OPPOSITION Nо B 3 112 030

Samick Music Corp., 1329 Gateway Drive, 37066 Gallatin, United States of America (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, Null 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 15/12/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 112 030 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 18 095 402 for the figurative mark . The opposition is based on:

 Austrian trade mark registration No 188 793 for the word mark ‘HEALTH MATE’,

 Estonian trade mark registration No 36 753 for the word mark ‘HEALTH MATE’,

 Italian trade mark registration No 1 473 247 for the word mark ‘HEALTH MATE’,

 Italian trade mark registration No 947 040 for the word mark ‘HEALTH MATE’,

 German trade mark registration No 39 604 308 for the word mark ‘HEALTH MATE’,

 UK trade mark registration No 2 554 260 for the word mark ‘HEALTH MATE’,

 French trade mark registration No 3 129 665 for the word mark ‘HEALTH MATE’,

 Spanish trade mark registration No 2 437 243 for the word mark ‘HEALTH MATE’,

 Benelux trade mark registration No 601 230 for the word mark ‘HEALTH MATE’,

 Benelux trade mark registration No 601 226 for the figurative mark .

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.

a) The goods and services

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

Austrian trade mark registration No 188 793

Class 11: Sauna, in particular infrared sauna, steam sauna, dry sauna for heating purposes.

Estonian trade mark registration No 36 753

Class 11: Lighting, heating, steam generators; food heaters, cooling equipment; drying, ventilation, water supply and sanitary equipment.

Italian trade mark registration No 1 473 247

Class 11: Saunas, accessories for saunas.

Italian trade mark registration No 947 040

Class 11: Saunas, accessories for saunas.

German trade mark registration No 39 604 308

Class 11: Heat booths heated with infrared heating systems for non-medical purposes.

United Kingdom trade mark registration No 2 554 260

Class 11: Saunas and sauna accessories; infrared saunas, steam saunas and dry saunas for heating purposes.

French trade mark registration No 3 129 665

Class 11: Saunas.

Spanish trade mark registration No2 437 243

Class 11: Saunas, sauna facilities and their accessories included in this class.

Benelux trade mark registration No 601 230

Class 11: Saunas; infrared heaters for saunas; parts and accessories for the aforesaid goods included in this class.

Class 35: Publicity and business; business mediation and consultancy with regard to the purchase and sale of the products mentioned in Class 11; import and export of the products listed in Class 11.

Benelux trade mark registration No 601 226

Class 11: Saunas; infrared heaters for saunas; parts and accessories for the aforesaid goods included in this class.

Class 35: Publicity and business; business mediation and consultancy with regard to the purchase and sale of the products mentioned in Class 11; import and export of the products listed in Class 11.

The contested goods are the following:

Class 10: Medical apparatus and instruments; fumigation apparatus for medical purposes; physical exercise apparatus for medical purposes; esthetic massage apparatus; body rehabilitation apparatus for medical purposes; massage apparatus; vibromassage apparatus; physiotherapy apparatus; bed vibrators; orthopaedic belts.

Class 28: Exercise treadmills; treadmills for use in physical exercise; spring bars for exercise; exercise pulleys; balls for games; chest expanders [exercisers]; body-building apparatus; swings; machines for physical exercises; exercise bicycles (stationary -).

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 ‘in particular’, used in the opponent’s list of goods and services, indicates that the specific goods and 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.

Contested goods in Class 10

The contested goods mainly include medical apparatus and instruments 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 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.

The opponent’s goods include environmental control apparatus and installations, in particular, for the purposes of lighting, heating, cooking, cooling and sanitising These are lighting, heating, steam generators (including saunas and their facilities, accessories and parts), food heaters, cooling equipment, drying, ventilation, water supply and sanitary equipment.

The opponent’s services include services rendered by persons or organisations that are principally intended to help in the functioning or management of a commercial undertaking with regard to the goods mentioned in Class 11, through advertising, business mediation and import and export services.

The contested goods are different from all the opponent’s goods and 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 are dissimilar.

Even though some of the contested goods might be used for relaxation in wellness centres next to the opponent’s goods, e.g. saunas, and therefore can serve the same public, they are still considered dissimilar for all the abovementioned reasons. Goods that are complementary usually have the same origin, or consumers would have reasons to believe that the responsibility for the production of those goods lies with the same undertaking. The determination of whether the consumers of the goods concerned may think that the responsibility for the production of those goods lies with the same undertakings depends on the connection between those goods. This connection must be established with a sufficient level of certainty. When the connection between the goods 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, 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 to be produced by the same or economically linked undertakings as the opponent’s goods.

Contested goods in Class 28

The contested goods include sports and physical exercise equipment.

The opponent’s goods and services are described in detail above.

Physical exercise is an activity that enhances or maintains physical fitness, health and also serves for enjoyment. Therefore, the contested goods used for sports and physical exercise share some significant health benefits with the opponent’s goods, such as saunas. However, although the contested goods, for example saunas or a very broad range of other products (e.g. food), may be used to produce beneficial effects on the health of the human body, this is not sufficient in itself to make the contested goods similar to the opponent’s goods and services. The main intended purpose, the usual origins, the distribution channels, the methods of use and the very nature of the above goods and services are clearly different (e.g. physical exercise equipment and saunas are both offered in different and highly specialised commercial outlets). For the above reasons, the public will not expect the above goods and services to be produced by the same or economically linked manufacturers. Therefore, these goods 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 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.

The likelihood of confusion presupposes that the mark applied for and the earlier marks are identical or similar, and that the goods or services covered by the application for registration are identical or similar to those in respect of which the earlier marks are registered. Those conditions are cumulative (12/10/2004, C‑106/03 P, Hubert, EU:C:2004:611, § 51).

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

Gueorgui IVANOV

Jiří JIRSA

Dorothée SCHLIEPHAKE

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.