OPPOSITION No B 3 107 450

Roche Diabetes Care GmbH, Sandhofer Strasse 116, 68305 Mannheim, Germany (opponent), represented by Friedrich Graf von Westphalen & Partner mbB, Kaiser-Joseph-Str. 284, 79098 Freiburg i. Br., Germany (professional representative)

a g a i n s t

Assure Tech (Hangzhou) Co., Ltd., 3rd Floor, Building 4, No. 1418‑1450, Moganshan Road, Hangzhou City, Zhejiang Province, People’s Republic of China (applicant), represented by ZHAOffice SPRL, rue de Bedauwe 13, 5030 Gembloux, Belgium (professional representative).

On 30/03/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 107 450 is upheld for all the contested goods.

2. European Union trade mark application No 18 110 222 is rejected in its entirety.

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

REASONS

On 30/12/2019, the opponent filed an opposition against all the goods of European Union trade mark application No 18 110 222 (figurative mark). The opposition is based on, inter alia, European Union trade mark registration No 1 279 546 ‘Accu-Chek’ (word 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 European Union trade mark registration No 1 279 546, ‘Accu-Chek’.

a) The goods

The goods on which the opposition is based are, inter alia, the following:

Class 10: Surgical and medical instruments, equipment and apparatus; apparatus for conducting in-vitro diagnostic tests for medical purposes.

The contested goods are the following:

Class 10: Rehabilitation apparatus (body) for medical purposes; medical apparatus and instruments, except surgical and medical knives, razors, scalpels and blades; injectors for medical purposes; orthopaedic articles; urological apparatus and instruments; diagnostic apparatus for medical purposes; radiological apparatus for medical purposes; gloves for medical purposes; incontinence sheets; ultrasonic therapy apparatus.

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

The contested rehabilitation apparatus (body) for medical purposes; medical apparatus and instruments, except surgical and medical knives, razors, scalpels and blades; injectors for medical purposes; urological apparatus and instruments; diagnostic apparatus for medical purposes; radiological apparatus for medical purposes; ultrasonic therapy apparatus are included in the broad categories of, or overlap with, the opponent’s surgical and medical instruments, equipment and apparatus. Therefore, they are identical.

The contested gloves for medical purposes are similar to a low degree to the opponent’s surgical equipment as they coincide in end users and distribution channels. Moreover, these goods are complementary to surgical equipment, as the latter must be necessarily used with disposable sterilised gloves.

The contested orthopaedic articles and the opponent’s medical instruments and apparatus may be used in medical procedures with the aim of treating medical conditions. The goods may be complementary, coincide in producers and target the same public. Therefore, they are similar to a low degree.

Finally, there is also a low degree of similarity between the contested incontinence sheets and the opponent’s medical instruments, equipment and apparatus, as the latter is a broad category that encompasses apparatus for use in the control or treatment of incontinence and devices for urinary incontinence (e.g. catheters, absorbent products and mechanical devices). The goods have, to a certain extent, a similar purpose, and are commonly used together. Moreover, they coincide in distribution channels and target the same public.

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 or similar to a low degree are directed at the public at large (e.g. orthopaedic articles) and business consumers with specific professional knowledge or expertise (e.g. radiological apparatus for medical purposes).

The degree of attention may vary from average to high, depending on the price or specialised nature of the purchased goods. Furthermore, the fact that the goods concern health also leads to a higher degree of attention.

c) The signs

Accu-Chek
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.

In its submissions, the applicant argues that ‘Accu’/‘Acu’ would ‘suggest the idea of accuracy’, and ‘Chek … is analogous to the word “check”’. It further argues that ‘teck’ is analogous to the words ‘technical’ or ‘technology’, and would be perceived in this way by the relevant public. Consequently, the applicant finds that the consumers would be able to distinguish between the signs.

However, the signs as a whole are not meaningful in some territories, such as Spain and Portugal. ‘Accuracy’ and ‘check’ are not part of either Portuguese or Spanish vocabulary. Moreover, the abbreviation of ‘technical’ or ‘technology’ is ‘tech’. (information extracted from Collins Dictionary at https://www.collinsdictionary.com/dictionary/english/tech on 16/03/2021). Therefore, it is unlikely that the contested sign’s component ‘teck’, will be immediately separated and perceived as a misspelling of ‘tech’ by a part of the relevant public (be it the public at large or professionals), since consumers normally perceive signs as a whole. Consequently, and also considering the pronunciation rules in these parts of the relevant territory, the Opposition Division finds it appropriate to focus the comparison of the signs on the Portuguese- and Spanish-speaking parts of the public, for which the elements of the signs are meaningless and, therefore, distinctive to a normal degree. In any event, even in case the applicant’s argument could apply to part of the public (e.g. professionals), all the verbal components of both signs (‘Accu’/‘Acu’ and ‘Chek’/‘teck’) would have limited distinctiveness, as they would be perceived as referring to the characteristics of the relevant goods (e.g. their purpose, nature or features).

The earlier sign, comprising the two components ‘Accu’ and ‘Chek’, which are connected with a hyphen, is a word mark and, as such, has no element that could be considered clearly more dominant than other elements.

The contested sign is a figurative mark containing the single verbal element ‘Acuteck’, depicted in a rather standard typeface. The slightly stylised letter ‘A’ has a wavy figurative element replacing its horizontal bar. The contested sign has no dominant (visually outstanding) element.

Visually, the signs coincide in the letters ‘A’, ‘C’, ‘U’, ‘C’, ‘E’, and ‘K’, present as ‘AC*U-C*EK’ (earlier mark) / ‘ACU*ECK’ (contested sign). The signs differ in the earlier mark’s hyphen and the slight stylisation of the contested sign, which will be perceived as merely decorative by the consumers, since they are accustomed to the stylisation of verbal elements in marks. The signs further differ in the earlier mark’s third and sixth letters, ‘C’, and ‘H’ respectively and the contested sign’s letter ‘T’. The signs’ last letter ‘C’ is placed in fifth position in the earlier mark and sixth position in the contested sign.

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).

The signs have almost the same length – eight letters and a hyphen versus seven letters, respectively – and share a significant number of identical letters, namely six. This creates an overall impression of visual similarity, reinforced by the identical first two letters of both signs. Therefore, the signs are visually similar to an average degree.

Aurally, the signs will be pronounced with the same rhythm and intonation; ‘A-CU-CHEK’ and ‘A-CU-TECK’. They have the same number of syllables (three) and sounds (six), as the relevant public will pronounce the earlier mark’s double ‘C’ as a single sound, /k/, and ‘CH’ as /ʃ/ in Portuguese and /tʃ/ in Spanish. The contested sign’s ‘CK’ will be pronounced as /k/. The signs, which are pronounced almost identically, only differ aurally in the pronunciation of the letters ‘CH’ in the earlier mark and ‘T’ in the contested sign. The hyphen in the earlier sign and the stylisation of the contested sign’s letter ‘A’ are not included in the aural comparison. Therefore, the signs are aurally highly similar.

Conceptually, neither of the signs has a meaning for a part of 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. From the perspective of the part of the public that would perceive the meanings of the signs as explained above, there will be a certain – although not higher than average – conceptual similarity. Finally, from the perspective of the part of the public that would perceive a meaning only in the endings of the signs (‘Chek’ versus ‘teck’), they are not conceptually similar. However, due to the limited distinctiveness of these elements, their impact on the comparison of the signs is also limited.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 significant part of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal. As regards the less likely scenario that another part of the public will understand both elements of the mark, the distinctiveness of the earlier mark is weak for this part of the public.

e) Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The goods are partly identical and partly similar to a low degree. The signs are visually similar to an average degree and aurally highly similar. The conceptual comparison varies depending on the perception of the relevant public from not similar to similar to a certain degree (no more than average).

The inherent distinctiveness of the earlier mark is normal for a significant part of the public, and weak for another part that understands both elements of the mark. The degree of attention of the relevant public varies between average and high. It should be noted that 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 signs under comparison, when considering their overall impression, display important visual and aural similarities because they share six out of seven and eight letters, respectively. Both signs are pronounced with an identical number of sounds, namely six, differing only in their fourth sound. The fact that the earlier mark’s verbal components ‘Accu’ and ‘Chek’ are separated by a hyphen, while the contested mark has a single verbal element, ‘Acuteck’, is a minor difference, which does not substantially affect the overall impression created by the marks, especially aurally. In case where the signs were associated with different meanings, this would be on account of weak elements, which have a secondary impact and are not capable of offsetting the visual and aural similarities of the marks, not even in the case of goods that are only similar to a low degree.

While it is true that for the part of the relevant public that will understand all elements, the earlier mark is weak, in this case however, the visual and aural similarities are reinforced by certain conceptual similarity. In any event, the Opposition Division finds that the weak distinctive character of the earlier trade mark does not remove the likelihood of confusion between the marks at issue, from the perspective of this part of the public.

Indeed, according to established case-law, the finding of a weak distinctive character for the earlier trade mark does not prevent a finding that there is a likelihood of confusion. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Therefore, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (16/03/2005, T‑112/03, Flexi Air, EU:T:2005:102, § 61; 13/12/2007, T‑134/06, Pagesjaunes.com, EU:T:2007:387, § 70). This is the situation here, in view of the similarity between the conflicting marks and the similarity of the goods at issue (even if only to a low degree).

Considering all the above, there is a likelihood of confusion on the part of the Portuguese- and Spanish-speaking parts of the public. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 1 279 546. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use, as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As earlier European Union trade mark registration No 1 279 546, ‘Accu-Chek’ 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 rights invoked by the opponent, and the possible substantiation issues related to these marks (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, 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

Claudia SCHLIE

Angela DI BLASIO

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.