OPPOSITION No B 2 626 367

Alter Farmacia, S.A., Mateo Inurria, 30, 28036 Madrid, Spain (opponent), represented by Ryo Rodriguez Oca, S.L., Calle Juan Hurtado de Mendoza, 9, Apto. 507, 28036 Madrid, Spain (professional representative)

a g a i n s t

Geo – Poland Sp. z o.o., ul. Popiela 14, 61-615 Poznań, Poland (applicant), represented by Sylwia Owczarek, Powsinska 23/7, 02-920 Warszawa, Poland (professional representative).

On 03/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 626 367 is upheld for all the contested goods.

2.        European Union trade mark application No 14 063 143 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 063 143. The opposition is based on, inter alia, European Union trade mark registration No 3 823 333. 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 Union trade mark registration No 3 823 333.

1. The goods

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

Class 5:        Dietetic food products for medical purposes; dietetic substances adapted for medical use; food for babies; vitaminized products.

Class 29:        Meat, fish and poultry; meat extracts; eggs, milk and milk products; preserved fruits and vegetables; jellies, jams, compotes.

Class 32:        Mineral and aerated waters and other non-alcoholic drinks; fruit juices.

The contested goods are the following (after a limitation removing all Class 29 and Class 32 goods):

Class 5:        Infant formula; Powdered milk for babies; Beverages for infants; Milk powders [foodstuff for babies]; Dietetic foods adapted for infants; Lacteal flour for babies; Lactose free infant's formula; Substitutes for mothers milk; Powdered milk foods for infants; Formulated milk for infants, infant milk, and follow-on milk for infants; Dietary supplements for infants; Dietary supplements and dietetic preparations; Albumin dietary supplements; Dietetic food preparations adapted for medical use; Protein dietary supplements; Soy protein dietary supplements; Dietary supplements for infants; Dietetic substances for babies.

Contested goods in Class 5

The contested infant formula; powdered milk for babies; beverages for infants; milk powders [foodstuff for babies]; dietetic foods adapted for infants; lacteal flour for babies; lactose free infant's formula; substitutes for mothers milk; powdered milk foods for infants; formulated milk for infants, infant milk, and follow-on milk for infants; dietary supplements for infants; dietary supplements and dietetic preparations; albumin dietary supplements; dietetic food preparations adapted for medical use; protein dietary supplements; soy protein dietary supplements; dietary supplements for infants; dietetic substances for babies are included in the broad categories of, or overlap with, the opponent’s dietetic food products for medical purposes; dietetic substances adapted for medical use; food for babies; vitaminized products. Therefore, these categories of goods cannot be clearly separated and they are considered 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 goods found to be identical are directed at the public at large and the professional public.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

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

NUTRIBEN	NUTRIBABY
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 elements ‘NUTRIBEN’ and ‘NUTRIBABY’ are not meaningful in certain territories, for example, in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on, for example, the Bulgarian, Slovenian and Lithuanian-speaking part of the public such as Bulgaria, Slovenia and Lithuania, respectively.

Visually, the signs are both word marks that coincide in the sequence of letters ‘NUTRIB-‘, which are the first six letters (out of eight) of the earlier mark ‘NUTRIBEN’ and the first six letters (out of nine) of the contested sign ‘NUTRIBABY’. The signs differ in the final two letters ‘-EN’ of the earlier right and in the final three letters ‘-ABY’ of the contested sign.

Therefore, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territories on which the comparison of signs is focused, the pronunciation of the signs coincides in the sound of the letter string ‘NUTRIB-‘, present identically in the beginning of both signs. The pronunciation differs in the sound of the final two letters ‘-EN’ of the earlier right and in the final three letters ‘-ABY’ of the contested sign.

Consequently, the signs are aurally similar to an average degree.

Conceptually, as was referred above, neither of the signs has a meaning for the Bulgarian, Slovenian and Lithuanian-speaking public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not 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

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

As has been concluded above, the contested goods are identical and the signs are visually and aurally similar to an average degree, while conceptually neither has a meaning in different parts of the relevant territory on which the comparison of signs is based.

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).

Even consumers who pay a high degree of attention to the products in question, as is generally the case with pharmaceuticals goods in Class 5, need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54).

In the present case, the signs under comparison identically share their initial six letter sequence. This is particularly important given that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Therefore, the difference in the final letters of the marks is not enough to set them apart, especially in relation to the goods in question.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that there are many trade marks that include the prefix ‘NUTRI-’. In support of its argument the applicant refers to several trade mark registrations in the European Union.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the prefix ‘NUTRI-’. Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, there is a likelihood of confusion on the part of the Bulgarian, Slovenian and Lithuanian-speaking part of the 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 3 823 333. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier European Union trade mark registration No 3 823 333 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

Gueorgui IVANOV

José Alexandre DE PAIVA ANDRADE TEIXEIRA

Dorothée SCHLIEPHAKE

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.