OPPOSITION No B 2 698 374

Andon Health Co., Limited, Number 3, Jin Ping Street, Ya An Road, 300190 Tianjin, Naikai District, China (opponent), represented by Tong Wu, 3 Rue Tronchet, 75008 Paris, France (employee representative)

a g a i n s t

Surinder Oberoi, Plaza Moyua, 6, 48009 Bilbao, Vizcaya, Spain (applicant), represented by Elzaburu, S.L.P., Miguel Ángel, 21, 28010 Madrid, Spain (professional representative).

On 01/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 698 374 is upheld for all the contested goods.

2. European Union trade mark application No 14 908 222 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 320.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 14 908 222 for the figurative mark . The opposition is based on European Union trade mark registration No 7 266 638 for the word mark ‘iHealth’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of European Union trade mark registration No 7 266 638 ‘iHealth’.

The date of filing of the contested application is 11/12/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 11/12/2010 to 10/12/2015 inclusive.

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

Furthermore, the evidence must show use of the trade mark for the goods and services on which the opposition is based, namely the following:

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.

Class 10: Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopedic articles; suture materials.

Class 25: Clothing, footwear, headgear.

Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.

Class 44: Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.

According to Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 03/03/2017, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 15/05/2017 to submit evidence of use of the earlier trade mark. On 31/10/2016 and 07/11/2016, before the notification of the applicant’s request, the opponent had already sent evidence of use. On 07/02/2017 and 11/05/2017, within the time limit, the opponent submitted further evidence of use.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

The evidence to be taken into account is the following:

• ‘Red dot’ award certificates granted in 2011 for the Blood Pressure Monitoring System ‘iHealth’, in 2014 for ‘BG1’ and ‘BG5’ Blood Glucose Meters, ‘HS4’ Smart Scales, ‘BP5’ and ‘BP7’ Wireless blood pressure monitors, and ‘PO3’ Oximeter. Contrary to what the applicant states, these awards are all related to ‘iHealth’ goods because it can be deduced from the remaining evidence that the wordings ‘BG1’, ‘BG5’, HS4’, ‘BP5’ and ‘BP7’ are all related to products bearing the mark ‘iHealth’;

• Articles in the French magazines ‘Femme Actuelle’, ‘le Moniteur des pharmacies’, ‘Réponses Micro!’ dated 2011 and 2012 about the Blood Pressure Monitoring System ‘iHealth’;

• Numerous media reports, News Blogs and Press Releases dated 2011, 2015, 2016 and 2017 such as ‘Trendy Net News’, ‘New York Times’, ‘MobiHealthNews’, ‘Med Gadget’, ‘iLounge: News’, ‘Healthy Living’, ‘Gizmodo’, ‘Forbes’, ‘Engadget’, ‘CNET Reviews’, ‘CNBC’, ‘The Independent’, ‘Mobile Apps Showdown’, ‘eWeek’, ‘Daily Doo’, ‘ABC News’, ‘Yanko Design’, ‘Trend Hunter’, ‘Mirror’, etc. Part of them are about the launch of the ‘iHealth’ Blood Pressure Monitoring System for iPhone, iPod and iPad and were published in January 2011, others were published in 2015 and inform of the launch of the ‘iHealth BP3 Blood Pressure Monitor’, the weighing scale ‘iHealth Core’, the ‘Health CardioLab’, a cardiovascular diagnostic system, the ‘iHealth Wave’ (sports watch), all these goods provided with their corresponding and supporting applications, the iHealth Track blood pressure monitor which includes the software, and the iHealth Blood glucose meter test strips. New products launched in 2016 or 2017 are not detailed here as they were not marketed during the relevant period;

• Invoices dated 2013 and 2015 addressed to clients in France, Italy, Sweden, Switzerland, Belgium, Greece and the Netherlands. The earlier mark appears on the top right-hand side as follows: . The description of the goods indicated in these invoices are ‘connected wrist blood pressure (wireless)’, ‘iBaby Video Monitor’, ‘WiFi and Bluetooth BMI scale’ (BMI means Body mass index), Bluetooth BMI scale, Connected arm blood pressure (wireless), Connected wrist blood pressure (wireless), Wireless Body Analysis Scale, Wireless Pulse Oximeter, Wireless Blood Pressure Monitor, iHealth Edge Wireless Activity and Sleep Tracker. The invoices of 2016 are not taken into account because they are outside the relevant period;

• Photographs of a cardboard display shelf bearing the mark ‘iHealth’ as follows and of shelves in stores showing some of the ‘iHealth’ products with the trade mark depicted in orange on a white background;

• Extracts from several French internet sites, such as ‘Mediq’, ‘fitnessdigital’, ‘fnac’, ‘Darty’ on which ‘iHealth’ products are put on sale;

• Printout of the opponent’s web site where the ‘iHealth’ Apps, used for calculating health data, are promoted. These documents inform consumers that they may track their results on the free ‘Health MyVitals’ and ‘iHealth GlucoSmart’ apps and share them with their health professional or family.

The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods and services for which the earlier mark is registered. The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors.

However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use. Contrary to the applicant’s opinion, the invoices show use of the earlier mark and not only because the earlier mark appears on the top of the invoices but also because some of the codes and descriptions of the products in the invoices may be found on the packaging or other items of evidence. In any case, the evidence clearly shows the existing link between the sign and the goods.

The invoices, the media reports and the articles show that the place of use is mainly France bust also other countries of the European Union, such as France, Italy, Sweden, Belgium, Greece or the Netherlands. This can be inferred from the language of the documents and some addresses in those countries. Therefore, the evidence relates to the relevant territory.

Most of the evidence is dated within the relevant period. As already explained above, the documents subsequent to the relevant period are not taken into account.

The documents filed, namely the invoices, the awards and the publications provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

In the context of Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 18(1), second subparagraph, point (a) EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 47(2) and (3) EUTMR, Article 18 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, the earlier mark is often used in an orange typeface on a white background or in a white typeface on an orange background. The use of these colours is mainly decorative and does not alter the distinctive character of the earlier mark. Other mentions or wordings may appear on the packaging but all are depicted in an independent manner and/or are perceived as a technical code. Use of a registered word mark together with technical information is an acceptable variant. The use of the earlier mark constitutes an acceptable variation of its registered form.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods and services covered by the earlier trade mark.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

In the present case, the evidence shows genuine use of the trade mark for the following goods:

Class 9: Weighing and measuring apparatus and instruments.

Class 10: Medical apparatus and instruments.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

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

The goods on which the opposition is based and for which use has been proved are the following:

Class 9: Weighing and measuring apparatus and instruments.

Class 10: Medical apparatus and instruments.

Following a decision rendered by the Opposition Division on 06/12/2017 in B 2 699 398 resulting in a partial refusal of the contested European Union trade mark application No 14 908 222, the contested goods are the following:

Class 9: Weighing and measuring apparatus and instruments; weighing and measuring sensors; weighbridges; downloadable computer applications and software for medical and dietetic purposes; weighing and measuring apparatus and instruments for dietetic purposes, weighing apparatus and instruments for medical purposes; none of the aforesaid goods relating to assisted human reproduction.

Class 25: Sports T-shirts and soles with sensors.

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 9

The contested weighing and measuring apparatus and instruments; weighing and measuring sensors; weighbridges; weighing and measuring apparatus and instruments for dietetic purposes, weighing apparatus and instruments for medical purposes; none of the aforesaid goods relating to assisted human reproduction are included in the broad category of the opponent’s weighing and measuring apparatus and instruments. Therefore, they are identical.

The contested downloadable computer applications and software for medical and dietetic purposes; none of the aforesaid goods relating to assisted human reproduction are similar to the opponent’s medical apparatus and instruments in Class 10 because they are complementary as the latter may need specific software essential to their proper functioning. These goods may be directed at the same consumers and can have the same distribution channel. For example, the evidence submitted by the opponent shows that most of the opponent’s goods are provided with their corresponding and supporting software for the consumers to be able to track their health data. In this particular case, the applications are provided for free as they are part of the product but it is likely that some providers of the opponent’s goods charge for their software or, at least, for premium versions of these downloadable or recorded apps.

Contested goods in Class 25

The contested sports T-shirts and soles with sensors have some connection with the opponent’s measuring apparatus and instruments in Class 9. Smart clothing and body sensors are in many ways the ultimate wearables, items that can be integrated as garments, shoes, accessories, or sensor devices that can track or measure physiological or biometric attributes. Therefore, these goods may enter into competition and they are directed at the same public through the same distribution channels. Therefore, these goods are similar to a low degree.

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 or similar to different degrees are directed at the public at large and/or directed at business customers with specific professional knowledge or expertise. Given that the general public is more prone to confusion, the examination will proceed on this basis.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

3. The signs

iHealth
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 general public of the European Union is sufficient to reject the contested application.

The elements ‘Health’ of the earlier mark and ‘ivyhealth’ of the contested sign are meaningless in the countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the general public. As these elements are meaningless for these consumers, they will not be related to the nature or some characteristics of the goods. Therefore, as regards this part of the public, these words are distinctive.

In the earlier mark, the first letter ‘i’ is easily identifiable because it is in lower case followed by an element in title case. This letter is added in such a way to a wide range of existing words to describe new Internet- or computer-related versions of existing concepts, often electronic products that already have a non-electronic counterpart. Taking into account that the relevant goods in Classes 9 and 10 may use IT- and Internet-related technology, it is considered that this letter has a low degree of distinctiveness.

The figurative element of the contested sign can be perceived in different ways, namely as a white check mark on a blue background or as a wavy and purely decorative line. It must be considered distinctive only to a low degree because, it would either suggest that the goods have passed a quality control or it will be perceived as a banal element. In any case, 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 contested sign has no element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the distinctive element ‘Health’ of the earlier mark totally incorporated in the contested sign. However, as regards the contested sign, they differ in its second and third letters, ‘vy’, and in its figurative element.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the syllables /i−( )−he−alth/ or /i−health/. Indeed, although it is considered that the consumers in question do not understand the English word ‘health’, some might be able to perceive that it is an English term and, therefore, may also pronounce it in one syllable only. The pronunciation differs in the second syllable, /−vy−/ of the contested mark which has no counterpart in the earlier mark.

Therefore, the signs are aurally similar to a high degree.

Conceptually, although the relevant public will perceive the meaning of the first letter ‘i’ of the earlier mark as explained above, the other sign may either include the idea of a quality control associated with a check mark or, have no meaning in that territory . Since the signs will either have different meanings or one of them will not be associated with any meaning, they are not conceptually similar.

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 normal, despite the presence of a weak element in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C251/95, Sabèl, EU:C:1997:528, § 22).

The goods found to be identical or similar to different degrees are directed, inter alia, at the public at large whose degree of attention may vary from average to high.

The signs are similar to an average degree from the visual point of view and to a high degree from the aural point of view. Conceptually, the signs are not similar but this is due to the additional letter ‘i’ of the earlier mark which has a low degree of distinctiveness. Therefore, this conceptual divergence between the signs is of little impact. The distinctiveness of the earlier mark must be seen as normal.

In its observations, the applicant argues that, as the element ‘HEALTH’ of the earlier trade mark is non-distinctive, many trade marks include this element or even the verbal element ‘iHealth’ of the earlier mark in its entirety. In support of its argument the applicant refers to several trade mark registrations in the European Union and also states that ‘there are large numbers of national marks in the EU registered in classes 9 and 10 that similarly consist of or contain the letters I*HEALTH’.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element ‘HEALTH’ or contain the letters I*HEALTH’. As regards the distinctiveness of the earlier mark, it must be noted that the Opposition Decision has limited the public to those consumers who do not understand the English word ‘Health’. Therefore, as regards this part of the public, this element has a normal degree of distinctiveness. Under these circumstances, the applicant´s claims must be set aside.

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). In the present case, the low degree of similarity of some goods is offset by the greater degree of similarity between the signs.

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). 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).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods covered are from the same or economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion, including a likelihood of association, on the part of the non−English−speaking part of the general 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. There is no need to analyse the remaining part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 7 266 638. It follows 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 (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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. In the present case, the opponent did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Frédérique SULPICE

Benoit VLEMINCQ

Anna BAKALARZ

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.