OPPOSITION No B 2 538 984

Nova Brands S.A., rue des bains 14A, 1212 Luxemburg, Luxemburg (opponent), represented by Dennemeyer & Associates, 55, rue des Bruyères, 1274 Howald, Luxemburg (professional representative)

a g a i n s t

Carefoods (Shanghai) Industrial Co. Ltd., Room 87, Floor 4, No. 1, Lane 1365, East Kangqiao Rd., Pudong New Area, Shanghai, Peoples’ Republic of China (applicant), represented by Società Italiana Brevetti S.P.A, Piazza di Pietra 39, 00186 Roma, Italy (professional representative).

On 06/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 538 984 is partially upheld, namely for the following contested goods:

Class 5:        Infant milk powder; food for babies; lacteal flour for babies; dietetic substances adapted for medical use; nutritional supplements.

Class 29:        Milk; milk powder.

2.        European Union trade mark application No 13 926 282 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 13 926 282. The opposition is based on European Union trade mark registration No 6 091 417. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent shall furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition shall be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based.

The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The contested application was published on 15/05/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 15/05/2010 to 14/05/2015 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 5:        Pharmaceutical and sanitary preparations; dietetic substances for medical purposes in all forms thereof, dietetic supplements for medical purposes in all forms thereof, food for babies in all forms thereof, food for children in all forms thereof, dietetic preparations for children and patients.

Class 29:        Preserved, dried and cooked fruits and vegetables; jams and jellies; milk and milk products, children's milk in all forms thereof, infant formulae in all forms thereof.

According to Rule 22(3) EUTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 08/03/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 13/05/2016 to submit evidence of use of the earlier trade mark. Upon request of the opponent this time limit was extended until 13/07/2016. On 08/07/2016 and on 12/07/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is, in particular, the following:

• 2 written statements provided by the licensed distributor of the opponent: one signed by Mr. Jonathan Margossian, President of ‘United Pharmaceuticals S.A.S’ (Luxembourg), undated and not in the language of proceedings, and one signed by Mr. Pierre Broustet, Quality Director of ‘United Pharmaceuticals S.A.S’, dated 03/11/2015, according to which the trademark ‘NOVAMIL’ is used for baby food, namely baby milk, by this company. Products have been marketed since 2005 until present, both inside and outside of the European Union. Around 836 tons of ‘NOVAMIL’ formulas were manufactured in 2014 and around 928 tons in 2015 (items 1a-b).
• 2 written statements: one signed by Mr. Dimitrios Moraitis, Businnes Unit Director of ‘Vianex S.A.’ (Greece), dated 07/07/2016, and by Mr. Konstantinos Panagoulias, Vice president of the same company, dated 03/11/2015. According to the statements ‘Vianex S.A.’ is a business partner of the opponent and distributes and sells ‘NOVAMIL’ powdered milk for babies and children in Greece since 13/11/2012. The company has purchased and distributed from 13/11/2012 until 06/07/2016 14.574 tins of powdered milk for babies under the brand ‘NOVAMIL’ (items 1c-d).
• A written statement by Mr. Uwe Bedau, managing director of ‘Milchwerke Mittelelbe GmbH’ (Germany), undated and not in the language of proceedings. This company is a supplier of powdered products for the food production and a shareholder of the licensed distributor ‘United Pharmaceuticals’ which belongs to the opponent. The statement indicates that the quantities produced have been increased form 21.202 kg in 2011 to 151.872 kg in 2015 (item 1e).
• A written statement of Mr. Didier Sourisseau, Vice President of ‘CROWN Packaging Europe GmbH’ (Germany), dated 02/12/2015, according to which since 2005 to the present several million packages were produced for ‘United Pharmaceuticals’, especially in Germany and France, on which the trademark ‘NOVAMIL’ is affixed (item 1f).
• An image of a packaging of ‘NOVAMIL’ baby milk, undated. The tin contains an expiration date of 21/12/2017 (1g).
• 3 invoices issued by ‘UP Medi-Europa Company addressed to the distributor of ‘NOVAMIL’ products in Greece, ‘Vianex S.A.’, dated 18/09/2014, 08/01/2015 and 15/09/2014, regarding infant milk (items 2a-2c).
• 1 invoice issued by ‘OTOR NORMANDIE’ and addressed to ‘United Pharmaceuticals’, dated 04/02/2011, for 11040 packages of ‘NOVAMIL’ baby food (item 2d).
• 7 invoices issued by ‘Friesland Campina’ and addressed to ‘United Pharmaceuticals’, all dated from 2013, for the supply of ‘NOVAMIL Follow-On Formula’ (baby food) for exportation to Mexico (item 2e).
• 3 invoices issued by ‘UP Industries GmbH’ and addressed to ‘United Pharmaceuticals’, all dated from 2013, for the supply of ‘NOVAMIL’ baby food for exportation to Mexico (item 2f) .
• 1 invoice issued by ‘Cooperative Isigny Sainte-Mere’ and addressed to ‘United Pharmaceuticals’, dated 29/11/2013, for the supply of ‘NOVAMIL’ baby food (item 2g).
• Several invoices from the opponent’s subsidiaries in Europe to their distributor abroad (Mexico), dated from 2010 to 2015. The origin of the goods (‘NOVAMIL’ powdered milk) is mentioned as being ‘European Union, France’ and they are being exported to Mexico (items 3a-n, 3.1, 3.2).
• Several screenshots from websites of various Greek pharmacies, posted on March and April 2015, showing ‘NOVAMIL’ baby food (items 4a-j).
• 11 invoices from a pharmacy in Greece, that sells ‘NOVAMIL’ baby foods, however, dated outside the relevant period, namely in the period 2015-2016 (item 5).
• A declaration signed by Mr. Romain Thillens, Director of the opponent, and Ms Fatima Amrani, Mandate of the opponent, dated 07/07/2016, stating that the Swiss company ‘UP Medi-Europa SA’ is a direct affiliated company of the opponent and has the right to use the trademark ‘NOVAMIL’ and to sell and commercialize products under this mark on the global market.

Some of the evidence is not translated into the language of proceedings. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Rule 22(6) EUTMIR). Taking into account the nature of the documents which have not been translated and are considered relevant for the present proceedings, especially the invoices, and their self-explanatory character, the Opposition Division considers that there is no need to request a translation.

According to Article 15(2) EUTMR, use of the European Union trade mark with the consent of the proprietor shall be deemed to constitute use by the proprietor. Although this provision covers EUTMs, it can be applied by analogy to earlier marks registered in Member States.

The fact that the opponent submitted evidence of use of its marks by a third party implicitly shows that it consented to this use (08/07/2004, T-203/02, Vitafruit, EU:T:2004:225).

To this extent, and in accordance with Article 15(2) EUTMR, the Opposition Division considers that the use made by those other companies was made with the opponent’s consent and thus is equivalent to use made by the opponent.

Not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods for which the earlier mark is registered. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

Some of the invoices and the sworn declarations show that the place of use is at least Greece. This can be inferred from the language of the documents (‘Greek’), the currency mentioned (‘EURO’) and addresses in Greece. Therefore, the evidence relates to the relevant territory, being a member state of the European Union.

Furthermore, a great part of the evidence shows the use of the sign in export trade, namely to Mexico. According to Article 15(1)(b) EUTMR, the affixing of the European Union trade mark to goods or to the packaging thereof in the Union solely for export purposes also constitutes use within the meaning of Articles 15(1) EUTMR. The mark has to be used (i.e. affixed to goods or their packaging) in the relevant market — that is, the geographical area where it is registered.

Most of the evidence is dated within the relevant period.

The documents filed, especially the declarations and invoices of the opponent’s suppliers and distributors, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

According to case-law, when applying the abovementioned provision the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories.

(14/07/2005, T-126/03, Aladin, EU:T:2005:288).

In the present case, the evidence proves use only for powdered milk for babies and powdered milk foods for infants. These goods can be considered to form an objective subcategory of food for babies in all forms thereof, food for children in all forms thereof, dietetic preparations for children in class 5 and infant formulae in all forms thereof which is erroneously classified in class 29, since it obviously belongs to class 5. As regards children's milk in all forms thereof in class 29, the Opposition Division notes that this product is a subcategory of normal milk which may be enriched with some vitamins and minerals and is intended for the consumption of (older) children, but not for babies or toddlers. However, the evidence does not prove use for this kind of product.

Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for powdered milk for babies and powdered milk foods for infants.

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 the following:

Class 5:        Powdered milk for babies, powdered milk foods for infants.

The contested goods are the following:

Class 5:        Infant milk powder; food for babies; lacteal flour for babies; dietetic substances adapted for medical use; nutritional supplements; babies' napkins (diapers); sanitary pads.

Class 10:        Babies' bottles; breast pumps; teats; feeding bottle valves; feeding bottle teats.

Class 29:        Milk beverages, milk predominating; cream (dairy products); milk; yogurt; milk products; protein milk; milk powder; cheese; milk shakes.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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 Class 5

Infant milk powder is identically contained in both lists of goods (including synonyms).

The contested food for babies includes, as a broader category the opponent’s powdered milk for babies. 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 lacteal flour for babies and the opponent’s powdered milk for babies have the same purpose and nature. They coincide in producer and distribution channels and are directed at the same public. They are, furthermore, in competition to each other. The goods are, therefore, highly similar.

The contested dietetic substances adapted for medical use; nutritional supplements and the opponent’s powdered milk for babies have the same purpose. Furthermore, they can coincide in producer and distribution channels. The goods are, therefore, similar.

However, the contested babies' napkins (diapers); sanitary pads and the opponent’s goods which are powdered milk products for babies and children are dissimilar. They differ in their nature and their producers and they serve different needs. Furthermore, the goods are neither complementary to each other nor in competition. The mere fact that diapers and the opponent’s good are intended for use by babies cannot establish any similarity.

Contested goods in Class 10

The contested Babies' bottles; breast pumps; teats; feeding bottle valves; feeding bottle teats are all feeding aids and pacifiers. They are dissimilar to the opponent’s goods which are powdered milk products for babies and children. They differ in their nature and their producers and they serve different needs. Although it is true that most of them may be complementary to the opponent’s goods, however, the mere fact that feedings aids and the opponent’s goods are intended for use when feeding babies cannot establish any similarity.

Contested goods in Class 29

The contested milk and the opponent’s powdered milk for babies coincide in their purpose and nature and may have the same methods of use. Therefore, they are similar to a low degree. For the same reasons this finding applies also to the contested milk powder which is regular milk in a dehydrated form.

However, this finding does not apply to the remaining contested milk beverages, milk predominating; cream (dairy products); yogurt; milk products; protein milk; cheese; milk shakes which are all milk products. Those goods are consumed by the general public and are not in direct competition to the opponent’s goods which are meant for consumption by babies and infants only. Contrary to the opponent’s opinion, adults will not purchase the contested milk products for their babies to consume, since paediatricians generally advise parents not to give babies milk products under the age of 6 months, and to be careful with those even later, in order to prevent the early development of lactose intolerance and other types of allergies. Parents are aware of this and will be cautious to substitute any ‘normal’ type of milk products belonging to Class 29, intended to be consumed by their babies. Furthermore, the goods do not coincide in their producers and distribution channels. The goods are, therefore, dissimilar.

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 various degrees are directed at the public at large.

The degree of attention may vary from below average (in case of milk in class 29 which is a cheap product for daily consumption) to above average (in the case of the products in class 5 which are meant for the nutrition of vulnerable babies and infants).

3. The signs

NOVAMIL
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 verbal elements (of the conflicting signs) are not meaningful in German and show a very high aural similarity in this language. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the German-speaking part of the public such as Germany and Austria.

The earlier mark is the word mark ‘NOVAMIL’ and it has to be noted that it is the word as such that is protected, regardless the way it is depicted, e.g. in upper- or lowercase letters.

The contested sign is a figurative mark, consisting of the verbal element ‘nowamil’ in slightly stylized lowercase letters underneath of which there is a curved line and a stylized heart device.

The earlier mark has no meaning for the relevant public and is, therefore, distinctive.

As regards the contested sign, it is composed of a distinctive verbal element and less distinctive figurative elements of a rather decorative nature. Therefore, the verbal element is more distinctive than the figurative elements.

The contested sign has no elements that could be considered clearly more dominant than other elements.

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).

Visually, the signs coincide in their first and last syllables ‘NO**MIL’. However, they differ in their second syllable, namely ‘VA’ and ‘WO’ respectively. They further differ in the graphical stylization of the contested sign, i.e. the typography and the presence of the curve and the heart device which however are less distinctive. Therefore, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the syllables of their first and last syllables ‘NO**MIL’, present identically in both signs. The pronunciation differs in the second syllable, namely ‘VA’ in the earlier mark and ‘WO’ in the contested sign. However, this difference is rather of minor importance, since the letters ‘V’ and ‘W’ will be pronounced identically in German. Furthermore, the signs have the same number of syllables. The figurative elements in the contested sign do not influence the pronunciation. Therefore, the signs are highly similar.

Conceptually, although the public in the relevant territory will perceive the figurative element of the contested sign as a heart, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually 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 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 goods are partly identical and similar to various degrees and partly dissimilar. The signs are aurally highly similar and visually similar to an average degree.

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).

As stated above under part c), the verbal component of a mixed sign usually has a stronger impact on the consumer than the figurative component. This is more so in the present case where the figurative elements of the contested mark are of rather decorative nature and less capable to influence the overall impression of the sign. Furthermore, the earlier mark is a word mark. Consequently, the coincidences in the verbal elements are decisive when evaluating a likelihood of confusion.

The coincidence is aurally overwhelming and in this context it should be borne in mind that especially the relevant goods in class 5 (babies food, dietetic substances adapted for medical use and nutritional supplements) are often purchased over the counter, e.g. in pharmacies. Therefore, the phonetic similarity between the signs is particularly relevant. It is true that for those goods the level of attention will be rather above average. However, even consumers who pay 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).

Finally, 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). In the case at hand the high degree of similarity between the signs outweighs the low similarity of part of the goods, namely milk, especially when taking into account the below average level of attention for those goods.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the German-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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 from the above that the contested trade mark must be rejected for the goods found to be identical or similar, even to a low degree, to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Renata COTTRELL

Konstantinos MITROU

Sigrid DICKMANNS

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.