OPPOSITION No B 2 563 867

Shenzhen New Industries Biomedical Engineering Co., Ltd., 16, Jinhui, Road, Jinsha Community, Pingshan New District, Shenzhen, Guang Dong, People’s Republic of China (opponent), represented by GLP S.r.l., Viale Europa Unita, 171, 33100 Udine (UD), Italy (professional representative)

a g a i n s t

Biolume (S.A.S.), Parc Eurasanté, 310 rue Jules Valles, 59120 Loos, France (applicant), represented by Cabinet Beau de Lomenie, Immeuble Eurocentre, Euralille, 179, Boulevard de Turin, 59777 Lille, France (professional representative).

On 04/05/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 563 867 is partially upheld, namely for the following contested goods:

Class 10: Surgical, medical, dental and veterinary apparatus and instruments.

2. European Union trade mark application No 13 843 321 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 13 843 321 for the figurative mark , namely against all the goods in Classes 10 and 11. The opposition is based on European Union trade mark registration No 13 119 391 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.

1. The goods and services

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

Class 10: Blood testing apparatus; massage apparatus; analysis (apparatus for use in medical-); testing apparatus for medical purposes; diagnostic apparatus for medical purposes; radiotherapy apparatus; artificial limbs; corsets for medical purposes; suture materials; blood transfusion apparatus.

Class 44: Hospitals; nursing, medical; therapy services; rest homes; massage; animal breeding; gardening; opticians’ services; rental of sanitation facilities; food nutrition consultation.

The contested goods are the following:

Class 10: Surgical, medical, dental and veterinary apparatus and instruments; furniture especially made for medical, hospital or surgical purposes, including bed headboards, columns, sheaths for lighting and/or the distribution of fluids and/or electricity; technical wall or suspended columns for the distribution of fluids and/or electricity and/or lighting, with or without the support of control screens and surgical instruments for medical or hospital care stations or operating theatres; technical wall or suspended arms for the distribution of fluids and/or electricity and/or lighting, with or without the support of control screens and surgical instruments for medical or hospital care stations or operating theatres; technical wall or suspended beams for the distribution of fluids and/or electricity and/or lighting, with or without the support of control screens and surgical instruments for medical or hospital care stations or operating theatres; trays for medical or hospital purposes; furniture specially designed for hospital rooms; beds, specially made for medical purposes; lamps for medical purposes; apparatus and installations for the distribution of oxygen; apparatus and installations for the distribution of medical fluids; apparatus and installations for the distribution and aspiration of air for medical, hospital or surgical purposes.

Class 11: Lighting fittings; luminaires; ceiling lights; light bars; reflectors for lighting devices; air control dampers; sanitary installations and bathrooms, sinks, wash basins; all the aforesaid goods, including goods for medical, hospital or surgical purposes; apparatus and installations for the distribution and aspiration of air.

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

The term ‘including’, used in the applicant’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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.

For the sake of good order, the Opposition Division notes that the following comparison has been made in the absence of convincing arguments that could lead to other conclusions. The degree of similarity of the goods and services is a matter of law, which must be assessed ex officio by the Office even if the parties do not comment on it. However, the Office’s ex officio examination is restricted to well-known facts, that is, ‘facts which are likely to be known by anyone or which may be learned from generally accessible sources’, which excludes facts of a highly technical nature (03/07/2013, T‑106/12, Alpharen, EU:T:2013:340, § 51). Consequently, what does not follow from the evidence/arguments submitted by the parties or is not commonly known should not be speculated on or extensively investigated ex officio (09/02/2011, T‑222/09, Alpharen, EU:T:2011:36, § 31-32). This follows from Article 95(1) EUTMR, according to which, in opposition proceedings, the Office is restricted in its examination to the facts, evidence and arguments provided by the parties and the relief sought.

Contested goods in Class 10

The contested surgical, medical, dental and veterinary apparatus and instruments include, as a broader category, the opponent’s diagnostic apparatus for medical purposes and are, therefore, identical.

The contested furniture especially made for medical, hospital or surgical purposes, including bed headboards, columns, sheaths for lighting and/or the distribution of fluids and/or electricity; trays for medical or hospital purposes; furniture specially designed for hospital rooms; beds, specially made for medical purposes are articles of furniture specifically designed for people with health or mobility problems and aimed at equipping a room or any other space. These goods are manufactured by specialists and are sold to these individuals or to hospitals, in stores dedicated to this type of furniture. These goods are clearly dissimilar from the opponent’s goods, which are very specific apparatus and medical instruments (i.e. analysis testing apparatus, diagnostic apparatus, radiotherapy apparatus, blood transfusion apparatus, massage apparatus) or items (artificial limbs, corsets for medical purpose) with very concrete functions. Although they are medical devices (and can therefore be used in hospitals), they clearly differ in purpose and method of use, are neither complementary nor in competition, do not target the same consumers and are not produced by the same kind of undertakings. These contested goods are therefore considered dissimilar to the opponent’s goods.

Similar considerations also apply to the rest of the contested goods in Class 10, namely technical wall or suspended columns for the distribution of fluids and/or electricity and/or lighting, with or without the support of control screens and surgical instruments for medical or hospital care stations or operating theatres; technical wall or suspended arms for the distribution of fluids and/or electricity and/or lighting, with or without the support of control screens and surgical instruments for medical or hospital care stations or operating theatres; technical wall or suspended beams for the distribution of fluids and/or electricity and/or lighting, with or without the support of control screens and surgical instruments for medical or hospital care stations or operating theatres; lamps for medical purposes; apparatus and installations for the distribution of medical fluids; apparatus and installations for the distribution and aspiration of air for medical, hospital or surgical purposes. Both the opponent’s and the contested goods have highly specific natures, purposes and methods of use, which means that their usual commercial origin is clearly different.

No other relevant points of comparison exist with the opponent’s goods that could support a finding of similarity. Therefore, all the above mentioned goods are considered dissimilar to all the opponent’s goods in Class 10.

Moreover, the opponent’s services in Class 44 include activities that provide medical and nursery services, provided by persons or establishments to humans or animals. The contested goods in Class 10 are also dissimilar to the opponent’s services in Class 44. That is because their natures, purposes, methods of use, relevant public, distribution channels and usual origins are not usually the same.

Contested goods in Class 11

The contested goods in Class 11 include a range of goods that produce light, apparatus for sanitary purposes and air treatment apparatus. As seen above, the opponent’s goods are specialised machines with very different functions and are normally produced by different undertakings. Although the opponent’s medical apparatus might contain some of the contested goods (i.e. lighting fittings), they clearly differ in purpose and method of use, are neither complementary nor in competition, do not target the same consumers, will not necessarily be used by the same professionals, and are not produced by the same kind of undertakings. These contested goods are therefore considered dissimilar to the opponent’s goods in Class 10.

The contested goods in Class 11 are also dissimilar to the opponent’s services in Class 44. These goods and services have different purposes, methods of use and natures, they are not of interest to the same public or distributed through the same trade channels, and they do not have the same commercial origin. Furthermore, they are neither complementary nor in competition. They have nothing in common.

2. 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 mainly directed at the specialised public. These products are specialised goods that are normally purchased by professionals in the health sector.

The degree of attention is high, taking into account that all the identical goods concern health; they might be complex technological products and can be very expensive.

3. 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 earlier mark is composed of the verbal element ‘Biolumi’ in standard, black, bold letters.

The contested sign is composed of the verbal element ‘Biolume’ in standard, blue letters preceded by a figurative element consisting of three interwoven circles. The verbal element ‘ÉCLAIRAGES ET ÉQUIPEMENTS HOSPITALIERS’ appears below this in very small, blue upper case letters.

Both ‘Biolumi’ and ‘Biolume’, taken as a whole, are meaningless in the relevant territory and have an average degree of distinctiveness.

Although the Court has held that average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57).

In the present case, it can be reasonably assumed that the vast majority of the public in the relevant territory will readily discern the prefix ‘Bio’ in both signs as suggestive of ‘life’. The relevant goods are medical devices or apparatus, which are intended to be used in healthcare and, therefore, are likely to have an effect on human life. However, the link between the concept ‘life’, which is evoked by the word element ‘Bio’, and the conflicting goods is so vague that it is unlikely to reduce, on its own, the degree of distinctiveness of both marks, which remains average.

The elements ‘lumi’ of the earlier mark and ‘lume’ of the contested sign might be associated, at least by a part of the relevant public (i.e. the French-, Spanish- or English-speaking parts of the public) with something ‘radiating or reflecting light; shining and bright’. However, taking into account that the identical goods are medical apparatus and instruments, both terms remain distinctive to an average degree.

The figurative element of the contested sign will not be attributed any particular meaning; therefore, it has an average degree of distinctiveness. However, 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 elements than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289).

Although the verbal element ‘ÉCLAIRAGES ET ÉQUIPEMENTS HOSPITALIERS’ provides information about the kind of goods for which protection is sought, the Opposition Division cannot exclude that some of these verbal elements may not be associated with a particular meaning by a part of the relevant public. However, due to their size, very clear blue colour and position, they have a secondary impact within the sign.

The earlier mark has no elements that could be considered more dominant (visually eye-catching) than other elements, as, in the contested sign, the most dominant element is ‘Biolume’ due to its larger size and position.

Visually, the signs coincide in the letters ‘Biolum*’; therefore, six out of the seven letters of the earlier mark are contained in the same order in the contested sign. However, they differ in the last letter of both signs (‘i’ in the earlier mark versus ‘e’ in the contested sign), the figurative element and the verbal elements ‘ÉCLAIRAGES ET ÉQUIPEMENTS HOSPITALIERS’ of the contested sign.

Bearing in mind that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark (the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader) and the weight that has been given to the figurative element and the verbal element ‘ÉCLAIRAGES ET ÉQUIPEMENTS HOSPITALIERS’, the signs are visually similar to an 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 letters ‘Biolum*’.

As the graphic features of the contested sign are not subject to an aural assessment and the verbal element ‘ÉCLAIRAGES ET ÉQUIPEMENTS HOSPITALIERS’ is not likely to be pronounced, taking into account the dominant position that ‘Biolume’ has in the contested sign, the marks are aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the signs as a whole do not have any meaning for the public in the relevant territory, the elements ‘Bio’ and ‘lumi’/‘lume’, included in both signs, may be associated by a part of the relevant public with the meaning explained above and, therefore, the signs are conceptually similar to an average degree.

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

4. 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 average.

5. Global assessment, other arguments and conclusion

According to settled case-law, 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 and services are partly identical and partly dissimilar. The signs are visually and conceptually similar to an average degree and aurally similar to a high degree.

The degree of attention is high and the distinctiveness of the earlier mark is average.

The differences between the signs, as discussed in section c) of this decision, are clearly not sufficient to counteract the strong similarity resulting from the coinciding letter sequence ‘Biolum*’. 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).

When encountering the signs at issue in relation to identical goods and services, the public, whether the general public or professionals, may confuse the signs on account of their high degree of overall similarity, including where the public’s degree of attention is enhanced. 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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public for the goods found to be identical and, therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 13 119 391.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical to those of the earlier trade mark. The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Vít MAHELKA

Alexandra APOSTOLAKIS

Carlos MATEO PÉREZ

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.