OPPOSITION No B 3 047 593

Icon Health & Fitness, Inc., 1500 South 1000 West Logan, Utah 84321, United States of America (opponent), represented by Urquhart-Dykes & Lord LLP, Arena Point Merrion Way, Leeds, LS2 8PA, United Kingdom (professional representative)

a g a i n s t

Shenzhen Shine Industrial Co. Ltd. 2/F, Bldg. 10, 1st Industrial Zone, Changzhen Community, Gongming Town, Guangming District, 518132 Shenzhen, Guangdong, People’s Republic of China (applicant), represented by Rolim Mietzel Wohlnick & Calheiros Llp, Graf-Adolf-Straße 14, 40212 Düsseldorf, Germany (professional representative).

On 11/12/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3047 593 is upheld for all the contested goods.

2. European Union trade mark application No 17 557 018 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 557 018 ‘IFIT’. The opposition is based, inter alia, on European Union trade mark registration No 12 543 682 ‘IFIT’. 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.

a) The goods

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

Class 9: Pedometers; altimeters; multifunctional electronic devices for displaying, measuring, and uploading to the Internet and computer networks information including time, date, heart rate, global positioning, direction, distance, altitude, speed, steps taken, calories burned, navigational information, weather information, temperature, wind speed, changes in heart rate, activity level, hours slept, and quality of sleep; computer software for wireless data communication for receiving, processing, transmitting and displaying information relating to fitness, body fat, body mass index; computer software for managing information regarding tracking, compliance and motivation with a health and fitness program; electronic monitoring devices incorporating microprocessors, digital display, and accelerometers, for detecting, storing, reporting, monitoring, uploading and downloading sport, fitness training, and activity data to the Internet, and communication with personal computers, regarding time, steps taken, calories burned, distance; computer software for fitness; computer software and computer application software for mobile phones and personal digital devices for monitoring, uploading, and downloading data regarding sport activity, fitness training, and fitness level to the internet and other computer and electronic communication networks; computer software and computer application software for mobile phones and personal digital devices that monitor, track, and compare sport activity and fitness level; computer software and computer application software for mobile phones and personal digital devices that provides tips, coaching, and personalized workouts, to improve the user's fitness level.

After a limitation made by the applicant on 16/04/2018, the contested goods are the following:

Class 9: Weighing apparatus and instruments not relating to sports, fitness or purposes of body analysis, namely baby scales and kitchen scales; Power banks; Rechargeable batteries.

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

The term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed. Consequently, the Opposition Division will proceed to analyse only the goods baby scales and kitchen scales; power banks; rechargeable batteries.

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.

The contested baby scales are similar to multifunctional electronic devices for displaying (…) information including (…) calories burned (…) as the goods have the same (broad) purpose, they could have the same commercial origin and distribution channels, and be addressed to the same public.

The contested kitchen scales are similar to a low degree to multifunctional electronic devices for displaying (…) information including (…) calories burned (…) as the goods have the same (broadly) purpose, they could have the same distribution channels, and be addressed to the same public.

Power banks and rechargeable batteries are similar to pedometers, as the goods are sold together, they are indispensable for each other and, consequently, they are complementary, and they have the same commercial origin and distribution channels.

b) The signs

IFIT	IFIT
Earlier trade mark	Contested sign

The signs are identical.

c) 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, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (Lloyd Schuhfabrik, § 20; Sabèl, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The signs are identical and the goods are either similar to a low degree or to an average degree. Taking into account the principle of interdependence mentioned above, the identity of the signs counteracts the low degree of similarity in relation to some of the goods with the result that the relevant public might get confused as to their commercial origin. Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 12 543 682. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right mentioned above leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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.

The Opposition Division

Aldo BLASI

María Belén IBARRA DE DIEGO

Francesca CANGERI

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.