the opponent are either identical or less similar to the contested mark as they contain additional figurative or verbal elements that create more differences to the contested mark. Moreover, the services for which the earlier marks are registered are identical or narrower to the ones already examined. Even though, in case of the German trade mark No 39 956 062, the services in Class 35 are restricted to services that relate to organizational advise and creation of reckoning relating to health care professions, these services still remain of a business nature. Therefore, the reasoning given above in section a) of the decision equally applies to those services. Consequently, the outcome of the decision cannot be different with respect to services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Martin EBERL

Marta Maria CHYLIŃSKA

Aliki SPANDAGOU

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.