OPTILANCE | Decision 2693052

Date Published: Oct 1, 2017

OPPOSITION No B 2 693 052

IHS - Intelligent Healthcare Solutions GmbH, Lyoner Straße 34, 60528 Frankfurt am Main, Germany (opponent), represented by Best Rechtsanwälte PartmbB, Hostatostr. 26, 65929 Frankfurt am Main, Germany (professional representative)

Leadway (HK) Limited, Unit 6501-02, The Center, 99 Queen's Road, Central Hong Kong, Hong Kong Special Administrative Region of People´s Republic of China (applicant), represented by Kilburn & Strode Llp, 20 Red Lion Street, London WC1R 4PJ, United Kingdom (professional representative).

On 19/04/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 693 052 is partially upheld, namely for the following contested goods and services:

Class 5: Pharmaceutical and veterinary preparations

Class 44: Medical services; hygienic care for human beings.

2. European Union trade mark application No 14 957 823 is rejected for all the above goods and services. It may proceed for the remaining goods and services:

Class 5: sanitary preparations for medical purposes; medical and surgical dressings; medicated cotton wipes, tissues and swabs for medical use.

Class 10: Medical apparatus and instruments; Medical apparatus and instruments, namely instruments used for puncturing patient's skin for taking blood samples for diagnostic purposes, lancets, puncturing devices, lancing systems, insulin pens and pen needles, drug delivery devices, apparatus for dispensing of medicines, needles for medical purposes.

Class 44: Surgical care for human beings.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 957 823. The opposition is based on German trade mark registration No 30 2008 020 884. 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 and services

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

Class 5: Dietetic substances for medical purposes.

Class 44: Health advice; dietary advice.

The contested goods and services are the following:

Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; medical and surgical dressings; medicated cotton wipes, tissues and swabs for medical use.

Class 10: Medical apparatus and instruments; Medical apparatus and instruments, namely instruments used for puncturing patient's skin for taking blood samples for diagnostic purposes, lancets, puncturing devices, lancing systems, insulin pens and pen needles, drug delivery devices, apparatus for dispensing of medicines, needles for medical purposes.

Class 44: Medical services; hygienic and surgical care for human beings.

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.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

Contested goods in Class 5:

The contested pharmaceutical preparations are similar to the opponent´s dietetic substances for medical purposes as they share the same purpose, distribution channels and relevant public.

The contested veterinary preparations are similar to the opponent´s dietetic substances for medical purposes as they share the same purpose, distribution channels, relevant public and producers.

The contested sanitary preparations for medical purposes serve hygienic purposes in the healthcare sector, in hospitals, consulting rooms, etc. As such, they have little in common with the earlier right’s dietetic substances for medical purposes. Whilst the opponent´s goods have medical and nutritional purposes the contested goods are sanitary preparations used to protect and promote health by providing a clean environment and stopping the spread of harmful agents such as bacteria through items such as soaps and disinfectants. Thus the origin, nature and intended purpose of the goods under comparison are different. They are not produced by the same or related undertakings and they are neither complementary nor in competition with each other. Consequently, the goods under comparison are considered to be dissimilar.

Identical conclusion can be reached in the comparison between the contested  sanitary preparations for medical purposes and the opponent´s services. The mere fact that both fall into the sanitary and medical field is not enough for finding a similarity. Therefore, they are dissimilar.

The contested medical and surgical dressings; medicated cotton wipes, tissues and swabs for medical use are dissimilar to the opponent’s goods and services. In fact, the contested goods have a very specific nature, purpose and method of use which totally differentiate them from the opponent´s goods in Class 5 or services in Class 44.

The opponent makes a general assertion that the contested goods and services are similar to dietetic substances for medical purposes as they are complementary. This is because the contested goods are used within the health area.

The Opposition Division cannot agree with these arguments. Goods (or services) are complementary if there is a close connection between them, in the sense that one is indispensable (essential) or important (significant) for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking (see, to that effect, judgment of 11/05/2011, T-74/10, ‘Flaco’, para. 40, judgment of 21/11/2012, T-558/11, ‘Artis’, para. 25, and judgment of 04/02/2013, T-504/11, ‘Dignitude’, para. 44). Although some of the contested goods or services can, in fact, be used in the same professional area as the opponent’s dietetic substances for medical purposes, this link is not sufficiently pronounced to conclude that these goods/services are complementary and, therefore, similar.

Contested goods in Class 10:

All the contested goods in Class 10 are dissimilar to the opponent’s goods and services. The contested goods are medical apparatus or sanitary devices with a highly specific nature, purpose and method of use which totally differentiate them from the opponent´s goods and services. Moreover, the goods compared are neither in competition nor complementary and their usual commercial origin is normally different.

In these circumstances, the fact that the contested goods in Class 10 broadly fall in the healthcare field as the opponent’s is not sufficient to render them similar.

Contested services in Class 44:

The contested medical services include as a broader category the opponent´s health advice. Therefore, they are identical.

The contested hygienic care for human beings refers to the set of practices performed for maintaining health and preventing the spread of disease and is similar to the opponent´s health advice. These services share the same purpose (human health healing) and same nature. Moreover, they can have the same distribution channels, same producer and the same end consumers.

The contested surgical care for human beings is also an essential component of health as it is a specialist branch of medicine concerned with diseases and conditions requiring or amenable to operative or manual procedures. These are services with a highly specific nature, purpose and method of use. Although the contested surgical care for human beings can include the opponent’s health advice, this link is not sufficiently pronounced to conclude that these services are similar. In fact, the provision of the contested services ‘surgical care’ requires a very specific knowledge, experience and skills and it is likely to think that consumers will display the highest degree of attention, so the confusion is nearly impossible. Therefore, they are dissimilar.

2. The signs

OPTILANCE	OPTILANCE
Earlier trade mark	Contested sign

The signs are identical.

3. Global assessment, other arguments and conclusion

The signs are identical and a part of the contested services, namely medical services are identical. Therefore, the opposition must be upheld under Article 8(1)(a) EUTMR for these services.

Furthermore, the contested pharmaceutical and veterinary preparations and hygienic care for human beings were found to be similar to those covered by the earlier trade mark No 30 2008 020 884 in Classes 5 and 44. Given the identity of the signs, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition must also be upheld for these goods and services.

The rest of the contested goods and services are dissimilar. As the 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 and services cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) 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 only for part 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

Ric WASLEY

Alexandra APOSTOLAKIS

Loreto URRACA LUQUE

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 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 720 has been paid.