OPPOSITION Nо B 3 126 157

 

Medi Care System, S.L., Abat Escarré, 15 -17, 1ª planta, 08302 Mataró (Barcelona), Spain (opponent), represented by Manresa Industrial Property, S.L., Calle Aragó, N° 284, 4° 2°, 08007 Barcelona, Spain (professional representative) 

 

a g a i n s t

 

Yuehu Zhang, Zutphensestraat 111C, 7325XE Apeldoorn, Netherlands (applicant).

On 07/06/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 126 157 is rejected in its entirety.

 

2.	The opponent bears the costs.

 

REASONS

 

 On 15/07/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 224 615 (figurative mark). The opposition is based on European Union trade mark registration No 14 575 708 (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

 

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

Class 10: Orthopaedic articles, in particular bibs, belts, waistcoats and strips for securing individuals in wheelchairs, beds and other furniture for taking rest, pads (pouches) for preventing pressure sores on patient's bodies; supportive bandages, belts for medical, orthopaedic and abdominal purposes; limb immobilisers.

Class 20: Furniture, bedside tables, airbeds, waterbeds; work chairs and lift chairs for the physically handicapped, those of reduced mobility and invalids; fittings, accessories and spare parts for the aforesaid goods included in this class.

Class 24: Textiles, in particular roll-on elastic fabric for protection.

The contested goods are the following:

Class 9: Anti-pollution masks for respiratory protection; protective masks; thermometers; infrared thermometers; technical thermometers; temperature measuring apparatus for household use; thermometers, not for medical purposes; digital thermometers, other than for medical purposes; electronic thermometers, other than for medical use; gloves for industrial purposes for protection against injury.

Class 10: Masks for use by medical personnel; surgical masks; high filter surgical masks; sanitary masks for medical purposes; LED masks for therapeutic purposes; masks and equipment for artificial respiration; sanitary masks for dust prevention for medical purposes; sanitary masks for dust isolation for medical purposes; protective masks for use by surgeons during operations; face masks for surgical use for anti bacterial protection; face masks for surgical use for toxic substance protection; protective masks for use by persons working in the dentistry; protective masks for use by persons working in medicine; temperature measuring instruments for medical use; digital thermometers for medical purposes; electronic thermometers for medical use; gloves for medical purposes; surgical gloves; gloves for medical examinations; gloves for veterinary use; gloves for dental use; gloves for use during operations; rubber gloves for medical use; latex gloves for medical use; rubber gloves for surgical use; protective gloves for medical use; disposable protective gloves for medical purposes; gloves for use in hospitals; protective gloves for use by surgeons during operations; protective gloves for use by persons working in the dentistry; protective gloves for use by persons working in medicine; protective visors for medical use; protective visors for surgical use; protective breathing masks made of non-woven materials for surgical applications; protective breathing masks for surgical applications; protective breathing masks for medical applications; protective visors for dental use; protective visors for veterinary use; protective clothing for surgical purposes; protective clothing for medical purposes; surgical breathing masks; surgical caps; protective face masks for medical use; clothing, headgear and footwear for medical personnel and patients.; protective face masks for dental use; surgical shoe covers; latex examination gloves for medical use; latex gloves for surgical use; protective mouth masks for medical use; protective mouth masks for dental use; protective nose masks for dental use; protective nose masks for medical use; clothing especially for operating rooms; patient examination gowns; surgical scrub suits; gowns for surgical use; medical gowns; sterile clothing for surgical use; disposable gloves for surgical use.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘in particular’, used in the opponent’s list of goods, indicates that the specific goods 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 9

The contested thermometers; anti-pollution masks for respiratory protection; protective masks; infrared thermometers; technical thermometers; temperature measuring apparatus for household use; thermometers, not for medical purposes; digital thermometers, other than for medical purposes; electronic thermometers, other than for medical use; gloves for industrial purposes for protection against injury are dissimilar to all goods in Classes 10, 20 and 34 covered by the opponent's trade mark registration because they have nothing in common. Their natures, purposes and methods of use are different. They do not coincide in their producer/provider and do not share the same distribution channels. Furthermore, these goods are neither complementary nor in competition and they target different end users.

Contested goods in class 10

The contested goods in this class are medical goods, such as medical clothing, or very specific medical goods such as masks and equipment for artificial respiration; temperature measuring instruments for medical use; digital thermometers for medical purposes; electronic thermometers for medical use. None of these goods has the same nature, purpose and methods of use as the opponent's goods in Class 10, which are specifically used for orthopaedic purposes.

The goods are used in different situations and for different ailments. It is also not plausible to consider the goods having the same manufacturers, or users. The goods are not complementary.

Taking into account complementarity as defined above, the use of those goods cannot be considered complementary use. Complementarity has to be clearly distinguished from use in combination where goods are merely used together.

Furthermore, given that both the opponent's goods and the contested goods are very specific apparatus or goods, the relevant public (e.g. a professional buyer of apparatus or equipment to be used in a hospital or a clinic) will be attentive, and aware that their manufacture requires different knowledge and expertise and, as such, is not likely to believe that these goods are manufactured by the same undertaking. Similar considerations apply to distribution channels. Although it is not excluded that a large provider of apparatus and equipment for hospitals can distribute both the earlier goods and some of the contested goods, it cannot be considered a general rule in the market, given the specificity of the equipment and apparatus under comparison, as well as their different purposes. Therefore, these goods are deemed to be generally distributed through different channels.

As regards the opponent’s goods in Classes 20 and 24, their distance from the contested goods in Class 10 is even more marked, since they clearly do not share any point of contact, being aimed at different scopes.

Considering all the above mentioned it is considered that the contested goods in Class 10 are dissimilar to all the opponent's goods.

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 are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

 

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. In the present case, the applicant did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

 

 

 

The Opposition Division

 

 

María Victoria DAFAUCE MENÉNDEZ

Andrea VALISA

Edith Elisabeth VAN DEN EEDE

 

 

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.