OPPOSITION Nо B 3 121 544

 

Biofarma, Société par actions simplifiée, 50 rue Carnot, 92284 Suresnes cedex, France (opponent), represented by Plasseraud IP, 66, rue de la Chaussée d'Antin, 75440 Paris Cedex 09, France (professional representative) 

 

a g a i n s t

 

Chang Shen, Room 1707, Building 4, Nantian Building, No. 31 Baihua 2nd Road, Futian District, Shenzhen, Guangdong, People’s Republic of China (applicant), represented by Isidro José García Egea, Avenida De La Paz, 63, 30140 Santomera (Murcia), Spain (professional representative).

On 01/06/2021, the Opposition Division takes the following

 

 

DECISION:

  

1.	Opposition No B 3 121 544 is partially upheld, namely for the following contested goods:

 

Class 10: Endoscopy cameras for medical purposes; dental apparatus and instruments; aerosol dispensers for medical purposes; dental apparatus, electric; esthetic massage apparatus; massage apparatus; medical apparatus and instruments; galvanic belts for medical purposes; galvanic therapeutic appliances; abdominal pads; vibromassage apparatus; orthopedic belts; belts for medical purposes; abdominal belts; orthopedic articles; suture materials; surgical apparatus and instruments; cushions for medical purposes.

2.

European Union trade mark application No 18 199 813 is rejected for all the above goods. It may proceed for the remaining goods.

 

3.	Each party bears its own costs.

 

REASONS

 

On 18/05/2020, the opponent filed an opposition against some of the goods of European Union trade mark application No 18 199 813 (figurative mark), namely against all the goods in Class 10. The opposition is based on European Union trade mark registration No 18 050 722 ‘WISTEM’ (word mark). The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK ON BASIS FOR OPPOSITION

According to Article 2(2)(g) EUTMDR, the notice of opposition must contain an indication of the goods and services on which the opposition is based in the language of the proceedings.

In the present case, the opponent indicated in the notice of opposition that the opposition is based on part of the goods and services covered by earlier European Union trade mark registration No 18 050 722 and listed the following goods:

Class 10: Surgical, medical, dental equipment, instruments and apparatus; Artificial limbs, eyes and teeth; Orthopedic articles; Suture materials; Medical devices intended for ingestion; Endoscopic video capsules; Inhalers.

For the purposes of assessing the admissibility of the opposition, the Office must base itself solely on the claims contained in the documents submitted by the opponent within the opposition period (21/07/2014, R 1573/2013-4, OKAY / O-KEY (fig.)).

Along with the notice of opposition, the opponent submitted the explanation of grounds wherein the opponent indicated the following goods on which the opposition is based:

Class 10: Surgical, medical, dental and veterinary equipment, instruments and apparatus; Artificial limbs, eyes and teeth; Orthopedic articles; Suture materials; Support stockings, tights and socks; Stockings, tights and socks for varicose veins; Medical apparatus, instruments and equipment for introducing pharmaceuticals into the human body, in particular for extended, controlled or immediate release of active substances; Infusion devices and syringes for medical purposes; Measuring instruments for medical purposes, in particular measuring instruments capable of directly transmitting data to a database, in particular fever measuring instruments, Heart rate monitors; Apparatus, instruments and equipment derived from robotics, for medical purposes; Nanorobots for medical purposes; Apparatus, instruments and equipment derived from bionics, for medical purposes; Allergy testing tools; Blood testing apparatus; Medical devices intended for ingestion; Endoscopic video capsules; Medical apparatus for measuring biochemical changes in the blood; Blood biomarker devices; Inhalers; Sphygmomanometers.

Identification elements relevant for the admissibility of the opposition are to be looked for not only in the notice of opposition, but also in annexes or other documents filed together with the notice of opposition or any documents submitted within the opposition period.

In the present case, the Opposition Division will, in order to overcome the contradictory information submitted by the opponent within the opposition period, assume that the opposition is based on the list of goods in Class 10 as indicated in the explanation of grounds and corresponding to all the goods covered by the earlier right in this Class.

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: Surgical, medical, dental and veterinary equipment, instruments and apparatus; Artificial limbs, eyes and teeth; Orthopedic articles; Suture materials; Support stockings, tights and socks; Stockings, tights and socks for varicose veins; Medical apparatus, instruments and equipment for introducing pharmaceuticals into the human body, in particular for extended, controlled or immediate release of active substances; Infusion devices and syringes for medical purposes; Measuring instruments for medical purposes, in particular measuring instruments capable of directly transmitting data to a database, in particular fever measuring instruments, Heart rate monitors; Apparatus, instruments and equipment derived from robotics, for medical purposes; Nanorobots for medical purposes; Apparatus, instruments and equipment derived from bionics, for medical purposes; Allergy testing tools; Blood testing apparatus; Medical devices intended for ingestion; Endoscopic video capsules; Medical apparatus for measuring biochemical changes in the blood; Blood biomarker devices; Inhalers; Sphygmomanometers.

The contested goods are the following:

Class 10: Endoscopy cameras for medical purposes; dental apparatus and instruments; aerosol dispensers for medical purposes; dental apparatus, electric; esthetic massage apparatus; massage apparatus; medical apparatus and instruments; galvanic belts for medical purposes; galvanic therapeutic appliances; abdominal pads; vibromassage apparatus; orthopedic belts; belts for medical purposes; babies' bottles; sex toys; hair prostheses; abdominal belts; orthopedic articles; suture materials; surgical apparatus and instruments; cushions for medical purposes.

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.

The contested endoscopy cameras for medical purposes; aerosol dispensers for medical purposes; esthetic massage apparatus; massage apparatus; medical apparatus and instruments; galvanic belts for medical purposes; galvanic therapeutic appliances; abdominal pads; vibromassage apparatus; surgical apparatus and instruments are identical to the opponent’s surgical and medical equipment, instruments and apparatus either because they are identically contained in both lists, or because the contested goods are included in, or overlap with, the respective goods of the opponent. In relation to the contested esthetic massage apparatus, it should be noted that such appliances are used by medical aestheticians who typically work in healthcare settings treating patients with certain traumatic injuries and it is, therefore, impossible to draw a line between massage apparatus for esthetic purposes on the one hand, and medical purposes on the other hand.

The contested dental apparatus and instruments; dental apparatus, electric are identical to the opponent’s dental equipment, instruments and apparatus either because they are identically contained in both lists, or because the contested goods are included in the broad category of the opponent’s goods.

The contested orthopedic belts; orthopedic articles are identical to the opponent’s orthopedic articles either because they are identically contained in both lists, or because the contested goods are included in the broad category of the opponent’s goods.

Suture materials are identically contained in both lists of goods.

The contested belts for medical purposes; abdominal belts are items of medical clothing for therapeutic use. They are highly similar to the opponent’s support stockings, tights and socks as they have a similar nature in the sense that they are medical garments. They also serve the same purpose, such as to provide support and alleviate pain or discomfort caused by swollen limbs, after surgery, during pregnancy etc. These goods are of interest to the same relevant public. They commonly originate from the same manufacturers and are sold in the same channels of distribution.

The contested cushions for medical purposes are medical bedding designed to alleviate pain, prevent the onset of medical conditions, to distribute the user’s weight over a larger area and reduce the pressure in areas susceptible to pressure sores and skin breakdown etc. These goods are highly similar to the opponent’s orthopedic articles which is a broad category including goods such as orthopedic supports and cushions. The goods under comparison have a similar purpose, share the same distribution channels, satisfy the needs of the same public and usually originate from the same manufacturers.

However, the contested babies' bottles; sex toys; hair prostheses have no relevant connection to any of the goods covered by the earlier mark. Their natures, purposes and methods of use are different.

With regard to the contested babies’ bottles, the opponent argues that medical devices intended for ingestion covered by the earlier mark may comprise devices specifically designed for babies and that these goods, if not identical, are extremely close in their purpose and mode of operation. The contested goods are not primarily intended for medical use, but rather for nursing an infant, with expressed mother’s milk or infant formula, or for drinking water or other liquids. Babies’ bottles are produced by companies specialising in baby care products. In contrast, despite the opponent’s arguments, the Opposition Division finds that medical devices intended for ingestion rather refer to orally ingestible medical devices such as electronic devices with sensors, for patients to swallow. The goods under comparison do not coincide in their usual producers. Furthermore, these goods are neither complementary nor in competition. The mere fact that feeding bottles for infants can be bought in a pharmacy which also sells certain medical apparatus intended for the general public, such as blood pressure measuring apparatus, does not necessarily lead to the finding that these goods are similar to the opponent’s medical apparatus, instruments and equipment. Furthermore, it must be noted that baby care goods are usually displayed on a separate shelf, or even in a separate section, at a pharmacy, and the relevant public will not expect to find those goods next to each other.

The contested sex toys are even further removed from any of the opponent’s goods. The opponent argues that sex toys have a purpose which falls within the definition of orthopedics, being a branch of medicine concerned with the correction or prevention of deformities, disorders, or injuries of the skeleton and associated structures, and that therefore the contested sex toys are covered by the opponent’s orthopedic articles which operate through various techniques, from the physical support to massage functions to strengthen the soft parts of the body. The opponent also asserts that sex toys are comprised in the more general category of medical instruments and apparatus since they all have a therapeutic purpose, are used by the same practitioners and are intended for the same consumers in order to prevent or cure a disease. The Opposition Division notes that sex toys, albeit belonging in Class 10 of the Nice Classification, are objects that are primarily used to facilitate sexual pleasure. Such goods are commonly sold in specialised shops that do not deal in orthopedic or medical supplies. The opponent did not put forward a convincing line of arguments or evidence that would demonstrate that sex toys and orthopedic articles, medical apparatus and instruments share the same usual manufacturers or any other relevant criteria for a finding of similarity under Article 8(1)(b) EUTMR.

The contested hair prostheses, also called cranial prosthesis, refer to custom-made wigs specifically designed for patients who have lost their hair as a result of medical conditions or treatments. The opponent argues that these goods are similar to artificial limbs, eyes and teeth given that they all are elements of the human body used to replace defective or weak parts. However, aside from stating that these goods share the same purpose and require the intervention of a surgeon, the opponent did not sufficiently argue any other factors for the alleged similarity, let alone submit evidence to that effect. The Opposition Division finds that hair prostheses are manufactured by undertakings specialised in this particular area. It is highly unlikely that the same undertaking would also produce other types of artificial implants and prostheses, given the different production techniques, raw materials and know-how that those goods entail. Nor is there any obvious reason to consider hair prostheses complementary to the opponent’s orthopedic articles; medical and surgical apparatus and instruments or any other of the goods covered by the earlier mark. In this regard, it is recalled that goods (or services) are complementary if there is a close connection between them, in the sense that one is indispensable (essential) or important (significant) for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking (11/05/2011, T-74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T-558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T-504/11, Dignitude, EU:T:2013:57, § 44). Here, the contested goods are specific, custom-made articles addressing a particular issue related to one’s health and physical appearance. There is no basis to conclude that use of hair prosthesis necessarily requires the use of any of the opponent’s goods, albeit including medical apparatus and instruments. Absent a functional link or any other sufficiently close connection between the contested goods and any of the opponent’s goods, it is highly unlikely that consumers would think that the responsibility for the production of those goods lies with the same undertaking. Therefore, the contested goods cannot be considered complementary to the opponent’s goods. They do not coincide in their usual channels of distribution, either.

In view of the above, the contested babies' bottles; sex toys; hair prostheses must be considered dissimilar to all of the opponent’s goods.

 

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 a high degree, are directed at the public at large and at business customers with specific professional knowledge or expertise in the field of healthcare.

 

The relevant public’s degree of attention is considered at least above average and can even be relatively high, depending on the specialised nature of the health-care goods at issue, their impact on the state of one’s health, the frequency of purchase and their price.

 

c) The signs

 

WISTEM
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 contested sign is comprised of a stylised representation of the word WISNEM. As regards its first letter, it can be safely assumed that the relevant public will perceive it as the letter W despite the stylisation. This perception will occur on account of the three vertical lines connected at the baseline in a manner that is reminiscent of the grapheme W, albeit in a rounded font. The fact that the grapheme is placed against a contrasting circle shape does not eclipse the perception of the letter as such. Nor does the stylisation result in the word being split up into elements. On the contrary, the relevant public will read the contested sign as one word that has no dominant (visually more eye-catching) element.

Neither the word comprising the earlier mark, WISTEM, nor the contested sign’s word, WISNEM, conveys any clear or specific semantic content to the relevant public which results in the fact that a conceptual comparison between the signs is not possible. As both words are meaningless, they are distinctive in relation to the goods at issue.

Visually, the signs coincide in the letters WIS*EM, and differ in the letters appearing in the middle of the shared letter sequence, namely T in the earlier mark as opposed to N in the contested sign. In addition, the contested sign differs insofar as its stylistic aspects are concerned, namely the specific representation of the grapheme W and the fact that the rest of the letters are depicted in lower case. However, since the stylisation of the grapheme W does not preclude the letter being perceived as such and the font used for the rest of the letters does not depart far from standard, these aspects do not result in a major visual difference between the signs, and the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciations of the signs coincide in the sound of the letters WIS*EM, present identically in both signs. The pronunciations differ in the sound of the letter T in the earlier mark as opposed to the sound of the letter N in the contested sign. Considering that the signs have the same length in terms of the number of syllables and share the same vowel sequence that results in the same intonation and rhythm, whilst the only difference is confined to the consonants in the middle of the words, the signs are aurally similar to a high 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.

 

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 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

Part of the contested goods are identical or similar, to a high degree, to the opponent’s goods. They are directed at the public at large and business customers whose degree of attention varies from above average to relatively high in relation to the purchases in question. The degree of inherent distinctiveness of the earlier mark is average, which affords it a normal scope of protection.

The signs are similar to an average degree on the visual level, and from the aural perspective they are highly similar, while their conceptual comparison remains neutral.

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). In the present case, the Opposition Division finds that the differences identified between the signs, mainly on the visual level, are not of such an impact as to put sufficient distance between the trade marks used in the context of the relevant goods. 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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public, whether the public at large or professionals, and, therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 18 050 722.

 

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar, to a high degree, to those of the earlier trade mark.

 

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

COSTS

 

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

 

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

 

 

 

The Opposition Division

 

 

Martin MITURA

Solveiga BIEZA

Benoit VLEMINCQ

 

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.