OPPOSITION No B 2 792 144

Sky Medical Technology Limited, 497 Aigburth Road, Liverpool L19 9DL, United Kingdom (opponent), represented by Marks & Clerk LLP, 1 New York Street, Manchester M1 4HD, United Kingdom (professional representative)

a g a i n s t

Shenzhen Qianhai Icecold IT Co.,Ltd., 201 Block A, No.1 Qianwan 1st Road, Qianhai Shenzhen-Hong Kong Cooperation Area, Shenzhen, People's Republic of China (applicant), represented by Agency Tria Robit, Vilandes iela 5, Riga, 1010 Latvia (professional representative).

On 25/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 792 144 is partially upheld, namely for the following contested goods:

Class 9: Diagnostic apparatus, not for medical purposes; counters; detectors.

Class 10: Nursing appliances; dental apparatus and instruments; electrodes for medical use; soporific pillows for insomnia; surgical implants comprised of artificial materials; abdominal belts; suture materials; air cushions for medical purposes.

2.        European Union trade mark application No 15 561 467 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 561 467 . The opposition is based on European Union trade mark registration No 10 276 863 ‘SKYWALKER’. The opponent invoked Article 8(1)(a) and (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

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 goods on which the opposition is based are the following:

Class 10: Medical apparatus and instruments.

The contested goods are the following:

Class 9: Smartglasses; wearable activity trackers; smartwatches; pedometers; counters; time recording apparatus; detectors; diagnostic apparatus, not for medical purposes; connected bracelets [measuring instruments]; spectacles [optics].

Class 10: Nursing appliances; dental apparatus and instruments; electrodes for medical use; soporific pillows for insomnia; breast pumps; love dolls [sex dolls]; surgical implants comprised of artificial materials; abdominal belts; suture materials; air cushions for medical purposes.

As a preliminary remark, it should be noted that according to Article 28(7) EUTMR, goods or services shall not be 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 9

The contested diagnostic apparatus, not for medical purposes; counters and detectors are diagnostic equipment, counting and detection apparatus and instruments that can be used for a variety of purposes, by scientists, researchers, in laboratories, in the testing of new products, in quality control devices, in counting, alignment and calibration processes, etc. Therefore, they have relevant commonalities with the opponent’s medical apparatus and instruments in Class 10 which cover, inter alia, diagnostic apparatus and instruments for medical purposes, pulse counters and detectors for medical applications. Therefore, these goods have the same nature and coincide, at least partially, in their purpose (apparatus for diagnostic, counting and detection purposes); they can also coincide in their end users (professionals like laboratory assistants and researchers). Furthermore, they may have the same manufacturers and distribution channels. Consequently, they are considered to be similar.

The contested smartglasses are wearable computer glasses that add information alongside or to what the wearer sees. The contested smartwatches are computerised wristwatches. The contested wearable activity trackers and pedometers are portable and usually electronic devices that count each step a person takes by detecting the motion of the person when doing sports or monitor its physical activity and fitness. The contested time recording apparatus and connected bracelets [measuring instruments] consist of instruments and devices used for time and overall fitness measurements. The contested spectacles [optics] consist of glasses and eyewear, intended to correct defective vision. None of the aforementioned contested goods can be considered similar to the opponent’s goods in Class 10 (medical apparatus and instruments).

The opponent’s goods are used for a very specific purpose: apparatus or instruments which are therapeutic, to the point of being used or prescribed by a medical professional or being instrumental in the treatment or relief of a disease or physical condition. They are mainly targeted at hospitals, clinics, laboratories and professionals in the medical field. Furthermore, they are manufactured by specialised companies and commercialised through completely different channels. In addition, they are neither complementary to, nor in competition with the aforementioned contested goods. Although the opponent’s products can be electronic, like some of the applicant’s goods, this is not sufficient to argue in favour of a similarity. Therefore, these goods are considered dissimilar.

Contested goods in Class 10

The contested nursing appliances; dental apparatus and instruments; electrodes for medical use and abdominal belts are included in, or at least overlap with, the broad category of the opponent’s medical apparatus and instruments. Therefore, they are identical.

The contested surgical implants comprised of artificial materials; air cushions for medical purposes; soporific pillows for insomnia consist of items of medical furniture and bedding and artificial implants for surgical use. All these goods are used in hospitals and healthcare centres in the treatment of patients. They are considered similar to the opponent’s medical apparatus and instruments. These goods coincide partly in their nature and ultimate purpose. Furthermore, they often originate from the same companies, target the same users (such as professionals in the medical sector) and are sold through the same distribution channels.

The contested suture materials consist of surgical threads that are used to repair cuts (lacerations). They also are used to close incisions from surgery. These goods are similar to the opponent’s medical apparatus and instruments, because they often coincide in producer, end user and distribution channels.

The contested love dolls [sex dolls] are a type of sex toy in the size and shape of a sexual partner. These goods have no points in common with the opponent’s medical apparatus and instruments. They differ in nature, purpose and usual origin. They do not target the same consumers and are not sold at the same shops. Therefore, they are dissimilar.

The contested breast pumps are mechanical or electric devices that extract milk from the breasts of a lactating woman. They are dissimilar to the opponent’s goods in Class 10, because they have different natures, purposes and methods of use, and are normally manufactured and distributed by different entities. Moreover, they are neither complementary to nor in competition with each other.

2. 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 identical or similar are specialised goods and are directed mainly at business customers with specific professional knowledge or expertise (such as professionals in the medical field). The degree of attention will be higher than average, due to their specialised nature and to their direct effects on the state of health of the patients/users.

3. The signs

SKYWALKER
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Considering the semantic content of the sings at issue, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The earlier sign is a word mark, consisting of the verbal element ‘SKYWALKER’. In word marks, it is the word as such that is protected; therefore, it is irrelevant if the sign is depicted in lower or upper case letters, or in a combination thereof.

The contested sign is a figurative mark. It consists of the verbal element ‘SKYWALKER’, depicted in rather standard upper case grey letters. The only letter which presents a relevant degree of stylisation is the fifth letter, ‘A’. However, the Opposition Division considers that its stylisation is not sufficient to obscure it to such a degree that would prevent the relevant English-speaking public from immediately recognising it as a letter ‘A’, depicted in a fanciful fashion. This conclusion is aided by the semantical perception of the verbal element ‘SKYWALKER’, contained in both marks.

The public will perceive either as the name of a fictional character from the famous Star Wars series of movies or as the conjunction of the meaningful elements ‘SKY’ and ‘WALKER’.

Indeed, it must be noted that the Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57). The word ‘SKY’ will be perceived as, inter alia, ‘the apparently dome-shaped expanse extending upwards from the horizon’, ‘outer space, as seen from the earth’ or ‘the source of divine power; heaven’ (information extracted from Collins English Dictionary online, at https://www.collinsdictionary.com/dictionary/english/sky). The word ‘WALKER’ will be perceived as ‘a person who walks’ (information extracted from Collins English Dictionary online, at https://www.collinsdictionary.com/dictionary/english/walker). Hence, as a whole, the element ‘SKYWALKER’, contained in both marks, might also be associated with the notion of ‘one who walks in the sky’.

Whichever the particular comprehension of the element ‘SKYWALKER’ in the signs, it has no descriptive or even allusive meaning in relation to the relevant goods and is, therefore, normally distinctive.

The marks have no element(s) that could be considered clearly more dominant than other element(s).

Visually, the signs coincide in the verbal element ‘SKYWALKER’, which constitutes the earlier mark and is reproduced in the contested sign, as its only verbal element.

The signs differ solely in the overall stylisation of this element in the contested sign.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T 312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011 4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011 5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). Furthermore, in the case at issue, the stylisation of the contested sign is rather basic overall, as only one of the letters presents a relevant degree of fancifulness in its depiction, whereas all the others are portrayed in a manifestly standard script.

Therefore, the signs are visually similar to a high degree.

Aurally, the pronunciation of the signs coincides entirely in the sound of their single verbal element, ‘SKYWALKER’. Therefore, the marks are aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Whichever the particular comprehension of the verbal element ‘SKYWALKER’, contained in both signs (a fictional character or a simple conjunction of two concepts: sky and walker), it is clear that the marks are conceptually identical, as the contested sing contains no additional semantic content that would distinguish it from the earlier mark ‘SKYWALKER’.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The contested goods are identical, similar or dissimilar to the goods covered by earlier European Union trade mark registration No 10 276 863.

The contested sign and the earlier EUTM have been found to be visually highly similar, as the verbal element ‘SKYWALKER’ is entirely reproduced in the contested sign, where it performs an independent distinctive role. Furthermore, the marks are aurally and conceptually identical.

As for the stylisation of the contested sign, the same is quite standard (with the exception of the letter ‘A’) and will be perceived, overall, as an ordinary graphic mean of bringing the verbal element in question, ‘SKYWALKER’, to the attention of the public. In this regard, it should be noted that consumers will retain in their memory, and refer to the goods in question by their name, rather than by describing the stylisation of the lettering of the mark. Therefore, the stylised depiction of one letter in the contested sign is manifestly insufficient to distinguish the signs from the perspective of the consumers, even considering that they will proceed to the purchase of the relevant goods with a high degree of attention.

Furthermore, consumers only rarely have the chance to make a direct comparison between the different marks but must place their trust in the imperfect picture of them that they have kept in their mind (judgment of 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and, therefore, the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

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

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 signs and the remaining dissimilar goods are obviously not identical.

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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Monika CISZEWSKA	Gueorgui IVANOV	Ewelina SLIWINSKA

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.