OPPOSITION No B 2 666 165
Neopharmed Gentili S.r.l., Via S.G. Cottolengo, 15, 20143 Milano, Italy (opponent), represented by Con Lor S.p.A., Avda Aguilera, 19 – 1ºB, 03007 Alicante, Spain (professional representative)
a g a i n s t
Amantia Investments S.L., Pz de Cataluña nº 20, 9ª planta, 08002 Barcelona, Spain (applicant), represented by Arochi & Lindner S.L., C/ Serrano 28, 1°C, 28001 Madrid, Spain (professional representative).
On 25/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 666 165 is upheld for all the contested goods.
2. European Union trade mark application No 14 667 091 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
REASONS:
The opponent filed an opposition against some of the goods of European Union trade mark application No 14 667 091, namely against ‘dietetic substances, dietary supplements, and medicated and vitamin preparations, all the aforesaid being for hair care purposes’ in Class 5. Following a limitation filed by the applicant on 19/05/2016, Class 3 was deleted and since only the opposed goods remained covered by the application, the opposition is now directed against all of the goods covered by the contested application. The opposition is based on, inter alia, European Union trade mark registration No 11 009 867. 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 European trade mark registration No 11 009 867.
- The goods
The goods on which the opposition is based are the following:
Class 5: Dietetic and nutritional supplements for medical use.
The contested goods are the following:
Class 5: Dietetic substances, dietary supplements, and medicated and vitamin preparations, all the aforesaid being for hair care purposes.
Dietetic and nutritional supplements for medical use covered by the earlier mark may affect the functioning of the human body in many ways, for example, among others, their use may prevent hair loss or contribute to a healthier hair and skin.
The contested dietetic substances, dietary supplements, all the aforesaid being for hair care purposes overlap with dietetic supplements for medical use in Class 5 of the earlier mark, thus they must be considered identical.
The contested medicated and vitamin preparations, all the aforesaid being for hair care purposes in Class 5 overlap with both dietetic supplements for medical use and nutritional supplements for medical use covered by the earlier mark in Class 5, therefore they are considered identical.
- 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 are directed mainly at the public at large, but also at a professional public. These goods are mostly sold in drugstores and pharmacies, but may be found also in the dietetic food section of greater supermarkets.
Regarding the fact that the use of the goods at issue may affect the human health directly, the degree of attention of the relevant public is deemed to be high.
- The signs
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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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
The common element ‘INTEGRA’ is not meaningful in certain territories. Therefore, the Opposition Division finds it appropriate to focus the comparison of the signs on the Italian- and Spanish-speaking part of the public, such as Italy and Spain, where the word element ‘INTEGRA’ included in both signs will be understood as ‘to integrate’ in third person singular in Italian (integrare – to integrate; integra – someone integrates) and Spanish (integrar – to integrate, integra – someone integrates) by the relevant public.
As the verbal element in both signs is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.
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).
The dominant element of the earlier mark is the word element ‘INTEGRA’. The dots as figurative elements within the sign have an equal level of distinctiveness within the sign. However, they will more likely have a weaker impact on the consumers due to their small size.
The dominant and more distinctive element of the contested mark is the word element ‘INTEGRA’, due to its size and eye-catching colour. The small crown device placed above the letters ‘EG’ may be perceived as a reference to prestige and high quality, and as such, rather laudatory, which confines this element to be weaker. Moreover, the verbal element in the contested sign is displayed with vivid colours in the present case, and the much smaller graphic element of the mark is dim grey.
Visually, the signs coincide in the word element ‘INTEGRA’. However, they differ in the graphic elements: the slightly growing dots included in the earlier mark before the verbal element, and the crown device above the letters ‘EG’ in the contested sign. Furthermore, the word element ‘INTEGRA’ is written in italic and displayed in burgundy colour in the contested mark. The dots are small and displayed on one of the sides, before the word element of the earlier mark, taking up only a smaller space within the whole mark. The crown device in the contested sign is neither striking nor eye-catching, due to its size and dim grey colour, thus when compared to the verbal element of the sign, it can be considered secondary.
As the dominant element in both signs is the identical word element ‘INTEGRA’, despite of the minor graphic difference between their font, and the less striking additional graphic elements, the signs are visually highly similar.
Aurally, the signs are identical.
Conceptually, the verbal element present in both signs will be perceived by the Italian and Spanish speaking consumers, as ‘to integrate’ in third person singular. Nonetheless, the signs differ conceptually in the small crown device contained by the contested sign, which not only conveys the concept of a crown itself, but may indirectly refer to high quality and/or prestige, as a laudatory addition. However, due to their dominant word element, the signs at issue are considered to be highly similar from a conceptual point of view.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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.
- Global assessment, other arguments and conclusion
The goods covered by the marks under comparison are considered identical.
Visually, the stylization of the word element of the marks is neither eye-catching, nor unusual, the words are written with usual capital letters in bold, and in case of the contested mark, also in italics. This difference is hard to remember, and based on the imperfect memory of the consumers, does not make the signs clearly distinguishable.
The dots before the word element of the earlier mark, as well as the crown device in the contested sign are neither striking nor eye-catching compared to the verbal element of the sign. The dots included in the earlier mark constitute a significantly smaller proportion of the mark than its dominant word element. The crown device in the contested mark, despite of its independent concept, remains secondary within the mark due to its size and dim colour.
The dominant and distinctive word element ‘INTEGRA’ is included identically in both signs, which results in a high degree of visual similarity between the marks.
The similarity of the signs is increased further by the fact that they are pronounced identically.
Furthermore, due to the identical concept (‘to integrate’) conveyed by the word element included identically in both signs in Spanish and Italian, the differentiation of the signs on a conceptual basis could be problematic at least for a part of the relevant public, and the presence of the crown device in the contested mark would not guarantee either that the relevant consumers could safely distinguish the marks.
Considering all the above, a likelihood of confusion undoubtedly exists for a part of the relevant public of the European Union, namely for the Italian and Spanish speaking public. 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 that the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 11 009 867, and the contested trade mark must be rejected for all the contested goods.
As the earlier right No 11 009 867 ‘INTEGRA’ 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 rights 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
| Denitza STOYANOVA-VALCHANOVA |
Alexandra APOSTOLAKIS |
Martin EBERL |
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.