OPPOSITION No B 3 100 427

Wagner S.R.L., Via Brusafiera, 12, 33170 Pordenone, Italy (opponent), represented by Bugnion S.P.A., Viale Lancetti, 17, 20158 Milano, Italy (professional representative)

a g a i n s t

CSL Behring GmbH, Emil-von-Behring Str. 76, 35041 Marburg, Germany (applicant), represented by Frank Schöne de la Nuez, Emil-von-Behring-Strasse 76, 35041 Marburg, Germany (employee representative).

On 17/08/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 100 427 is upheld for all the contested goods and services.

2. European Union trade mark application No 18 082 305 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 and services of European Union trade mark application No 18 082 305 , namely against all the goods and services in Classes 16, 41 and 44. The opposition is based on European Union trade mark registration No 17 976 518 for the word mark ‘PARSIFAL’. 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 and services

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

Class 9: Computer software.

Class 38: Networking, printed publications, electronic display and transmission of data and information, in particular satellite transmission of data by means of online global computer networks; Data bank interconnection services; Providing access to databases.

Class 41: Advice relating to medical training; Arranging and conducting of conferences, congresses and symposiums (for the medical sector); Providing of training and instruction in the medical sector and for specialist staff.

Class 44: Medical services; Consultancy in relation to medical assistance provided by doctors and other specialist medical staff.

The contested goods and services are the following:

Class 16: Printed materials, namely, newsletters, articles and case studies featuring blood conditions, medicines and treatments; Printed publications, namely, brochures, booklets, newsletters, articles, case studies, and teaching materials in the field of blood conditions, medicines and treatment; printed educational materials in the field of blood conditions, medicines and treatment.

Class 41: Healthcare education services, namely, providing educational and awareness programs for patients, caregivers and/or healthcare professionals concerning blood conditions, medicines and treatment, as well as, its impact on patients, patient families, caregivers and/or healthcare professionals; planning and conducting educational conventions and educational meetings related to blood conditions, medicines and treatment, as well as, its impact on patients, patient families, caregivers and/or healthcare professionals; Electronic transmission of information posted to user newsgroups and discussion groups via a global computer network.

Class 44: Healthcare information services, namely, providing information concerning blood conditions, medicines and treatment, as well as, its impact on patients, patient families, caregivers and/or healthcare professionals; Healthcare information services, namely, patient chart analysis; Healthcare information services, namely, assessing dosing, frequency, bleed rates, and consumption of medicine.

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

The term ‘namely’, used in the applicant’s list of goods and services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods and services specifically listed.

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 goods in Class 16

The contested goods printed materials, namely, newsletters, articles and case studies featuring blood conditions, medicines and treatments; printed publications, namely, brochures, booklets, newsletters, articles, case studies, and teaching materials in the field of blood conditions, medicines and treatment; printed educational materials in the field of blood conditions, medicines and treatment are essential for the opponent’s Class 41 services providing of training and instruction in the medical sector and for specialist staff. Therefore, these goods and services are complementary. The providers of training and instructions services often use or even hand out these goods to participants as learning supports in educational sessions, courses, workshops, programs, etc. In view of the close relationship between the goods and services at issue, the identical target group, the common origin, the identical distribution channels and, their complementary character, these goods and services are considered similar.

Contested services in Class 41

The contested healthcare education services, namely, providing educational and awareness programs for patients, caregivers and/or healthcare professionals concerning blood conditions, medicines and treatment, as well as, its impact on patients, patient families, caregivers and/or healthcare professionals; planning and conducting educational conventions and educational meetings related to blood conditions, medicines and treatment, as well as, its impact on patients, patient families, caregivers and/or healthcare professionals, are included in the broad category of the opponent’s providing of training and instruction in the medical sector and for specialist staff. Therefore, they are identical.

The contested electronic transmission of information posted to user newsgroups and discussion groups via a global computer network are similar to the opponent’s computer software in Class 9. Although their natures are different, they may have a similar purpose and can coincide in producer/provider and end user. It is common to transmit and disseminate and/or publish posts of user and discussion groups through software applications. Therefore, there is also a certain complementarity relationship between the goods and services under comparison.

Contested services in Class 44

The contested healthcare information services, namely, providing information concerning blood conditions, medicines and treatment, as well as, its impact on patients, patient families, caregivers and/or healthcare professionals; healthcare information services, namely, patient chart analysis; healthcare information services, namely, assessing dosing, frequency, bleed rates, and consumption of medicine are included in the broad category of the opponent’s medical services. The services are, therefore, 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 identical and similar goods and services are directed at the public at large and at business customers with specific expertise. Since all the goods and services at issue have an impact on the consumers’ health, their degree of attention is high.

c) The signs

PARSIFAL
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 common verbal element of both signs may be associated at least by the German-speaking public with a male name, as in the name of ‘the hero of a medieval cycle of legends about the Holy Grail’ in German mythology (information extracted from Collins English Dictionary on 08/10/2020 at https://www.collinsdictionary.com/dictionary/english/parsifal). Given that ‘PARSIFAL’ is also the name of a well-known opera by German composer Richard Wagner, the public throughout the European Union familiar with opera will also associate the term to this famous play. Be it perceived as it may, as the term has no direct relation with the goods and services in conflict, it is distinctive to an average degree. For the rest of the relevant public ‘PARSIFAL’ is meaningless and, therefore, distinctive.

In the contested sign, ‘PARSIFAL’ is represented in standard upper-case letters and superimposed over a circular figurative element, with a pattern of dots in various shades of green and blue inside. Although the figurative element is not non-distinctive, it must be noted 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). Therefore, the figurative element in the contested sign will have less of an impact on the consumer than its verbal element.

The contested sign has no elements that are more dominant (eye-catching) than others.

Visually, the signs coincide in the string of the letters ‘PARSIFAL’ represented in standard upper-case letters and constituting the sole verbal element of both signs. The signs differ in the presence of a figurative device in the contested sign (with less weight, as explained above).

Therefore, the signs are visually similar to a higher than average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory the pronunciation of the signs coincides in the sound of the letters /PARSIFAL/, present identically in both signs.

As the figurative element of the contested sign will not be pronounced, the signs are aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with the same concept and the figurative device does not have any specific meaning, the signs will be perceived as conceptually identical.

For the part of the public for which ‘PARSIFAL’ is meaningless, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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

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 and 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.

e) Global assessment, other arguments and conclusion

The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C 251/95, Sabèl, EU:C:1997:528, § 22).

The goods and services are identical or similar and target the general and professional public, whose degree of attention will be high, as explained above in section b). However, 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). The earlier mark enjoys a normal degree of distinctiveness.

The signs are visually similar to a higher than average degree and aurally identical. From a conceptual perspective, the signs are either identical or the conceptual aspect remains neutral.

The sole element of the earlier mark, ‘PARSIFAL’, is fully reproduced in the contested sign, as its only verbal element and as the element that carries most weight in the consumer’s perception. The signs only differ in the figurative device of the contested sign, which plays a secondary role in the comparison. This difference between the signs is not sufficient to counteract the identity of their verbal distinctive element and exclude a likelihood of confusion.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 17 976 518. It follows that the contested trade mark must be rejected in its entirety.

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

Denitza STOYANOVA-VALCHANOVA

Helena GRANADO CARPENTER

Martin EBERL

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.