OPPOSITION No B 2 172 933

Sunrise Medical GmbH & Co. KG, Kahlbachring 2-4, 69254 Malsch/Heidelberg, Germany (opponent), represented by Jones Day Nextower, Thurn-und-Taxis-Platz 6, 60313 Frankfurt am Main, Germany (professional representative)

a g a i n s t

N.G.M. Sprl, Beverlaai 73, 8500 Kortrijk, Belgium (applicant), represented by K.O.B. n.v., Kennedypark 31c, 8500 Kortrijk, Belgium (professional representative).

On 30/10/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 172 933 is partially upheld, namely for the following contested goods and services:

Class 12: Vehicles and parts of vehicles; Apparatus for locomotion by land, air or water

Class 18: Parasols

Class 35: Wholesaling and retailing and online retail stores in relation to accessories for vehicles

2. Community trade mark application No 11 439 924 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 Community trade mark application No 11 439 924. The opposition is based on Community trade mark registration No 8 739 898. The opponent invoked Article 8(1)(a) and (b) CTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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.

1. The goods and services

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

Class 10: Seats for medical purposes; seat cushions, pads and seat backs for medical purposes; pressure-compensating cushioning envelopes, pads and pouches filled with flowable materials for medical uses.

Class 12: Wheelchair cushions, pads, seats and seat backs and parts and fittings therefor.

Class 20: Seats, seat cushions, seat pads, seat backs and parts and fittings therefor.

Following the rejection of some goods in the course of the parallel proceedings B 2 180 332 , now final, the remaining contested goods and services are:

Class 12: Vehicles and parts of vehicles; Apparatus for locomotion by land, air or water.

Class 18: Leather and imitation leather, and goods made of these materials and not included in other classes; Animal skins, hides; Trunks and travelling bags; Umbrellas and parasols.

Class 35: Import and export, administrative processing of purchase orders; Office work; Wholesaling and retailing and online retail stores in relation to clothing, footwear, headgear, fashion accessories, luggage, rucksacks and bags, leatherware, umbrellas, parasols, spectacles and sunglasses, electrical apparatus, electronic and solar-powered battery chargers, electronic apparatus and accessories for electronic apparatus, vehicles and accessories for vehicles, beverages, batteries, gadgets; Marketing and advertising; Presentation on communication media for the purpose of selling clothing, footwear, headgear, fashion accessories, luggage, rucksacks and bags, leatherware, umbrellas, parasols, spectacles and sunglasses, electrical apparatus, electronic and solar-powered battery chargers, electronic apparatus and accessories for electronic apparatus, vehicles and accessories for vehicles, beverages, batteries, gadgets.

As a preliminary remark, it is to be noted that according to Rule 2(4) CTMIR, the Nice Classification serves purely administrative purposes. Therefore, goods or services may not be regarded as being similar or dissimilar to each other simply on the grounds that they appear in the same or different classes in 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 12

The contested parts of vehicles include, as a broader category, the opponent’s seats in Class 12, since the latter, as well as the opponent’s pads, seat backs and parts and fittings therfor, are not limited to wheelchairs. It is impossible for the Opposition Division to filter these goods from the abovementioned category. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s goods, they are considered identical to the opponent’s goods.

The opponent’s pads, seats and seat backs and parts and fittings therefor are parts and fittings for the contested vehicles; Apparatus for locomotion by land, air or water. The mere fact that a certain good can be composed of several components does not establish an automatic similarity between the finished product and its parts (see judgment of 27/10/2005, T-336/03, ‘Mobilix’, para. 61). Similarity will only be found in exceptional cases and requires that at least some of the main factors for a finding of similarity, such as producer, public and/or complementarity are fulfilled. Such an exception is based on the fact that parts and fittings are often produced and/or sold by the same undertaking that manufactures the final good and target the same purchasing public, as in the case of spare or replacement parts. Depending on the good concerned, the public may also expect the component to be produced by, or under the control of, the ‘original’ manufacturer, which is a factor that suggests that the goods are similar. In general, a variety of factors may be significant in each particular case. For instance, if the component is also sold independently, or if it is particularly important for the functioning of the machine, this will weigh in favour of similarity. As regards the goods at hand, it can be expected that the opponent’s goods may be produced by, or under the control of, the ‘original’ manufacturer and the opponent’s goods (for example ‘seats’) can be sold independently of a vehicle (or a boat, a bicycle, etc.) and are particularly important for the functioning of the machine. These goods coincide to the extent that they may coincide in producers, end users and distributions channels. Furthermore, they are complementary. Therefore, it considered that they are similar.

Contested goods in Class 18

The Opposition Division concludes that the contested parasols include large parasols intended to complement outdoor seating in order to protect the seated person from the sun. These parasols are complementary to garden and other outdoor furniture and can be obtained through the same distribution channels. They also target the same relevant public, which may expect these goods to be produced by the same undertakings. Therefore, the contested parasols are considered similar to a low degree to the opponent’s seats, seat cushions in Class 20.

The remaining contested goods in Class 18 have a very different purpose and nature to the earlier rights' goods and services. They are not produced by the same types of companies as those manufacturing the earlier goods or providing the earlier services. Neither are they the sorts of goods that are likely to be sold to the same end users nor via similar distribution channels. They are not interchangeable and they are not in competition with one another. In particular, the contested leather and imitation leather; animal skins, hides are various kinds of animals’ skins which are raw materials. The mere fact that one product is used for the manufacture of another (for example, seats, seat cushions made of leather) is not sufficient in itself to conclude that the goods are similar, as their nature, purpose and customers are quite distinct: raw materials are intended for use in industry rather than for direct purchase by the final consumers. Therefore, the remaining contested goods in Class 18 are considered dissimilar.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to these 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. Therefore, the contested Wholesaling and retailing and online retail stores in relation to accessories for vehicles are similar to a low degree to the opponent’s seats in Class 12, given that the latter are wholly included within the goods to be retailed.

With regard to the remaining contested services Import and export, administrative processing of purchase orders; Office work; Wholesaling and retailing and online retail stores in relation to clothing, footwear, headgear, fashion accessories, luggage, rucksacks and bags, leatherware, umbrellas, parasols, spectacles and sunglasses, electrical apparatus, electronic and solar-powered battery chargers, electronic apparatus and accessories for electronic apparatus, vehicles, beverages, batteries, gadgets; Marketing and advertising; Presentation on communication media for the purpose of selling clothing, footwear, headgear, fashion accessories, luggage, rucksacks and bags, leatherware, umbrellas, parasols, spectacles and sunglasses, electrical apparatus, electronic and solar-powered battery chargers, electronic apparatus and accessories for electronic apparatus, vehicles and accessories for vehicles, beverages, batteries, gadgets, they are dissimilar. Apart from being different in nature, given that services are intangible whereas goods are tangible, they serve different needs. In particular, 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 the goods. Furthermore, the method of use of those goods and services is different. They are neither in competition nor complementary.

Similarity between retail services of specific goods covered by one mark and specific goods covered by the other mark can only be found where the retailed goods and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are only similar at the most.

2. The signs

J3	J3
Earlier trade mark	Contested sign

The signs are identical.

3. Global assessment, other arguments and conclusion

The signs are identical and the goods parts of vehicles in Class 12 are identical too. Therefore, the opposition is upheld on the grounds of Article 8(1)(a) CTMR as regards these goods.

Furthermore, some of the remaining contested goods and services, namely vehicles; Apparatus for locomotion by land, air or water in Class 12, parasols in Class 18 and Wholesaling and retailing and online retail stores in relation to accessories for vehicles in Class 35, are similar to the opponent’s goods and services. Given the identity of the signs, there is a likelihood of confusion within the meaning of Article 8(1)(b) CTMR and the opposition is upheld in so far as it is directed against these goods and services.

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) CTMR, the opposition based on this article and directed at these services cannot be successful.

Therefore, the opposition is partially well founded on the basis of the opponent’s Community trade mark registration. It follows from the above that the contested trade mark must be rejected for all the contested goods and services found to be similar or identical.

COSTS

According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) CTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part 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

Vanessa PAGE

Steve HAUSER

Loreto URRACA LUQUE

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 800 has been paid.