OPPOSITION No B 2 697 707

Laboratorios Salvat, S.A., C/ Gall, 30-36, 08950 Esplugues de Llobregat (Barcelona), Spain (opponent), represented by R. Volart Pons y Cía., S.L., Pau Claris, 77, 2º, 1ª, 08010 Barcelona, Spain (professional representative)

a g a i n s t

Nathan Krant h.o.d.n. The Health Connection, Hogeweg 26, 1401 TL Bussum, Netherlands (applicant), represented by Merkenbureau Knijff & Partners B.V., Leeuwenveldseweg 12, 1382 LX Weesp, Netherlands (professional representative).

On 19/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 697 707 is upheld for all the contested goods.

2.        European Union trade mark application No 14 991 624 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 991 624. The opposition is based on, inter alia, Spanish trade mark registration No 2 926 792. 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Spanish trade mark registration No 2 926 792.

1. The goods

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

Class 5:         Pharmaceutical products, veterinary; hygienic and sanitary products for medical use; dietetic substances for medical use, foods for babies; medicinal herbs; plasters, material for dressings.

The contested goods are, after a limitation requested by the applicant, the following:

Class 5:         Pharmaceutical preparations, namely homeopathic and phytopharmaceutical preparations, medical herbs and infusions, sanitary preparations; dietetic foodstuffs and dietetic substances adapted for medical use (for humans); infant formula; dietary supplements for humans; vitamins and mineral preparations (for humans); vitamin and mineral nutritional supplements (for humans); food supplements for humans, not for medical use.

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

The term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed 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 contested pharmaceutical preparations, namely homeopathic preparations include homeopathic remedies for animals. Consequently, they overlap with the opponent’s pharmaceutical products, veterinary. Therefore, they are identical.

The contested pharmaceutical preparations, namely phytopharmaceutical preparations refer to complex mixtures derived from plant sources that are used as medicines or drugs. Consequently, they are included in the broad category of the opponent’s medicinal herbs. Therefore, they are identical.

Medical herbs and sanitary preparations; infant formula are identically contained in both lists of goods (albeit using slightly different wordings and including synonyms).

The contested medical infusions are included in the broad category of the opponent’s dietetic substances for medical use. Therefore, they are identical.

The contested dietetic foodstuffs and dietetic substances adapted for medical use (for humans) are included in the broad category of the opponent’s dietetic substances for medical use, and the contested dietary supplements for humans overlap with the opponent’s dietetic substances for medical use. Therefore, they are identical.

The contested vitamins and mineral preparations (for humans); vitamin and mineral nutritional supplements (for humans); food supplements for humans, not for medical use are similar to a high degree to the opponent’s dietetic substances for medical use, as they are both intended to supplement the nutrition or the diet of a human being with vitamins, proteins or whatever other supplements may be needed for the correct functioning of the body. The goods in conflict have the same purpose and methods of use. They target the same public. Furthermore, they are normally manufactured by the same companies and are likely to be distributed through the same channels.

The applicant makes reference to the opponent’s website to argue that the contested sign ‘concerns a registered medicine against lactose intolerance’ and raises the issue of the different distribution channels of the conflicting goods. It should be borne in mind that, within the context of opposition proceedings initiated on the basis of Article 8(1)(b) EUTMR by the proprietor of an earlier trade mark, the examination of a possible similarity between the goods and services covered by the mark applied for and by the earlier mark must be carried out by reference to the list of goods and services covered by those two marks and not to the goods or services actually marketed under those marks (04/04/2014, T-568/12, Focus extreme, EU:T:2014:180, § 30 and the case-law cited therein). Moreover, according to Article 42(2) EUTMR, actual use of the earlier mark needs to be shown if and only if the applicant requests proof of use. As long as the applicant does not request proof of use, the issue of genuine use will not be addressed by the Office ex officio. Therefore, when considering whether or not the EUTM application falls under any of the relative grounds for refusal, it is the opponent’s rights and their scope of protection as registered that are relevant. Therefore, the argument raised by the applicant is irrelevant.

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 to a high degree are directed at the public at large and at professionals in the medical field, such as pharmacists and dieticians, with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to higher than average, depending on the price, specialised nature, or terms and conditions of the purchased goods. For instance, the degree of attention will be average in the case of medical herbs and infusions and higher than average in the case of homeopathic and phytopharmaceutical preparations and dietetic foodstuffs and dietetic substances adapted for medical use (for humans).

It is apparent from the case-law that, insofar as pharmaceutical preparations are concerned, the relevant public’s degree of attention is relatively high, whether or not issued on prescription (15/12/2010, T-331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T-288/08, Zydus, EU:T:2012:124, § 36 and cited case-law).

In particular, medical professionals have a high degree of attentiveness when prescribing medicines. Non-professionals also have a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health.

3. The signs

NUTIRA	NUTURA
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 opponent asserts that the conflicting marks are meaningless, but that the relevant Spanish (and Portuguese) public will associate both with ‘nature’. However, in the absence of any supporting evidence, there is no justifiable reason to accept this argument. The applicant claims that ‘NUTURA’ is similar to the English word ‘nurture’ or ‘nutrient’. However, since the English-speaking public is not the relevant public, any consideration in that regard must be set aside. Consequently, the Opposition Division finds that neither of the signs has a meaning for the public in the relevant territory and, therefore, they are distinctive.

Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

Visually and aurally, the signs coincide in the string of letters and sounds ‘NUT*RA’. However, they differ in their fourth letters, namely in the sound of the vowels ‘I’ of the earlier mark and ‘U’ of the contested sign. The signs have the same number of letters (six) and syllables (three). It is important to note that the similarities lie at the beginning and at the end of the signs, whereas the sole difference in one vowel occurs in the middle of the relatively long marks. In terms of recognition and recall, the identity between the first and the final parts of the verbal elements is more important, as differences in the middle of verbal elements may be ignored or not noticed and readily recalled by the relevant consumer.

Therefore, since the signs have very similar rhythms and intonations, they are visually and aurally highly similar.

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 did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

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 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 appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

It has been established in section a) of this decision that the contested goods are partly identical and partly similar to a high degree to the opponent’s goods. They target both the public at large and professionals, whose degree of attention will vary from average to higher than average, and the earlier mark has a normal degree of distinctiveness.

It has also been concluded that the signs are visually and aurally highly similar, whereas the conceptual aspect does not influence the assessment of the similarity of the signs.

In addition, account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Taking into account in particular the fact that the signs coincide in the sequence of letters ‘NUT*RA’, placed in the same order, it is considered that the similarities between the signs are enough to counteract the dissimilarities. The sole difference in the fourth letters of the marks is not sufficient to counteract the similarities, and there is a likelihood of confusion even when the consumer’s degree of attention is higher than average, as even consumers with 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).

In addition, the likelihood of confusion includes the likelihood of association, in the sense that the public may, if not confuse the two signs directly, believe that they come from the same undertaking or from economically related ones (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 16). In the present case, the consumers may easily conclude that the goods labelled and offered under the contested sign are from the same undertaking as the earlier mark or from an economically linked undertaking.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 2 926 792. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier Spanish trade mark registration leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Alexandra APOSTOLAKIS

Marta GARCÍA COLLADO

Richard BIANCHI

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.