OPPOSITION No B 3 031 567

OSIM International Ltd, 65 Ubi Avenue 1, OSIM Headquarters, 408939 Singapore, Singapore (opponent), represented by J. Pereira Da Cruz, S.A., Rua Victor Cordon, 14, 1249-103 Lisboa, Portugal (professional representative)

a g a i n s t

M+B Praxis-Konzepte und Handels GmbH, Tivoligasse 2/15, 1120 Wien, Austria (applicant), represented by Köhler Draskovits Unger GmbH, Amerlingstrasse 19, 1060 Wien, Austria (professional representative).

On 21/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 031 567 is partially upheld, namely for the following contested goods:

Class 10: Orthopedic articles.

2. European Union trade mark application No 17 374 414 is rejected for all the above goods. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 374 414 , namely against all the goods and services in Classes 10 and 44. The opposition is based on Portuguese trade mark registration No 384 400 ‘OSIM’. 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: Medical apparatus and instruments; medical diagnostic apparatus; physiotherapy apparatus; furniture for medical and therapeutic purposes; orthopedic articles; reflexology machines; blood pressure monitors; deep heat massage apparatus; electrically operated massagers; esthetic massage apparatus; gloves for massage; massage apparatus and appliances; massage hairbrushes; nerve muscle stimulators; hand-held massagers; eye massagers; massage chairs; kneading and massaging machines; foot massagers; apparatus for use in exercising and/or toning muscles; urine monitors; nebuliser; insoles for orthopedic shoes; orthopedic footwear (shoes); abdominal belts and pads; orthopedic belts; air cushions, mattresses and pillows for medical purposes; pillows for orthopedic use; heating cushions (pads), electric, for medical purposes; hot air therapeutic apparatus; bandages (elastic); electromedical and/or electrotherapy apparatus and instruments for slimming treatments; thermometers for medical purposes; hearing aids for the deaf; parts and fittings for all the aforesaid goods.

Class 35: Advertising, direct mail advertising, marketing promotional, and publicity services; the bringing together for the benefit of others a variety of goods, enabling customers to conveniently view and purchase those goods in a retail store, in a wholesale outlet, from a mail order catalogue, from a general merchandise catalogue, by telecommunications or from a global computer network web site; the bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase these goods in a specialty retail store offering sports, exercise and fitness apparatus, medical diagnostic and health care apparatus, therapeutic and physiotherapy products and health supplements; demonstration of goods; arranging and conducting exhibitions for advertising, commercial or trade purposes; arranging and conducting trade shows; providing information on sale of goods; providing of business or commercial information, marketing studies and researches, cost price analysis, business management assistance, business appraisals, business management and organization consultancy, business search, business research, business consultancy concerning franchisees and licensees; advisory services for the business of selling health apparatus and equipment; including all of the aforementioned services when offered and/or provided on-line from a computer database, cable medium or via the internet; providing business information relating to the selection and purchase of items relating to the selection and purchase of items relating to health, medical, therapeutic and personal nature by means of a global computer information network.

The contested goods and services are the following:

Class 10: Orthopedic articles.

Class 44: Medical services.

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 contested orthopedic articles are identically included in both lists of goods.

Contested services in Class 44

The contested medical services are medical and healthcare-related services typically provided by hospitals and other healthcare institutions. There is a certain link between the contested services and the opponent’s goods in Class 10 because of their shared purpose. However, the differences in their nature and especially, in their usual origin clearly outweigh any points in common. Furthermore, these contested services and the opponent’s goods do not have the same distribution channels and they are not in competition as the relevant public does not expect a doctor or a hospital to manufacture or distribute medical equipment. Therefore, the contested services are dissimilar to the opponent’s goods in Class 10.

Contrary to the opponent’s assertion, the same applies to the opponent’s services in Class 35. Although these services include the activity of retail of medical and healthcare apparatus and products, they have nothing in common with the contested medical services in Class 44. The Court has held that the objective of retail trade is the sale of goods to consumers, which includes, in addition to the legal sales transaction, all activity carried out by the trader for the purpose of encouraging the conclusion of such a transaction. That activity consists, inter alia, in selecting the assortment of goods offered for sale and in offering a variety of services intended to induce the consumer to conclude the abovementioned transaction with the trader in question rather than with a competitor (07/07/2005, C‑418/02, Praktiker, EU:C:2005:425, § 34). Therefore, these services, and the opponent’s remaining ones in Class 35 related to advertising, business management, etc., have completely different natures and purposes from the contested services in Class 44. Moreover, they are provided by different undertakings, distributed through different channels and their relevant public also differs. Furthermore, they are neither complementary nor in competition. Therefore, they are dissimilar.

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 directed at the public at large as well as at professionals in the field of healthcare. The degree of attention is considered higher than average, as the goods are quite specialised and related to health, an area to which even average consumers pay a higher degree of attention.

3. The signs

OSIM
Earlier trade mark	Contested sign

The relevant territory is Portugal.

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 a word mark, consisting of the four letters ‘OSIM’. The word ‘OSIM’ is meaningless in relation to the goods in question and, therefore, has an average degree of distinctiveness.

The contested sign is a figurative mark consisting of blue upper-case letters, ‘OSZM’, with a thin vertical line between the letters ‘Z’ and ‘M’. However, considering that the relevant public tends to read signs, at least part of the public might perceive the vertical line as a thin upper-case letter ‘I’ and read the verbal element as ‘OSZIM’ rather than spelling out each letter, as this facilitates its pronunciation. There is a figurative element before the verbal element consisting of two blue curved lines with a dot above. Irrespective of whether the verbal element will be perceived as ‘OSZM’ or ‘OSZIM’, contrary to the arguments of the applicant, it is meaningless for the relevant public, and, therefore, has an average degree of distinctiveness. The distinctiveness of the figurative element is also average, as it does not describe or allude to any characteristics of the relevant goods. 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 element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37). Consequently, the verbal element of the contested sign will be the only element by which the relevant consumers will refer to the sign and, therefore, it has a stronger impact than the figurative element.

The contested sign does not have any dominant element, since the verbal element and the figurative device are of a similar size.

Visually, the signs coincide in the letters ‘OS*M’, which constitute their first two letters and their last letter. For the part of the public that will perceive the verbal element of the contested sign as ‘OSZIM’, the signs also coincide in the letter ‘I’. The number of differences between the signs’ verbal elements depends on the perception of the verbal element of the contested sign. They will either differ in the middle letter ‘Z’ of the verbal element of the contested sign versus the middle letter ‘I’ of the earlier mark, or just in the letter ‘Z’ in the middle of the verbal element of the contested sign. The signs also differ in the colours and the figurative elements of the contested sign.

Taking into account that the earlier mark and the verbal element of the contested sign are rather short words, the above indicated differences will be noticed by the relevant consumers. However, these differences cannot outweigh the similarities created by the signs’ coinciding in their first two letters, ‘OS’, and their last, ‘M’. This is even more the case for the part of the public that will perceive the verbal element of the contested sign as ‘OSZIM’ and will see the coincidence in one more additional letter ‘I’ before the last letter ‘M’ in both signs.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘OS*M’. The pronunciation differs in the sound of the third letter, ‘Z’, in the middle of the verbal element of the contested sign versus the third letter ‘I’ in the middle of the earlier mark, or, for the part of the public that will pronounce the verbal element of the contested sign as /OSZIM/, only in the additional sound of the letter ‘Z’ in the contested sign. The figurative element of the contested sign will not be referred to aurally by the relevant consumers.

The applicant argues that the signs will be pronounced differently, as the earlier mark will be pronounced as /OSIM/, whereas the contested sign will be spelt out as /O-S-Z-M/. However, considering the fact that the relevant public tends to read signs, including the part of the public that will perceive the verbal element of the contested sign as ‘OSZM’, and even taking into account the relative shortness of both verbal elements, the signs still coincide in the sound of three letters out of four and this will not go unnoticed by the relevant consumers. Therefore, for this part of the public, the signs are aurally similar to at least an average degree.

The aural similarities are even greater for the part of the public that will perceive the verbal element of the contested sign as ‘OSZIM’, as the addition of the /Z/ sound just after the /S/ sound in the middle of the verbal element of the contested sign will not create any significant difference in pronunciation from the earlier mark. Therefore, for this part of the public, the signs are aurally similar to a high degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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.

5. Global assessment, other arguments and conclusion

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).

The contested goods are identical and the contested services are dissimilar to the opponent’s goods and services. The goods and services target the public at large and a professional public, whose degree of attention is higher than average. The distinctiveness of the earlier mark is normal.

As detailed in section c), the signs are visually similar to an average degree and aurally similar to either at least an average degree or to a high degree. The conceptual aspect plays no role in this assessment of likelihood of confusion as both signs are meaningless. The earlier mark and the verbal element of the contested sign coincide in, at least, three letters out of four. In any case, the difference in one letter in the middle, coupled with the differences in the colours and the figurative element of the contested sign, is not sufficient to distract the consumers’ attention from the abovementioned similarities.

Taking into account the above indicated principle of interdependence and 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), it is highly conceivable that the relevant consumers will make a connection between the conflicting signs and assume that the goods in question are from the same undertaking or economically linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Portuguese trade mark registration No 384 400.

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 contested services in Class 44 are dissimilar to the opponent’s goods and services. 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 services 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 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

Cynthia DEN DEKKER

Rasa BARAKAUSKIENE

Erkki MÜNTER

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.