OPPOSITION No B 2 757 212
Aichi Steel Corporation, 1 Wanowari, Arao-machi, Tokai-shi, Aichi-ken, 476-8666 Japan (opponent), represented by Kramer · Barske · Schmidtchen Patentanwälte Partg mbB, Landsberger Str. 300, 80687 Munich, Germany (professional representative)
a g a i n s t
Magfine Corporation, 111-10 Hitokitanishi Moniwa, Sendai Taihaku Miyagi 982051, Japan (applicant), represented by Claudia Lori, Magfine Srl, Via del Fonditore 806, 58022 Follonica, Italy (employee representative).
On 13/06/2017, the Opposition Division takes the following
1. Opposition No B 2 757 212 is rejected in its entirety.
2. The opponent bears the costs.
The opponent filed an opposition against some of the goods of European Union trade mark application No 14 980 461, namely against all the goods in Class 10. The opposition is based on European Union trade mark registration No 2 052 678. The opponent invoked Article 8(1)(a) and (b) EUTMR.
Earlier trade mark
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.
- The goods
The goods on which the opposition is based are the following:
Class 9: Magnets.
The contested goods are the following:
Class 10: Permanent magnets for medical use; permanent magnets for therapeutic use.
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.
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.
Before proceeding to the comparison of the goods in question, it is useful to define the opponent’s goods. Magnets, being classified in Class 9, concern a piece of lodestone or a piece of iron, steel, alloy, etc., which has acquired the property of attracting iron and of aligning roughly north–south when freely suspended. Broadly speaking, it concerns an object producing a magnetic field (information extracted from Oxford English Dictionary on 13/06/2017 at http://www.oed.com/view/Entry/112266?redirectedFrom=magnet#eid). As such, magnets can be used in many ways and serve a wide variety of purposes; they can be used in, inter alia, the domestic or office environment as decorative or functional items of stationery (e.g. fridge magnets, board magnets), electronics (as parts of televisions or computer disks) or industry (as magnetic sweepers, sorters or separators).
The contested permanent magnets for medical use; permanent magnets for therapeutic use, being classified in Class 10, are magnets that are used in magnetic therapy, an alternative medical practice, to alleviate pain and other health concerns.
The opponent argues that the applicant’s goods, being also magnets, should be classified in Class 9 and, thus, are wrongly classified in Class 10. The Opposition Division clarifies that goods in Class 10 serve a medical purpose, whereas goods in Class 9 can have all kinds of non-medical purposes. The wording ‘for medical/ therapeutic use’ included in the applicants’ classification specifies the purpose of these goods, that is, magnets to be used in the medical/therapeutic field. Therefore, the applicant’s goods are correctly classified in Class 10 of the Nice Classification.
As explained above, the applicant’s goods are used for specific medical/therapeutic purposes and their main target public comprises mainly doctors and other professionals working in hospitals, medical clinics and laboratories. However, it cannot be excluded that, for instance, magnets for body parts, such as magnetic plasters, can also be bought by average consumers. In any case, the applicant’s goods have totally different methods of use from those of the opponent’s goods, since permanent magnets for medical/therapeutic use are mostly used for MRI (magnetic resonance imaging) and/or are worn as necklaces or in shoe insoles, bracelets or pillows, or are used in mattresses, underlays, etc., and therefore are commercialised through completely different channels. Furthermore, they are not complementary, in the sense that one is indispensable or important for the use of the other, and are not in competition with each other. Even though their nature and producers may be the same, this fact is not sufficient to argue in favour of similarity (23/11/2005, R 1079/2004-2, MEDIALL/ Medial, § 21-23). Therefore, the goods at issue are dissimilar.
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 dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.
For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the goods are obviously not identical.
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. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.
The Opposition Division
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.