OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
OPPOSITION No B 2 392 416
Franz Harrer, Akeleistr. 6, 83346 Bergen, Germany (opponent),
a g a i n s t
Federal Signal Vama S.A., Dr. Ferrán 7, 08339 Vilassar de Dalt (Barcelona), Spain, (applicant), represented by Javier Ungría López, Avda. Ramón y Cajal 78, 28043 Madrid, Spain (professional representative).
On 28/01/2016, the Opposition Division takes the following
2. The opponent bears the costs, fixed at EUR 300.
opponent filed an opposition against some of the goods of Community
trade mark application No
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR
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.
The goods on which the opposition is based are the following:
Class 9: Ergometers and physiological power meters; lactate meters; dynamometers; software for the documentation, visualisation, calculation and analysis of the blood lactate values and performance status of test persons/patients with integrated functions for training control and the evaluation of sports medical parameters, and for the control of ergometers; software for the documentation, visualisation, calculation and analysis of body movements, power trend curves, velocity trend curves, angular velocities, as well as ground reaction forces and the performance status of test persons/patients with integrated functions for training control and the evaluation of sports medical parameters, and for the control of ergometers; software for ergometric apparatus for cardio-respiratory diagnostics and cardiovascular training; apparatus for measuring and improving reaction time, namely contact mats and optical sensors in conjunction with software and optical and acoustic signals and biofeedback apparatus; software for the documentation and control of rehabilitative and sports medical activities; control software for all the aforesaid instruments and apparatus, and for peripheral devices therefor; electronic publications (downloadable); pedometers, step counters; equipment and apparatus for the optical and magnetic recording and processing of data relating to movement processes; interface converters and interface data protocols for all the aforesaid instruments and apparatus, and for peripheral devices therefor; strength-measuring apparatus, weight and pressure-measuring apparatus; control software for all the aforesaid instruments and apparatus, and for peripheral devices therefore.
The contested goods are the following:
Class 9: Warning lamps for vehicles; emergency warning lights; warning lights, flashing lights.
As a preliminary remark, it is to be noted that according to Rule 2(4) CTMIR, the Nice Classification serves purely administrative purposes. Therefore, goods or services may not be regarded as being similar or dissimilar to each other simply on the grounds that they appear in the same or different classes in the Nice Classification.
Furthermore, for the sake of clarification, it should be noted that the term ‘namely’ used in the opponent’s list of goods (apparatus for measuring and improving reaction time, namely contact mats and optical sensors in conjunction with software and optical and acoustic signals and biofeedback apparatus)’ is exclusive and restricts the scope of protection only to the specific goods.
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 goods are devices for signalling purposes that emit clearly visible light in order to attract attention, usually for the sake of safety purposes (alerting of a risk, pointing out to an emergency situation, etc.).
The opponent’s goods are apparatus for measuring, monitoring, recording and processing various data or parameters, in particular physiological or health parameters, as well as computer software and electronic publications.
As far as the opponent’s measuring equipment is concerned: the opponent’s ergometers are intended for measuring work or energy; physiological power meters and lactate meters measure the power output (maximum power output as far as lactate meters are concerned) during a physical effort; dynamometers measure force; both the opponent’s pedometers and stepmeters are used for counting steps; the earlier mark is also registered for devices that measure strength, weight and pressure (strength-measuring apparatus, weight and pressure-measuring apparatus). Finally, the opponent’s apparatus for measuring and improving reaction time, namely contact mats and optical sensors in conjunction with software and optical and acoustic signals and biofeedback apparatus measure the delay in reacting to visual and auditory stimuli through a system of contacts, sensors, and signals, also incorporating software and providing feedback to test patients for the purposes of improving their reaction time.
The opponent’s specification also includes software for monitoring physiological parameters and controlling the related measuring apparatus and the latter’s peripheral devices.
The remaining opponent’s goods are apparatus for recording and processing (including converting) the previously mentioned parameters as well as electronic publications, that is digital information that can be transferred from a central computer or website to a peripheral computer or device.
The opponent’s goods are not for signalling purposes but consist of hardware and software for measuring, monitoring, recording and processing parameters of persons engaged in a physical activity, and of digital content. The goods under comparison do not have the same nature and they are not likely to share the same distribution channels nor to be manufactured by the same companies. There is no clear link of complementarity between them. Prima facie, and in the absence of specific arguments from the opponent, nothing indicates that, for instance, the contested signalling lamps and lights may be essential or indispensable components of any of the opponent’s apparatus. The opponent’s arguments in relation to the comparison of the goods consist of just a table listing the respective goods and a conclusion, without any arguments in support, that the contested warning and flashing lights/lamps are identical or at least similar to a high degree to goods of the earlier mark such as weight and pressure measuring apparatus and/or apparatus for measuring and improving reaction time, namely contact mats and optical sensors in conjunction with software and optical and acoustic signals and biofeedback apparatus and/or other goods covered by the earlier mark.
In the light of the above, namely the differences in the criteria of the comparison as mentioned above, and the lack of convincing arguments on the part of the opponent to the contrary, all of the contested goods are considered to be dissimilar to all of the opponent’s goods.
According to Article 8(1)(b) CTMR, 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) CTMR is not fulfilled, and the opposition must be rejected.
For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) CTMR because the goods are obviously not identical.
According to Article 85(1) CTMR, 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 Rule 94(3) and (7)(d)(ii) CTMIR, 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.
The Opposition Division
Francesca CANGERI SERRANO
María Belén IBARRA DE DIEGO
According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 800 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) CTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Article 2(30) CTMFR) has been paid.