OPPOSITION No B 3 082 702

Gebrüder Obermaier oHG, Atzinger Str. 1, 83209 Prien-Bachham, Germany (opponent), represented by Becker & Kurig Partnerschaft Patentanwälte mbB, Bavariastr. 7, 80336 München, Germany (professional representative)

a g a i n s t

G-it ApS, Vandværksvej 24, 5000 Odense C, Denmark (applicant), represented by Otello Lawfirm, Dalgasgade 25 8., 7400 Herning, Denmark (professional representative).

On 30/07/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 082 702 is upheld for all the contested goods.

2. European Union trade mark application No 18 022 916 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 18 022 916 for the figurative mark . The opposition is based on European Union trade mark registration No 16 612 558 for the word mark ‘Senso’. 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.

1. The goods

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

Class 10: Medical therapy apparatus; Medical rehabilitation equipment; Furniture especially made for medical purposes; Hollow and fluid-filled massage equipment and massage apparatus; Hollow cushions for medical purposes; Air cushions for medical purposes; Seat cushions for medical purposes; Foot cushions for medical purposes; Hollow bodies for training for medical therapy; Rolling equipment for body treatments for medical therapy; Pimpled rings for training for medical therapy.

Class 28: Gymnastic and sporting articles; Toys; Balls for playing games and sports; Balls with pimples for games and sports; Pimpled rings and hollow bodies for training for games and sports; Rolling equipment for body treatments for games and sports.

The contested goods are the following:

Class 9: Downloadable applications for mobile apparatus for use for therapeutic apparatus with massage functions.

Class 10: Therapeutic apparatus incorporating massaging facilities.

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 goods in Class 9 are downloadable applications for mobile apparatus for use for therapeutic apparatus with massage functions.

The earlier mark covers medical therapy apparatus in Class 10, which, therefore, also includes therapeutic apparatus with massage functions.

In today’s high-tech society, almost all electronic or digital apparatus function using integrated software, which does not lead to an automatic finding of similarity. However, a similarity may be established when the software is not an integral part of an apparatus, can be purchased independently from it and serves, for example, to give more or different functionalities, similarity can be established¹.

In the present case the contested applications are purchased separately from the medical therapeutic apparatus and are directed at the same public that purchases therapeutic apparatus with massage functions (medical professionals and also the general public) to give them more or different functionalities. Moreover, the therapeutic apparatus and their application software are usually produced by the same companies and they are complementary as the use of the software is frequently indispensable for the proper use of the therapeutic apparatus.

Therefore, the contested downloadable applications for mobile apparatus for use for therapeutic apparatus with massage functions are considered similar to the opponent’s medical therapy apparatus.

Contested goods in Class 10

The contested therapeutic apparatus incorporating massaging facilities are included in, or overlap with, the broad category of the opponent’s medical therapy apparatus. Therefore, they are identical.

In the letter of 10/01/2020 the applicant claimed that the scope of the opposition is unclear, because in the notice of opposition the opponent indicated that the opposition is directed against all goods (Classes 9 and 10) but later in the observations of 10/10/2019 developed the argumentation only in relation to Class 10.

According to Article 2(2)(i) EUTMDR the notice of opposition shall contain an indication of the goods and services against which the opposition is directed. In the absence of such an indication, the opposition shall be considered to be directed against all of the goods or services of the opposed EU trade mark application.

According to Article 2(4) EUTMDR ‘4. The notice of opposition may also contain a reasoned statement on the grounds, the facts and arguments on which the opposition relies, and supporting evidence’.

According to Article 7(1) EUTMDR the opponent may, but is not obliged to, submit further arguments in support of its opposition. Therefore, the scope of the opposition is determined by the notice of opposition. In the notice of opposition of 09/05/2019, the opponent clearly indicated that the opposition was directed against all the goods of the contested sign. Therefore, the applicant’s argument must be set aside as unfounded.

The applicant claims that the goods produced by the opponent are actually highly different from the contested goods. However, the comparison of the goods and services must be based on the wording indicated in the respective lists of goods/services. Any actual or intended use not stipulated in the list of goods/services is not relevant for this comparison since it is part of the assessment of likelihood of confusion in relation to the goods/services on which the opposition is based and against which it is directed; it is not an assessment of actual confusion or infringement (judgment of 16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71).

2. 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 found to be identical or similar are directed at the professional public (therapists and doctors) as well as at the public at large.

Taking into account the fact that the relevant goods may have an impact on the health of their users, the infrequent purchase, possible complexity and high price, the degree of attention is consider to be high.

3. The signs

Senso
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 earlier mark is a word mark composed of one verbal element, ‘Senso’.

The contested sign is a figurative sign composed of two verbal elements ‘TENSO ELEKTROTERAPI’, written one under the other in standard upper case characters. The element ‘TENSO’ is significantly larger than the below word ‘ELEKTROTERAPI’ moreover written in bold. Therefore, this is the dominant element of the contested sign.

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.

As pointed out by the applicant the earlier mark, ‘Senso’, and the dominant element of the contested sign, ‘TENSO’, may have different meanings or different connotations in various European languages. For example, the word ‘TENSO’ is an adjective in Spanish and Portuguese meaning ‘tense’ (with tight muscles and not relaxed). The word ‘Senso’ on the other hand is a noun meaning in Italian, inter alia, ‘sense’ (physical abilities of sight, smell, hearing, touch, and taste) and in Portuguese ‘sense’ (conscious awareness, reasoning). Additionally, in various languages there are similar equivalent words: ‘sens’ in French and Romanian, ‘sans’ in Danish or ‘teso’ in Italian (meaning tense, not relaxed).

These meanings, apart from introducing a conceptual difference between the signs, may have a negative impact on their distinctiveness, as they are, in lesser or bigger extent, related to the relevant goods.

However, for part of the relevant public, such as Hungarian-, Lithuanian- and Greek- speaking public, none of these elements has any meaning. Moreover, it is commonly known that this part of the public does not have a very good command of English and cannot associate the words ‘Senso’ and ‘TENSO’ with the English words ‘sense’ and ‘tense’ as claimed by the applicant. Consequently, for economy of the proceedings the Opposition Division finds it appropriate to focus the comparison of the signs on the this part of the relevant public.

Since the elements ‘Senso’ and ‘TENSO’ are meaningless for the analysed part of the public, they are normally distinctive. However, the element ‘ELEKTROTERAPI’ will be understood as ‘electrotherapy’ due to the existence of similar equivalent words: elektroterápia (Hungarian), elektroterapija (Lithuanian), ηλεκτροθεραπεία transliterated as ‘ilektrotherapia’ (Greek). This element has, therefore, very limited distinctiveness.

The contested sign includes the registered trade mark symbol, ®. This is an informative indication that the sign is purportedly registered and is not part of the trade mark as such. Consequently, this will not be taken into consideration for the purposes of comparison.

While it is true that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark, that argument cannot hold in all cases and does not, in any event, cast doubt on the principle that the assessment of the similarity of marks must take account of the overall impression created by those marks (15/07/2011, T‑220/09, ERGO, EU:T:2011:392, § 31).

Visually, regarding the earlier mark, it must be noted that the protection offered by the registration of word marks applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (judgment of 22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43). Consequently, it is irrelevant whether the word mark is depicted in lower or upper case letters.

Therefore, the signs coincide in four out of five letters of the only element of the earlier mark and the distinctive and dominant element of the contested sign, ‘*ENSO’.

The signs differ in the initial letter of these elements ‘S’ in the earlier mark and ‘T’ in the contested sign and in the additional verbal element of the contested sign, ‘ELEKTROTERAPI’, which is however a secondary element due to its small size and limited distinctiveness.

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

Aurally, since it has been confirmed by case-law that consumers generally only refer to the dominant elements in trade marks (03/07/2013, T-206/12, LIBERTE american blend, EU:T:2013:342, § 43-44) and in any case, that they tend to shorten marks containing several words, it is highly likely that the contested sign will aurally be referred to by only the dominant and distinctive verbal element ‘TENSO’.

Consequently, the pronunciation of the signs coincides in the sound of the letters ‘*ENSO’ and differs in the sound of the initial letter: ‘S’ in the earlier mark and ‘T’ in the contested sign.

Therefore, the signs are aurally highly similar.

Conceptually, neither of the signs has a meaning for the public under consideration. Although the second verbal element of the contested sign will evoke the concept of ‘electrotherapy’, it is not sufficient to establish any conceptual difference, as this element is of very limited distinctiveness and cannot indicate the commercial origin of the goods. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

4. 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.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public under consideration. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

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 earlier mark is inherently distinctive to an average degree for the analysed public, which affords it a normal scope of protection under Article 8(1)(b) EUTMR. The goods are identical or similar. The degree of attention of the relevant public is high. The signs are visually similar to an average degree, aurally highly similar and the conceptual comparison is neutral.

The Opposition Division is of the opinion that taking into account the principle of imperfect recollection, the similarities between the marks are not counterbalanced by the high degree of attention of the relevant public. Therefore, for the analysed public a likelihood of confusion cannot be safely excluded, despite the different initial letter of the signs (15/07/2011, T‑220/09, ERGO, EU:T:2011:392, § 40-47; 17/09/2018, R 2764/2017-2, Betox / Cetox, § 39; 29/05/2017, R 2075/2016-2, Damia / Samia (fig.), § 37-49; 27/11/2015, R 1395/2014-5, ALANA / Olana, § 22-23; 17/11/2014, R 421/2014-4, ARGO (fig.) / ERGO, § 31-38; 14/11/2014, R 2264/2013-5, BICOS / KICOS, § 35-38; 18/07/2013, R 2136/2012-1, MELTA / DELTA, § 27-34).

Considering all the above, there is a likelihood of confusion on the part of the Hungarian-, Lithuanian- and Greek- 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 European Union trade mark registration No 16 612 558 for the word mark ‘Senso’. 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 (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

Katarzyna ZANIECKA

Anna ZIOLKOWSKA

Kieran HENEGHAN

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.