OPPOSITION Nо B 3 125 301

Ulrich Östreicher, Zum Werrablick 4, 37276 Meinhard, Germany (opponent), represented by Michael Floymayr, Bergstr. 8/1, 71106 Magstadt, Germany (professional representative)

a g a i n s t

Sunny Medical Device (Shenzhen) Co., Ltd., 1/f and 401, Zhongtianxin Building B, Longgang District, 518172 Shenzhen, Guangdong, People’s Republic of China (applicant), represented by Al & Partners S.R.L., Via C. Colombo ang. Via Appiani (Corte del Cotone), 20831 Seregno (MB), Italy (professional representative).

On 13/05/2021, the Opposition Division takes the following

DECISION:

1.	Opposition No B 3 125 301 is upheld for all the contested goods, namely

	Class 10: Surgical apparatus and instruments; syringes for injections; pumps for medical purposes; hypodermic syringes; inhalers; injectors for medical purposes; medical apparatus and instruments; syringes for medical purposes; medical guidewires; medical devices; urethral syringes; disposable hypodermic syringes for medical use.
2.		European Union trade mark application No 18 216 903 is rejected for all the contested goods. It may proceed for the remaining non-contested goods.

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

REASONS

On 30/06/2020, the opponent filed an opposition against some of the goods of European Union trade mark application No 18 216 903, ‘SUNMED’ (word mark), namely against some of the goods in Class 10. The opposition is based on EUTM registration No 14 396 741, ‘Sunmed’ (word mark). The opponent invoked Articles 8(1)(a) and (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: Medical syringes, manometers for medical use, catheters, valves for medical purposes, medical guidewires.

The contested goods are the following:

Class 10: Surgical apparatus and instruments; syringes for injections; pumps for medical purposes; hypodermic syringes; inhalers; injectors for medical purposes; medical apparatus and instruments; syringes for medical purposes; medical guidewires; medical devices; urethral syringes; disposable hypodermic syringes for medical use.

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.

Syringes for medical purposes; medical guidewires are identically contained in both lists of goods (including synonyms).

The contested syringes for injections; hypodermic syringes; urethral syringes; disposable hypodermic syringes for medical use are included in the opponent's broad category of medical syringes. Therefore, they are also identical.

The contested injectors for medical purposes include, as a broader category the opponent's medical syringes. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the earlier goods.

The contested medical apparatus and instruments as well as medical devices include, as broader categories, all the opponent's goods on which the opposition is based. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the earlier goods.

The contested surgical apparatus and instruments; pumps for medical purposes; inhalers are similar to the opponent's medical syringes as all of them are items in the medical field. They coincide in producers, distribution channels and relevant public. An in addition, they can be in competition, such as for example insulin pumps and anesthetic inhalers on the one hand and medical syringes on the other.

b) The signs

Sunmed	SUNMED
Earlier trade mark	Contested sign

The signs are identical, since they are word marks, and coincide exactly in their string of letters, with the differences in the use of lower- or upper-case letters being irrelevant for the purposes of the comparison.

c) Conclusion

The signs were found to be identical and some of the contested goods, as established above in section a) of this decision, are identical. Therefore, the opposition must be upheld under Article 8(1)(a) EUTMR for these identical goods. Furthermore, the remaining contested goods were found to be similar to those covered by the earlier trade mark. Given the identity of the signs, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition must also be upheld for these goods.

Therefore, the opposition is well founded on the basis of the opponent’s EUTM registration No 14 396 741. 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, 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

Alicia BLAYA ALGARRA

Claudia SCHLIE

Michal KRUK

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.