OPPOSITION Nо B 3 047 123

International Brand Registrations, Harbour Place, 2nd Floor, 103 South Church Street, P.O. Box 472, 1 1106 George Town, Grand Cayman, Cayman Islands (opponent), represented by Harper Macleod BV, Strawinskylaan 1209 Toren A, Level 12, 1077XX Amsterdam, Netherlands (professional representative)

a g a i n s t

Shenzhen Mindray Bio-Medical Electronics Co., Ltd., Mindray Building, Keji 12th Road South, High-tech Industrial Park, Nanshan, 518057 Shenzhen, People’s Republic of China (applicant), represented by Urquhart-Dykes & Lord LLP, Arena Point Merrion Way, Leeds LS2 8PA, United Kingdom (professional representative).

On 12/07/2021, the Opposition Division takes the following

DECISION:

1.	Opposition No B 3 047 123 is upheld for all the contested goods.

2.	European Union trade mark application No 17 802 919 is rejected in its entirety.

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

REASONS

On 01/03/2018, the opponent filed an opposition against all the goods (classes 9 and 10) of European Union trade mark application No 17 802 919 for the word mark ‘iScanHelper’. The opposition is based on European Union trade mark registration No 13 524 962 for the word mark ‘iScan’. 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 and services

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

Class 9: Downloadable electronic publications; publications in electronic format; databases.

Class 44: Optical services; health screening; healthcare services; health assessment surveys; providing health information; health risk assessment surveys; medical health assessment services; health advice and information services; advisory services relating to health; preparation of reports relating to health care matters.

The contested goods, after limitation by the applicant, are the following:

Class 9: Computer software applications, downloadable, for ultrasonic therapeutic apparatus and for ultrasonic diagnostic instruments for medical use; software applications, for ultrasonic therapeutic apparatus and for ultrasonic diagnostic instruments for medical use; all the aforesaid goods are not used in ophthalmic field.

Class 10: Ultrasonic diagnostic instruments for medical use incorporating ultrasound scanning technology training and teaching software, sold as a unit, for use therewith; ultrasonic therapy apparatus incorporating ultrasound scanning technology training and teaching software, sold as a unit, for use therewith; all the aforesaid goods are not used in ophthalmic field.

As a preliminary remark, it is to 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 9

The contested computer software applications, downloadable, for ultrasonic therapeutic apparatus and for ultrasonic diagnostic instruments for medical use; software applications, for ultrasonic therapeutic apparatus and for ultrasonic diagnostic instruments for medical use; all the aforesaid goods are not used in ophthalmic field are similar to the opponent’s downloadable electronic publications as they usually coincide in producer, relevant public and distribution channels. Furthermore, they are complementary.

Contested goods in Class 10

The contested ultrasonic diagnostic instruments for medical use incorporating ultrasound scanning technology training and teaching software, sold as a unit, for use therewith; ultrasonic therapy apparatus incorporating ultrasound scanning technology training and teaching software, sold as a unit, for use therewith; all the aforesaid goods are not used in ophthalmic field are similar to the opponent's health screening; healthcare services in Class 44 as they have the same purpose (to restore and maintain human’s health) and usually coincide in relevant public. Furthermore, they are complementary.

b) 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 and services found to be similar are directed at the public at large and at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased.

c) The signs

iScan	iScanHelper
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 relevant public of the European Union is sufficient to reject the contested application.

The signs contain the conjoined components ‘i’ and ‘Scan’, visually separated due to the use of lower- and upper-case letters. The contested sign contains a third conjoined element ‘Helper’, also visually divided by the use of lower- and upper-case letters.

The signs’ elements are meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The common letter ‘i’, when used as an acronym means ‘internet’ or ‘interactive’. The common component ‘Scan’ means ‘the examination of a part of the body by means of a scanner’ (information extracted from Collins English Dictionary on 09/07/2021 at https://www.collinsdictionary.com/dictionary/english/scan). As a whole, the common element

‘iScan’ means ‘examination of a part of the body by means of a scanner, characterised by being interactive or having internet capabilities’. Bearing in mind that the relevant goods and services may perform, or be in the field of, such an examination, it is considered that the element ‘iScan’ is weak. However, it is on an equal footing in both signs regarding its distinctiveness.

The contested sign’s verbal element ‘Helper’ means ‘a person or thing that helps; especially, an assisting worker who is more or less unskilled’ (information extracted from Collins English Dictionary on 09/07/2021 at https://www.collinsdictionary.com/dictionary/english/helper). Therefore, this element is weak as it suggests that the relevant goods will provide some kind of help or assistance to the consumer.

Visually and aurally, the signs coincide in the element ‘iScan’ and its sound, which is the entirety of the earlier mark and the first element of the contested sign. The signs differ in the verbal element ‘Helper’ and its sound, positioned at the end of the contested sign.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the signs. The signs coincide in the concept of their common element ‘iScan’. Therefore, and taking into account the concept conveyed by the contested sign’s element ‘Helper’, which does not change the meaning of the common element, the signs are conceptually similar to an average degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) 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.

Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark as a whole must be seen as lower-than-average.

e) 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).

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/services covered are from the same or economically linked undertakings.

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).

The goods and services are similar and target the general and professional public, whose degree of attention varies from average to high.

The signs are visually, aurally and conceptually similar to an average degree, as they share the common element ‘iScan’, which, although weak, still plays an important role in the overall impression created by the signs. This is because the common element is the only element of the earlier mark and the first element of the contested sign, which, as explained above, is the part that first catches the consumers’ attention. In an overall assessment of the marks, the impact of the contested sign’s differing verbal element ‘Helper’, which is weak, is not sufficient to counteract the similarities and to enable the relevant public to safely distinguish between them.

Therefore, it is highly conceivable that the relevant public, even those who will pay a higher degree of attention (who will also have to rely on their imperfect recollection of the signs), could confuse the signs or believe that the similar goods originate from the same or economically linked undertakings.

Indeed, it cannot be excluded that, owing to the inclusion of the sole element of the earlier mark in the contested sign, the relevant consumers may 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 that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

This finding is not called into question by the lower-than-average distinctive character of the earlier trade mark. Indeed, according to established case-law, the finding of a low degree of distinctiveness for the earlier trade mark does not prevent a finding that there is a likelihood of confusion. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor, inter alia, involved in that assessment. In the present case, even involving an earlier mark of lower-than-average distinctive character, there may be a likelihood of confusion on account, in particular, of an average degree of similarity between the signs and similarity between the goods or services.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the 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.

Therefore, the opposition is well founded on the basis of the opponent’s EUTM registration No 13 524 962. 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, 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

Monika CISZEWSKA

Lidiya NIKOLOVA

Philipp HOMANN

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.