OPPOSITION No B 2 911 447

Clínica La Luz, S.L., C/ General Rodrigo 8, 28003 Madrid, Spain (opponent), represented by Abril Abogados, C/Amador de los Ríos 1-1°, 28010 Madrid, Spain (professional representative)

a g a i n s t

Luz Saúde S.A., Rua Carlos Alberto da Mota Pinto 17, 9º, 1070 Lisboa, Portugal (applicant), represented by Gonçalo De Magalhães Moreira Rato, Rua D. Francisco Manuel de Melo 21, 1070-085 Lisboa, Portugal (professional representative).

On 21/09/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 911 447 is partially upheld, namely for the following contested services:

Class 42: Scientific analysis; scientific research for medical purposes; consultancy in the fields of biotechnology, pharmaceutical research and development, laboratory testing and pharmacogenetics; research, testing and analysis.

Class 44: Medical assistance; therapeutic assistance and medical care; medical consultancy; health counselling; medical, medicinal and therapeutic consultancy; hospitals; medical and health clinics; medical analysis services relating to the treatment of human beings, by means of a medical laboratory; medical clinic services; medical services; medical care; medical care and analysis services relating to patient treatment; medical and surgical diagnosis; medical diagnostic services; medical examinations; medical testing services relating to the diagnosis and treatment of disease; telemedicine services; medical treatment services provided by clinics and hospitals.

2. European Union trade mark application No 16 433 823 is rejected for all the above services. It may proceed for the remaining services.

3. Each party bears its own costs.

PRELIMINARY REMARK

The applicant questions the admissibility of the opposition on the basis that the opponent does not have any earlier European Union trade mark. The Opposition Division observes that according to Article 8(1) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered. Article 8(2) EUTMR states that not only EU trade marks can be claimed as earlier trade marks but also trade marks registered in a Member States and trade marks registered under international arrangements having effect in a Member States or in the European Union.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 16 433 823 . The opposition is based on, inter alia, Spanish trade mark registration No 2 490 337 and on Spanish trade name No 265 422 ‘CLINICA LA LUZ, S.L.’ The opponent invoked Article 8(1)(b) and 8(4) EUTMR.

PROOF OF USE

In accordance with 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 filing or, where applicable, the date of priority 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 has not submitted the request for proof of use by way of a separate document as required by Article 10(1) EUTMDR.

Therefore, the request for proof of use is inadmissible pursuant to Article 10(1) EUTMDR.

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 Spanish trade mark registration No 2 490 337.

1. The services

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

Class 42: Medical services, in particular services of a medical-surgical hospital.

The contested services are the following:

Class 41: Consultancy in the field of providing of training, further training and education; education, teaching and training; organisation of congresses and conferences for cultural and educational purposes; arranging and conducting of conferences, conventions, exhibitions, courses, dissertations, seminars and training workshops; arranging and conducting of conferences and congresses; publication of books, periodical publications, magazines, periodicals and newsletters.

Class 42: Scientific analysis; electronic data storage; updating of computer software; design of diagnostic apparatus and equipment; design of computer hardware, software and peripherals; design and analysis of computer systems; design, development and programming of computer software; design and development of electronic databases; design and development of computer software for reading, transmitting and organising data; scientific and technical analysis consultancy; installation, maintenance and updating of database software; scientific research for medical purposes; consultancy in the fields of biotechnology, pharmaceutical research and development, laboratory testing and pharmacogenetics; research, testing and analysis.

Class 44: Medical assistance; therapeutic assistance and medical care; medical consultancy; health counselling; medical, medicinal and therapeutic consultancy; hospitals; medical and health clinics; medical analysis services relating to the treatment of human beings, by means of a medical laboratory; medical clinic services; medical services; medical care; medical care and analysis services relating to patient treatment; medical and surgical diagnosis; medical diagnostic services; medical examinations; medical testing services relating to the diagnosis and treatment of disease; telemedicine services; medical treatment services provided by clinics and hospitals.

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

The term ‘in particular’, 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 41

The contested services in Class 41 are educational services, organisation of conferences, trainings and exhibitions, consultancy in the educational field and publication services that are rendered by persons or institutions in the development of the mental faculties of persons and by publishing companies. They are dissimilar to the opponent’s medical services, the purpose of which is to provide care both for human beings and animals. Therefore, the services in question have a different nature and a different purpose. They are neither complementary nor in competition and, finally, they are not provided through the same undertaking and they are addressed to a different public.

Contested services in Class 42

The contested scientific research for medical purposes; consultancy in the fields of biotechnology, pharmaceutical research and development, laboratory testing and pharmacogenetics and the contested scientific analysis; research, testing and analysis that can also be provided for medical purposes are similar to the earlier medical services, in particular services of a medical-surgical hospital because they are complementary, they coincide in distribution channels, in end user and in provider.

The contested electronic data storage; updating of computer software; design of diagnostic apparatus and equipment; design of computer hardware, software and peripherals; design and analysis of computer systems; design, development and programming of computer software; design and development of electronic databases; design and development of computer software for reading, transmitting and organising data; scientific and technical analysis consultancy; installation, maintenance and updating of database software are mainly IT services and design services. They are dissimilar to the earlier medical services, in particular services of a medical-surgical hospital because they have nothing in common. They are of a different nature, they have a different purpose and they do not follow the same method of use. Furthermore, they are neither complementary nor in competition. They do not share the same distribution channels and they do not target the same end user. Finally, they are provided by different companies.

Contested services in Class 44

Medical services are identically contained in both lists of services.

The contested medical assistance; therapeutic assistance and medical care; medical consultancy; health counselling; medical, medicinal and therapeutic consultancy; hospitals; medical and health clinics; medical analysis services relating to the treatment of human beings, by means of a medical laboratory; medical clinic services; medical care; medical care and analysis services relating to patient treatment; medical and surgical diagnosis; medical diagnostic services; medical examinations; medical testing services relating to the diagnosis and treatment of disease; telemedicine services; medical treatment services provided by clinics and hospitals are included in the broad category of the earlier medical services, in particular services of a medical-surgical hospital. 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 business customers with specific professional knowledge or expertise.

The degree of attention is considered to be high since the services in question affect the state of health.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Spain.

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

The words ‘CLÍNICA’ of the earlier mark and ‘HOSPITAL’ of the contested sign will be understood by the relevant public as ‘clinic’ and ‘hospital’, respectively. Bearing in mind that the relevant services are related to medical activities, these elements are non-distinctive.

Furthermore, the Opposition Division considers that even if average consumers normally perceives a mark as a whole and does not proceed to analyse its various details, they will break the earlier mark down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T-256/04 ‘Respicur’, EU:T:2007:46, § 57). In the present case, the average consumer will clearly perceive in the element 'LALUZ' of the earlier mark the definite article ‘LA’ and the noun ‘LUZ’ in the earlier mark.

Consequently, ‘LUZ’, which is present in both signs and will be understood as ‘light’ by the public in the relevant territory is distinctive since it has no meaning in relation to the services in question contrary to the argument of the applicant.

The figurative elements on the right side of the earlier mark might be perceived by a part of the public as the representation of the letters ‘C’ and ‘L’, the initials standing for ‘CLÍNICA’ and ‘LUZ’. However, due to the level of stylization of these elements and since the public does not proceed to analyse the various details of a sign, it is rather more likely that the public will not pay attention to this element taking further into account 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 element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

Given that ‘DA’ in the contested sign is a basic Portuguese word and that it is also used in north-western Spain, namely in Galician Language, one of the co-official languages in Spain, the public in the relevant territory will most understand it as the Portuguese equivalent for the Spanish form ‘DE LA’ which means 'of (the)'. In any event, the impact of this element and of the definite article ‘LA’ in the earlier mark on consumers is minimal since they are only introducing or referring to the word that follows.

Should the public grasp the meanings of the English words ‘LEARNING HEALTH’ and of ‘TRAINING, RESEARCH & INNOVATION CENTER’ in the contested sign, these elements would be non-distinctive or at least allusive (‘aprendiendo salud’ and ‘formación, investigación & centro de inovación). In such a case, ‘DA LUZ’ would be the only distinctive element within the sign. Should the public not perceive any meaning in these English words, these are distinctive. Nevertheless, in view of its closeness to the Spanish expression 'LA LUZ' and given that it follows the non-distinctive word 'HOSPITAL', Spanish consumers will intuitively turn to the distinctive element ‘DA LUZ’, and perceive it as the name of the hospital in question. Indeed, according to Spanish grammar rules, the word ‘HOSPITAL’, that is identical in Spanish, is normally followed by the name given to that institution.

Therefore, regardless of whether the public will understand the words in English within the sign and the more or less prominent size of the different elements, ‘DA LUZ’ will be perceived as designating the commercial origin of the services in question. For this reason, and also because consumers do not tend to pronounce each and every single word of a complex sign, the Opposition Division considers that the additional words in English will not even be pronounced, contrary to the opinion of the applicant.

Furthermore, the symbol of the cross at the beginning of the contested sign is very often used by medical establishments and professionals to easily be identified. Consequently, contrary to the argument of the applicant, this symbol is not distinctive given that is immediately recognized by the public and associated to health care.

Visually, the signs coincide in ‘LUZ’ that is the element that will be perceived as designating the commercial origin of the services. However, they differ in the words ‘CLÍNICA’ of the earlier mark and ‘HOSPITAL’ of the contested sign which are devoid of distinctive character and in the letters ‘L-A’ in the earlier mark and ‘D-A’ in the contested sign. The signs further differ in the additional English words and in the symbol of the cross of the contested sign which have, however, a minor impact on consumers for the reasons given above. The signs also differ in the figurative elements on the right side of the earlier mark and in the blue colour, neither of which have counterparts in the contested sign.

Therefore, given that the differentiating elements will not be perceived as designating the commercial origin of the services in question and/or have a minor impact on consumers, the signs are visually similar to an average degree.

Aurally, taking into consideration that the differentiating words ‘CLINICA’ and ‘HOSPITAL’ are descriptive, the pronunciation of the signs coincides in the sound of the letters ‛A-L-U-Z’ and differs in the sound of the letters ‘L’ and ‘D’ of the element 'LALUZ' in the earlier mark and 'DA LUZ' in the contested sign. Indeed, for the reasons already outlined above, the Opposition Division considers that the remaining words in English of the contested sign will not be pronounced by the Spanish public.

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the concept of ‘light’ will be perceived in both signs, the signs are conceptually highly similar. The concepts of the word ‘CLÍNICA’ in the earlier mark and of the word ‘HOSPITAL’, of the cross and of the additional words in English that might be grasped by a part of the public in the contested sign cannot serve to distinguish the signs conceptually, since they will not be perceived as an indication of origin, but as a mere reference to the services in question.

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

5. Global assessment, other arguments and conclusion

According to settled case-law, the likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C-39/97, Canon, EU:C:1998:442, §16).

According to the same line of case-law, 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). Moreover, for the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind. 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 present case, the services are partly identical, partly similar and partly dissimilar. The signs are visually similar to an average degree and aurally and conceptually highly similar on account of the coincidence in ‘LUZ’ which consumers will perceive as designating the commercial origin of the services in both signs. The rest of the differentiating elements are either descriptive or will not cause much of an impact on the public for the reasons already outlined above.

Consequently, although the coincidences in the signs are less obvious than the differences, a likelihood of confusion still exists, as the coinciding ‘LUZ’ will be perceived by the public as designating the commercial origin of the services in both signs.

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 or services covered are from the same or economically linked undertakings.

In its observations, the applicant argues that it owns several registrations with the word ‘LUZ’ in the European Union and in Portugal, which coexist with the opponent’s earlier mark.

According to case-law, the possibility cannot be entirely dismissed that, in certain cases, the coexistence of earlier marks on the market could reduce the likelihood of confusion which the Opposition Division and the Board of Appeal find exists between two conflicting marks. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds of refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard it should be noted that formal coexistence on national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) on a national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

Therefore, in the absence of convincing arguments and evidence thereof, this argument of the applicant must be rejected as unfounded.

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 Spanish trade mark registration.

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 earlier Spanish trade mark No 1 070 909 for services of a medical-surgical hospital in Class 42 and on earlier Spanish trade mark No 3 603 437 for medical services; medical treatment services provided by clinics and hospitals in Class 44.

Since these marks cover the same scope of services, namely medical services, the outcome cannot be different with respect to services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those services.

Consequently, the comparison of the signs will continue in relation to Article 8(4) for the services found to be dissimilar.

NON‑REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE — ARTICLE 8(4) EUTMR

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non‑registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

• the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

• pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

• the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non‑registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

1. Prior use in the course of trade of more than mere local significance

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights. Furthermore, such use must indicate that the sign in question is of more than mere local significance.

It must be recalled that the object of the condition laid down in Article 8(4) EUTMR relating to use in the course of trade of a sign of more than mere local significance is to limit conflicts between signs by precluding an earlier right that is not sufficiently definite — that is to say, important and significant in the course of trade — from preventing registration of a new European Union trade mark. A right of opposition of that kind must be reserved for signs with a real and actual presence on their relevant market. To be capable of preventing registration of a new sign, the sign relied on in opposition must actually be used in a sufficiently significant manner in the course of trade, and its geographical extent must not be merely local, which implies, where the territory in which that sign is protected may be regarded as other than local, that the sign must be used in a substantial part of that territory. In order to ascertain whether that is the case, account must be taken of the duration and intensity of the use of the sign as a distinctive element for its addressees, namely purchasers and consumers as well as suppliers and competitors. In that regard, the use made of the sign in advertising and commercial correspondence is of particular relevance. In addition, the condition relating to use in the course of trade must be assessed separately for each of the territories in which the right relied on in support of the opposition is protected. Finally, use of the sign in the course of trade must be shown to have occurred before the date of the application for registration of the European Union trade mark (29/03/2011, C‑96/09 P, Bud, EU:C:2011:189, § 157, 159-160, 163, 166).

In the present case, the contested trade mark was filed on 06/03/2017. Therefore, the opponent was required to prove that the trade name No 265 422 for ‘CLÍNICA LA LUZ’ on which the opposition is based was used in the course of trade of more than local significance in Spain prior to that date. The evidence must also show that the opponent’s sign has been used in the course of trade for hotel services, medical services and hospitalization care of patients in all branches of medicine and health care; services of medical and surgical hospital.

On 12/01/2018 and on 15/01/2018 the opponent filed the following evidence:

• Annex 1: Registration certificate of the trade name No 265 422 for ‘CLÍNICA LA LUZ’ and the corresponding translation into English.

• Annex 2: An extract from the National trade mark law 17/2001 of December 7, 2001 in Spanish together with the English translation.

Article 8 of the National trade mark law states the following:

Known and Famous Registered Trademarks and Trade Names

8.—(1) A sign which is identical or similar to a prior trademark or trade name may not be registered as a trademark, even though its registration is requested for goods or services not similar to those protected by said prior signs, where, since the latter are known or famous in Spain, the use of such a trademark might indicate a connection between the goods or services covered by it and the owner of said prior signs or, in general, where that use, made without just cause, might constitute improper exploitation of, or detract from, the distinctive character, notoriety or fame of said prior signs.

(2) For the purposes of this Law, “known trademark or trade name” means one which, owing to its sales volume, the duration, intensity or geographical scope of its use, its value or prestige achieved in the market or for any other reason, is generally known in the relevant public sector for which the goods, services or activities distinguishing said trademark or trade name are intended. Where all the requirements provided for in Article 1 are satisfied, the protection granted in paragraph (1) shall cover goods, services or activities as much more different in nature as the extent of knowledge of the known trademark or trade name is greater in the relevant sector of the public or in other related sectors.

(3) Where the trademark or trade name are known to the public in general, it shall be considered that they are famous and the scope of the protection shall extend to any type of goods, services or activities.

• Annex 3: Five invoices in Spanish from different national providers to the ‘CLINICA LA LUZ’. These documents are not dated or the date that might appear on the stamps is illegible. The goods described in the invoices have not been translated into the language of proceeding.

• Annex 4: Four invoices in Spanish issued by ‘CLINICA LA LUZ’ and corresponding to June and July 2016. The nature of services provided has not been translated into the language of proceeding.

• Annex 5: Several promotional brochures in Spanish not dated, showing the following signs or : ‘Unidad de Tráfico’, ‘Centro Integral de Obesidad y Sobrepeso’, ‘Diálogos de la actualización interdisciplinar sobre el tratamiento del cáncer’, ‘V Open de golf de Madrid de centros sanitarios’, ‘Clínica la Luz, la mejor opción en caso de accidente de tráfico’, ‘Unidad de la mujer’, ‘Unidad de trastornos mentales de infancia, adolescencia y adulto joven’ (the same brochure in Portuguese), ‘App de portal de paciente de Quirón salud’, ‘Chequeos médicos’.

• Annex 6: Two newspapers in Chinese showing some pictures of a hospital without any reference to the ‘Clínica la Luz’ except for an incomplete address at the bottom of the second page. Two other advertisements in Spanish published in the ‘ABOGADOS’ magazine from February 2013 and September-October 2013 for . The invoice corresponding to the 2013 campaign in the ‘ABOGADOS’ magazine is also attached.

• Annex 7: press clips dated between years 1985 and 2016 in several Spanish newspapers:

• Articles published in ‘20 minutos’, ‘Canaria 7’, ‘Europa Press’ in January 2016 in which, according to the translation provided, ‘Anorexia and bulimia take from 6 months to 1 year to be detected’.

• Article published in ‘La razón a tu salud’ not dated in which the translation provided states ‘Assistance to patients from Muface, Isfas and Mugeju’.

• Article published in ‘El Mundo’ in January 2016 in which, according to the translation provided ‘The count of Salvatierra will be operated by Dr. Enrique Moreno next Wednesday 27 at the Clinica de la Luz of Madrid’.

• Article published in ‘Libertad Digital’ in January 2016 in which, according to the translation provided ‘Cayetano Martínez de Irujo will be operated for the third time due to his problems intestinals’.

• Article published in ‘Diario Médico’ in January 2016 in which, the translation provided states ‘Dr Jose Felix Solano, rheumatologist of Clínica la Luz’.

• Several articles published in ‘La Vanguardia’ between April 1985 and December 2010 in which, according to the translations provided a few Spanish famous people were operated.

• Annexes 8 to 12: Copies of several corporate magazines of the ‘Clínica la Luz’ in Spanish dated between 2013 and 2015. Only a couple of titles have been translated into English.

• Annex 13: Extract from the opponent’s website in Spanish, not dated, with the name of several insurance companies.

• Annex 14: Brochure in Spanish not dated of the ‘Clínica la Luz’ detailing the different services provided.

First of all, there is no indication at all in the evidence that the sign in question has been used in the course of trade for hotel services.

Then, while the evidence suggests that the sign in question has been used in relation to medical services, it does not meet the minimum threshold of ‘more than local significance’ set out in Article 8(4) EUTMR.

Indeed, a trade sign is of more than mere local significance in the relevant territory when its impact is not confined to a small part of that territory, as is generally the case with a town or a province (24/03/2009, T-318/06 - T-321/06, General Optica, EU:T:2009:77, § 41). The sign must be used in a substantial part of the territory of protection (29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 159).

Whether or not a trade sign is of more than mere local significance may be established by demonstrating the existence of a network of economically active branches throughout the relevant territory, but also more simply, for example, by producing invoices issued outside the region in which the proprietor has its principal place of business, press cuttings showing the degree of recognition on the part of the public of the sign relied on or by establishing that there are references to the business establishment in travel guides (24/03/2009, T-318/06 - T-321/06, General Optica, EU:T:2009:77, § 43).

In the present case, the evidence submitted does not provide any indication about the economic dimension of the ‘CLÍNICA LA LUZ’ sign’s significance in relation to the services concerned as listed above, about the degree to which it has been used in relation to the same, of the group of addressees among which the sign has become known as a distinctive element, or even about the exposure given to the sign, for example, through advertising (24/03/2009, T-318/06 to T-321/06, General Optica, EU:T:2009:77, § 36-37; 30/09/2010, T-534/08, Granuflex, EU:T:2010:417, § 19).

Moreover, it must be clear from the evidence that the use continues on the date of the filing of the opposition. In this context, Article 7(2)(d) EUTMDR expressly states that if an opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opponent shall provide evidence of its acquisition, continued existence and scope of protection of that right.

In the present case, the most recent translated evidence is dated January 2016 which is one year and a half before the filing of the opposition. There is no further evidence of the existence of the earlier right on the date of filing of the opposition. Failure to prove the existence, validity and scope of protection of the earlier mark or right within the period given by the Office for presenting or completing facts, evidence or arguments in support of the opposition will lead to the opposition being rejected as unfounded.

Last but not least, the contested services that were found to be dissimilar to the opponent’s medical services, in particular services of a medical-surgical hospital under Article 8(1)(b) EUTMR namely:

Class 41: Consultancy in the field of providing of training, further training and education; education, teaching and training; organisation of congresses and conferences for cultural and educational purposes; arranging and conducting of conferences, conventions, exhibitions, courses, dissertations, seminars and training workshops; arranging and conducting of conferences and congresses; publication of books, periodical publications, magazines, periodicals and newsletters

Class 42: Electronic data storage; updating of computer software; design of diagnostic apparatus and equipment; design of computer hardware, software and peripherals; design and analysis of computer systems; design, development and programming of computer software; design and development of electronic databases; design and development of computer software for reading, transmitting and organising data; scientific and technical analysis consultancy; installation, maintenance and updating of database software

are, for the same reasons, also dissimilar to medical services and hospitalization care of patients in all branches of medicine and health care; services of medical and surgical hospital claimed by the opponent to have been used in the course of trade.

According to Article 8(1) of the National Trade Mark law given above, a sign which is identical or similar to a prior trademark or trade name may not be registered as a trademark, even though its registration is requested for goods or services not similar to those protected by said prior signs, where, since the latter are known or famous in Spain. Therefore, the dissimilarity between goods and/or services can only be overcome where the earlier trade name in question has acquired a reputation amongst the relevant public and where such a reputation has been proven within the period given by the Office for presenting or completing facts, evidence or arguments in support of the opposition.

In the present case, the scarce documentation provided emanating from third parties to demonstrate that the earlier trade name enjoys reputation not only does not prove use in the course of trade of more than mere local significance, but also does not, a fortiori, suffice to prove reputation. As a result, the evidence submitted does not show that the earlier sign is known by a significant part of the public in Spain and the dissimilarity between the services mentioned above cannot be overcome.

Considering all the above, the opponent has failed to prove prior use in the course of trade of more than mere local significance in Spain of the sign ‘CLINICA LA LUZ’ for the services listed above. Therefore, the opposition is not successful on the grounds of Article 8(4) EUTMR either and the opposition must 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. 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

Benoit VLEMINCQ

Sandra IBAÑEZ

Martina GALLE

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.