OPPOSITION No B 3 077 962

Vogul, S.L., Avenida Fiter i Rossell, 4 bis- Ed. Centre de Negocis B1, Escaldes-Engordany, Andorra (opponent), represented by Sugrañes Patentes y Marcas, Calle de Provenza, 304, 08008 Barcelona, Spain (professional representative)

a g a i n s t

Shanghai MicroPort Orthopedics Co. Ltd, Room 226, Building #2, 501, Newton Road, Pilot Free Trade Zone, Shanghai, People’s Republic of China (applicant), represented by Mittler & C. S.R.L., Viale Lombardia, 20, 20131 Milano, Italy (professional representative)

On 31/01/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 077 962 is upheld for all the contested goods.

2. European Union trade mark application No 18 006 123 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 18 006 123 for the word mark ‘Archimedes’, namely against all the goods in Class 10. The opposition is based on, inter alia, Spanish trade mark registration No 3 021 370 for the figurative mark . 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 Spanish trade mark registration No 3 021 370.

a) The goods and services

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

Class 10: Implants (prostheses) used for dentistry.

Class 40: Custom manufacturing of dental prostheses.

The contested goods are the following:

Class 10: Bone implants composed of artificial materials; artificial bones; artificial joints; bone substitutes for surgical use; implanted prosthesis; substitutes for bones; substitutes for cartilage; substitutes for ligaments; surgical implants comprised of artificial materials; artificial bones for implantation.

The contested bone implants composed of artificial materials; artificial bones; artificial joints; bone substitutes for surgical use; implanted prosthesis; substitutes for bones; substitutes for cartilage; substitutes for ligaments; surgical implants comprised of artificial materials; artificial bones for implantation are either identical because they overlap with or are included in the opponent’s broader category (i.e. bone implants composed of artificial materials) or at least similar (i.e. implanted prosthesis). These goods are all addressed to the same public (professionals in the medical field and in dentistry) and coincide in the producers and the distribution channels.

b) Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical and similar are directed at business customers with specific professional knowledge or expertise in the dentistry field. The degree of attention will be relatively high, bearing in mind the specialized nature of the goods concerned and the impact they may have on human health.

c) The signs

	Archimedes
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 contested sign consists of the single word ‘Archimedes’ which is also reproduced in the earlier mark in a stylised manner, namely in big grey standard characters, the sequence ‘med’ in its mid appearing in bold black characters. ‘Archimedes’ is likely to be understood as a foreign equivalent of ‘Arquímedes’ which is the Spanish transliteration of the name of the Greek mathematician, physicist, engineer, inventor, and astronomer. Whether or not associated with this scientist, ‘Archimedes’ has no meaning in relation with the respective goods and therefore, it is distinctive to a normal degree.

In the earlier mark, ‘Archimedes’ is followed by the word ‘PRO’ represented in rather small bold black characters. Regarding the latter element, it should be noted that it will be understood by the relevant public as the abbreviation for the Spanish word 'profesional' (professional, in English), therefore as an indication that the goods at issue target professionals, are developed by professionals or are of such quality or having such characteristics as to be suitable for professional use. In addition, according to the case-law, the word 'PRO' may be laudatory, the purpose of this being to highlight the positive qualities of the goods for the presentation of which that element is used (25/04/2013, T-145/12, Eco Pro, EU:T:2013:220, § 27 and the case-law cited). In view of the foregoing, 'PRO' in the earlier mark sign is non-distinctive. In addition, given its reduced size and its place in the sign, this element clearly occupies a secondary position whereas the element ‘archimedes’ is the more eye-catching, i.e. the dominant element of the sign in which, in addition, the letter sequence ‘med’ stands out allowing the relevant public to also immediately perceive the connection of the goods with the medical field. As a consequence, perceived separately, ‘med’ is also non-distinctive of the relevant goods.

As the signs coincide in the distinctive ‘Archimedes’ but differ in the remaining word and figurative elements of the earlier mark and taking into account that given its non-distinctive and secondary position in the sign, ‘PRO’ in the earlier mark is unlikely to even be pronounced (see 03/07/2013, T-206/12, LIBERTE american blend, EU:T:2013:342, § 43-44), and that neither this element nor ‘MED’ in the earlier mark can indicate the commercial origin of the relevant goods, the signs are visually similar to a high degree and aurally and conceptually identical, insofar as ‘Archimedes’ is associated with the above concept.

d) Distinctiveness of the earlier mark

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

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

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some non‑distinctive elements in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

In the present case, the goods are identical and target professionals for which the attentiveness is relatively high. The signs have been found to be visually similar a high degree, aurally identical and, when the common element is associated with a concept, also conceptually identical. The earlier mark as a whole is normally distinctive. The only differentiating aspects of the earlier mark merely result from its stylisation and from the elements ‘PRO’ and ‘MED’ (if perceived in isolation) which, however, cannot indicate the commercial origin of the relevant goods due to their non-distinctive character.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public. This finding applies even taking into account the higher attentiveness of the relevant public. Therefore the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 3 021 370. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right No 3 021 370 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods 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).

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

Martina GALLE

Martin INGESSON

Begoña URIARTE VALIENTE

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.