OPPOSITION No B 3 093 490

Biotech Dental, 305 Allée de Craponne, 13300 Salon de Provence, France (opponent), represented by Cabinet Marek, 28 rue de la Loge, 13002 Marseille, France (professional representative)

a g a i n s t

Najjar Hikmat, Bulevardul Independentei,nr. 18, bl. Y1, sc. Tr. 1, ap. 39, 700099 Iaşi, Romania (applicant)

On 25/09/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 093 490 is upheld for all the contested goods.

2. European Union trade mark application No 18 024 123 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 18 024 123 for the figurative mark . The opposition is based on European Union trade mark registration No 15 126 014 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.

a) The goods

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

Class 5: Amalgams, cements, lacquers, dental mastics, porcelain for dental prostheses.

Class 10: Artificial limbs and surgical and dental implants

The contested goods are the following:

Class 5: Alloys of precious metals as dental implants.

Class 10: Dental implants; Implant bridges for dental purposes; Implant abutments for dental purposes; Implants [prosthesis] for dental surgery; Dental implants made from artificial materials; Implant materials [prosthesis] for use in dental surgery.

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 5

The opponent’s amalgams are liquid mercury and metal alloy mixtures used in dentistry to fill cavities caused by tooth decay. To that extent, they overlap with the contested alloys of precious metals as dental implants. Therefore, they are identical.

Contested goods in Class 10

The contested dental implants; implant bridges for dental purposes; implant abutments for dental purposes; implants [prosthesis] for dental surgery; dental implants made from artificial materials; implant materials [prosthesis] for use in dental surgery are contained in the opponent’ s broader category of surgical and dental implants. Therefore, they are identical.

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 are directed at the public at large and at business customers with specific professional knowledge or expertise in the dental sector.

Considering the possible impact of the relevant goods on the health of the consumers or patients, as well as the prices of some of the relevant goods (for example, dental implants), the degree of attention of the relevant public is considered to be high.

c) The signs

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).

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.

For economy of the proceedings, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public.

Although the relevant public usually perceives marks as a whole, according to settled case-law, the relevant consumers, when perceiving a verbal element, may break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58).

In fact, the prefix ‘BIO’ present in both signs is usually used in commerce to refer to organic and/or natural and environmentally friendly products. This has been confirmed by the General Court, which held that the term ‘BIO’ is used on the market to indicate that the goods in question contribute to environmental sustainability, that they use natural products or that they have been produced organically (10/09/2015, T‑610/14, BIO organic, EU:T:2015:613, § 17; 21/02/2013, T‑427/11, Bioderma, EU:T:2013:92, § 45‑46).

Therefore, it can be assumed that the relevant public will readily discern the component ‘BIO’ in both signs as referring to organic and/or natural products. Bearing in mind the relevant goods, the component ‘BIO’ in both signs is non-distinctive as it indicates that they are related to products of organic origin and/or are produced using natural methods.

As for the remaining components ‘-TECH’ and ‘-TEC’ included in the earlier mark and the contested sign respectively, they will be perceived by the relevant public as a common abbreviation of ‘Technik’ or ‘Technology’ o ‘tecnología’ in the context of the relevant language (02/12/2013, R 1814/2012-1 TECHLIGHT (fig.) / tecnolight, § 35) and will be pronounced identically. Bearing in mind that the relevant goods can be produced using technology or involve technology in some way, this element is weak.

As a whole, both ‘BIOTECH’ and ‘BIOTEC’ will be perceived as a technology that uses biological systems. Bearing in mind the nature of the relevant goods, both verbal elements will have a low degree of distinctiveness.

The verbal element ‘DENTAL’ present in the earlier mark and the contested sign means ‘relating to teeth’ (information extracted from https://dle.rae.es/dental on 24/09/2020), while the English verbal element ‘IMPLANTS’, present in the contested sign will be understood by the relevant public because of their closeness with their equivalent in the relevant language `IMPLANTES`. As such, they will be perceived as a mere indication about the nature and purpose of the goods protected and are therefore, descriptive.

Furthermore, in the contested sign ‘DENTAL IMPLANTS’ is a secondary element since it is depicted in much smaller letters than the verbal element ‘BIOTEC’, and is placed in the lower part of the contested sign.

As to the figurative elements, it has to be said that the lines device from the contested sign is not particularly imaginative and will just be perceived as a set of lines. Likewise, the figurative element of the earlier mark is composed of different geometric shapes in shades of green. Whether the elements will be perceived as decorative or as banal remains to be seen but in any event, they are secondary given that the verbal components generally have 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).

The earlier trade mark has no element that could be considered clearly more dominant than other elements whereas in the contested mark, the most dominant element is the verbal element ‘BIOTEC’

Visually, the signs coincide in the sequence of letters ‘BIOTEC*’, which constitute the entire verbal element of the contested sign and five letters out of six of the earlier mark as well as in the presence of the verbal element ‘DENTAL’ in both signs. The signs differ in the ending of the earlier mark that includes a final letter ‘*H’. The signs also differ in the secondary and non-distinctive verbal element ‘IMPLANTS’ and the differing figurative elements of both marks.

Even considering that the component ‘BIO’ is non-distinctive in both marks, the contested sign still reproduces three other letters of the earlier mark (which only differs in only one additional letter at the very end of its verbal element, the last letter to be noticed by the relevant consumers if we take into account that the relevant public reads from left to right).

For all the above, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the string of letters / BIOTEC*/. As explained above, and taking account that /TEC/ and /TECH/ will be associated with the word ‘tecnología’ t and, therefore, the sounds /-CH/ and /-C/ will be identical. Due to their descriptive nature and subordinate position (in the contested sign), the additional verbal elements ‘DENTAL’ and ‘DENTAL IMPLANTS’, will most likely not be pronounced by the relevant consumers when referring to the signs verbally (30/11/2006, T‑43/05, Brothers by Camper, EU:T:2006:370, § 75; 03/07/2013, T‑206/12, LIBERTE american blend, EU:T:2013:342, § 43-44; 03/07/2013, T‑243/12, Aloha 100% natural, EU:T:2013:344, § 34).

The signs are aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs are conceptually highly similar since the only semantic difference is the inclusion of the verbal element ‘IMPLANTS´ in the contested sign.

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

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 a meaning as explained above for 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 low.

e) Global assessment, other arguments and conclusion

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 29). 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).

The goods have been found to be identical and they target both the public at large and professionals that will display a high degree of attention when purchasing them.

The signs are visually similar to an average degree, aurally identical and conceptually highly similar. The earlier mark has a low degree of distinctiveness.

As explained above in section c) of this decision, the elements that are clearly perceptible in both signs and by which consumers will refer to the signs are the verbal elements ‘BIOTECH’ and ‘BIOTEC’. These verbal elements have the same structure in that the component ‘BIO’ appears at the beginning of both signs, and the second components, ‘TECH’ and ‘TEC’, are extremely similar. Moreover, the signs’ figurative elements have less impact and the sole differing verbal element of the contested sign, ‘IMPLANT’ lacks distinctiveness.

Therefore, in view of the overall similarity between the signs, it cannot be ruled out that the relevant public could be led to believe that the goods in question that are identical come from the same undertaking or economically linked undertakings despite the limited distinctiveness of the earlier mark (by analogy 14/02/2008, T‑189/05, Galvalloy, EU:T:2008:39, § 71; 06/06/2013, T‑411/12, Pharmastreet, EU:T:2013:304, § 37, 41; 29/03/2012, T‑547/10, Calcimatt, EU:T:2012:178, § 36; 05/02/2010, R 287/2009‑1, AquaDrop / aquatop, § 28).

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). This holds true even for 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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking part of the public and therefore the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 15 126 014. 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 all the contested 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.

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, 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

Vanessa PAGE HOLLAND

Claudia SCHLIE

Helen Louise MOSBACK

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.