OPPOSITION No B 2 640 418

Werner Trenker,  Zemendorfergasse 13, 2700 Wr. Neustadt, Austria (opponent), represented by Meissner Bolte Patentanwälte Rechtsanwälte Partnerschaft MBB, Widenmayerstraße 47, 80538 München, Germany (professional representative)

a g a i n s t

Olivier Rombi,  Villa Kaliste 209, Chemin des Campons, 06480 La Colle sur Loup, France (applicant), represented by Cabinet Alister Avocats, 13 rue Alphonse Karr, BP 1197, 06 004 Nice Cedex 1, France (professional representative).

On 13/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 640 418 is upheld for all the contested goods, namely 

Class 5:         Dietary supplements and dietetic preparations; Hygienic preparations and articles; Dental preparations and articles; Medical and veterinary preparations and articles; Pest control preparations and articles.

2.        European Union trade mark application No 14 690 036 is rejected for all the above goods. It may proceed for the remaining goods.

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

REASONS:

The opponent filed an opposition against some of the goods of the European Union trade mark application No 14 690 036, namely against all the goods in Class 5. The opposition is based on European Union trade mark registration No 12 715 587.  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 the following:

Class 5: Pharmaceutical and veterinary preparations, sanitary preparations for medical purposes, dietetic preparations adapted for medical use, in particular nutritional supplements adapted for medical or veterinary use, beverages adapted for medicinal purposes.

Class 10: Medical and veterinary instruments and apparatus, in particular analysers for medical purposes, blood testing apparatus, sphygmomanometers, diagnostic apparatus for medical purposes, injection syringes for medical purposes, cannulae, lancets.

The contested goods are the following:

Class 5: Dietary supplements and dietetic preparations; hygienic preparations and articles; dental preparations and articles; medical and veterinary preparations and articles; pest control preparations and articles.

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

The term ‘in particular’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

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 dietary supplements and dietetic preparations includes, as a broader category, the opponent’s dietetic preparations adapted for medical use, in particular nutritional supplements adapted for medical or veterinary use. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Taking into account that the terms ‘hygienic preparations’ and ‘sanitary preparations’ are considered to be synonyms, the contested hygienic preparations and articles, include, as a broader category, the opponent’s sanitary preparations for medical purposes. 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 medical and veterinary preparations and articles overlap with the opponent’s pharmaceutical and veterinary preparations. Therefore, they are identical.

The contested dental preparations and articles are similar to a high degree to the opponent’s medical and veterinary instruments and apparatus, in particular analysers for medical purposes, blood testing apparatus, sphygmomanometers, diagnostic apparatus for medical purposes, injection syringes for medical purposes, cannulae, lancets in Class 10, which include goods such as ‘dental apparatus and instruments’. Therefore the contested and the opponent’s goods are complementary, serve the same purpose and coincide in producers, distribution channels and end users.

The contested pest control preparations and article are similar to a low degree to the opponent’s pharmaceutical and veterinary preparation. The term pest control preparation (synonymous to pesticide) is commonly defined as a chemical preparation for destroying plant (herbicide), fungal (fungicide), or animal pests (vermin destroying preparations). It is possible that some preparations for destroying vermin may be used in order to prevent the risks to human or animal health which the species whose elimination is sought represent. In addition, the use of those preparations may be complementary to that of pharmaceutical or veterinary preparations used to treat ailments caused, directly or indirectly, by the presence of those animal species or contact with them. Moreover, some of those preparations, in particular some insecticides, may be sold in pharmacies. Thus, in the light of the intended purpose of part of the preparations for destroying vermin, their complementary nature in relation to pharmaceutical or veterinary preparations and their distribution channels, it must be held that there is a low degree of similarity of that category with the goods covered by the earlier mark (13/05/2015, T-169/14, Koragel / CHORAGON, EU:T:2015:280 § 50-51). The same reasoning analogically concerns fungicides (13/05/2015, T-169/14, Korag (Koragel), EU:T:2015:280 § 54). Since the Opposition Division cannot dissect ex officio the broad category of pest control preparations and articles, they are considered similar to a low degree to the opponent’s goods.

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 are directed at the public at large and 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.

Therefore, the degree of attention of the public is high, since all of the relevant goods are health related products.

3. The signs

	CHOLEXCESS
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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the relevant public such as Spanish-, Romanian- and Hungarian-speaking public.

The earlier mark is a figurative mark composed of three elements arranged in two lines. In the top line appears a stylised letter ‘W’ on the black background, and the underlined word element ‘CHOLEX’ written in bold. In the bottom line appears slightly stylised word element ‘wellion’ written in smaller size than the rest of the elements.

None of the elements included in the earlier mark has meaning for the relevant public and all of them are, therefore, distinctive in relation to the relevant goods. All the verbal elements are equally distinctive and the very simple graphic elements such as the underlining and the black background square are simple geometric elements of purely decorative nature with no distinctive character.

The word ‘CHOLEX’ in the earlier mark is the dominant element as it is the most eye-catching due to the fact that it appears in the top line, it is depicted in bold capital letters bigger than the element ‘W’, which may be considered as reference to the word ‘wellion’. Moreover, the element ‘CHOLEX’ is emphasised by being underlined, which gives the impression that this element is particularly important.

The contested sign is a word mark made up of the single word ‘CHOLEXCESS’ which is meaningless for the relevant public and has no element that could be perceived as dominant or more distinctive than other elements.

Visually, the signs coincide in the string of letters ‘CHOLEX’ and differ in letters ‘CESS’ along with additional elements, namely the non-distinctive figurative components, the letter ‘W’ and the word element ‘wellion’. The contested sign consists of ten letters, while the total number of letters in the earlier mark equals fourteen letters, nonetheless, it must be taken into account that the six letters in common compose the dominant element of the earlier mark.

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

Aurally, the separate letter ‘W’ at the beginning of the earlier mark will not be pronounced, because it will be considered as a decorative duplication of the initial letter of the word ‘wellion’. The elements that will be pronounced, namely ‘CHOLEX WELLION’ in the earlier mark and the whole contested sign, irrespective of the different pronunciation rules in different parts of the relevant territory, coincide in two syllables ‘CHO’ and ‘LEX’. Account is taken of the fact that the consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. In the present case coinciding syllables are placed at the beginning of the part of the earlier mark that will be pronounced.

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

Conceptually, neither of the signs have a meaning for the public in the relevant territory.

Contrary to the observations of the parties, the Opposition Division does not find that the contested sign ‘CHOLEXCESS’ will be associated by the consumers with excess of the cholesterol. Firstly, the contested sign is a word mark composed of single word only and, as the rule, perceived as a whole. The exception to the rule is that, under certain circumstances, consumers could break the marks down into smaller parts. Such an exception is possible when parts of the contested sign have a clear meaning or resemble words that consumers already know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58). The word ‘EXCESS’ does not have a clear meaning for the non-English-speaking public. Moreover, it is not obvious that the prefix ‘CHOL’ refers to cholesterol, since the latter is spelled and pronounced differently depending on the part of the relevant territory. In the present case there is no part of the relevant public that spells the equivalent of the word ‘cholesterol’ with ‘ch’. Both, Spanish and Romanian public spells the equivalents of the word ‘cholesterol’ with the letter ‘c’ at the beginning (‘colesterol’), and Hungarian public spells it with the letter ‘k’ at the beginning (‘koleszterin’).

Since neither of the signs have a meaning for the relevant public, a conceptual comparison is not possible. Therefore 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).

In the present case the vast majority of goods are identical or highly similar, and some goods are similar to a low degree. At the same time, the signs are visually and aurally similar to an average degree along with no conceptual meaning to the relevant non-English-speaking public. 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), therefore, the fact of coincidence of the contested sign in six out of ten letters with the dominant element of the earlier mark is of a great importance. Therefore, taking into account an average degree of distinctiveness of the earlier mark, even the consumers who pay high degree of attention can assume that even the goods similar to a low degree are from the same or economically linked undertakings.

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 element ‘CHOL’. In support of its argument the applicant refers to several European Union trade mark registrations.

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 element ‘CHOL’. Under these circumstances, the applicant claims must be set aside.

Considering all the above, there is a likelihood of confusion on the part of the non-English-speaking part of the public, such as Spanish-, Romanian- and Hungarian-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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 12 715 587. It follows that the contested trade mark must be rejected for all the contested goods.

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

Zuzanna STOJKOWICZ

José Antonio GARRIDO OTAOLA

Michaela SIMANDLOVA

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.