OPPOSITION No B 3 001 354

Dallas Burston Ethitronix Ltd, Lande A Geon, JE3 7EA Le Vieux Beaumont, Jersey (opponent), represented by Serjeants LLP, Dock 75 Exploration Drive, LE4 5NU Leicester, United Kingdom (professional representative)

a g a i n s t

EPS Bio Technology Corp., No. 8 R&D RD. III, Hsinchu Science Park, 30077 Hsinchu, Taiwan (applicant), represented by Cabinet Bleger-Rhein-Poupon, 4a, rue de l'Industrie, 67450 Mundolsheim, France (professional representative).

On 23/11/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 001 354 is upheld for all the contested goods, namely

Class 9: Connected bracelets [measuring instruments]; Measuring apparatus; Measuring devices, electric; Measuring instruments; Smartwatches; Wearable activity trackers.

Class 10: Blood testing apparatus; Bracelets for medical purposes; Diagnostic apparatus for medical purposes; Medical apparatus and instruments; Testing apparatus for medical purposes; Apparatus for use in medical analysis.

2. European Union trade mark application No 17 138 322 is rejected for all the contested goods. It may proceed for the remaining goods.

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

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 138 322 (figurative mark: ), namely against some of the goods in Classes 9 and 10. The opposition is based on European Union trade mark registration No 16 265 696 (word mark: ‘ETHITRONIX SUGARWATCH’). 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.

1. The goods

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

Class 5: Chemical preparations for testing blood for medical purposes; Chemical preparations for the diagnosis of diabetes; Chemical test reagents [medical]; Diagnostic reagents for medical use; Diagnostic testing materials for medical use; Test strips for measuring blood glucose levels; Reagents for use in diagnostic tests [for medical purposes].

Class 10: Apparatus for carrying-out diagnostic tests for medical purposes; Blood glucose monitoring apparatus; Blood glucose testing apparatus; Diagnostic apparatus for medical purposes; Electromedical diagnostic instruments; Electronic apparatus for medical purposes; Electronic monitoring instruments for medical use; Medical apparatus for testing the level of glucose in the blood; Medical diagnostic apparatus for medical purposes; Medical test kits for diabetes monitoring for home use; Meters for measuring blood glucose; Testing apparatus for medical purposes; Testing instruments for medical diagnostic purposes.

Class 14: Wristwatches; Watches; Watches incorporating a memory function; Watches with the function of wireless communication.

The contested goods are the following:

Class 9: Connected bracelets [measuring instruments]; Measuring apparatus; Measuring devices, electric; Measuring instruments; Smartwatches; Wearable activity trackers.

Class 10: Blood testing apparatus; Bracelets for medical purposes; Diagnostic apparatus for medical purposes; Medical apparatus and instruments; Testing apparatus for medical purposes; Apparatus for use in medical analysis.

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 applicant argues that connected bracelets [measuring instruments] are dissimilar to the opponent’s watches with the function of wireless communication in Class 14 because ‘the purpose of these goods is not the same as the applicant’s bracelets are intended to measure diabetic people’s glucose level, whereas the opponent’s electronic watches can be used as a mobile phone to communicate with other people, as it is the case for any ordinary smartwatch.’ However the Opposition Division needs to consider the goods as they appear on the specification and not the specific goods for which the trade mark is actually being used on the market.

With that in mind, the contested connected bracelets [measuring instruments] are at least similar to the earlier watches with the function of wireless communication in Class 14 because they coincide in the following criteria: They may coincide in purpose, method of use, distribution channels, end user and in producers.

The contested wearable activity trackers are similar to the earlier watches with the function of wireless communication in Class 14 because they may coincide in method of use, end users and producers.

The contested measuring apparatus; measuring devices, electric; measuring instruments are broad terms that would include wearable activity trackers that measure and track the activity of the user (for example, how many kilometers walked, how many stairs climbed, etc.). Therefore, these measuring apparatus and instruments are considered similar to the earlier watches with the function of wireless communication because they coincide in method of use, end users and producers.

The contested smartwatches are similar to the earlier watches because they have the same nature as both are watches and they may coincide in distribution channels, end users and producers.

Contested goods in Class 10

Testing apparatus for medical purposes; diagnostic apparatus for medical purposes are identically contained in both lists of goods (including synonyms).

The contested medical apparatus and instruments include, as a broader category, the opponent’s diagnostic apparatus for medical purposes. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the earlier goods.

The contested blood testing apparatus includes, as a broader category the earlier blood glucose testing apparatus. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the earlier goods.

The contested bracelets for medical purposes would include such electronic goods as bracelets to measure blood pressure or bracelets to measure glucose levels. It would also include other non-electronic goods such as magnetic bracelets for medical purposes. They overlap with the earlier electronic apparatus for medical purposes. Therefore, they are identical.

The contested apparatus for use in medical analysis overlap with the opponent’s electronic apparatus for medical purposes. Therefore, they are identical.

2. 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 are specialised goods directed at professional customers with specific knowledge or expertise and at the general consumer.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price. In particular, those medical goods that may have an effect on the consumer’s health will merit a high degree of attention.

Given that the general public is more prone to confusion, the examination will proceed on this basis.

3. The signs

ETHITRONIX SUGARWATCH
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 common element ‘SUGARWATCH’ is meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English speaking part of the public such as the Spanish-speaking part for which the coincidence is in a distinctive element and the likelihood of confusion would be greatest.

The earlier sign is a word mark composed of the verbal elements ‘ETHITRONIX SUGARWATCH’. Neither of the verbal elements has any meaning in Spanish and therefore they are distinctive for the Spanish-speaking public. Regarding the earlier mark, it should be noted that the protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (22/05/2008, T‑254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is irrelevant whether a word mark is depicted in lower or upper case letters.

The contested sign is a figurative mark with the verbal elements ‘EASYMAX sugarWATCH’. ‘EASYMAX’ appears in a basic bold black capital typeface. ‘sugar’ appears in a dark grey fairly basic typeface. ‘WATCH’ appears in a bolder capital font with some gaps in the lines of the letters. None of the verbal elements have any meaning for the relevant public and are therefore distinctive.

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).

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.

Visually, the signs coincide in their distinctive second verbal elements ‘SUGARWATCH’. They differ in their distinctive first verbal elements ‘ETHITRONIX’ of the earlier mark and ‘EASYMAX’ of the contested sign although these words start and end with the same letter. They also differ in the typefaces and colours of the contested sign.

Therefore, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of their distinctive second verbal element ‘SUGARWATCH’, present identically in both signs. The pronunciation differs in the sound of the distinctive first verbal elements of the signs, ‘ETHITRONIX’ in the earlier mark and ‘EASYMAX’ in the contested sign. These first verbal elements have a different length, rhythm and intonation.

Therefore, the signs are similar to an average degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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 in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. 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 et seq.).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the marks may be offset by a lower degree of similarity between the goods, and vice versa (22/06/1999, C‑342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C‑251/95, ‘Sabèl’, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, ‘Canon’, EU:C:1998:442, § 17).

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).

In the present case, the goods are partly identical and partly similar or highly similar. The signs are visually and aurally similar to an average degree, the conceptual aspect not influencing the similarity of the signs. The degree of attention of the relevant consumer varies from average to high and the earlier mark has a normal degree of distinctive character.

The second distinctive verbal element of the earlier mark is included in its entirety in the contested sign, also in second position. The first verbal elements of the marks both start with ‘E’ and end with ‘X’. The differences between the signs, including the different rhythm and intonation of the first verbal elements and the figurative aspect of the contested sign, are insufficient to avoid a likelihood of confusion among the relevant public.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Indeed, given the coincidence of the distinctive element ‘SUGARWATCH’ in the signs, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

The applicant claims that the signs are not visually similar and are phonetically different and it refers to previous decisions to support its arguments (20/04/2005, T-211/03, Faber Chimica v Industrias Quimicas Naber; 19-05-2011, T-81/10, Palacios Serrano v Tempus Vade). In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings. The marks contain visual devices which is not the case in the present proceedings. Reference is made to a decision from INPI (the French IP Office) N°13-1986. The decision was not submitted so it is impossible to see on what basis the decision was made. Besides, it was not based on the Spanish public. Therefore these arguments must be set aside.

It is true, as the applicant claims, that the consumer attaches more importance to the first part of the words. However the fact that the first element does not coincide does not necessarily mean that there will be no likelihood of confusion, in particular when the second elements are distinctive and coincide exactly in the marks. It cannot be overlooked, as mentioned, that the first verbal elements in this case also start and end with the same letter so have some points in common.

Considering all the above, there is a likelihood of confusion on the part of the Spanish-speaking part of the general public regardless of their level of attention. 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 and there is no need to analyse the remaining part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 16 265 696 (word mark: ‘ETHITRONIX SUGARWATCH’). 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 (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Octavio MONGE GONZALVO

Lynn BURTCHAELL

Tobias KLEE

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.