OPPOSITION No B 3 079 689

Sirona Dental Systems GmbH, Fabrikstr. 31, 64625 Bensheim, Germany (opponent), represented by Bristows LLP, 100 Victoria Embankment, London EC4Y 0DH, United Kingdom (professional representative)

a g a i n s t

OmniCam4Sky, Lda, Estúdios MediaPro Portugal Trv da Fonte de Cima N2 2665-618, Venda do Pinheiro, Portugal (applicant), represented by J. Pereira Da Cruz S.A., Rua Victor Cordon 14, 1249-103 Lisboa, Portugal (professional representative).

On 08/04/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 079 689 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 17 972 823 for the figurative mark . The opposition is based on international trade mark registration No 1 141 815 designating the European Union, in relation to which the opponent initially invoked Article 8(1)(b) and Article 8(5) EUTMR, as well as on non-registered trade mark ‘OMNICAM’ (goods in Class 9) for the territories of Austria, Benelux, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Malta, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden and the United Kingdom, in relation to which the opponent invoked Article 8(4) EUTMR. However, in its observations of 15/08/2019, the opponent stated that in further proceedings, it wished to rely only on the above international registration under the provision of Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years. The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely international trade mark registration No 1 141 815 designating the European Union.

In the present case, the date of filing of the contested trade mark is 25/10/2018.

Earlier trade mark No 1 141 815 is an international registration designating the EU. Article 203 EUTMR provides that for the purposes of applying Article 47(2) EUTMR, the date of publication pursuant to Article 190(2) EUTMR will take the place of the date of registration for the purpose of establishing the date as from which the mark that is the subject of an international registration designating the EU must be put into genuine use in the Union.

The date of publication pursuant to Article 190(2) EUTMR for the earlier trade mark at issue is 28/03/2014. Therefore, the request for proof of use is inadmissible.

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

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

Class 10: Medical instruments and apparatus; dental handpieces; parts of all of the aforementioned instruments and apparatus (as included in this class); optical measuring appliances for medical use; medical image acquisition devices, namely cameras, video cameras, color measuring cameras, X-ray apparatus and ultrasonic devices; special furniture for medical use, all aforementioned goods for use in field of dentistry as well as in the field of veterinary medicine, optical measuring appliances, image acquisition devices, namely cameras, video cameras, color measuring cameras, all the aforementioned goods for use in the field of medicine, dental medicine and veterinary medicine.

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

Class 9: Optical devices, enhancers and correctors; information technology and audio-visual, multimedia and photographic devices; information technology and audiovisual equipment; scientific and laboratory devices for treatment using electricity; apparatus, instruments and cables for electricity; recorded content; scientific research and laboratory apparatus, educational apparatus and simulators; robotic electrical control apparatus; remote control apparatus.

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

The term ‘namely’, used in the opponent’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 include, inter alia, the nature and purpose of the goods, 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

As noted above, the goods in Class 10, for which the opponent’s mark enjoys protection, belong to the categories of specialised furniture used in the dental, veterinary and medical field and medical or dental instruments and apparatus (and parts thereof). These include various appliances such as cameras or optical measuring devices that may be used to acquire images, usually used for facilitating a diagnosis, examining a patient or the medical/dental treatment of a patient. It is evident from the description that the goods of the opponent target professional consumers, in particular heath institutions such as hospitals and private medical and dental practices. These goods are highly specialised in their nature and purpose and will use very specific channels for their distribution.

The contested optical devices, enhancers and correctors are devices generally used to enhance images for viewing, analysing, determining characteristic properties and correcting faulty vision. Contrary to the opponent’s argument, even though the applicant’s goods may be used for enhancing somebody’s vision (they may have an effect on improving a medical condition), this is not itself sufficient to consider them goods of medical character. Even though some of these goods, for example, eyeglasses and lenses, are intended to improve a person’s vision and overall wellbeing, they are still directly intended for patients (the general public) and not medical professionals, unlike the opponent’s goods in Class 10. They will be available in opticians unlike any of the opponent’s goods.

The contested information technology and audio-visual, multimedia and photographic devices; information technology and audiovisual equipment are devices whose primary function is related to the collection, transfer, storage or processing of data. Even though some of the opponent’s goods suggest capturing or projecting images, they are in no way comparable to the images captured by the goods in Class 9. The methods of use are very different and those goods in Class 10 are targeted at a completely different consumer (medical or dentistry professionals). They are also made by specific medical manufacturers that would not make the same apparatus for more general use, particularly cameras for taking pictures/filming, even up close. It may be deduced from the different application of these goods that their producers will use distinct knowledge to adapt the functionalities and appearance of the devices/appliances, according to their end user’s background and interests. Finally, it must be noted that while the contested goods may be generally available in the large distribution networks of any store specialising in electronics, the opponent’s goods will be most probably be produced and delivered on demand by the specialised consumers mentioned above.

Likewise, the contested scientific and laboratory devices for treatment using electricity; scientific research and laboratory apparatus, educational apparatus and simulators will also differ in their nature, method of use and purpose, as well as target different consumers and distribution channels to the opponent’s goods. The fact that some scientific or laboratory devices (e.g. biological microscope or laser) may be used to examine, inter alia, medical subjects, does not itself lead to finding overall similarity between the goods. The knowledge for manufacturing devices used for scientific and laboratory purposes will completely differ from the knowledge for manufacturing medical, particularly optical, appliances used for the examination and treatment of diseases (or any medical conditions) of patients. The same findings apply with respect to the remaining contested goods, namely apparatus, instruments and cables for electricity; robotic electrical control apparatus; remote control apparatus and recorded content. It is evident that these goods have no similarities with the opponent’s goods and differ in all the criteria, referred to above. Contrary to the opponent’s argument, these goods cannot be seen as complementary to its goods, as these types of devices are not dependent on each other to function effectively. Even if that were so, the complementarity of the goods is not, on its own, conclusive for finding similarity. Moreover, the opponent did not submit any convincing evidence to support its argument.

Finally, contrary to the opponent’s argument, the common use of electricity for the functioning of a device is not in any way a factor to conclude similarity. Nowadays, a vast amount of devices in any field use electricity, therefore, this is only a vague and remote similarity and is insufficient for the establishment of any common nature, method of use or purpose. Consequently, although the contested goods can be electrical, or alternatively, contain software for collecting and using data, this is not sufficient to argue in favour of similarity (23/11/2005, R 1079/2004-2, MEDIALL/Medial).

Therefore, while fully regarding the opponent’s observations with respect to the comparison and taking into consideration the aforementioned differences between the goods under comparison, they are considered overall dissimilar.

2. 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.

This finding would still be valid even if the earlier trade mark were to be considered as enjoying a high degree of distinctiveness (following a claim in the opponent’s observations and some evidence thereof, Annex A). Given that the dissimilarity of the goods cannot be overcome by the highly distinctive character of the earlier trade mark, the evidence submitted by the opponent in this respect does not alter the outcome reached above.

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

Tzvetelina IANCHEVA

Manuela RUSEVA

Sofía SACRISTÁN MARTÍNEZ

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.