OPPOSITION Nо B 3 102 848

 

Asclepion Laser Technologies GmbH, Brüsseler Str. 10, 07747 Jena, Germany (opponent), represented by Gleim Petri Oehmke Patent- und Rechtsanwaltspartnerschaft mbB, Neugasse 13, 07743 Jena, Germany (professional representative) 

 

a g a i n s t

 

Guangzhou Haoxing Bay Science And Technology Co., Ltd., Room 718 9/f, No.9 The West Road of Linhe, Tianhe District, Guangzhou, People’s Republic of China (applicant), represented by Ingenias, Av. Diagonal, 514 – 1º, 08006 Barcelona, Spain (professional representative).

On 21/12/2020, the Opposition Division takes the following

 

 

DECISION:

 

 

1.

Opposition No B 3 102 848 is upheld for all the contested goods, namely Class 10: Surgical apparatus and instruments; esthetic massage apparatus; massage apparatus; medical apparatus and instruments; vibromassage apparatus; microdermabrasion apparatus; galvanic therapeutic appliances; physiotherapy apparatus; vibromassage devices; electric esthetic massage apparatus; medical skin enhancement apparatus using lasers; massage apparatus for eyes; scalp massagers; therapeutic instruments for ophthalmology.

 

2.	European Union trade mark application No 18 098 216 is rejected for all the contested goods. It may proceed for the remaining goods.

 

3.	The applicant bears the costs, fixed at EUR 620.

 

REASONS

 

The opponent filed an opposition against some of the goods of European Union trade mark application No 18 098 216 (figurative mark), namely against some of the goods in Class 10. The opposition is based on European Union trade mark registration No 13 974 613, ‘Juliet’ (word 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

 

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

Class 10: Lasers for medical purposes.

The contested goods are the following:

Class 10: Surgical apparatus and instruments; esthetic massage apparatus; massage apparatus; medical apparatus and instruments; vibromassage apparatus; microdermabrasion apparatus; galvanic therapeutic appliances; physiotherapy apparatus; vibromassage devices; electric esthetic massage apparatus; medical skin enhancement apparatus using lasers; massage apparatus for eyes; scalp massagers; therapeutic instruments for ophthalmology. 

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 therapeutic instruments for ophthalmology overlap with lasers for medical purposes are synonymous to therapeutic instruments for ophthalmology as laser therapy (photocoagulation) uses a beam of light (laser beam) to treat diabetic retinopathy, macular degeneration, retinal tears, and other eye problems. They are, therefore, identical.

The contested medical skin enhancement apparatus using lasers; surgical apparatus and instruments physiotherapy overlap with the opponent’s lasers for medical purposes. Therefore, they are identical.

The contested medical apparatus and instruments include, as a broader category the opponent’s laser for medical purposes. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the earlier goods.

The contested esthetic massage apparatus; massage apparatus; vibromassage apparatus; microdermabrasion apparatus; galvanic therapeutic appliances; vibromassage devices; electric esthetic massage apparatus; massage apparatus for eyes; scalp massagers are at least similar to a low degree to the opponent's lasers for medical purposes because they coincide in distribution channels, in end user and manufacturer.

b) 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 to at least a low degree are directed at the public at large and  professionals with specific knowledge or expertise in the medical and/or cosmetic fields.

 

The degree of attention is high due to the specialised nature of the goods in question as these concern apparatus for medical and cosmetic interventions.

 

c) The signs

 

Juliet
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 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. In the present case, the Opposition Division finds it appropriate to focus the comparison on the English-speaking part of the relevant public.

The earlier word mark consists of the verbal element ‘Juliet’ which is to be perceived by the relevant public as a female given name. It is therefore distinctive for the goods in question.

The contested figurative mark consists of two verbal elements, namely, ‘Juliet’ and ‘Gift’. The element ‘Juliet’ is to be understood as a female given name, as stipulated before. The element ‘Gift’ will be understood by the relevant public as the English word ‘gift’ (something that is being offered, a present). Together, these two verbal elements could either be perceived as a misspelling of ‘Juliet’s gift’ or as two independent words with their own meanings. The contested sign is further composed of some less distinctive figurative elements of a purely decorative nature. Namely, it comprises three simple lines (one horizontal and two vertical ones) that frame the first syllable (‘Ju’) of the verbal element ‘Juliet’. Since these lines are merely decorative, these elements are non-distinctive, as correctly stated in the observations of the opponent. The same applies for the font of the contested sign, which cannot be considered distinctive either, since it is rather simple.

 

Visually, the signs coincide in the verbal element ‘Juliet’. However, they differ in ‘Gift’, which is only present in the contested sign. Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Since the start of the two signs is identical and since the purely figurative elements are most likely to be dismissed by the consumer, the only visually noticeable difference between them is the existence of the verbal element ‘Gift’ at the end of the contested sign. Therefore, the signs are visually similar to an average degree.

 
Aurally, the pronunciation of the signs coincides in the in the sound of the syllables ‘JU-LI-ET’, present identically in both signs. The pronunciation differs in the syllable ‛GIFT’ of the contested mark, which has no counterparts in the earlier sign. Since the signs coincide completely in their first component which is considered to be distinctive, they are considered similar to an average degree.

  

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As part of the signs will be associated with a similar meaning, namely the given name ‘Juliet’, the signs are conceptually similar to an average degree.

 

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

 

d) 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.

 

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

 

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 in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

 

e) Global assessment, other arguments and conclusion

 

As established before, some of the goods in question are identical while others are similar to at least a low degree.

The relevant public is the public at large as well as professionals. The degree of attention is high, due to the specialised nature of the goods in question.

When it comes to the comparison of the signs, they are found to be visually, aurally and conceptually similar to an average degree. The whole of the earlier mark is entirely incorporated in the contested sign as its first and fully distinctive element, while the only differences between them are in non-distinctive graphic elements, or in the ending of the contested sign.

 

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).

 

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

 

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.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T 104/01, Fifties, EU:T:2002:262, § 49).

  

Considering all the above, there is a likelihood of confusion on the English-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 13 974 613 ‘Juliet’ (word mark). It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

 

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, 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

 

 

Helen Louise MOSBACK

Inés GARCIA LLEDO

Martin EBERL

 

 

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.