OPPOSITION No B 3 073 962

R82 A/S, Parallelvej 3, 8751 Gedved, Denmark (opponent), represented by Patrade A/S, Ceresbyen 75, 8000 Aarhus C, Denmark (professional representative)

a g a i n s t

SENSO2ME NV, Zandhoef 16, B2460 Kasterlee, Belgium (applicant), represented by Chiever BV, Barbara Strozzilaan 201, 1083 HN Amsterdam, the Netherlands (professional representative).

On 12/03/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 073 962 rejected in its entirety.

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

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 946 517 for the word mark ‘PANDA’, namely against some of the goods and services in Classes 10 and 44. The opposition is based on European Union trade mark registration No 3 697 075 for the word mark ‘PANDA FUTURA’, international trade mark registration No 945 486 designating Denmark for the word mark ‘X:PANDA’ and international trade mark registration No 1 328 820 designating Denmark for the word mark ‘PANDA FUTURA’. The opponent invoked Article 8(1)(b) EUTMR.

SUBSTANTIATION – Earlier IR 945 486 and IR 1 328 820 both designating Denmark

According to Article 95(1) EUTMR, in proceedings before it, the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Article 7(1) EUTMDR, the Office will give the opposing party the opportunity to submit the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Article 7(2) EUTMDR, within the period referred to above, the opposing party must also file evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark that is not a European Union trade mark, the opposing party must submit a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in Article 7(1) EUTMDR and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Article 7(2)(a)(ii) EUTMDR. Where the evidence concerning the registration of the trade mark is accessible online from a source recognised by the Office, the opposing party may provide such evidence by making reference to that source — Article 7(3) EUTMDR.

On 22/01/2019, the opponent filed a notice of opposition claiming as the basis of the opposition, inter alia, international trade mark registration No 945 486 and international trade mark registration No 1 328 820 both designating Denmark. The opponent also indicated that it accepted that the necessary information for these trade marks would be imported from the relevant online official database, accessible through TMVIEW, and that this source would be used for substantiation purposes without prejudice to its right or obligation to provide any additional information that may be necessary to comply with the substantiation requirements of Article 7(2) and (4) EUTMDR. However, in the present case, the information for these trade marks from the relevant online official database is not sufficient to substantiate the opponent’s earlier trade marks because, according to the recognised source concerned, and contrary to what is indicated in the notice of opposition, international trade mark registration No 945 486 and international trade mark registration No 1 328 820 do not designate Denmark.

However, the indication of the Member State or the country of designation of the earlier mark is an absolute identification element which, in the event of an erroneous indication, may only be remedied on the opponent’s initiative during the three-month opposition period because the territory of protection of the earlier mark determines the scope of protection of the earlier right, and the extent of the opposition and the applicant’s defence depend on it. A correction in this regard at a later stage entails an unacceptable modification or extension of the basis of the opposition. The registrations on which the international registration are based, (i.e. the ‘basic registrations’), are Danish trade marks; however, basic registrations of international registrations are independent earlier rights, which must be claimed separately. This is also why the opponent’s mistake cannot be perceived as an ‘obvious mistake’.

In view of the foregoing, the opposing party did not file evidence of the existence, validity and scope of protection of its earlier marks or earlier rights as claimed in the notice of opposition.

According to Article 8(1) EUTMDR, if until expiry of the period referred to in Article 7(1) EUTMDR, the opposing party has not submitted any evidence of the existence, validity and scope of protection of its earlier marks or earlier rights, as well as its entitlement to file the opposition, or where the evidence submitted is manifestly irrelevant or manifestly insufficient, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on earlier international trade mark registration No 945 486 and international trade mark registration No 1 328 820 both designating Denmark.

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 12: Infant and child strollers and wheelchairs for disabled persons and accessory parts therefore.

The contested goods and services are the following:

Class 10: Patient monitoring sensors and alarms; ultrasonic sensors for medical use.

Class 44: Medical services, including care and treatment, and psychological support.

Class 45: (specifically the underlined) Security services for the protection of property and individuals, In particular security and chaperoning of babies, the elderly and the disabled; Rental of alarms; None of the aforesaid services for IT apparatus security and protection.

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

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.

As a preliminary remark it should be noted that in the notice of opposition the opponent contested Class 45. However, the only wording listed in Class 45, as well as in the additional documents, is ‘and the disabled’. Consequently, the Opposition Division will proceed with the decision without taking into consideration Class 45 of the contested goods and services. Nevertheless, even if all the services in Class 45 were to be taken into consideration, they are dissimilar to the opponent’s goods as they do not coincide in any of the relevant factors which may lead to similarity.

Contested goods in Class 10

The contested patient monitoring sensors and alarms; ultrasonic sensors for medical use are various sensors for medical use. As such they have different nature, purpose and method of use of those of the opponent’s goods (strollers and wheelchairs) in Class 12. Furthermore, they are neither complementary, nor in competition with each other. Finally, they do not coincide in manufacturers and distribution channels. Therefore, they are dissimilar.

Contested services in Class 44

The contested medical services are dissimilar to the opponent’s goods in Class 12, as these services consist in the actual activity of medical treatment. Although their purpose may coincide with that of the opponent’s goods (improving the mobility of disabled people), they have clearly different natures and method of use. Furthermore, they do not coincide in their distribution channels and origin as, contrary to the assertions of the opponent, the relevant public does not expect a doctor to develop and market a pushchair or a chair for disabled people, for instance.

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, 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

Valeria ANCHINI

Tzvetelina IANTCHEVA

Sylvie ALBRECHT

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.