OPPOSITION No B 2 993 155

Medical Fomento Industrial, S.L., Calle La Paz, 27, 01004 Vitoria (Alava), Spain (opponent), represented by Maria Alicia Izquierdo Blanco, General Salazar, 10, 48012 Bilbao, Spain (professional representative)

a g a i n s t

Insoles & More sp. z o.o., ul. Wiśniowa 13, 32-765 Rzezawa, Poland (applicant), represented by Regionalna Agencja Patentowa, ul. W. Pola 12/112, 32-020 Wieliczka, Poland (professional representative).

On 12/12/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 993 155 is partially upheld, namely for the following contested goods and services:

Class 10: Templates for orthopedic purposes; Insole-shells [orthopaedic]; Insoles for corrective treatment of conditions of the feet; Shoe insoles for orthopedic use; Pads for slippers [orthopaedic]; Soft insoles [orthopaedic]; Supports for flat feet; Pads for shoes [orthopaedic]; Arch supports for footwear; Orthopaedic detachable insoles; Orthopaedic supports for heels; Orthopaedic supports for feet; Toe props [orthopaedic]; Heel pads for orthopaedic use.

Class 35: Retail or wholesale services for medical supplies; retail services in relation to medical apparatus; advertising, marketing and promotional services; advertising, marketing and promotional consultancy, advisory and assistance services; updating of advertising information on a computer data base; providing marketing information via websites; electronic publication of printed matter for advertising purposes; provision of information relating to marketing; trade marketing [other than selling]; internet marketing; product sampling; planning of marketing strategies; business assistance relating to business image; design of advertising materials; sales promotion; promoting the goods and services of others via computer and communication networks; preparation of publicity documents; publication of publicity materials on-line; advertising; electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes; advertising, including on-line advertising on a computer network; advertising services to create corporate and brand identity; advertising services relating to the sale of goods; advertising services relating to cosmetics; advertising services relating to the commercialization of new products; layout services for advertising purposes; brand creation services (advertising and promotion); product launch services.

2. European Union trade mark application No 16 687 402 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 16 687 402 ‘medo’.

The opposition is based on European Union trade mark registration No 3 596 921 , international trade mark registration No 456 563 ‘MEDOP’ designating, inter alia, Poland, and Spanish trade mark registration No 2 825 878 ‘MEDOP’.

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 3 596 921 and international trade mark registration No 456 563 designating Poland.

1. The goods and services

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

Earlier International trade mark:

Class 10: Surgical, medical, dental and veterinary instruments and apparatus (including artificial limbs, eyes and teeth).

Earlier EUTM:

Class 35: Retail in shops retail through electronic means or computing worldwide nets; import-export; representation commercial exclusive rights; advertising; sales promotion (for others); publicity on line on a computing net, especially of protection products and for prevention of labour risks.

The contested goods and services are the following:

Class 10: Templates for orthopedic purposes; Insole-shells [orthopaedic]; Insoles for corrective treatment of conditions of the feet; Shoe insoles for orthopedic use; Pads for slippers [orthopaedic]; Soft insoles [orthopaedic]; Supports for flat feet; Pads for shoes [orthopaedic]; Arch supports for footwear; Orthopaedic detachable insoles; Orthopaedic supports for heels; Orthopaedic supports for feet; Toe props [orthopaedic]; Heel pads for orthopaedic use.

Class 16: Printed packaging materials of paper; folios; colorboard [colored paperboard]; paper for making bags and sacks; imitation leather paper; bags made of paper for packaging; filler paper; blister packs for packaging; adhesive plastic film for wrapping; plastic film for packaging; packing cardboard; paper cartons for delivering goods; paper envelopes for packaging; packaging materials; packaging materials made of cardboard; cardboard packaging; paper pouches for packaging; containers of paper for packaging purposes; boxes of paper or cardboard; cardboard boxes; carrier bags; plastic shopping bags; bags made of plastics for packaging; bags [envelopes, pouches] of paper or plastics, for packaging.

Class 35: Retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies; retail services in relation to footwear; retail services in relation to cleaning preparations; retail services in relation to beauty implements for humans; retail services in relation to hygienic implements for humans; wholesale services in relation to footwear; wholesale services in relation to cleaning preparations; wholesale services in relation to beauty implements for humans; retail store services in the field of clothing; retail services in relation to medical apparatus; wholesale services in relation to fragrancing preparations; mail order retail services for cosmetics; advertising, marketing and promotional services; advertising, marketing and promotional consultancy, advisory and assistance services; updating of advertising information on a computer data base; providing marketing information via websites; electronic publication of printed matter for advertising purposes; provision of information relating to marketing; trade marketing [other than selling]; internet marketing; product sampling; planning of marketing strategies; business assistance relating to business image; design of advertising materials; sales promotion; promoting the goods and services of others via computer and communication networks; preparation of publicity documents; publication of publicity materials on-line; advertising; electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes; advertising, including on-line advertising on a computer network; advertising services to create corporate and brand identity; advertising services relating to the sale of goods; advertising services relating to cosmetics; advertising services relating to the commercialization of new products; layout services for advertising purposes; brand creation services (advertising and promotion); product launch services.

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 10

All the contested goods, as listed above, are orthopaedic articles to treat various conditions and deformities of the foot. As such, these goods can be complementary with the opponent’s medical instruments and apparatus (including artificial limbs) (protected by its earlier International trade mark), and these goods can also coincide in their customers and manufacturers. Therefore, they are similar to a low degree.

Contested goods in Class 16

All the contested goods, as listed above, are paper products essentially for packaging purposes. These goods have nothing in common with the opponent’s goods or services which include medical instruments and advertising, import-export and general retail services. These goods and services in comparison do not usually have the same manufacturers/providers, customers and distribution channels. Furthermore, they are neither complementary nor in competition. Therefore, all the contested goods in this Class are dissimilar to the opponent’s goods and services.

Contested services in Class 35

The contested advertising, marketing and promotional services; advertising, marketing and promotional consultancy, advisory and assistance services; updating of advertising information on a computer data base; providing marketing information via websites; electronic publication of printed matter for advertising purposes; provision of information relating to marketing; trade marketing [other than selling]; internet marketing; product sampling; planning of marketing strategies; business assistance relating to business image; design of advertising materials; sales promotion; promoting the goods and services of others via computer and communication networks; preparation of publicity documents; publication of publicity materials on-line; advertising; electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes; advertising, including on-line advertising on a computer network; advertising services to create corporate and brand identity; advertising services relating to the sale of goods; advertising services relating to cosmetics; advertising services relating to the commercialization of new products; layout services for advertising purposes; brand creation services (advertising and promotion); product launch services all have the purpose of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Therefore, they must be considered identical with the opponent’s broad category of advertising (protected by its earlier EUTM), because either they are identically listed in both lists of services or they are included in, or overlap with, these services of the opponent.

With regard to the contested retail services in relation to medical apparatus and retail or wholesale services for medical supplies, it must be noted that retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public. Having the above in mind, the contested retail services in relation to medical apparatus and retail or wholesale services for medical supplies are similar to a low degree to the opponent’s medical instruments and apparatus (including artificial limbs, eyes and teeth) (protected by its earlier International trade mark).

However, the same relation cannot be established with regard to the remaining contested services, namely retail or wholesale services for pharmaceutical, veterinary and sanitary preparations; retail services in relation to footwear; retail services in relation to cleaning preparations; retail services in relation to beauty implements for humans; retail services in relation to hygienic implements for humans; wholesale services in relation to footwear; wholesale services in relation to cleaning preparations; wholesale services in relation to beauty implements for humans; retail store services in the field of clothing; wholesale services in relation to fragrancing preparations; mail order retail services for cosmetics. The goods concerned by these retail or wholesale services cannot be considered to be identical to any of the opponent’s goods, therefore these contested services are dissimilar to the opponent’s goods. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods, and goods and services also have different methods of use and are neither in competition nor complementary with each other.

Furthermore, with regard to these contested services and the opponent’s retail in shops retail through electronic means or computing worldwide nets, the vagueness of these services of the opponent makes it impossible to find relation with any of the above contested services since the purpose, qualities and methods of use have not been expressly identified in the specification. In the absence of an express limitation clarifying the term, the natural meaning of the opponent’s retail in shops retail through electronic means or computing worldwide nets cannot be sufficiently identified, and they must, therefore, be considered to be dissimilar to these contested retail and wholesale services of specific goods. For the sake of completeness, it is noted that these contested services have no point of contact with the remaining services of the opponent, namely import-export; representation commercial exclusive rights; advertising; sales promotion (for others) and publicity on line on a computing net, especially of protection products and for prevention of labour risks because they do not coincide in their providers and are offered via different distribution channels. Moreover, they have different nature and purpose and are not complementary or in competition. Therefore, these contested services are considered to be dissimilar to all of the opponent’s services, too.

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 goods and services found to be identical or similar to a low degree are directed both at the public at large and business customers with specific professional knowledge or expertise.

The degree of attention is considered to be higher than average since the relevant goods and services include medical goods in Class 10 and retail and wholesale of such goods in Class 35 and these may affect one’s health while the remaining, advertising-related, services in Class 35 involve purchasing decisions that can have an impact on the efficiency and public image of an undertaking.

3. The signs

International trade mark No 456 563 MEDOP EUTM No 3 596 921	medo
Earlier trade marks	Contested sign

The relevant territory is the European Union as well as Poland.

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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The earlier international trade mark is protected, inter alia, in Poland while the other earlier mark is protected throughout the European Union. The Opposition Division finds it appropriate to focus the comparison on one of the countries where both marks are protected, namely on Poland, in particular since none of the verbal elements in the signs have any meaning in Polish.

The contested mark consists of the verbal element ‘medo’ which is meaningless and has average distinctiveness since it does not describe or relate to the relevant goods and services.

Both earlier marks 1) and 2) contain the meaningless verbal element ‘MEDOP’, therefore, this element has average distinctiveness in the absence of any correlation with the goods and services concerned. In addition, earlier mark 2) contains a figurative element consisting of a combination of two elements: one resembling a letter ‘M’ and another one, placed inside it, resembling a stylized depiction of an eye. The letter ‘M’ is likely to be perceived as repetition of the initial letter of the sign’s verbal element while the image of an eye is not related to any of the relevant services, therefore, it has average distinctiveness. Furthermore, earlier mark 2) is visually dominated by the combination of these two figurative elements given their size and central position.

Visually and aurally, the signs coincide in the letter sequence ‘medo-’ which is the whole of the contested sign. They differ in the additional ‘p’ at the end of both earlier marks as well as in the figurative elements and slightly stylised font in earlier mark 2). It follows that earlier mark 1) only differs in one letter, at its end, which makes this mark highly similar to the contested sign. With regard to earlier mark 2), it must be noted that, although its figurative elements are visually eye-catching, verbal components usually have a stronger impact on the consumer than figurative ones since 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). It is, thus, likely that consumers will recall and refer to the signs by their, near-identical, verbal elements. Therefore, earlier mark 2) and the contested sign must be considered to be similar to an average degree visually and to a high degree aurally.

Conceptually, neither earlier mark 1) nor the contested sign has a meaning, therefore, the conceptual aspect does not influence the assessment of the similarity of these signs. With regard to earlier mark 2), the public perceives a depiction of a human eye in it while the contested sign is meaningless. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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 marks

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 marks are particularly distinctive by virtue of intensive use or reputation.

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

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C 251/95, Sabèl, EU:C:1997:528, § 22).

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.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

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, some of the goods and services are identical or similar to a low degree. The contested sign is aurally and visually highly similar to earlier mark 1) in comparison with which the conceptual aspect plays no role. The contested sign is also similar to earlier mark 2) visually to an average degree and aurally to a high degree while it is conceptually not similar to this earlier mark. The similarities of the signs derive from the fact that the whole of the contested sign is included in the (verbal parts) of the earlier marks, and the different fonts and figurative elements of earlier mark 2) cannot offset this coincidence, for the reasons explained above. Furthermore, the near-identical verbal elements of the signs in conflict are distinctive.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Polish public, and the opposition is, therefore, well founded on the basis of the opponent’s international trade mark and European Union trade mark invoked. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar, including those similar to a low degree, to those of the earlier trade marks, even considering that the relevant public may exercise a higher degree of attention, due to the significant similarities between the signs.

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

The opponent has also based its opposition on Spanish trade mark registration No 2 825 87 ‘MEDOP’, covering instruments and apparatus of artificial breathing and first aid, hinchable bandages, audiometers, being all those surgical, medical and dental instruments and apparatus in Class 10, and on other designations of its international trade mark registration, namely Austria, Benelux, Czech Republic, France, Germany, Hungary, Italy, Portugal, Romania and United Kingdom, of the international registration examined above.

Since these marks cover the same or a narrower scope of goods as the opponent’s international trade mark registration designating Poland, the outcome cannot be different with respect to the goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.

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 goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Zuzanna STOJKOWICZ

Ferenc GAZDA

Biruté SATAITE-GONZÁLEZ

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.