OPPOSITION No B 3 060 126

Vitalcare Pharma, S.L., C. de Perú, 228, 08020 Barcelona, Spain (opponent), represented by Ponti & Partners, S.L.P, C.Consell de Cent, 322, 08007 Barcelona, Spain (professional representative)

a g a i n s t

Euromedics GmbH, Beckerskreuz 13, 53343 Wachtberg, Germany (applicant), represented by Heymel Anwaltskanzlei, Aachener Str. 1, 50674 Cologne, Germany (professional representative).

On 24/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 060 126 is partially upheld, namely for the following contested goods:

Class 10: Physical therapy equipment; apparatus for electrical muscle stimulation; massage apparatus; knee supports for medical use; body limb compression sleeves; body limb compression sleeves for athletic use; orthopedic articles; bandages for joints, anatomical; knee bandages, orthopaedic; orthopaedic hosiery; orthopaedic braces; orthopaedic strappings; tubular bandages [supportive]; orthopedic and mobility aids; bracelets for medical purposes; bandages for orthopaedic purposes; materials for bandaging [elasticated]; bandages, elastic; elasticated bandages for supportive use; elasticated supports for the elbow; elasticated supports for the ankle; elasticated supports for the wrist; elastic compression bandages for medical purposes; elasticated supports for the knee; electric acupuncture instruments; electrodes for medical use made from glass; electrophysiology electrodes; electrodes for use with medical apparatus; electrodes for medical use; electronic nerve stimulators for medical use; foot bandages [supportive]; cooling pads for first aid purposes; bandages for supporting the human body; compresses for supporting the body; medical instruments; electromedical instruments for firming treatments; ice bag pillows for medical purposes; ice packs for the treatment of injuries.

2. European Union trade mark application No 17 894 121 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 894 121 for the word mark ‘COOLFIT’. The opposition is based on Spanish trade mark registration No 2 910 223 for the word mark ‘COOLEGS’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant has not submitted the request for proof of use by way of a separate document as required by Article 10(1) EUTMDR.

Therefore, the request for proof of use is inadmissible pursuant to Article 10(1) EUTMDR.

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 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

The contested goods are the following:

Class 10: Physical therapy equipment; apparatus for electrical muscle stimulation; massage apparatus; knee supports for medical use; body limb compression sleeves; body limb compression sleeves for athletic use; orthopedic articles; bandages for joints, anatomical; knee bandages, orthopaedic; orthopaedic hosiery; orthopaedic braces; orthopaedic strappings; tubular bandages [supportive]; orthopedic and mobility aids; bracelets for medical purposes; bandages for orthopaedic purposes; materials for bandaging [elasticated]; bandages, elastic; elasticated bandages for supportive use; ice bag pillows for medical purposes; ice packs for the treatment of injuries; elasticated supports for the elbow; elasticated supports for the ankle; elasticated supports for the wrist; elastic compression bandages for medical purposes; elasticated supports for the knee; electric acupuncture instruments; electrodes for medical use made from glass; electrophysiology electrodes; electrodes for use with medical apparatus; electrodes for medical use; electromedical instruments for firming treatments; electronic nerve stimulators for medical use; clinical thermometers; foot bandages [supportive]; cooling pads for first aid purposes; bandages for supporting the human body; compresses for supporting the body; medical instruments.

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.

The contested physical therapy equipment; apparatus for electrical muscle stimulation; massage apparatus are physiotherapy equipment. These goods are similar to a low degree with the opponent’s pharmaceutical and veterinary preparations as they can coincide in relevant public and distribution channels. Moreover, they are complementary.

The contested knee supports for medical use; body limb compression sleeves; body limb compression sleeves for athletic use; orthopedic articles; bandages for joints, anatomical; knee bandages, orthopaedic; orthopaedic hosiery; orthopaedic braces; orthopaedic strappings; tubular bandages [supportive]; orthopedic and mobility aids; bracelets for medical purposes; bandages for orthopaedic purposes; materials for bandaging [elasticated]; bandages, elastic; elasticated bandages for supportive use; elasticated supports for the elbow; elasticated supports for the ankle; elasticated supports for the wrist; elastic compression bandages for medical purposes; elasticated supports for the knee; electric acupuncture instruments; electronic nerve stimulators for medical use; foot bandages [supportive]; cooling pads for first aid purposes; bandages for supporting the human body; compresses for supporting the body; ice bag pillows for medical purposes; ice packs for the treatment of injuries consist in a wide range of orthopaedic and medical related goods which are similar to a low degree with the opponent’s plasters, materials for dressings as they usually coincide in relevant public and distribution channels. Furthermore, they are complementary.

The contested electrodes for medical use made from glass; electrophysiology electrodes; electrodes for use with medical apparatus; electrodes for medical use; medical instruments; electromedical instruments for firming treatments are medical apparatus and instruments and to that extent, they are similar to a low degree with the opponent’s pharmaceutical preparations because they can coincide in relevant public and distribution channels. Additionally, they are complementary.

The contested clinical thermometers are medical apparatus that do not have anything in common with any of the opponent’s goods. In particular, they have clearly different purposes, methods of use, distribution channels, relevant publics and producers. In addition, they are not complementary or in competition. Therefore, they are dissimilar.

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 similar to a low degree are directed at the public at large as well as at business customers with specific professional knowledge or expertise in the medical field.

The public’s degree of attentiveness may vary from average to high, depending on the specialised nature, or terms and conditions of the goods purchased.

c) The signs

COOLEGS	COOLFIT
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 signs in conflict do not convey any clear meaning in relation to the relevant goods for the public under analysis. Therefore, they are distinctive.

Additionally, it must be stressed that in the assessment of the visual and aural similarity of the marks in question consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually and aurally, the signs coincides in the initial sequence of letters ‘COOL’ whereas they differs in their respective final parts ‘EGS’ and ‘FIT’.

Therefore, and taking into account the above mentioned principle, the signs are visually and aurally similar to an above 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 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

The appreciation of likelihood of confusion on the part of the public depends, inter alia, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

In the present case the goods have been found partly similar to a low degree and partly dissimilar. They target both the general and the professional public that will pay a degree of attention that can vary from average to high.

The signs under comparison have been found visually and aurally similar to an above average degree insofar as they coincide in their initial letters ‘COOL’ whereas the differences are focused in their final parts.

Although, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect, account is taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place trust in the imperfect picture of them that he or she has kept in mind. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers with a high level of attention, as in the present case, need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

Taking all the above into account, the Opposition Division considers that the differences between the signs are not sufficient to outweigh the assessed similarities between them. Indeed, it must be kept in mind that 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 above average degree of similarity between the signs is sufficient to offset the low degree of similarity between the goods, despite the high degree of attention paid in relation to some of them.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Spanish trade mark registration No 2 910 223.

It follows from the above that the contested trade mark must be rejected for the goods found to be similar to a low degree to those of the earlier trade mark.

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

Sandra IBAÑEZ

Aldo BLASI

Andrea VALISA

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.