OPPOSITION DIVISION
OPPOSITION No B 2 756 065
Waldner Holding Gmbh & Co. Kg, Anton-Waldner-Straße 10-16, 88239 Wangen im Allgäu, Germany (opponent), represented by Maiwald Patentanwalts GmbH, Elisenhof Elisenstr. 3, 80335 München, Germany (professional representative)
a g a i n s t
Waldner Tecnologie Medicali S.r.l. a Socio Unico, Via Sabotino 2/C, 37124 Verona, Italy (applicant), represented by Società Italiana Brevetti S.P.A., Stradone San Fermo 21/B, 37121 Verona, Italy (professional representative).
On 23/08/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 756 065 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 15 457 062 for the figurative mark
. The opposition is based on European Union trade mark registration No 3 585 767 for the word mark ‘WALDNER’. 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.
a) The goods and services
The goods and services on which the opposition is based are the following:
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Class 6: Common metal and their alloys; metal building materials, doors and windows of steel or stainless steel; transportable buildings of metal; materials of metal for railway tracks; non electric cables and wires of common metal; ironmongery, small items of metal hardware; metal tubes and pipes; goods of metal, included in class 6, in particular containers for industrial purposes, transport containers, funnels.
Class 7: Machines and installations for the food industry, in particular machines and installations for dairies and cheese dairies, cheese-machines, cheese-makers, butter-making machines, machines for making quark, machines and installations for processing clotted milk, salt bath installations, turning machines and installations; packaging machines, filling and sealing machines, dosage dispensing machines; conveyor installations and machines.
Class 9: Scientific, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; insulation and containment apparatus and installations, in particular for laboratories, namely apparatus and installations for holding, storing and processing critical products and substances in sealed and/or sterile conditions, locks and manual and automatic feed apparatus; devices for the recording, transmission and playback of sound and images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coinoperated apparatus; data processing equipment and computers; software recorded on data carriers; special furniture for laboratories and laboratory rooms, including in schools.
Class 11: Apparatus for heating, steam generating, cooking, refrigerating, drying, ventilating, air-conditioning and water supply purposes; ventilating apparatus and installations, in particular for laboratories, drying installations for fluidisation, climatic tunnels, in particular for cheese processing, drying cabinets, filter dryers, vacuum drying chambers, hurdle drying chambers, heated cabinets, incubation drying cabinets for the pharmaceutical industry; mixer taps, water spray guns, water treatment apparatus, sewage chambers, grease traps; sanitary installations, apparatus and equipment, washbasins; range hoods.
Class 20: Furniture, mirrors, picture frames, worktables, table tops, work cabinets, high cabinets, wall cabinets, wall boards and table tops, shelves.
Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; construction drafting; technical project planning, in particular technical planning of installations for the food industry, of laboratories and for the treatment of water and wastewater.
The contested goods are the following:
Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.
Class 10: Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopedic articles; suture materials.
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An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.
The terms ‘in particular’ and ‘including’, used in the opponent’s list of goods and services, indicate that the specific goods and services are only examples of items included in the categories and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
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 Classes 5 and 10
The contested goods in Class 5 consist mainly of pharmaceuticals and other preparations and products for sanitary, dietary and medical purposes. These goods are used for preventing or curing certain diseases or health problems. The contested goods in Class 10 consist of medical apparatus, instruments and articles. These goods are used to improve a patient’s medical condition, by preventing or curing health problems.
The opponent’s goods include in particular the following: unwrought and partly wrought common metals as well as products made of them (Class 6); machines and installations for the food industry; packaging, filling, sealing, dosage dispensing and conveyor machines (Class 7); apparatus, instruments for scientific research in laboratories as well as special furniture thereto; electrical apparatus and instruments; audio-visual devices; data processing equipment and computers; recorded software (Class 9); apparatus for heating, steam generating, cooking, refrigerating, drying, ventilating, air-conditioning and water supply and sanitary purposes in particular for laboratories and the food and the pharmaceutical industries (Class 11); furniture and small decoration articles (Class 20); scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; construction drafting; technical project planning, in particular for the food industry, for laboratories and for the treatment of water and wastewater (Class 42).
All the contested goods which are exclusively meant for medical purposes are dissimilar to all of the above-mentioned opponent’s goods and services as they do not coincide in any of the Canon criteria which can give rise to a level of similarity between them. In particular, they differ in their nature, purposes and method of use. In addition, their end users are different, and they are provided through different trade channels by different undertakings. Furthermore, they are neither complementary nor in competition.
Even though the opponent’s earlier mark protects furniture, apparatus and instruments for scientific research in laboratories and the pharmaceutical industry, and the opponent claims in this regard that ‘very often, hospitals must perform test and analysis in their medical laboratories before they can perform surgery, before they can diagnose and treat a disease or to monitor the effectiveness of a medical treatment’ or that ‘treatment of patients, surgeries as well as laboratory analyses
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cannot be performed without the respective pharmaceutical and sanitary preparations, disinfectants etc.’, these goods are not sufficiently closely connected to the contested goods in Classes 5 and 10 in the sense that one is indispensable or important for the use of the other so that consumers may think that the same undertaking is responsible for the production of both types of goods. Under these considerations and in absence of any convincing argument, the abovementioned opponent’s claims must be set aside.
b) 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
Maria del Carmen SUCH SÁNCHEZ
Eva Inés PEREZ SANTONJA
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
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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.