OPPOSITION No B 2 400 193

Zhu Hai An Tai Lu Si Co., Ltd., Room 202, No. 125, Cushahuan, Hongqi Village, Hengqin Town, Zhuhia, Guangdong, People's Republic of China (opponent), represented by Guy Delhaye, 2, rue Gustave de Clausade, 81800 Rabastens, France (professional representative)

a g a i n s t

Antar Sp. Jawna, Irena Groniecka – Tarnkowska, Andrzej Tarnkowski, ul. Zawiślańska 43, 03068 Warszawa, Poland (applicant), represented by Łukasz Sommer, ul. Grochowska 172 lok. 47, 04-357 Warszawa, Poland (professional representative).

On 28/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 400 193 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 12 835 542. The opposition is based on international trade mark registration No 1 044 227 designating Czech Republic, Austria, Lithuania, Latvia, Benelux, Slovenia, Portugal, Bulgaria, Slovakia, Hungary, Croatia, Greece, Germany, Finland, France, Spain, European Union, Ireland, Cyprus, United Kingdom, Italy, Estonia, Sweden, Romania and Denmark. The opponent invoked Article 8(1)(b) EUTMR.

Earlier trade mark	Contested sign

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 on which the opposition is based are the following:

Class 12: Tires for vehicle wheels; casings for pneumatic tires; treads for retreading tires; pneumatic tires; airplane tyre; adhesive rubber patches for repairing inner tubes; treads for vehicles; inner tubes for pneumatic tires; repair outfits for inner tubes.

The contested goods and services are the following:

Class 5: Medical dressings, coverings and applicators; poultices; cooling-warming poultices; antiseptics; antiseptic cotton; first-aid boxes, filled; portable first-aid kits; pharmaceutical preparations; germicides; germicidal preparations [other than soap]; bandages for dressings; tobacco-free cigarettes for medical purposes; albuminous foodstuffs for medical purposes; surgical dressings; pants, absorbent, for incontinents; tissues impregnated with pharmaceutical lotions; chemical preparations for the diagnosis of pregnancy; gauze for dressings; medicinal tea; bath salts for medical purposes; therapeutic preparations for the bath; compresses; medicinal herbs; mineral waters for medical purposes; medical preparation for slimming purposes; adhesive bands for medical purposes; plasters; cotton for medical purposes; vitamin preparations; dietetic foods adapted for medical purposes; food for babies; adult diapers; nappy pants for incontinents.

Class 6: Ramps of metal; ramps of metal for wheelchairs; mobile ramps of metal; portable ramps of metal.

Class 10: Medical apparatus and instruments; surgical apparatus and instruments; dental equipment; diagnostic apparatus for medical purposes; vibromassage apparatus; urological apparatus and instruments; orthopedic articles; balling guns; bandages, elastic; plaster bandages for orthopedic purposes; orthopedic bandages; bandages for joints, anatomical; cupping glasses; urinals for medical purposes [vessels]; strait jackets; dropper bottles for medical purposes; urethral probes; catheters; urinary drainage bags; glasses for urine; incontinence sheets; dialyzers; radiology screens for medical purposes; elastic stockings for surgical purposes; electric warming pads for medical use; physical therapy equipment; gastroscopes; physical exercise apparatus, for medical purposes; corsets for curative purposes; hydrostatic beds for medical purposes; medical implants made of artificial materials; irrigators for medical purposes; ambulance stretchers; feeding bottles; dropper bottles for medical purposes; crutches; tips for crutches for invalids; invalid walkers; rollators; lamps for medical purposes; lasers for medical purposes; ear picks; massage apparatus; air mattresses, for medical purposes; anti-pressure sore mattresses; childbirth mattresses; orthopedic knee guards; orthotic footwear; [pads pouches] for preventing pressure sores; hernia bandages; plaster bandages for orthopedic purposes; tubular elastic bandages for supporting joints; orthoses; maternity belts; belts for medical purposes; hernia bandages; cushions for medical purposes; orthopedic cushions; soporific pillows for insomnia; arterial blood pressure measuring apparatus; artificial limbs; invalids' hoists; gloves for medical purposes; hearing aids; stethoscopes; injectors for medical purposes; dental prostheses; artificial teeth; pins for artificial teeth; ultraviolet ray lamps for medical purposes; filters for ultraviolet rays, for medical purposes; bed vibrators; orthopedic soles; hydrostatic beds for medical purposes; beds for medical purposes; obstetric beds; beds for surgical use; beds specially made for medical purposes; commode chairs; chairs especially made for medical use; compression stockings, pantyhose and socks, antivericose and antioedematous; orthopedic insoles; physiotherapy and rehabilitation equipment; wedges, rolls, semi-rolls for physiotherapy and rehabilitation; arm slings; slings for medical use toilet seat raisers for raising toilets seat for patients after surgeries related to hip injury; crutches; tips for crutches for invalids; breast prothesis; physiotherapy balls and discs; apparatus for medical rehabilitation; cervical collars; physiotherapy bands; physical therapy equipment; kinesiology taping products; articles for the treatment of foot, especially halluxes, deformations of feet, fingers, abrasions, pain syndromes; surgical textiles.

Class 12: Wheelchairs for transporting invalids; electrically operated wheelchairs; manually operated wheelchairs; powered stand up wheelchairs; motorized wheelchairs for the disabled and those with mobility difficulties.

Class 18: Canes; walking sticks; walking stick handles; walking stick seats.

Class 20: Furniture for the physically handicapped, those of reduced mobility and invalids; bath and shower chairs for disabled people; chairs adapted for use by those with mobility difficulties; grips for disabled people for help in moving, standing up or sitting up; medical tables.

Class 35: Wholesaling and retailing (including via the Internet) of the following goods: medical dressings, coverings and applicators, poultices, cooling-warming poultices, antiseptics, antiseptic cotton, first-aid boxes, filled, portable first-aid kits, pharmaceutical preparations, germicides, germicidal preparations [other than soap], bandages for dressings, tobacco-free cigarettes for medical purposes, albuminous foodstuffs for medical purposes, surgical textiles, surgical dressings, pants, absorbent, for incontinents, tissues impregnated with pharmaceutical lotions, chemical preparations for the diagnosis of pregnancy, gauze for dressings, medicinal tea, bath salts for medical purposes, therapeutic preparations for the bath, compresses, medicinal herbs, mineral waters for medical purposes, medical preparation for slimming purposes, adhesive bands for medical purposes, plasters, cotton for medical purposes, vitamin preparations, dietetic foods adapted for medical purposes, food for babies, medical apparatus and instruments, surgical apparatus and instruments, dental equipment, diagnostic apparatus for medical purposes, vibromassage apparatus, urological apparatus and instruments, orthopedic articles, balling guns, bandages, elastic, plaster bandages for orthopedic purposes, orthopedic bandages, bandages for joints, anatomical, cupping glasses, urinals for medical purposes [vessels], strait jackets, dropper bottles for medical purposes, urethral probes, catheters, urinary drainage bags, glasses for urine, incontinence sheets, dialyzers, radiology screens for medical purposes, elastic stockings for surgical purposes, electric warming pads for medical use, physical therapy equipment, gastroscopes, physical exercise apparatus, for medical purposes, corsets for curative purposes, hydrostatic beds for medical purposes, medical implants made of artificial materials, irrigators for medical purposes, ambulance stretchers, feeding bottles, dropper bottles for medical purposes, crutches, tips for crutches for invalids, invalid walkers, rollators, lamps for medical purposes, lasers for medical purposes, ear picks, massage apparatus, air mattresses, for medical purposes, anti-pressure sore mattresses, childbirth mattresses, orthopedic knee guards, orthotic footwear, pads [pouches] for preventing pressure sores, hernia bandages, plaster bandages for orthopedic purposes, tubular elastic bandages for supporting joints, orthoses, maternity belts, belts for medical purposes, hernia bandages, cushions for medical purposes, orthopedic cushions, soporific pillows for insomnia, arterial blood pressure measuring apparatus, artificial limbs, invalids' hoists, gloves for medical purposes, hearing aids, stethoscopes, injectors for medical purposes, dental prostheses, artificial teeth, pins for artificial teeth, ultraviolet ray lamps for medical purposes, filters for ultraviolet rays, for medical purposes, bed vibrators, orthopedic soles, hydrostatic beds for medical purposes, wheelchairs for transporting invalids, electrically operated wheelchairs, manually operated wheelchairs, powered stand up wheelchairs, motorized wheelchairs for the disabled and those with mobility difficulties, beds for medical purposes, obstetric beds, beds for surgical use, beds specially made for medical purposes, adult diapers, nappy pants for incontinents, ramps of metal, ramps of metal for wheelchairs, mobile ramps of metal, portable ramps of metal, commode chairs, chairs especially made for medical use, compression stockings, pantyhose and socks, antivericose and antioedematous, orthopedic insoles, physiotherapy and rehabilitation equipment, wedges, rolls, semi-rolls for physiotherapy and rehabilitation, arm slings, slings for medical use toilet seat raisers for raising toilets seat for patients after surgeries related to hip injury, crutches, tips for crutches for invalids, grips for disabled people for help in moving, standing up or sitting up, breast prosthesis, physiotherapy balls and discs, apparatus for medical rehabilitation, cervical collars, physiotherapy bands, physical therapy equipment, medical tables, kinesiology taping products, articles for the treatment of foot, especially halluxes, deformations of feet, fingers, abrasions, pain syndromes, canes, walking sticks, walking stick handles, walking stick seats, furniture for the physically handicapped, those of reduced mobility and invalids, bath and shower chairs for disabled people, chairs adapted for use by those with mobility difficulties.

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 5

The contested goods in class 5 include mainly pharmaceuticals and other preparations for medical purpose. The contested goods are clearly different from the opponent’s tires for vehicle wheels; casings for pneumatic tires; treads for retreading tires; pneumatic tires; airplane tyre; adhesive rubber patches for repairing inner tubes; treads for vehicles; inner tubes for pneumatic tires; repair outfits for inner tubes. The nature and purpose of the goods under comparison are manifestly different. The contested goods and the opponent’s goods belong to different market segments, their channels of distribution and producers are different. The goods at issue are not complementary as one is not essential, neither important for the use of the other, and they are not interchangeable, and thus, in competition with each other. Therefore, these goods are dissimilar.

Contested goods in Class 6

The contested goods include mainly ramps of metal. These goods have different nature, purpose and method of use as compared with the opponent’s goods in class 12. They also differ in their distribution channels and end users. The goods at issue do not share any point of contact, which would make the relevant public think that they share the same commercial origin. Therefore, these goods are dissimilar.

Contested goods in Class 10

The contested goods in class 10 include mainly medical apparatus, instruments and articles. These goods are clearly dissimilar to the opponent’s goods as they belong to totally different market segments. Their distribution channels, producers and end consumers are different. The goods at issue are also not complementary as one is not essential, neither important for the use of the other, and they are not interchangeable, and thus, in competition with each other.

Contested goods in Class 12

The contested Wheelchairs for transporting invalids; electrically operated wheelchairs; manually operated wheelchairs; powered stand up wheelchairs; motorized wheelchairs for the disabled and those with mobility difficulties are dissimilar to the opponent’s Tires for vehicle wheels; casings for pneumatic tires; treads for retreading tires; pneumatic tires; airplane tyre; adhesive rubber patches for repairing inner tubes; treads for vehicles; inner tubes for pneumatic tires; repair outfits for inner tubes. The contested goods are special chairs with wheels, used when walking is difficult or impossible due to illness, injury, or disability. These goods are specifically designed to aid the physically disable persons and other persons requiring assistance for walking. Wheelchairs are manufactured by medical equipment companies, they are sold in pharmacies or orthopaedic aids shops. The end consumers of these contested goods are disabled people or hospitals. On the other hand, the opponent’s goods in Class 12 are parts for vehicles. The earlier goods are manufactured by companies belonging to tyre industry. Although the opponent’s goods can form part of vehicles used for the transportation of passengers, this is not enough for a finding of similarity between these goods at issue. The mere fact that a certain good can be composed of several components does not establish an automatic similarity between the finished product and its parts (judgment of 27/10/2005, T-336/03, Mobilix, EU:T:2005:379, § 61). The goods belong to different industries and require different expertise and technologies. They have different methods of use and do not share the same manufacturers, distribution channels or commercial outlets.

Contested goods in Class 18

The contested canes; walking sticks; walking stick handles; walking stick seats are dissimilar to the opponent’s goods in class 12. The goods at issue do not share the same nature, purpose or method of use. They do not coincide in distribution channels or points of sale, are neither complementary nor are they in competition with each other. They are manufactured by different undertakings and aimed at different end consumers.

Contested goods in Class 20

The contested goods include mainly furniture for the physically handicapped, those of reduced mobility and invalids. These goods are dissimilar to the opponent’s goods as to their nature and purpose. The relevant public will not assume that the manufacturer of the contested goods would be the same as the producer of tires for vehicle wheels; casings for pneumatic tires; treads for retreading tires; pneumatic tires; airplane tyre; adhesive rubber patches for repairing inner tubes; treads for vehicles; inner tubes for pneumatic tires; repair outfits for inner tubes. Further, the goods at issue do not target the same public. The goods at issue have different distribution channels. These goods are also not complementary as one is not essentially, neither important for the use of the other, and they are obviously not interchangeable, and thus, in competition with each other.

Contested services in Class 35

The contested services are dissimilar to the opponent’s goods. Apart from being different in nature, given that services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products thus allowing consumers to conveniently satisfy different shopping needs at one stop. According to the practice of the Office, in order to establish similarity to a low degree the goods covered by the retail services and the specific goods covered by the other mark have to be identical, that is to say, they must either be exactly the same goods or fall under the natural and usual meaning of the category. As this is not the case, the contested goods are found dissimilar to the opponent’s goods.  

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

COSTS

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

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Liliya YORDANOVA

Marzena MACIAK

Volker MENSING

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.