OPPOSITION No B 2 340 332

MDS Holding GmbH & Co. KG, Kirchhörder Str. 29, 44229 Dortmund, Germany (opponent), represented by Spieker & Jaeger, Kronenburgallee 5, 44139 Dortmund, Germany (professional representative)

a g a i n s t

Kitozyme s.a., Parc Industriel des Hauts Sarts, Zone 2 Rue Haute Claire 4, 4040 Herstal, Belgium (applicant), represented by Office Kirkpatrick N.V./S.A., Avenue Wolferslaan, 32, 1310 La Hulpe – Terhulpen, Belgium (professional representative).

On 24/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 340 332 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 12 390 837. The opposition is based on European Union trade mark registration No 12 110 417. 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.

1. The goods

The goods on which the opposition is based are, inter alia, the following:

Class 5:        Food and dietetic substances adapted for medical use, food for babies; food supplements for human beings; powder for dietetic drinks adapted for medical purposes; healthcare preparations; pharmaceutical and dietetic products made from or using carbohydrates and/or caffeine and/or vitamins and/or minerals; dietetic foodstuffs for medical purposes for physical and health support and preservation, and for weight control; dietetic milk powder adapted for medical purposes; carbohydrates, including enriched with caffeine and/or vitamins and/or minerals, for medical purposes, in liquid, compressed, powder, gel and sugar-coated form, including being components for foodstuffs; food supplements for human beings; dietetic foods; carbohydrates, including enriched with vitamins and/or minerals and/or caffeine, for food, in liquid, compressed, powder, gel and sugar-coated form, including being components for foodstuffs and/or non-alcoholic beverages; food concentrates being food supplements, not for medical purposes, based proteins and/or fats and/or fatty acids and/or fibre.

The contested goods are the following:

Class 5:        Pharmaceutical preparations; pharmaceutical preparations and substances for weight loss, weight control, and for prevention of obesity and obesity-associated diseases.

The contested pharmaceutical preparations include, as a broader category, the opponent’s pharmaceutical […] products made from or using carbohydrates and/or caffeine and/or vitamins and/or minerals. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested pharmaceutical preparations and substances for weight loss, weight control, and for prevention of obesity and obesity-associated diseases overlap with the opponent’s pharmaceutical and dietetic products made from or using carbohydrates and/or caffeine and/or vitamins and/or minerals. The only difference is that the opponent’s goods specifically contain particular ingredients and the contested goods are for losing/controlling weight but they overlap because both are pharmaceuticals and dietetic substances that could contain the particular ingredients of opponent’s goods and have the purpose of losing/controlling weight of the contested goods. Therefore, they are identical.

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 relevant goods are directed at the public at large as well as at business customers with specific professional knowledge or expertise.

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. This statement also applies for weight loss products because they alter consumer’s nutrition based upon their medical condition and individual needs. Therefore, the degree of attention is relatively high, at least above average.

3. The signs

Slimsed
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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The common element ‘SLIM’ is understood in part of the EU as indicating ‘(of a person or their build) gracefully thin; slender’. This element evokes that the purpose of the goods is to lose weight and therefore is weak for this part of the public for the relevant goods.

However, for the other part of the public, namely the non-English-speaking public, it has no meaning and is distinctive. Therefore, the Opposition Division will first examine the opposition in relation to the part of the public for which ‘SLIM’ has no meaning and has a normal degree of distinctiveness. This part of the public will not artificially dissect the mark in elements such as ‘SLIM’ and ‘SED’ but will perceive it as a whole.

The element ‘MED’ of the contested sign is very well known and on numerous occasions used in trade with the meaning of ‘medical’. Bearing in mind that the relevant goods are pharmaceutical preparations and products related to weight control, this element is non-distinctive for these goods, since the relevant goods are often prescribed or recommended by medical professionals.

Even though the word ‘Slim’ of the contested sign is depicted in a larger typeface, it must also be taken into account that the element ‘MED’ is depicted in a bold uppercase lettering and in bright colours. Therefore, the contested sign has no element that could be considered clearly more dominant than others.

Visually and aurally, the signs coincide in the letters ‘SLIM( )*ED’ and their sounds. However, they differ in their fourth letter and their sound, namely ‘S’ in the earlier mark (sibilant consonant sound) and ‘M’ (bilabial nasal consonant sound) in the contested sign as well as in their different structure, namely that the earlier mark consists of a single word whereas the contested sign comprises two words written on two lines, each of them in a different colour. The signs also differ in the typographic style of the contested sign. An important factor is that the two last coinciding letters ‘ED’ of the contested sign form part of the non-distinctive element ‘MED’ whereas the non-English-speaking consumers will not perceive any weak or non-distinctive element in the earlier mark. The non-distinctive character of the element ‘MED’ of the contested sign significantly reduces its impact on the overall impression given by the sign.

Therefore, the signs are considered visually and aurally similar to a below average degree.

Conceptually, although the public in the relevant territory will perceive the meaning of the word ‘MED’ of the contested sign, as explained above, this element is non−distinctive. The other sign has no meaning in that territory. Since none of the signs convey a concept with a distinctive character in relation to the relevant goods, it is considered that the conceptual aspect does not really influence the assessment of the similarity of the signs.

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 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 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, C342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C251/95, Sabèl, EU:C:1997:528, § 22).

The goods are identical and are directed at the public at large and medical professionals whose degree of attention is high or, at least above average.

When the earlier mark is an European Union trade mark, the analysis must in principle extend to the entire territory. However, as the common element ‘SLIM’ is non-distinctive for a part of the relevant public but is distinctive from the perspective of another part of the relevant public, for reasons of economy of procedure, the Office’s analysis has focussed on the territory where this element is distinctive. Indeed, even considering the higher degree of similarity between the signs in this scenario, it is still not sufficient for a likelihood of confusion because, for the non-English-speaking consumers, the conceptual aspect is neutral and, from the visual and aural points of view, the signs are only similar to a degree below average. Bearing in mind the high, or at least above average, degree of attentiveness of the public in question, even though the goods are identical, it is considered that the similarity between the signs is not enough for the public taken into account to confuse the signs.

This absence of a likelihood of confusion equally applies to the part of the public for which the element ‘SLIM’ is weak. This is because, as a result of the weak character of that element, that part of the public will perceive the signs as being even less similar.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, 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

Adriana VAN ROODEN

Benoit VLEMINCQ

Martina GALLE

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.