OPPOSITION Nо B 3 112 017

 

Health Mate BVBA, Hagenbroeksesteenweg 169, 2500 Lier, Belgium (opponent), represented by Arnold & Siedsma, New Babylon Bezuidenhoutseweg 57, 2594 AC Den Haag, Netherlands (professional representative) 

 

a g a i n s t

 

Ningbo Healthmate Science And Technology Development Co., Ltd., Dalu Industrial Zone, Xidian Town, Ninghai County, Ningbo, Zhejiang Province, People’s Republic of China (applicant), represented by Eurochina Intellectual Property, Calle San Mateo, 65 - Local 1 "llopis & Asociados", 03012 Alicante, Spain (professional representative).

On 20/05/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 112 017 is rejected in its entirety.

 

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

 

REASONS

 

On 19/02/2020, the opponent filed an opposition against all goods of the European Union trade mark application No 18 095 402 (figurative mark). In its submissions of 16/09/2020, the opponent limited the scope of the opposition against part of the goods in Class 10 only. The opposition is based on Belgian trade name HEALTH MATE used in the course of trade of more than mere local significance and, pursuant to the law governing it, confers on the opponent the right to prohibit the use of a subsequent trade mark. The opponent invoked Article 8(4) EUTMR.

 

NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE — ARTICLE 8(4) EUTMR

 

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

 

(a)   rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

 

(b)   that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

 

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

 

 the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

 

 pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

 

 the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

 

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non-registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

 

a) Prior use in the course of trade of more than mere local significance

 

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights. Furthermore, such use must indicate that the sign in question is of more than mere local significance.

 

It must be recalled that the object of the condition laid down in Article 8(4) EUTMR relating to use in the course of trade of a sign of more than mere local significance is to limit conflicts between signs by precluding an earlier right that is not sufficiently definite — that is to say, important and significant in the course of trade — from preventing registration of a new European Union trade mark. A right of opposition of that kind must be reserved for signs with a real and actual presence on their relevant market. To be capable of preventing registration of a new sign, the sign relied on in opposition must actually be used in a sufficiently significant manner in the course of trade, and its geographical extent must not be merely local, which implies, where the territory in which that sign is protected may be regarded as other than local, that the sign must be used in a substantial part of that territory. In order to ascertain whether that is the case, account must be taken of the duration and intensity of the use of the sign as a distinctive element for its addressees, namely purchasers and consumers as well as suppliers and competitors. In that regard, the use made of the sign in advertising and commercial correspondence is of particular relevance. In addition, the condition relating to use in the course of trade must be assessed separately for each of the territories in which the right relied on in support of the opposition is protected. Finally, use of the sign in the course of trade must be shown to have occurred before the date of the application for registration of the European Union trade mark (29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 157, 159-160, 163, 166).

 

Therefore, the fact that a sign confers on its proprietor an exclusive right throughout the national territory is in itself insufficient to prove that it is of more than mere local significance within the meaning of Article 8(4) EUTMR. The requirement of ‘more than local significance’ relates also to the use that is made of the sign on the basis of which the opposition is entered, and not only to the geographic area in which the sign may be protected according to the law governing the sign in question (29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 156).

 

In the present case, the contested trade mark was filed on 28/08/2019. Therefore, the opponent was required to prove that the sign on which the opposition is based was used in the course of trade of more than local significance in Belgium prior to that date. The evidence must also show that the opponent’s sign has been used in the course of trade for retail trade in electrical household appliances in specialized stores; trade mediation in machines, equipment and tools for industry and in ships and aircraft; trade mediation in goods, general assortment; wholesale in electrical equipment, including installation material; retail trade of saunas, parts therefor and massage chairs.

 

On 16/09/2020 the opponent filed the following evidence in order to prove more than local use:

 

 Annex 4: 4.1: A sponsoring contract (not in the language of proceedings) and invoice (page 71), where it is shown that the opponent has sponsored the Belgian women's cycling team named "Cyclelive" in 2019, and the name Health Mate was shown on the race clothing and casual wear worn by the team, and also on the support cars during the race, the Facebook page etc. 4.2: A Wikipedia extract about this race (page 75), 4.3: Racing program 2019 (page 77); 4.4: Facebook screenshots (page 80); 4.5: Screenshot webpage of an article featuring the opponent as sponsor of cyclelive (page 93)

 Annex 5: 5.1: Undated aerial picture of the Opponent’s office (page 95), 5.2: points of sale throughout Belgium per province (page 96), namely 49 resellers in total.

 Annex 6: Invoices for advertisement and information (page 122). These advertisements were done either on social media or in printed matter in 2018 and 2019. The invoices however do not contain any specification as to which products were promoted, however, in all the trade name ‘Health Mate’ appears.

 Annex 7: 7.1: Revenues per quarter (page 148); 7.2: Screenshots of the webpage of the opponent in Dutch and French showing its brochure (page 152); 7.3: 52 invoices (page 158). 46 of those invoices concern the sale of saunas, and 4 invoices concern the sale of massage chairs in the first and second quarter of 2019 all bearing the sign ‘HealthMate’.

 Annex 9: Screenshots of different third-party webshops (page 224) selling saunas and sauna facilities and massage apparatus.

The further evidence submitted does not relate to the requirement of proving use of more than mere local significance, as it consists of an extract of Belgian Crossroads Bank for Enterprises and the deed of incorporation of the opponent (Annex 1 and 3); Belgian case law concerning trade names (Annex 2); Extract of the Belgian Code of Economic Law Book VI (Annex 8), the English translation of the relevant parts is included in the opponent’s observation writ filed on 16/09/2020 and/or filed within a month of the submissions, namely on 15/10/2020.

Taking into account the evidence in its entirety, it does reach the minimum threshold of ‘more than local significance’ in Belgium for the following services: retail trade of saunas, parts therefor.

This conclusion results, in particular, from the advertisements, turnover and invoices (Exhibits 5, 6 and 7), and the sponsoring by the opponent (Annex 4). These pieces of evidence demonstrate that the opponent made relevant sales over several years, had received coverage in diverse media, as well as recognition in the relevant sector (sponsoring).

While the evidence relating to the use of the trade name suggests that the sign in question has been used at least, for retail trade of saunas, parts therefor, the use proven does not meet the minimum threshold of ‘more than local significance’ set out in Article 8(4) EUTMR regarding the other services claimed, namely retail trade in electrical household appliances in specialized stores; trade mediation in machines, equipment and tools for industry and in ships and aircraft; trade mediation in goods, general assortment; wholesale in electrical equipment, including installation material; retail trade of massage chairs.

A trade sign is of more than mere local significance in the relevant territory when its impact is not confined to a small part of that territory, as is generally the case with a town or a province (24/03/2009, T-318/06 - T-321/06, General Optica, EU:T:2009:77, § 41). The sign must be used in a substantial part of the territory of protection (29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 159).

Whether or not a trade sign is of more than mere local significance may be established by demonstrating the existence of a network of economically active branches throughout the relevant territory, but also more simply, for example, by producing invoices issued outside the region in which the proprietor has its principal place of business, press cuttings showing the degree of recognition on the part of the public of the sign relied on or by establishing that there are references to the business establishment in travel guides (24/03/2009, T-318/06 - T-321/06, General Optica, EU:T:2009:77, § 43). The opponent produced, however, no invoices with respect to retail trade in electrical household appliances in specialized stores; trade mediation in machines, equipment and tools for industry and in ships and aircraft; trade mediation in goods, general assortment; wholesale in electrical equipment, including installation material; and only four invoices with respect to retail trade of massage chairs, and those four invoices are dated in April 2019. Although these last invoices are before the application date of the contested sign, from the evidence produced, it appears that the opponent has used over a long period its trade name to retail saunas and their parts, and started a new line of business with massage chairs in 2019 (sales proven as of April). As a new product launch, it will obviously take more time than four months (the contested sign was applied for in August 2019) and more than four invoices before reaching the threshold of more than mere local significance.

The evidence submitted provides only very scarce indications about the economic dimension of the ‘HEALTH MATE’ trade name use in relation to the services Retail trade in electrical household appliances in specialized stores; trade mediation in machines, equipment and tools for industry and in ships and aircraft; trade mediation in goods, general assortment; wholesale in electrical equipment, including installation material; retail trade of massage chairs. Information concerning the degree to which it has been used in relation to these services is missing, as well as of the group of addressees among which the sign has become known as a distinctive element, or even about the exposure given to the sign, for example, through advertising for these services (24/03/2009, T-318/06 to T-321/06, General Optica, EU:T:2009:77, § 36-37; 30/09/2010, T-534/08, Granuflex, EU:T:2010:417, § 19). The advertising invoices of social media don’t indicate the content of the publicity, and the printed matter advertisements concern almost exclusively the saunas the opponent is retailing.

Simple print-outs from a company’s own Internet page are not able to prove use of a trade name for certain services without complementary information as to the actual use of the Internet site by potential and relevant consumers or complementary advertising and sales figures regarding the different goods, photos of the goods with the corresponding sign etc. (20/12/2011, R 1809/2010-4, SHARPMASTER / SHARP (fig.) et al., § 33). This can be applied, by analogy, to third party webshops merely showing massage chairs without the earlier trade name which gives no information about the possible exposure of that sign by consumers or its geographical extent without any relevant complementary information as referred to above. These print-outs can thus not assist to prove prior use in the course of trade of this sign for massages chairs by the opponent. Furthermore, massage chairs are obviously sold by the opponent as of April 2019, underlining as such the fact that the opponent only recently had started to retail such products under its trade name, and render the possibility that the opponent already had acquired for the retail of these products the status of ‘use of more than mere local significance’ quite unlikely – as evidenced by the sales of only four chairs.

The sales figures submitted do not distinguish between the several product lines retailed by the opponent and can hence not prove use of its trade name for retail trade in electrical household appliances in specialized stores; trade mediation in machines, equipment and tools for industry and in ships and aircraft; trade mediation in goods, general assortment; wholesale in electrical equipment, including installation material; retail trade of massage chairs.

Considering all of the above, the Opposition Division concludes that the evidence submitted by the opponent is insufficient to prove that the earlier trade name was used in the course of trade in Belgium, of more than local significance in connection with the services for retail trade in electrical household appliances in specialized stores; trade mediation in machines, equipment and tools for industry and in ships and aircraft; trade mediation in goods, general assortment; wholesale in electrical equipment, including installation material; retail trade of massage chairs on which the opposition was based before the relevant date and in the relevant territory. However, the opponent did prove such a use for retail trade of saunas, parts therefor.

b) The earlier right vis-à-vis the contested trade mark

The opponent admitted that there does not exist a Belgian law on trade names, but submitted other evidence (extract of Belgian Crossroads Bank for (Annex 1); Belgian case law concerning trade names (Annex 2); Extract of the Belgian Code of Economic Law Book VI (Annex 8). According to the opponent, and the evidence submitted, for instance Court of Appeal Antwerp, April 1, 2020, 2019/AR/1563 "t Fakkelhuis/De Fakkels", page 10, 11 and 12 (Annex 2-1):

“2."Respondent bases its claim on art. 10 bis 3) of the Paris Union Convention for the Protection of Industrial Property (which stipulates that any act of unfair competition must be prohibited and, in particular, any act that might cause confusion as to the establishment, the goods or the activity on the field of industry or trade of a competitor) and Article VI. 104 CEL (which prohibits any act contrary to fair market practices whereby a company harms or may harm the professional interests of one or more companies) and art. VI. 105 1° c) WER (which stipulates that any misleading advertising of a company is prohibited, including: the quality, qualities, qualifications and rights of a company, such as its identity and its assets, its competences and its industrial, commercial or intellectual property rights or its awards and awards).

4."It is generally believed that there is a violation of trade name rights if there is a likelihood of confusion. Proof of actual confusion is not required. Respondent must demonstrate that appellant could cause confusion in the geographic area where the older trade name of Respondent is used. The opponent must demonstrate that the applicant’s mark would be likely to lead the public to believe that the applicant’s goods originate from the opponent.”

From this evidence it cannot be inferred unequivocally if Belgian trade names confer on their proprietor the right to prohibit the use of a subsequent trade mark or not. However, in any event, the evidence suggests that in order for the holder of a trade name to act against the use of another distinctive sign, the contested trade mark must be likely to lead the public to believe that goods to be offered by the applicant are covered by the opponent’s services. Therefore, for the sake of completeness, it is necessary to examine whether, on a balance of probabilities, it is likely that a substantial part of the relevant public will be misled into purchasing the applicant’s goods in the belief that they are the opponent’s.

However, the public is unlikely to be confused where the contested goods are dissimilar to those which the opponent’s has used with its trade name, in the case at hand retail services for saunas. Therefore, the contested goods must be compared with the services for which the opponent has shown that it has used them for more than mere local significance.

The goods

The opposition is directed against the following goods:

Class 10: Medical apparatus and instruments; esthetic massage apparatus; massage apparatus; vibromassage apparatus; physiotherapy apparatus.

The opponent has proven use of more than mere local significance for retail trade of saunas, parts therefor.

The contested goods mainly include medical apparatus and instruments, as well as physiotherapy apparatus generally used for the diagnosis, treatment or improvement of the functioning or the condition of the human body. These goods in Class 10 consist mainly of specialised goods used in the medical field, strictly for medical or physiotherapy purposes. They are therapeutic in that they are used or prescribed by a medical professional or are instrumental in the treatment or relief of a disease or physical condition. Furthermore, they consist of massage apparatus, which are basically also used to prevent a deterioration of the human body and have a therapeutic/treatment destination.

The opponent’s services consist of the retail of saunas and their parts.

By nature, goods and services are dissimilar. Retail services concerning the sale of specific goods are only similar to specific goods, when those goods are identical or similar. This is however not the case.

The contested goods are different from all the opponent’s retail services. They differ in nature and main purpose. They are neither complementary nor in competition. They have different distribution channels and are normally produced by different undertakings. Therefore, these goods and services are dissimilar.

Even though some of the contested goods might be used for relaxation in wellness centers next to saunas sold by the opponent, and therefore can serve the same public, they are still considered dissimilar for all the above mentioned reasons. Goods and services that are complementary usually have the same origin, or consumers would have reasons to believe that the responsibility for the production of those goods and the rendering of these services lies with the same undertaking. The determination of whether the consumers of the goods concerned may think that the responsibility for the sale of those goods lies with the same undertakings depends on the connection between those goods and services. This connection must be established with a sufficient level of certainty. When the connection between the goods and services is not close enough to render them indispensable or significant for the use of the other, complementarity cannot usually be found. When assessing whether or not the consumer would usually expect there to be a link between the goods and services, it is appropriate to take into account the economic reality on the market as it currently exists (16/01/2018, T 273/16, METAPORN / META4 et al., EU:T:2018:2, § 41-42).

In the present case, consumers would not expect the contested goods - Medical apparatus and instruments; Esthetic massage apparatus; Massage apparatus; Vibromassage apparatus; Physiotherapy apparatus - to be produced/offered by the same or economically linked undertakings as the opponent’s retail services of saunas. The opponents argument, that ‘nowadays it is not only very common for wellness centers to offer the full package, including spa and sauna facilities and offering different kinds of massages, but is also nowadays recommended to visit the sauna before having a massage, as the effects of the massage are increased by the sauna visit’, cannot overturn the above reasoning. The Opposition Division notes that the opponent does not offer sauna services, it only offers to buy saunas from it as a retail service. And even if the use of a sauna might be offered at the same place as massages or physiotherapy, this fact does under no circumstances render the retail of sauna products indispensable or significant for the use of medical/massage apparatus. The public can use saunas without having a massage or a medical/physio therapy after, and vice versa. It is not necessary for a massage or physiotherapy treatment to have used a sauna before. The circumstance that these goods and services can come into contact, is not sufficient to establish with the necessary certainty a relevant complementarity. Therefore, these contested goods in class 10 and the retail services of the opponent are dissimilar.

 

Therefore, as one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded.

 

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

 

 

Astrid WÄBER

Karin KLÜPFEL

Raphael MICHE

 

 

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.