OPPOSITION No B 2 759 150

Hamilton Germany GmbH, Fraunhoferstr. 17, 82152 Planegg, Germany (opponent), represented by Ruttensperger Lachnit Trossin Gomoll Patent- und Rechtsanwälte Partnerschaftsgesellschaft mbB, Arnulfstrasse 58, 80335 München, Germany (professional representative)

a g a i n s t

Huawei Technologies Co. Ltd., Administration Building Huawei Technologies Co. Ltd., Bantian, Longgang District, Shenzhen, Guangdong 518129, People’s Republic of China (applicant), represented by Forresters, Sherborne House, 119-121 Cannon Street, London EC4N 5AT, United Kingdom (professional representative).

On 18/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 759 150 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 of European Union trade mark application No 15 431 381. The opposition is based on European Union trade mark registration No 15 321 896. The opponent invoked Article 8(1)(b) EUTMR.

C6	C6
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

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

Class 10:        Medical apparatus and equipment, in particular medical respiratory apparatus and respiratory support apparatus; compressors for medical use; parts for the aforesaid apparatus, equipment and compressors.

The contested goods are the following:

Class 9:        Communications equipment; data communications apparatus; telecommunications apparatus; computers; portable computers; tablet computers; protective cases for tablet computers; wearable computers; smart bands; smart watches; smart watches comprised primarily of a wristwatch mainly for viewing, sending and receiving texts, emails, data and information and answering calls; wearable digital electronic devices comprised primarily of a wristwatch and also featuring a telephone, software and display screens for viewing, sending and receiving texts, emails, data and information from smart phones, tablet computers and portable computers; jewellery that communicates data; smartphones in the shape of a watch or a bracelet; smart bracelets with the functions of wireless technology and remote control for use with mobile phones which can display the caller's number and short message; smart wrist wearable bands with display screens for viewing, sending and receiving texts, emails, data and information and answering calls; smart eyeglasses for viewing, sending and receiving texts, emails, data and information and taking pictures; mobile phones; smartphones; protective cases for mobile phones; batteries for phones; earphones; headphones; audio equipment; stereos; wearable audio equipment; speakers; loudspeakers; set-top boxes; routers; wireless routers; communication software; application software; smartglasses; smartwatches; wearable activity trackers; selfie sticks [hand-held monopods]; connected bracelets [measuring instruments]; protective films adapted for computer screens; covers for smartphones; cases for smartphones; parts and fittings for all the aforesaid goods.

Preliminary remarks on comparison of the goods

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘in particular’, used in the opponent’s list of goods, 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).

Further, 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.

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 opponent’s medical apparatus and equipment, in particular medical respiratory apparatus and respiratory support apparatus; compressors for medical use; parts for the aforesaid apparatus, equipment and compressors cover a broad range of medical items used, inter alia, for treatment, diagnosis, examination or monitoring of diseases, injuries or other kind of health problems (e.g. respiratory problems) in humans as well as parts therefor.

The contested communications equipment; data communications apparatus; telecommunications apparatus; mobile phones; routers; wireless routers; set-top boxes are different types of communication apparatus and equipment as well as networking devices for transferring data between different points on a network or between different networks.

The contested computers; portable computers; tablet computers are devices that compute, especially programmable electronic machines that perform high-speed mathematical or logical operations or that assemble, store, correlate, or otherwise process information.

The contested wearable computers; smart bands; smart watches; smart watches comprised primarily of a wristwatch mainly for viewing, sending and receiving texts, emails, data and information and answering calls; wearable digital electronic devices comprised primarily of a wristwatch and also featuring a telephone, software and display screens for viewing, sending and receiving texts, emails, data and information from smart phones, tablet computers and portable computers; jewellery that communicates data; smartphones in the shape of a watch or a bracelet; smart bracelets with the functions of wireless technology and remote control for use with mobile phones which can display the caller's number and short message; smart wrist wearable bands with display screens for viewing, sending and receiving texts, emails, data and information and answering calls; smart eyeglasses for viewing, sending and receiving texts, emails, data and information and taking pictures; smartphones; smartglasses; smartwatches; wearable activity trackers; connected bracelets [measuring instruments] refer to so called ‘smart devices’, and are, in this case, handheld or wearable devices that combine functions such as computing or recording, reproducing or transmitting data, sound and images with internet and networking features.

The contested communication software; application software are composed of programs, routines, and symbolic languages that control the functioning of hardware, principally computers or other smart devices, and direct their operation.

The contested earphones; headphones; audio equipment; stereos; speakers; loudspeakers; wearable audio equipment are various sound output and/or input devices.

The contested protective cases for tablet computers; protective cases for mobile phones; batteries for phones; selfie sticks [hand-held monopods]; protective films adapted for computer screens; covers for smartphones; cases for smartphones refer to accessories for computers, phones and smart devices.

The contested parts and fittings for all the aforesaid goods [i.e. for communications equipment; data communications apparatus; telecommunications apparatus; computers; portable computers; tablet computers; protective cases for tablet computers; wearable computers; smart bands; smart watches; smart watches comprised primarily of a wristwatch mainly for viewing, sending and receiving texts, emails, data and information and answering calls; wearable digital electronic devices comprised primarily of a wristwatch and also featuring a telephone, software and display screens for viewing, sending and receiving texts, emails, data and information from smart phones, tablet computers and portable computers; jewellery that communicates data; smartphones in the shape of a watch or a bracelet; smart bracelets with the functions of wireless technology and remote control for use with mobile phones which can display the caller's number and short message; smart wrist wearable bands with display screens for viewing, sending and receiving texts, emails, data and information and answering calls; smart eyeglasses for viewing, sending and receiving texts, emails, data and information and taking pictures; mobile phones; smartphones; protective cases for mobile phones; batteries for phones; earphones; headphones; audio equipment; stereos; wearable audio equipment; speakers; loudspeakers; set-top boxes; routers; wireless routers; communication software; application software; smartglasses; smartwatches; wearable activity trackers; selfie sticks [hand-held monopods]; connected bracelets [measuring instruments]; protective films adapted for computer screens; covers for smartphones; cases for smartphones] are various parts of and fittings for communication equipment, networking devices, computing devices, smart devices, software, audio and video devices and of accessories for computers, phones and smart devices.

Having carried out a comparison of the abovementioned goods, the Opposition Division finds that these goods are dissimilar, for the reasons explained in detail below.

Producers of the goods

The opponent argues that the goods in question have the same producers. According to the opponent, there exists an established trade custom on the market in the sense that companies that produce communication equipment also produce medical apparatus and instruments. In support of this argument, it refers to various companies offering both sets of goods, for example Drägerwerk AG & Co. KGaA, PHILIPS, SIEMENS Healthineers, BIOTRONIK.

However, the Opposition Division considers that the manufacturers of medical apparatus and instruments and those of computers, communication equipment and so called ‘smart devices’ are not usually the same. The producers cited by the opponent are large companies active in a number of fields in relation to electric and electronic devices, including those intended for medical use. As it is explained in the Guidelines for Examination in the Office, Part C, Comparison of Goods and Services, Section 3.2.8 Usual origin (producer/provider), page 34, ‘the criterion ‘usual origin’ has to be applied in a restrictive way in order not to dilute it. If all kinds of goods/services deriving from one large (multinational) company or holding were found to have the same origin, this factor would lose its significance.’

The same is applicable in relation to the contested communication software and application software in Class 9 when compared to the opponent’s goods in Class 10. The companies that the opponent refers to (e.g. Google, Apple) are so called ‘industry giants’ which are likely to produce a very broad spectrum of goods. Nevertheless, this does not reveal the usual practice in trade.

In its observations, the opponent also argues that the applicant itself offers healthcare solutions. However, even if this was true, the Opposition Division notes that the comparison of goods and services must be based on the wording used in the lists of goods and/or services in question, that is, for which the trade mark is registered or for which registration is sought. The actual or intended use of the goods and services not stipulated in the list of goods and/or services is not relevant for the examination (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71).

In view of the foregoing, the producers of the goods in question are deemed different.

Relevant public of the goods

The contested goods in Class 9, as follows from their description given above, target the general public (in the case of majority of the goods, such as computers, smartphones and other smart devices) and professionals in the area of IT and telecommunications (for the goods such as routers or parts and fittings of various devices) while the opponent’s goods in Class 10 are primarily directed at medical professionals such as medics and surgeons. Even though there might be some overlap in the consumers that use smart devices (covered by the contested goods in Class 9) in their profession (medics) or in order to improve their health and/or monitor the functions of their bodies (patients), as pointed out by the opponent, this is not sufficient to reach a conclusion, that the goods in dispute target, on the whole, the same part of the public.

Further to this, the mere fact that the potential customers coincide does not automatically constitute an indication of similarity. The same group of customers may be in need of goods or services of the most diverse origin and nature. The fact that, for example, medical devices and communication equipment or smart devices are bought by the same relevant public, namely medical professionals, has no impact on the similarity analysis as the purpose (customers’ needs covered) of these goods is different, as seen below. Such circumstances weigh against similarity.

Therefore, the relevant publics in the present case are not the same.

Nature of the goods

When it comes to the nature of the goods, it must be considered that even though the Nice Classification serves administrative purposes, it may also serve as a tool to identify the common characteristics of certain goods/services. Many classes of the Nice Classification are structured according to factors such as function, composition and/or purpose of use, which may be relevant in the comparison of goods/services.

In the present case, the facts that the contested goods are classified in Class 9 and not in Class 10 as the opponent’s goods are, and that they do not contain any references to the medical purpose, are particularly conclusive for a finding of different natures between the goods in question.

Furthermore, even if the opponent’s and the contested goods are or can be electric and electronic devices, this fact in itself cannot lead to a finding that they have a similar nature. This is mainly because the opponent’s goods imply some specific features due to their intended purpose (e.g. monitoring of health state) which are different to those of the opponent’s goods (e.g. communication or transmitting sound and images/video).

Consequently, the goods do not coincide in nature.

Purpose of the goods

The opponent states that some of the conflicting goods can be used for the same purposes, namely for use in the health sector, and that the purpose of the contested goods cannot be limited to private entertainment purposes, but needs to be defined more generally, namely as communication with third parties can have a medical context. Further it mentions that the contested goods falling within the group of ‘smart devices’ are also designed to be used for health-related purposes, e.g. they enable the user to constantly monitor parameters like heart rate, blood pressure, burnt calories or physical activity.

To this point, the Opposition Division considers that the intended purpose of the contested goods in Class 9 is clearly non-medical, whereas the opponent’s goods serve medical purposes, for example monitoring of health state, diagnostic and treatment of diseases, etc.

Though some of the contested goods, namely smart devices, also feature some functions regarding monitoring of health conditions, this is not sufficient to regard them as having the same or similar purpose to that of the opponent’s goods.

Upon taking all the above into account, the purposes of the goods under comparison are considered different.

Distribution channels of the goods

From the opponent’s perspective, the contested goods are offered through the same channels as the opponent’s goods, which with regard to medical products mainly will be local subsidiaries of the producers, medical distributors or appointed agents as well as representatives of the manufacturer.

However, the Opposition Division considers that while it is true that the opponent’s goods will be offered thorough medical distributors and representatives of manufacturers, the contested goods are normally available in retail stores specialised in IT and telecommunication products. Furthermore, since the relevant public differs in the case of the conflicting goods, it is rather unlikely that such goods will be provided via the same distribution channels (see Guidelines for Examination in the Office, Part C, Comparison of Goods and Services, Section 3.3.1 Interrelation of factor, page 36).

In view of this, the goods do not share the same distribution channels.

Method of use of the goods

The method of use usually depends on the nature and purpose of the goods (see Guidelines for Examination in the Office, Part C, Comparison of Goods and Services, Section 3.3.1 Interrelation of factor, page 36). Given that the natures and purposes of the goods under comparison are clearly different, as explained in detail above, their methods of use must also be considered dissimilar.

Complementarity between the goods

It is noted by the opponent that some of the goods under comparison are complementary to each other as computers and handheld devices (the contested goods in Class 9) can be used as controlling devices for medical apparatus and instruments (the opponent’s goods in Class 10). Further, it is argued, that medical apparatus and instruments will only work with software designed to control its functions, making the contested communication software; application software similar to the opponent’s goods.

The opponent has protection for medical apparatus and equipment, in particular medical respiratory apparatus and respiratory support apparatus; compressors for medical use; parts for the aforesaid apparatus, equipment and compressors and clearly within this broad group of goods there are likely to exist electronic items that may use software. However, firstly the vast majority of the goods covered by the opponent’s medical apparatus and equipment will not require software, and therefore there is no possibility of complementarity. Secondly, those that do feature software will be primarily of the type that includes embedded software used to control electronic devices and replace older electromechanical devices. For these goods the ‘software’ performs as a component of the overall device and is not an option for the consumers, in just the same way as, for example, the semiconductor circuitry of electronic devices is a component to which the consumer has no option to purchase or choice and indeed is only aware of in a very vague manner when selecting these types of goods. To claim that this is sufficient for a finding of complementarity would also result in this factor losing its significance. Finally, even if a small number of the opponent’s goods might use software which would be perceived to be a separate item from the actual Class 10 good being purchased, case law has found that these goods intended for different publics, which is the case here, cannot be complementary (22/06/2011, T-76/09, Farma Mundi Farmaceuticos Mundi, EU:T:2011:298, § 30; 12/07/2012, T-361/11, Dolphin, EU:T:2012:377, § 48).

In this regard, it must be recalled that complementarity has to be clearly distinguished from use in combination where goods/services are merely used together, whether by choice or convenience. This means that they are not essential for each other (16/12/2013, R 634/2013-4, ST LAB (fig.) / ST, § 20). In such cases similarity can only be found on the basis of other factors, but not on complementarity.

It follows from the above that the goods in question are not complementary to each other.

Competition between the goods

Goods/services are in competition with each other when one can substitute the other. That means that they serve the same or similar purpose and are offered to the same actual and potential customers. In such a case, the goods/services are also defined as ‘interchangeable’ (04/02/2013, T-504/11, Dignitude, EU:T:2013:57, § 42).

As the goods at hand do not serve the same purposes and are not offered to the same customers, as concluded above, they cannot substitute each other and are not, therefore, in competition with one another.

Final considerations

Under all the circumstances described above, the opponent’s arguments on similarity between the conflicting goods in Classes 9 and 10 and the evidence submitted to support them (partly in German which, furthermore, is not the language of the present proceedings) must be set aside as unfounded.

In addition, reference is made to a case law of the Boards of Appeal which has ruled that ‘although the classification of goods itself cannot lead to a conclusion of (dis)similarity, it does give an indication about the nature and purpose of the product that is covered by the trade mark. Goods in Class 10 serve a medical purpose, whereas those in Class 9 can have all kinds of purposes as long as they are not medical. The wording ‘electric data processing equipment’ or ‘apparatus for recording, transmission or reproduction of sound or images’ might be found both in Class 9 and 10. However, due to their classification they differ, one being for medical purposes and the other for non-medical purposes. A doctor or surgeon might be using the same computer as any employee within the Office or the average consumer at home. Nevertheless, in these cases it concerns a Class 9 product; the product itself has no specific medical purpose even though it might be used in the medical field. Moreover, since the goods at issue serve a different purpose, they are not in competition. Furthermore, medical and non-medical goods are in principle sold through different distribution channels to different end users (the professional within the medical field versus the professional in another specific field or the average consumer). Neither are they complementary in the sense that one is indispensable or important for the use of the other’ (23/11/2005, R 1079/2004-2, MEDIALL/Medial, § 21).

In the Opposition Division’s view, though the decision cited is not recent, the reasoning still applies to a comparison between the opponent’s goods in Class 10 and the contested goods in Class 9 goods including communication devices, computers, smart devices, audio and video equipment, software, accessories for computers and phones and parts thereof.

Based on overall assessment and taking all the above into account, the goods in dispute, as described in detail above, have different natures, purposes and methods of use. Furthermore, they are not commonly produced by the same companies, they target different relevant publics and they have different distribution channels. These goods are not in competition or complementary to each other. Therefore, taking all of the above into account, the contested goods in Class 9 are considered dissimilar to all of the opponent’s goods in Class 10.

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 are clearly dissimilar, although the signs under comparison are clearly identical, 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

Vita VORONECKAITĖ

Martin MITURA

Ric WASLEY

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.