OPPOSITION Nо B 3 077 078

Trimurti Holding Corporation, Palm Grove House, P.O. Box 438, Road Town, Tortola, British Virgin Islands (opponent), represented by Pons Patentes y Marcas Internacional, S.L., Glorieta de Rubén Darío, 4, 28010 Madrid, Spain (professional representative)

a g a i n s t

Dürr Dental Se, Höpfigheimer Str. 17, 74321 Bietigheim-Bissingen, Germany (applicant), represented by Klaka, Delpstr. 4, 81679 München, Germany (professional representative).

On 25/11/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 077 078 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 of European Union trade mark application No 17 967 913  (figurative mark). The opposition is based on European Union trade mark registration No 11 051 554, ‘VECTOR’ (word mark). The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

Proof of use of the earlier mark was requested by the applicant. However, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T‑296/02, Lindenhof, EU:T:2005:49, § 41, 72). The examination of the opposition will proceed as if genuine use of the earlier mark had been proven for all the goods invoked, which is the best light in which the opponent’s case can be considered.

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 1: Unprocessed thermoplastic elastomer for use as a component in various materials, including road building materials, roofing materials, adhesives and oil additives, and as a modifier for thermoplastic and thermoset polymeric materials.

The contested goods are the following:

Class 5: Chemicals for medical purposes, namely liquids and powders containing abrasive particles and/or active ingredients for use in the ultrasonic treatment of tissues; liquids for cleaning and disinfecting ultrasound treatment apparatus and ultrasound treatment tools.

Class 10: Surgical, medical, dental and veterinary instruments and apparatus, namely ultrasonic treatment apparatus, ultrasonic tools, ultrasonic handpieces and storage and sterilisation containers being components and/or accessories therefor.

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

The term ‘including’, used in the opponent’s list of goods, indicates that the specific goods 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 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.

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 Classes 5 and 10

The contested chemicals for medical purposes, namely liquids and powders containing abrasive particles and/or active ingredients for use in the ultrasonic treatment of tissues; liquids for cleaning and disinfecting ultrasound treatment apparatus and ultrasound treatment tools in Class 5 are chemical substances intended for use in the ultrasonic treatment of tissues and disinfectants which are agents that destroy or inhibit the activity of microorganisms that cause disease intended for ultrasound devices, hence, both serving a medical purpose . The contested surgical, medical, dental and veterinary instruments and apparatus, namely ultrasonic treatment apparatus, ultrasonic tools, ultrasonic handpieces and storage and sterilisation containers being components and/or accessories therefor in Class 10 are pieces of equipment used in hospitals for medical purposes.

On the other hand, the opponent’s unprocessed thermoplastic elastomer for use as a component in various materials, including road building materials, roofing materials, adhesives and oil additives, and as a modifier for thermoplastic and thermoset polymeric materials is essentially a class of copolymers or a physical mix of polymers (usually a plastic and a rubber) used for manufacturing products belonging to other classes such as building materials, adhesives or even as alleged by the opponent for manufacturing medical apparatus.

Even if the opponent’s unprocessed thermoplastic elastomer for use as a component in various materials in Class 1 are used in the production of certain chemicals or medical utensils or apparatus as demonstrated by the opponent in the submitted material, they are not considered similar to goods included in Classes 5 or 10. The mere fact that the opponent’s goods could be used for the manufacture of some of the applicant’s goods is not sufficient in itself to conclude that the goods are similar, as their nature, purpose and relevant public are quite distinct: raw materials are intended for use in industry rather than for direct purchase by the final consumer.

The purpose as a finished product of the contested goods for medical use clearly differs from the opponent’s goods, which are in their raw, unfinished state and not yet mixed with other component or chemicals into a final product yet. The finished products in Classes 5 and 10 also target a different public and do not share the same distribution channels. While the contested goods target doctors, physicians and medical experts as well as hospitals, clinics or other medical centres, the goods of the opponent targets manufacturers from a wide variety of industries, including producers or manufacturers of medical apparatus. Given the application of the goods concerned in different sectors, it is apparent that their target public are largely diverging specialised consumers with different knowledge and expertise. By definition, goods intended for different publics cannot be complementary (22/06/2011, T‑76/09, Farma Mundi Farmaceuticos Mundi, EU:T:2011:298, § 30; 12/07/2012, T‑361/11, Dolphin, EU:T:2012:377, § 48). For the same reasons, these goods are neither in competition nor do they coincide in method of use. Moreover, the goods in conflict have different manufacturing methods and require a different technical set of skills and know-how for their production and it is very unlikely that consumers will perceive such goods as originating from the same undertaking.

The opponent refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the opponent referred to decision of 13/12/2019, No B 3 065 234, where chemicals used in industry in Class 1 are considered identical to detergents for industrial use in Class 1 because the former includes the latter. This case is obviously not comparable to the present case, since the goods compared are raw chemicals of the same class. As regards the similarity between disinfectants in Class 5 and cleaning products in Class 3, they have a similar purpose and coincide in producer and relevant public, circumstance which does not occur in the case at hand.

In the referred decision of 03/12/2019, No B 3 055 543, chemicals for use in agriculture, horticulture and forestry in Class 1 is considered similar to a low degree to pest control preparations and in the decision of 27/10/2004, No B 525 578, chemical preparations for pharmaceutical purposes in Class 5 were found similar to chemical products for industrial and scientific purposes in Class 1. In general, none of the cases referred by the opponent is comparable to the case at hand because they do not encompass the goods concerned.

Moreover, while the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions.

Even if the decision of 27/10/2004, No B 525 578, is to some extent factually similar to the present case, the Office no longer follows this practice and its outcome cannot be the same. Therefore, the arguments of the opponent must be set aside.

In view of the above, the goods at issue are dissimilar.

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 are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.

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

Christian STEUDTNER

María del Carmen COBOS PALOMO

Benoit VLEMINCQ

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.