DECISION

of the Fourth Board of Appeal

of 24 November 2020

In Case R 2948/2019-4

Precisis Aktiengesellschaft
Hauptstraße 73 69117 Heidelberg Germany	Opponent / Appellant

represented by Dr. Flügler & Partner Rechtsanwälte, Günterstalstraβe 72, 79100 Freiburg i. Br., Germany

v

Easee B.V.
Meeuwenlaan 100 1021 JL Amsterdam The Netherlands	Applicant / Defendant

represented by Taylor Wessing N.V., Kennedyplein 201, 5611 ZT Eindhoven, The Netherlands

APPEAL relating to Opposition Proceedings No B 2 778 606 (European Union trade mark application No 15 514 706)

The Fourth Board of Appeal

composed of D. Schennen (Chairman and Rapporteur), E. Fink (Member) and L. Marijnissen (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. European Union trade mark application No 15 514 706 was filed on 07/06/2016 by Easee B.V. (‘the applicant’) for the word mark

EASEE

for the following list of goods and services:

Class 9 – Software only in respect of online eye scans; eyewear; eye protection; contact lenses; contact lens cases; spectacles; sunglasses; cases for spectacles and sunglasses; frames for spectacles.

Class 35 – Retail and wholesale services relating to eyewear, contact lenses, sunglasses, cases for spectacles and sunglasses, frames for spectacles, contact lens cases, contact lenses solutions, disinfectants and cleaning preparations for contact lenses, software only in respect of online eye scans.

Class 42 – Design, development, programming and implementation of computer software only in the field of online eye scans.

2. On 28/09/2016, Precisis Aktiengesellschaft (‘the opponent’) filed an opposition against the application for all the goods and services applied for.

3. The grounds for opposition were those laid down in Article 8(1)(a) and Article 8(1)(b) EUTMR and based on the international registration No 1 266 000 designating the European Union (‘the earlier mark’) for the mark in standard characters

EASEE

filed and registered on 15/07/2015 for the following goods and services:

Class 9 – Computer software for use in medical decision support systems.

Class 10 – Surgical instruments and apparatus; surgical implants made of artificial materials; electrodes for use with medical apparatus; electronic apparatus for medical purposes; implants consisting of artificial materials; medical apparatus and instruments; medical implants.

Class 42 – Software development, programming and implementation.

4. By decision of 24/10/2019 (‘the contested decision’), the Opposition Division partially upheld the opposition, and rejected the application except for the following contested goods and services:

Class 9 – Eyewear; eye protection; contact lenses; contact lens cases; spectacles; sunglasses; cases for spectacles and sunglasses; frames for spectacles.

Class 35 – Retail and wholesale services relating to eyewear, contact lenses, sunglasses, cases for spectacles and sunglasses, frames for spectacles, contact lens cases, contact lenses solutions, disinfectants and cleaning preparations for contact lenses, software only in respect of online eye scans.

The opposition was rejected for these goods and services and each party was ordered to bear its own costs.

5. The Opposition Division reasoned in essence as follows:

• Part of the contested goods in Class 9, namely ʻsoftware only in respect of online eye scansʼ is highly similar to the earlier ʻcomputer software for use in medical decision support systemsʼ. The remaining contested goods in Class 9, namely ʻeyewear; eye protection; contact lenses; contact lens cases; spectacles; sunglasses; cases for spectacles and sunglasses; frames for spectaclesʼ are dissimilar to the earlier goods and services as they have different providers, purposes, distribution channels and they are neither complementary nor in competition with each other.

• All the contested services in Class 35 are dissimilar to the earlier goods and services.

• All the contested services in Class 42 are identical with the earlier ʻsoftware development, programming and implementationʼ in Class 42.

• The signs are identical.

• It follows that the opposition is partially successful for the identical services in Class 42 on the basis of Article 8(1)(a) EUTMR (double identity) and for the similar goods in Class 9 on the basis of Article 8(1)(b) EUTMR. It fails for part of the contested goods in Class 9 and all the contested services in Class 35 that are dissimilar to the earlier goods and services.

6. On 21/12/2019, the opponent filed an appeal against the contested decision followed by a statement of grounds on 23/02/2020. It requested that the contested decision be annulled in its entirety.

7. The arguments raised in the statement of grounds may be summarised as follows:

• The outcome of the contested decision on the dissimilarity of the contested services in Class 35 with the earlier goods and services is unfounded.

• There is a likelihood of confusion between the contested ‘retail and wholesale services relating to software only in respect of online eye scans’ on the one hand and the earlier ‘software development’ on the other hand. Both parties are active in the medical field. The opponent is specialized in the development of innovative medical devices and the applicant operates in the area of eye scans.

• The Opposition Division incorrectly concluded that the distribution channels are different. In this regard, the opponent refers to a flyer in German (Annex 1) and a screenshot with the contact details of the website of the applicant (Annex 2).

• For the purposes of the assessment of the complementarity of the goods and services in question, the perception of the relevant public and the importance of the relevant product or service should be taken into account. The consumers interested in medical issues could be confused that the contested services related to eye scans are also provided by the opponent.

• The contested sign is used by the opponent in relation to software, and the patented ʻeasee online eye examʼ is clinically proven.

• Since the contested services related to software in Class 35 are similar to the earlier services in Class 42 and the signs are identical, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR.

8. In its observations received on 03/07/2020, the applicant requested to dismiss the appeal and endorsed the conclusion of the Opposition Division on the dissimilarity of the goods and services under appeal. It argued that the contested services ʻretail and wholesale services relating to software only in respect of online eye scansʼ in Class 35 do not concern the goods and services for which the earlier mark is registered and there is no complementarity between them. Furthermore, the companies specialized in optics are not likely to provide retail and wholesale of computer software for use in the medical sphere or any other goods and services provided to people suffering from focal epilepsy and vice versa. The contested services in Class 35 relate to highly specialized software. The relevant public is different since the earlier goods and services are focused at the professional public displaying a high degree of attention while the contested goods and services target the public at large. The distribution channels are also different.

Reasons

9. The goods and services for which the opponent is adversely affected pursuant to Article 67, 1^st sentence, EUTMR, are all the contested goods and services, for which the opposition was rejected (see paragraph 4). For the goods and services for which the opposition was upheld by the contested decision, the request to annul the decision is inadmissible. For the remainder, the appeal is admissible.

10. The appeal is not well-founded.

Article 8(1)(b) EUTMR

11. The Opposition Division correctly held that the goods and services under appeal, namely the goods and services for which the opposition was rejected, are dissimilar.

12. Pursuant to Article 8(1)(b) EUTMR, upon the opposition of the proprietor of an earlier mark, the trade mark applied for shall not be registered if, because of its identity with or similarity to the earlier trade mark and, cumulatively, the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. A likelihood of confusion lies in the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17). The identity or similarity of the goods and services is one of the minimum conditions of this provision.

13. In assessing the similarity of goods and services, all the relevant factors should be taken into account, including their nature, their intended purpose and their method of use and whether they are in competition with each other or are com­plementary (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 23). Other relevant factors may also be taken into account such as distribution channels (11/07/2007, T-443/05, Pirañam, EU:T:2007:219, § 37), the usual origin of the goods and services and the consumer of the goods and services.

14. The reference point is whether the relevant public will perceive the goods or services concerned as having a common commercial origin (04/11/2003, T-85/02, Castillo, EU:T:2003:288, § 32, 38) and whether consumers consider it normal that the goods or services are marketed under the same trade mark, which normal­ly implies that a large number of producers or providers are the same (11/07/2007, T‑150/04, Tosca Blu, EU:T:2007:214, § 37).

15. According to Article 95(1) EUTMR, in opposition proceedings, the Office is restricted in its examination to the facts, evidence and arguments provided by the parties and the relief sought. What does not follow from the evidence or argu­ments submitted by the parties or is not commonly known, should not be specu­lated on or extensively investigated ex officio and may not be taken into account (09/02/2011, T‑222/09, Alpharen, EU:T:2011:36, § 31, 32).

16. As a general remark, it follows from Article 33(7) EUTMR that goods or services are not regarded as being similar to or dissimilar from each other on the sole ground that they appear in the same or different classes of the Nice Classification.

17. The goods and services which are at issue in the present appeal are the following:

    Contested sign

    Earlier mark

    Class 9 ‒ Eyewear; eye protection; contact lenses; contact lens cases; spectacles; sunglasses; cases for spectacles and sunglasses; frames for spectacles. Class 35 ‒ Retail and wholesale services relating to eyewear, contact lenses, sunglasses, cases for spectacles and sunglasses, frames for spectacles, contact lens cases, contact lenses solutions, disinfectants and cleaning preparations for contact lenses, software only in respect of online eye scans.

    Class 9 – Computer software for use in medical decision support systems. Class 10 – Surgical instruments and apparatus; surgical implants made of artificial materials; electrodes for use with medical apparatus; electronic apparatus for medical purposes; implants consisting of artificial materials; medical apparatus and instruments; medical implants. Class 42 – Software development, progra-mming and implementation.

18. The opponent only challenges the comparison with the contested services ʻretail and wholesale services relating to software only in respect of online eye scansʼ in Class 35. In that respect, the opponent only argues that they are similar to the earlier services ‘software development, programming and implementation’ in Class 42.

19. The opponent’s goods are broadly software and surgical devices and its services are in the field of software development and implementation. The opponent bases its argumentation on the earlier services ‘software development, programming and implementation’ that are targeted at the professional public. However, software as such is used in nearly all fields of human activities and it depends on the current need of the respective customer, who may be active in different areas of business, what type of software is concerned. These earlier services are specialized and provided by professionals in the information technology sector.

20. The fact that ‘software’ is used in nearly all fields of human activities does not mean that the earlier services ‘software development, programming and implementation’ in Class 42 would grant general trade mark protection against any contested good or service that uses software technology. The latter is not sufficient to find a similarity provided that there are no other factors for finding a similarity. Software must not be deemed similar to all goods and services that contain or relate to some sort of software, because that would confer an unduly broad umbrella protection against all electronic goods (27/10/2005, T‑336/03, Mobilix, EU:T:2005:379, § 69). Computer goods and computer services are used in nearly all sectors. Often, the same goods– for example, a certain type of software or operating system – may be used for very different purposes (22/01/2009, T‑316/07, easyHotel, EU:T:2009:14, § 55).

21. The contested ʻretail and wholesale services relating to software only in respect of online eye scansʼ are directed at the companies and experts in the field of science and medicine. It is, therefore, a highly specialised public with a higher degree of attention (14/09/2004, T-183/03, Applied Molecular Evolution, EU:T:2004:263, § 16). The goods to which these services relate are highly specialized ʻsoftware only in respect of online eye scansʼ that enables the examination of the eye or the retina.

22. The contested services are retail and wholesale services relating to specific goods. The term ‘retail’ is synonymous to ‘the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods’, and ‘such services may be provided by retail stores, wholesale outlets etc’, according to the Explanatory Notes of the Nice Classification. The objective of retail trade is the sale of goods to consumers, which includes, in addition to the legal sales transaction, all activity carried out by the trader for the purpose of encouraging the conclusion of such a transaction. That activity consists, inter alia, in selecting an assortment of goods offered for sale and in offering a variety of services aimed at inducing the consumer to conclude the abovementioned transaction with the trader in question rather than with a competitor (07/07/2005, C-418/02, Praktiker, EU:C:2005:425, § 34). The same applies to the wholesale services addressed to business customers. The Court of Justice has made clear that the mere act of selling goods at retail is not a service. Services around the retail of goods constitute services within the meaning of Article 4 EUTMR if they comply with the requirement to specify the goods or types of goods to which those services relate (see Praktiker, § 35, 39, 50). These services do not have the same nature, method, or purpose as the goods to which they relate (24/09/2008, T‑116/06, O Store, EU:T:2008:399, § 46). Rather, the retail services for specific goods are complementary to those specific, identical, goods (O Store, § 53-55).

23. A retailer offers goods from different producers, here goods which are eye scan software. The retailer does not alter the retailed goods, even less produces them. When comparing retail services with the earlier goods in Class 9, ‘computer software for use in medical decision support systems’, a similarity between the retail or wholesale services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are the same. This condition is not fulfilled. The earlier goods in Class 9 ‘computer software for use in medical decision support systems’ are not for eye scans or otherwise related to the field of ophthalmology. To these goods the services in Class 35 cannot be complementary. The same reasoning, obviously, applies when comparing the contested services with the earlier goods in Class 10. It follows that the contested services ‘retail and wholesale services relating to software only in respect of online eye scans’ are dissimilar to any of the earlier goods.

24. The contested ‘retail and wholesale services relating to software only in respect of online eye scans’ are also dissimilar to the earlier services ‘software development, programming and implementation’ in Class 42. Retail and wholesale of the particular goods are different from the ‘software development, programming and implementation’ that are aimed at the creation of a new software, its new functionalities or at implementing software solutions. They have different purposes since the contested services enable the sale of software in respect of online eye scans while the earlier services in Class 42 are aimed at the development of new software, its particular functionalities and implementation. The Class 42 services require programming skills, the retailer of software only sells ready-to-use software.

25. The providers are different (retail or wholesale stores v. specialized IT companies and researchers). Also, the distribution channels are different. As regards the argumentation of the opponent referring to a flyer of the opponent in German (Annex 1 to the statement of grounds) and a screenshot of the contact details of the website of the applicant (Annex 2 to the statement of grounds), the Board notes that it is unclear how these documents should support the statement of the opponent on the similarity of the sale or distribution channels of the services in question.

26. The argument raised by the opponent that the conflicting services would be complementary fails. According to the case-law, the notion of ‘complementarity’ does not extend to any situation in which goods or services can be used alongside one another, but requires that there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that customers may think that the responsibility for the production of those goods or for the provision of those services lies with the same undertaking (07/02/2006, T‑202/03, Comp USA, EU:T:2006:44, § 46; 11/07/2007, T-443/05, Pirañam, EU:T:2007:219, § 48; 16/12/2013, R 634/2013‑4, ST LAB / ST, § 20).

27. The use of the contested services in Class 35 does not require the parallel use of the earlier services in Class 42.

28. The earlier services in Class 42 and the contested goods ʻretail and wholesale services relating to software only in respect of online eye scansʼ in Class 35 are different kinds of services and the mere fact that they relate to software is not sufficient to establish similarity as they have a completely different purpose, distribution channels, providers and are neither complementary nor in competition with each other.

29. As regards the argument of the opponent that both parties operate in the medical field, it must be reiterated that the assessment of the Office on the likelihood of confusion is carried out in a more abstract manner and based on the list of goods and services registered (24/11/2005, T-346/04, Arthur et Félicie, EU:T:2005:420, § 35; 22/03/2007, T-364/05, Pam Pluvial, EU:T:2007:96, § 85; 13/08/2008, R 1602/2007-4, SCHNEIDER / SCHNEIDER, § 11), and not on goods and services factually used in practice by the parties, unless proof of use is requested. It is up to the business decision of the parties how they decide to use the sign in the running of their business. The particular circumstances in which the goods and services covered by the marks are actually marketed have, as a matter of principle, no impact on the assessment of the likelihood of confusion because they may vary in time depending on the wishes of the proprietors of the trade marks (15/03/2007, C-171/06, Quantum, EU:C:2007:171, § 59; 22/03/2012, C‑354/11, G, EU:C:2012:167, § 73; 21/06/2012, T-276/09, Yakut, EU:T:2012:313, § 58).

30. In the absence of any further arguments to the contrary provided by the opponent, the Board endorses the findings of the Opposition Division that the contested services ʻretail and wholesale services relating to software only in respect of online eye scansʼ in Class 35 are dissimilar to the earlier goods and services.

31. The parties did not question the comparison of the remaining contested services in Class 35 and the contested goods in Class 9 under appeal assessed by the Opposition Division. The Board cannot see any reason to question those considerations and agrees with the comparison made by the Opposition Division that the contested goods in Class 9 and the contested services in Classes 35 under appeal are dissimilar to the earlier goods and services.

32. Since the goods and services under appeal covered by the conflicting trade marks are dissimilar, there is no likelihood of confusion, given that the similarity of the goods and services is a condition for a finding of likelihood of confusion according to Article 8(1)(b) EUTMR (11/07/2007, T‑150/04, Tosca Blu, EU:T:2007:214, § 27; 22/01/2009, T‑316/07, easyHotel, EU:T:2009:14, § 43).

33. The appeal shall be dismissed for all the contested goods and services subject to the appeal.

Costs

11. Since the opponent (appellant) is the losing party within the meaning of Article 109(1) EUTMR, it must bear the costs incurred by the applicant (defendant) in the appeal proceedings. The Opposition Division correctly reasoned that each party shall bear its own costs in the opposition proceedings.

Fixing of Costs

11. In accordance with Article 109(1) and (7) EUTMR and Article 18(1)(c)(iii) EUTMIR, the Board fixes the amount of representation costs to be paid by the opponent (appellant) to the applicant (defendant) with respect to the appeal proceedings at EUR 550.

Order

On those grounds,

THE BOARD

hereby:

1. Dismisses the appeal;

2. Orders the appellant to bear the costs of the appeal proceedings and each party to bear its own costs for the opposition proceedings;

3. Fixes the total amount to be paid by the appellant to the defendant for the appeal proceedings at EUR 550.

Signed D. Schennen

Signed E. Fink

Signed L. Marijnissen

Registrar: Signed H.Dijkema