OPPOSITION No B 2 740 747

Chang-An Chou, Spittelberggasse 3, 1070 Wien, Austria (opponent)

a g a i n s t

iRhythm Technologies, Inc., 2 Marriott Drive, 60069 Lincolnshire, United States (applicant), represented by Taylor Wessing LLP, 5 New Street Square, London, EC4A 3TW, United Kingdom (professional representative).

On 28/08/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 740 747 is upheld for all the contested goods.

2. European Union trade mark application No 15 186 414 is rejected in its entirety.

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

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. 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 15 186 414 for the word mark ‘IRHYTHM’, namely against all the goods in Classes 9 and 10. As a consequence of the division of the goods and services covered by the application, the opposition is now directed against all the goods covered by the application. The opposition is based on European Union trade mark registration No 12 160 412 for the word mark ‘iRhythm’. The opponent invoked Article 8(1)(a) EUTMR.

DOUBLE IDENTITY — ARTICLE 8(1)(a) EUTMR

Pursuant to Article 8(1)(a) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for will not be registered if it is identical to the earlier trade mark and the goods or services for which registration is applied for are identical to the goods or services for which the earlier trade mark is protected.

1. The goods

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

Class 9: Computer software for use in medical decision support systems; remote monitoring apparatus.

Class 10: Heart monitors.

The contested goods are the following:

Class 9: Computer application software for mobile phones and handheld computers for use by patients for recording, transmitting, logging, tracking, analyzing, and reviewing medical conditions, symptoms, and ailments; computer application software for mobile phones and handheld computers for use by patients for viewing informational videos and accessing information in connection with recorded medical conditions, symptoms, and ailments; computer software for mobile phones and handheld computers for use by patients for viewing historically recorded medical conditions, symptoms, and ailments; computer application software for mobile phones and handheld computers for use by patients for receiving and reviewing medical messages and notifications from medical service providers; apparatus for wireless transmission of medical data and information.

Class 10: Heart monitors.

Contested goods in Class 9

The contested computer application software for mobile phones and handheld computers for use by patients for recording, transmitting, logging, tracking, analyzing, and reviewing medical conditions, symptoms, and ailments; computer application software for mobile phones and handheld computers for use by patients for viewing informational videos and accessing information in connection with recorded medical conditions, symptoms, and ailments; computer software for mobile phones and handheld computers for use by patients for viewing historically recorded medical conditions, symptoms, and ailments; computer application software for mobile phones and handheld computers for use by patients for receiving and reviewing medical messages and notifications from medical service providers overlap with the opponent’s computer software for use in medical decision support systems, insofar as they could all be computer software for mobile phones and handheld computers for use by patients for recording, transmitting, logging, tracking, analyzing, and reviewing medical conditions, symptoms, and ailments, for viewing informational videos and accessing information in connection with recorded medical conditions, symptoms, and ailments, for viewing historically recorded medical conditions, symptoms, and ailments, and for receiving and reviewing medical messages and notifications from medical service providers, as all these functions of the contested goods could be used for computer software support systems for taking medical decisions. Therefore, they are identical.

The contested apparatus for wireless transmission of medical data and information overlaps with the opponent’s remote monitoring apparatus, insofar as they could both be apparatus for wireless transmission of medical data and information, as apparatus for remote monitoring often functions by wireless transmission of data and information, which could be medically related. Therefore, they are identical.

Contested goods in Class 10

Heart monitors are identically contained in both lists of goods.

2. The signs

iRhythm	IRHYTHM
Earlier trade mark	Contested sign

The signs are identical.

The applicant argues that there are some differences in the signs as a result of the use of both upper case and lower case letters in the opponent’s mark, and that the signs cannot be found to be any more than merely similar.

The Opposition Division notes that word marks do not claim any particular figurative element or appearance. A word mark is a mark consisting entirely of letters, words or associations of words, written in printed characters in a normal font, without any specific graphic element (20/04/2005, T‑211/03, Faber, EU:T:2005:135, § 33; 13/02/2007, T‑353/04, Curon, EU:T:2007:47, § 74). Where both marks are registered as word marks, the typeface is, therefore, immaterial, even if lower case and upper case letters alternate. Word marks are, therefore, considered identical if they coincide exactly in a string of letters or numbers.

Furthermore, the applicant refers to the judgment of 15/09/2005, C‑37/03, BioID, EU:C:2005:547, in which, the applicant in the current case states, it is emphasised that the use of upper case and lower case letters can influence the pronunciation of a mark, the visual impression it conveys and the understanding of its meaning. The Opposition Division notes that the BioID case cited above concerns a comparison between a word mark and a figurative mark. The decision cited is therefore not relevant in the present case, in which both marks are word marks. For the same reason, the applicant’s arguments based on the reasoning in the BioID case are set aside.

3. Conclusion

The signs were found to be identical and all of the contested goods, as established above in section a) of this decision, are identical. Therefore, the opposition must be upheld under Article 8(1)(a) EUTMR for all the contested goods, and the contested trade mark application is 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 (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

Rosario GURRIERI

Mads Bjørn Georg JENSEN

Vita VORONECKAITE

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.