GUARDIAN | Decision 2369455
Date Published: Oct 22, 2017
OPPOSITION DIVISION
OPPOSITION No B 2 369 455
Asens, S.L., Alava, 61 2-1, 08005 Barcelona, Spain (opponent), represented by
Durán Cuevas, S.L.P, P° de Gracia, 110, 1°, 1ª, 08008 Barcelona, Spain
(professional representative)
a g a i n s t
The Sunlight Service Group Limited, Intec 3, Intec Business Park, Wade Road,
Basingstoke Hants RG24 8NE, United Kingdom (holder), represented by Plesner,
Amerika Plads 37, 2100 Copenhagen Ø, Denmark (professional representative).
On 18/10/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 369 455 is partially upheld, namely for the following
contested goods and services:
Class 10: Medical gloves; medical clothing; operating tape; none for use in
connection with air conditioning units.
Class 44: Rental of hospital equipment; rental of equipment for surgical use;
rental of equipment for medical use; rental of operating theatre
apparel.
2. International registration No 1 184 523 is refused protection in respect of the
European Union for all of the above goods and services. It may proceed for the
remaining goods and services.
3. Each party bears its own costs.
REASONS
The opponent filed an opposition against some of the goods and services of
international registration designating the European Union No 1 184 523 for the word
mark ‘GUARDIAN’, namely against all goods and services in Classes 10 and 44. The
opposition is based on European Union trade mark registration No 8 290 363 and
Spanish trade mark registration No 595 089(9), both for the word mark ‘GUARDIAN’.
The opponent invoked Article 8(1)(b) EUTMR.
Preliminary remarks
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
Decision on Opposition No B 2 369 455 page: 2 of 6
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:
European Union trade mark registration No 8 290 363 (EUTM)
Class 10: Surgical, medical, dental and veterinary apparatus and instruments,
artificial limbs, eyes and teeth; orthopedic articles; suture materials.
Class 35: Advertising, business management; business administration; office
functions; all the above only relating to the field of pharmaceutical, medicine, surgery,
veterinary science and dentistry, sanitary emergencies, hospital and pre-hospital
emergencies and orthopaedic.
Spanish trade mark registration No 595 089(9)
Class 10: Packs for first aid purposes; elastic bandages for wrist and ankle
surgical, medical, dental and veterinary apparatus and instruments.
The contested goods and services are the following:
Class 10: Medical clothing; medical gloves; gowns and clothing for surgical use
including tunics, trousers, leggings, leg covers, stockinettes, armlets, C-arm covers,
under buttock pouch; drapes for surgical use including vertical isolation drapes, intra
medullary nailing drapes, epidural drapes, extremity drapes, hip sheets split sheets,
hand drapes, bilateral extremity drapes, spinal drapes, transurethral resection
drapes, cystoscopy drape, caesarean section drapes, femoral angiography drapes,
mediastinoscopy drapes, ophthalmic drapes; utility drapes, aperture drapes, under
buttock drapes, urological drapes, plastic u-drapes, lithotomy drapes; sterile covers
for use during surgery including trolley covers, mayo stand covers, fluoroscope
covers, camera covers, tray covers, and liners, fluid collection pouches for use with
operating theatre tables, diathermy pouches, operating towels, waterproof sheets,
split sheets, baby wraps, operating tape; none for use in connection with air
conditioning units.
Class 44: Rental of hospital equipment; rental of clothing for surgical use; rental
of clothing for medical use; rental of equipment for surgical use; rental of equipment
for medical use; rental of operating theatre apparel; rental of scrub suits, surgical
gowns, medical gowns, medical isolation gowns, clean room gowns, medical gloves,
tunics for medical or surgical use, surgical leggings for use in surgical procedures,
trousers for medical or surgical use, leg covers for medical or surgical use,
stockinettes for medical or surgical use, armlets for medical or surgical use, C-arm
covers, surgical drapes, hand drapes, bilateral extremity drapes, spinal drapes,
Decision on Opposition No B 2 369 455 page: 3 of 6
transurethral resection drapes, cystoscopy drapes, caesarean section drapes,
femoral angiography drapes, mediastinoscopy drapes, ophthalmic drapes, utility
drapes, aperture drapes, under buttock drapes, urological drapes, plastic u-drapes,
lithotomy drapes, extremity drapes, vertical isolation drapes, intra medullary nailing
drapes, epidural drapes, linen for medical or surgical use, liners for medical or
surgical use, hip sheets, split sheets, blankets, duvets, towels, operating towels,
waterproof sheets, baby wraps, sterile covers for medical or surgical use, surgical
instrument tray wraps, surgical instrument tray coverings, surgical mayo covers,
surgical trolley covers, fluoroscope covers, camera covers for medical or surgical
use, tray covers for medical or surgical use.
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 ‘including’, used in the holder’s list of goods in Class 10, indicates that the
specific goods 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).
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 10
The contested operating tape; none for use in connection with air conditioning units
have some relevant points in common with the opponent’s surgical apparatus and
instruments of the earlier EUTM. The goods may share the same distribution
channels, target the same end users and originate from the same producers.
Furthermore, they may be complementary. Therefore, the goods are similar to a high
degree.
The contested medical gloves; medical clothing; none for use in connection with air
conditioning units are similar to the opponent’s packs for first aid purposes of the
earlier Spanish trade mark registration as these goods may coincide in distribution
channels and producer. Furthermore, they may target the same relevant public.
The remaining gowns and clothing for surgical use including tunics, trousers,
leggings, leg covers, stockinettes, armlets, C-arm covers, under buttock pouch;
drapes for surgical use including vertical isolation drapes, intra medullary nailing
drapes, epidural drapes, extremity drapes, hip sheets split sheets, hand drapes,
bilateral extremity drapes, spinal drapes, transurethral resection drapes, cystoscopy
drape, caesarean section drapes, femoral angiography drapes, mediastinoscopy
drapes, ophthalmic drapes; utility drapes, aperture drapes, under buttock drapes,
urological drapes, plastic u-drapes, lithotomy drapes; sterile covers for use during
surgery including trolley covers, mayo stand covers, fluoroscope covers, camera
covers, tray covers, and liners, fluid collection pouches for use with operating theatre
tables, diathermy pouches, operating towels, waterproof sheets, split sheets, baby
Decision on Opposition No B 2 369 455 page: 4 of 6
wraps, none for use in connection with air conditioning units refer to clothing,
pouches, drapes, covers and sheets used in the medical field; the goods under
comparison have different natures and they satisfy different needs. Furthermore, they
are neither complementary nor in competition. Therefore, they are dissimilar to all the
opponent’s goods in Class 10, which refer either to broad categories of apparatus
and products used in various medical fields (i.e. surgical, medical, dental and
veterinary apparatus and instruments; orthopaedic articles, etc. ) or to more specific
products like, for example artificial limbs, eyes and teeth.
All the more, the above-mentioned goods are also dissimilar to the opponent’s
services in Class 35, which refer to the services aimed at supporting or helping other
business to do or improve their business, in the present case, the opponent’s
services are related to pharmaceutical, medicine, surgery, veterinary science and
dentistry, sanitary emergencies, hospital and pre-hospital emergencies and
orthopaedic field. These services are provided by specialist companies, which study
their client’s needs, provide all the necessary information and advice for marketing
the client’s goods and services. The simple fact that the contested goods may be
involved in the opponent’s services is not a sufficient reason for finding similarity
between them. Apart from being different in nature, since services are intangible,
whereas goods are tangible, they serve different needs. Furthermore, their purpose
differs as to their producers, consumers and distribution channels.
Contested services in Class 44
The contested rental of hospital equipment; rental of equipment for surgical use;
rental of equipment for medical use; rental of operating theatre apparel have some
points in common with the broad category of the opponent’s surgical, medical, dental
and veterinary apparatus and instruments in Class 10. Despite their different nature,
it is very likely that the companies producing these goods may provide also related
rental services of the goods in question. They are directed at the same public, are
produced by the same companies and are complementary. Therefore, they are
similar to a low degree.
The remaining rental of clothing for surgical use; rental of clothing for medical use;
rental of scrub suits, surgical gowns, medical gowns, medical isolation gowns, clean
room gowns, medical gloves, tunics for medical or surgical use, surgical leggings for
use in surgical procedures, trousers for medical or surgical use, leg covers for
medical or surgical use, stockinettes for medical or surgical use, armlets for medical
or surgical use, C-arm covers, surgical drapes, hand drapes, bilateral extremity
drapes, spinal drapes, transurethral resection drapes, cystoscopy drapes, caesarean
section drapes, femoral angiography drapes, mediastinoscopy drapes, ophthalmic
drapes, utility drapes, aperture drapes, under buttock drapes, urological drapes,
plastic u-drapes, lithotomy drapes, extremity drapes, vertical isolation drapes, intra
medullary nailing drapes, epidural drapes, linen for medical or surgical use, liners for
medical or surgical use, hip sheets, split sheets, blankets, duvets, towels, operating
towels, waterproof sheets, baby wraps, sterile covers for medical or surgical use,
surgical instrument tray wraps, surgical instrument tray coverings, surgical mayo
covers, surgical trolley covers, fluoroscope covers, camera covers for medical or
surgical use, tray covers for medical or surgical use are considered to be dissimilar to
the opponent’s services in Class 35 of the earlier EUTM. This is because the earlier
services, as mentioned above, refer to the services aimed at supporting or helping
other businesses. Although these services refer to a medical field their purposes,
service providers, distribution channels and end users are different. Finally, they are
neither in competition with each other, nor are they complementary.
Decision on Opposition No B 2 369 455 page: 5 of 6
Furthermore, these contested services in Class 44 are also dissimilar to all the
opponent’s goods in Class 10, which refer to, broadly speaking, various medical
apparatus, instruments and articles generally used for the diagnosis, treatment or
improvement of function or condition of persons and animals. The services and
goods under comparison, apart from being different in nature, since services are
intangible, whereas goods are tangible, serve different needs. Furthermore, their
purpose differs as to their producers, and distribution channels.
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 various degrees are directed at
the public at large and professionals from various medical fields.
The degree of attentiveness will be higher than average, due to the specialised
nature of the goods and services in question and to their direct effect on the state of
health of the patients.
c) The signs
1. EUTM registration No 8 290 363
2. Spanish trade mark registration No 595089(9)
GUARDIAN GUARDIAN
Earlier trade marks Contested sign
The marks are identical.
d) Global assessment, other arguments and conclusions
As mentioned above, the signs are identical.
The contested goods and services at issue are similar to various degrees and
dissimilar to the ones covered by the earlier marks.
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).
The identity between the signs is clearly sufficient to offset the varying degrees of
similarity between the goods and services at issue. Therefore, the Opposition
Decision on Opposition No B 2 369 455 page: 6 of 6
Division finds that there is a likelihood of confusion within the meaning of Article 8(1)
(b) EUTMR and the opposition is upheld insofar as it is directed against the goods
and services found to be similar to various degrees, including those which are similar
to a low degree.
The rest of the contested goods and services are dissimilar. As 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 and services 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 and
services, both parties have succeeded on some heads and failed on others.
Consequently, each party has to bear its own costs.
The Opposition Division
Boyana NAYDENOVA Monika CISZEWSKA Gueorgui IVANOV
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.