OPPOSITION Nо B 3 129 775

 

Magariños Montes Investments, S.L., Polígono Industrial Veigadaña, Rua Anel do Perral, 39, 36416 Mos - Pontevedra, Spain (opponent), represented by Javier Ungría López, Avda. Ramón y Cajal, 78, 28043 Madrid, Spain (professional representative) 

 

a g a i n s t

 

Guangzhou Jiayuan Daily Chemical Products Co., Ltd., 3/F and 4/F of Building A3 and 4/F of Building A2, No. 7, Aimin Rd., Xinhua St., Huadu District, Guangzhou, People´s Republic of China (applicant), represented by Süle Law Firm, Frankel Leo U. 84. 1/7, 1023 Budapest, Hungary (professional representative).

 

On 27/07/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 129 775 is partially upheld, namely for the following contested goods:

 

	Class 10: masks for use by medical personnel; sanitary masks for medical purposes; protective clothing for surgical purposes; protective clothing for medical purposes; gloves for medical purposes; feeding bottles; ultraviolet ray lamps for medical purposes; dental apparatus and instruments; medical apparatus and instruments.
2.	European Union trade mark application No 18 245 218 is rejected for all the above goods. It may proceed for the remaining goods.

 

3.	Each party bears its own costs.

 

REASONS

 

On 28/08/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 245 218 (figurative mark). The opposition is based on European Union trade mark registration No 18 237 089, KALAN (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 and services

 

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

 

Class 10: Hygienic masks; Surgical masks; Sanitary masks.

Class 11: Disinfectant apparatus; Sterilization, disinfection and decontamination equipment.

Class 35: Publicity and sales promotion services; business management; business administration; office functions; import and export services; wholesaling and retailing in shops, via catalogue and global computer networks of all kinds of disinfectants, sanitary preparations and articles, in particular sanitary masks, disinfection and sterilisation tunnels; franchises, namely consultancy and assistance in the management, organisation and promotion of business relating to commercial or industrial business management assistance; direct mail advertising; organization of exhibitions for commercial or advertising purposes; sales promotion for others; organization of trade fairs for commercial or advertising purposes.

The contested goods are the following:

 

Class 10: Medical apparatus and instruments; dental apparatus and instruments; ultraviolet ray lamps for medical purposes; sanitary masks for medical purposes; gloves for medical purposes; masks for use by medical personnel; feeding bottles; condoms; bandages, elastic; suture materials; protective clothing for medical purposes; protective clothing for surgical purposes. 

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 services indicates that the specific 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).

 

However, the term ‘namely’, used in the opponent’s list of services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the services specifically listed.

 

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.

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.

Contested goods in class 10

The contested masks for use by medical personnel include, as a broader category, the opponent's surgical masks. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the earlier goods.

The contested sanitary masks for medical purposes are included in the broad category of the opponent´s sanitary masks, and are therefore identical.

The contested protective clothing for surgical purposes; protective clothing for medical purposes; gloves for medical purposes are similar to the opponent's surgical masks because they have the same purpose as well as the same producer, relevant public and distribution channels.

The contested feeding bottles; ultraviolet ray lamps for medical purposes are similar to the opponent's sterilization, disinfection and decontamination equipment in Class 11 because they coincide in producer, distribution channels and relevant public. Furthermore, they have the same purpose as the opponent´s sterilization, disinfection and decontamination equipment includes ‘sterilisers for babies´ feeding bottles. The same is applicable to the contested ultraviolet ray lamps for medical purposes as they have the same purpose of the opponent´s sterilization, disinfection and decontamination equipment in Class 11.

The contested dental apparatus and instruments; medical apparatus and instruments are similar to a low degree to the opponent's disinfectant apparatus in Class 11 as the latter includes disinfectant apparatus for medical purposes which usually coincide in relevant public and distribution channels. Furthermore they are complementary.

The contested bandages, elastic; suture materials; condoms are dissimilar to all the goods and services covered by the opponent's right 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.

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 varying degrees are directed at the general public and business customers with specific professional knowledge or expertise.

 

The degree of attention may vary from average to high due to the fact that some of the goods under dispute are intended to be used in the medical field and therefore have a specialised nature.

c) The signs

 

KALAN
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.

 

The signs in dispute have no meaning at least in certain territories, such as in Germany and Austria. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the German-speaking part of the public.

 

The earlier mark is a word mark which has no meaning for the relevant public and is, therefore, distinctive.

 

The contested sign is a stylised figurative mark containing the verbal element ‘KiaLan’ which has no meaning and is, therefore, distinctive. In addition, the contested sign has no element that could be considered more clearly dominant than other elements. The stylisation of the mark (the slightly stylised typeface and the circular line extending from the letter ‘L’ to the end of the sign) has a purely decorative nature and would not deviate the consumers attention from the verbal element contained in the mark.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

  

Visually and aurally, the signs coincide in the letters ‘K*ALAN’ (or their sound) which make up the whole of the earlier mark, and five out of the six letters of the contested sign. However, they differ in the letter/sound ‘I’ as well as in the stylised elements contained in the contested sign which have no counterpart in the earlier mark. Nevertheless, the signs have a highly similar rhythm and intonation.

 

Therefore, the signs are similar to an average degree.

 

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

  

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 as a whole has no meaning for any of the goods and services 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

 

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

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).

In the present case, the goods are partly similar to varying degrees and partly dissimilar. The relevant public is the general and the professional public, whose level of attention will vary from average to high. The inherent distinctiveness of the earlier mark is average. The signs are visually and aurally similar to an average degree and due to the fact that the signs do not have a semantic meaning, the conceptual aspect does not influence the assessment of the signs under dispute.

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).

 

Considering all the above, there is a likelihood of confusion on the part of the German-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 trade mark registration (EU) No 18 237 089. It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark, including the goods found to be similar only to a low degree.

The rest of the contested goods are dissimilar. As the identity or similarity of goods and services is a necessary condition for the application of Article 8(1)(b) 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

 

 

Helen Louise MOSBACK

Inês RIBEIRO DA CUNHA

Julia GARCÍA MURILLO

 

 

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.