OPPOSITION No B 3 056 638

Stryker Corporation, 2825 Airview Boulevard, 49002, Kalamazoo, United States of America (opponent), represented by Wuesthoff & Wuesthoff Patentanwälte Partg mbB, Schweigerstr 2, 81541 München, Germany (professional representative)

a g a i n s t

Lothar Schwarz, Hochstraß 5, 94377 Steinach, Germany (applicant), represented by Glück Kritzenberger Patentanwälte PartGmbB, Hermann-Köhl-Str 2a, 93049 Regensburg, Germany (professional representative).

On 26/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 056 638 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 065 021, for the word mark ‘Captain Neptun’. The opposition is based on international trade mark registration No 922 250 designating the European Union for the word mark ‘NEPTUNE’. 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.

On 05/02/2019, the applicant submitted observations in response to the opponent’s notice of opposition, containing further facts, evidence and arguments. These observations contained a request for proof of use of the earlier international trade mark registration No 922 250.

Irrespective of the question of whether proof of use might be required or not, in the present case, the applicant has not submitted the request for proof of use by way of a separate document, as required by Article 10(1) EUTMDR.

Therefore, as already communicated by the Office to the applicant in the letter of 13/02/2019, the request for proof of use is inadmissible pursuant to Article 10(1) EUTMDR.

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.

a) The goods and services

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

Class 10: Medical waste management apparatus comprised of a suction device for removing smoke and/or liquid waste from an operational site, a waste collection device and a disposal device.

After the limitations of 01/08/2018 and 25/09/2018 requested by the applicant, accepted by the Office on 03/08/2018 and 27/09/2018 and duly notified to the opponent on 03/08/2018 and 28/09/2018, respectively, the contested goods and services are the following:

Class 10: Medical instruments, apparatus and equipment, namely wound cleansing systems, drilling and cutting tools, cement restrictors, cement stoppers (absorbable and non-absorbable implants for bone marrow space), cement mixing systems, vacuum mixing systems.

Class 11: Sewage purification installations; water supply installations; water purification, desalination and conditioning installations; water treatment apparatus, in particular water filtering apparatus, water disinfecting apparatus, none of the aforesaid goods for use in the field of horticulture, gardening and agriculture, and not being domestic waterworks for household irrigation and drainage.

Class 35: Wholesaling and retailing of wound cleansing systems, drilling and cutting tools, cement restrictors, cement stoppers, biomaterials, bone cement, cement mixing systems, vacuum mixing systems; wholesaling and retailing via the internet of wound cleansing systems, drilling and cutting tools, cement restrictors, cement stoppers, biomaterials, bone cement, cement mixing systems, vacuum mixing systems, in particular presentation of goods and services, order placement, delivery and invoice management; organisational and financial consultancy in the fields of environmental protection, water treatment and water purification; business management.

Class 36: Operation of environmental protection associations, namely charitable fund raising through entertainment events.

Class 37: Construction of installations for process technology, water treatment, water purification and environmental protection; repair, maintenance and servicing of installations for process technology, water treatment, water purification and environmental protection; installation, repair, maintenance and servicing of water treatment, decalcification and cleaning equipment; project management in relation to building construction in the field of construction of installations for process technology, water treatment, water purification and environmental protection; cleaning of public areas (operation of environmental protection associations).

Class 40: Water treatment; water treatment; water purification.

Class 41: Arranging and conducting of seminars, workshops and colloquiums in the medical sector; conducting of courses and seminars for the sales promotion and product presentation of medical instruments, apparatus and equipment; providing of training and education in the field of environmental protection and protection of water resources; organisation, arranging and conducting of seminars, workshops, symposiums, congresses and conferences in the fields of environmental protection and protection of water resources; operation of environmental protection associations, namely arranging and organisation of training events in the field of environmental protection, in particular of associations for the association members thereof.

Class 42: Technical consultancy for doctors and their employees, and for nursing personnel, with regard to the handling and care of medical instruments, apparatus and equipment; technical consultancy relating to environmental protection and protection of water resources.

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

The term ‘in particular’, used in the applicant’s list of goods and services, indicates that the specific goods and services 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).

However, the term ‘namely’, used in the applicant’s list of goods and services to show the relationship of individual services to a broader category, is exclusive and restricts the scope of protection only to the goods and services specifically listed.

Furthermore, it should 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.

Contested goods in Class 10

The opponent’s goods consist of waste management apparatus designed to be used in relation to a specific type of waste, namely medical waste. In particular, as also explained by the opponent, the apparatus covered by the earlier mark is designed to evacuate hazardous fluids or smoke produced during surgical interventions, from operating theatres (i.e. from hospital or clinic premises).

The contested medical instruments, apparatus and equipment, namely wound cleansing systems, drilling and cutting tools, cement restrictors, cement stoppers (absorbable and non-absorbable implants for bone marrow space), cement mixing systems, vacuum mixing systems are very specific medical instruments, apparatus and equipment, sharing a main general purpose, namely the diagnosis, treatment or improvement of the condition of patients. Although it is true that both the opponent’s apparatus and the contested goods can be used in the same environment (hospitals and clinics), they have different natures and purposes. While the contested goods, medical instruments, apparatus and equipment, are meant to treat and cure patients, the opponent’s medical waste apparatus is aimed at providing a safe environment for both patients and medical staff, by preventing contamination in hospitals and clinics. As such, the opponent’s goods are not medical apparatus, instruments or equipment.

The opponent argues that the medical waste apparatus, of which its goods consist, has the same purpose as the contested medical instruments, apparatus and equipment, namely wound cleansing systems; to help clean surgical wounds. However, the Opposition Division points out that the comparison of the goods and services must be made on the basis of the wording of the lists of goods and services as applied for and registered (15/03/2012, T‑379/08, Wavy line, EU:T:2012:125, § 26). It is up to the opponent to provide the Office with all the relevant facts and evidence to substantiate that the goods and services are similar (07/12/2017, R 947/2017‑5, EQN European Quality Integrated Ntrition (fig.) / EQ ESTEVE (gif.) et al., § 29; 18/05/2018, R 1539/2017‑1, SuperCor / SUPERCOR et al., § 26). In the present case, the alleged specific purpose of the opponent’s apparatus (i.e. to help cleaning surgical wounds) cannot be inferred from the list of the opponent’s goods or from the documents submitted by the opponent, namely some printouts of the opponent’s website. Therefore, this argument of the opponent must be set aside.

Furthermore, given that both the opponent’s goods and the contested goods are very specific apparatus and/or instruments, the relevant public (e.g. a professional buyer of apparatus or equipment to be used in a hospital or a clinic) will be aware that their manufacture requires different knowledge and expertise and, as such, is not likely to believe that these goods are manufactured by the same undertaking. Similar considerations apply to distribution channels. Although it is not excluded that a large provider of apparatus and equipment for hospitals can distribute both the earlier goods and some of the contested goods (as argued by the opponent with specific reference to the contested drilling and cutting tool), given the specificity of the equipment and apparatus under comparison, as well as their different purposes, it cannot be considered a general rule in the market. Therefore, these goods are deemed to be generally distributed through different channels. Furthermore, they are neither in competition with, nor complementary to, each other. Therefore, contrary to the opponent’s view, these goods are dissimilar.

Contested goods in Class 11

The contested sewage purification installations; water supply installations; water purification, desalination and conditioning installations; water treatment apparatus, in particular water filtering apparatus, water disinfecting apparatus, none of the aforesaid goods for use in the field of horticulture, gardening and agriculture, and not being domestic waterworks for household irrigation and drainage, are water treatment and supply apparatus and installations. As such, they do not have anything in common with the opponent’s goods in Class 10, which consist of specific waste management apparatus for medical waste. Indeed, these goods clearly have different natures and purposes and are produced by different undertakings. Furthermore, they are neither in competition with, nor complementary to, one another. Therefore, they are dissimilar.

Contested services in Class 35

In principle, goods are not similar to services simply by their nature, given that services are intangible whereas goods are tangible, and that they serve different needs. However, in some cases, services such as retail of specific goods in Class 35 can be considered similar to specific goods; if the goods sold at retail are identical to the goods covered by the other mark.

In the present case, the contested wholesaling and retailing of wound cleansing systems, drilling and cutting tools, cement restrictors, cement stoppers, biomaterials, bone cement, cement mixing systems, vacuum mixing systems; wholesaling and retailing via the internet of wound cleansing systems, drilling and cutting tools, cement restrictors, cement stoppers, biomaterials, bone cement, cement mixing systems, vacuum mixing systems, in particular presentation of goods and services, order placement, delivery and invoice management in Class 35 refer to goods that are dissimilar to the opponent’s goods. Therefore, these contested services are dissimilar to the opponent’s goods.

Furthermore, it is clear that none of the remaining contested services in Class 35, namely organisational and financial consultancy in the fields of environmental protection, water treatment and water purification; business management, have anything in common with the opponent’s medical waste management apparatus. These contested services are intended to help companies manage their business and to provide consultancy on financial and organisational issues. They are usually rendered by companies specialising in this specific field, such as business or financial consultants. Therefore, their natures and intended purposes are different. Furthermore, they are neither in competition with nor complementary to each other and they do not have the same producers/providers. Therefore, these contested services are dissimilar to the opponent’s goods.

Contested services in Classes 36, 37 and 40

All the above-listed contested services in Classes 36 (fund raising in the field of environmental protection), 37 (construction, repair and maintenance services of installations for process technology, water treatment and environmental protection as well as cleaning of public areas) and 40 (water treatment and purification services) do not have anything in common with the opponent’s medical waste management apparatus. Their natures and intended purposes are different. Furthermore, they are neither in competition with nor complementary to each other and they do not have the same producers/providers or distribution channels. Therefore, these contested services are dissimilar to the opponent’s goods.

Contested goods in Classes 41 and 42

The contested arranging and conducting of seminars, workshops and colloquiums in the medical sector in Class 41 are related to education in the medical field. Even though these educational services are related to medicine, the mere fact that the opponent’s waste management apparatus is for use in hospitals or clinics is not enough to find similarity between these contested services and the opponent’s goods. Producers of specific advanced apparatus, to be used in hospitals, may sometimes provide bespoke training for the specialised users that will handle their particular equipment. However, the training will, in those cases, only be related to the use of that specific equipment and not to medicine (i.e. the science and practice of establishing diagnosis, prognosis, and treatment of diseases). Although it is quite common for manufacturers to provide instructions or even short training courses on how to use their apparatus, this fact alone does not mean that these manufacturers can be regarded as educational or training service providers. The relevant consumer will not expect a manufacturer of the opponent’s waste management apparatus to provide the contested education and training services in the field of medicine, because the knowledge and skills involved in each activity are clearly different. Consequently, these goods and services have different natures and purposes and are provided by different undertakings. Furthermore, they are neither in competition with, nor complementary to, each other. Therefore, these goods and services are dissimilar.

The contested conducting of courses and seminars for the sales promotion and product presentation of medical instruments, apparatus and equipment in Class 41 and the contested technical consultancy for doctors and their employees, and for nursing personnel, with regard to the handling and care of medical instruments, apparatus and equipment in Class 42 are educational and consultancy services, provided for the promotion, presentation, use and maintenance of medical instruments, apparatus and equipment which, by definition, are for the diagnosis, treatment or improvement of the condition of patients. Regardless of the specific type of waste indicated in the list of goods (i.e. medical waste), the opponent’s goods consist of specialised apparatus for waste management, which clearly differs from medical instruments, apparatus or equipment aimed at treating and curing patients. Reference is made to the conclusions reached above, regarding the contested goods in Class 10. Consequently, the opponent’s goods and the contested services cannot be considered complementary in the sense that one is indispensable for the use of the other, thereby leading the consumer to think that they originate from the same undertaking. Furthermore, they have different natures and purposes and they are not in competition. These goods and services, contrary to the opponent’s view, are dissimilar.

The remaining contested services, namely providing of training and education in the field of environmental protection and protection of water resources; organisation, arranging and conducting of seminars, workshops, symposiums, congresses and conferences in the fields of environmental protection and protection of water resources; operation of environmental protection associations, namely arranging and organisation of training events in the field of environmental protection, in particular of associations for the association members thereof in Class 41 and technical consultancy relating to environmental protection and protection of water resources in Class 42 are educational and consultancy services provided in the field of environmental protection and protection of water resources. As such they do not have anything in common with the opponent’s medical waste management apparatus. Their natures and intended purposes are different. Furthermore, they are neither in competition with nor complementary to each other and they do not have the same producers/providers. Therefore, these contested services are dissimilar to the opponent’s goods.

b) Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Loreto URRACA LUQUE

Rosario GURRIERI

Rasa BARAKAUSKIENE

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.