OPPOSITION DIVISION

OPPOSITION No B 2 792 110

Nestlé Skin Health S.A., Avenue Gratta-Paille 2, 1018 Lausanne, Switzerland

(opponent), represented by Grünecker Patent- und Rechtsanwälte PartG mbB,

Leopoldstr. 4, 80802 Munich, Germany (professional representative)

a g a i n s t

Nutracosmetics GmbH, Seiboldsdorfer Mühle 4, 83278 Traunstein, Germany

(applicant), represented by Marks & Us, Marcas y Patentes, Ibañez de Bilbao 26,

applicant’s own stores and/or website as well as available in

cosmetic studios, spas and salons of third parties only.

Class 5: Plasters, materials for dressings; preparations for destroying

vermin; veterinary preparations; food for babies; dietary

supplements for humans; material for stopping teeth; dental wax;

dietetic foods for medicinal purposes; dietetic food adapted for

veterinary use; dietetic foods adapted for medical purposes; dietetic

substances adapted for medical use; dietetic substances adapted

for veterinary use; dietary supplements for animals.

Class 21: Brushes [except paintbrushes]; brushes; cosmetic bags [fitted];

2. European Union trade mark application No 15 647 795 is rejected for all the

above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

Decision on Opposition No B 2 792 110 page: 2 of 12

REASONS

The opponent filed an opposition against all the goods of European Union trade mark

application No 15 647 795 for the figurative mark . The opposition is

based on European Union trade mark registration No 13 526 736 for the word mark

‘NUTRADERM’. The opponent invoked Article 8(1)(b) EUTMR.

Preliminary remarks

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.

a) The goods and services

Class 10: Medical device.

Class 44: Hygienic and beauty care for human beings.

The contested goods are the following:

Class 3: Cosmetics, namely facial care products, distributed through

applicant’s own stores and/or website as well as available in cosmetic studios, spas

and salons of third parties only.

Class 5: Plasters, materials for dressings; preparations for destroying vermin;

veterinary preparations; food for babies; dietary supplements for humans; material

Decision on Opposition No B 2 792 110 page: 3 of 12

for stopping teeth; dental wax; fungicides; herbicides; dietetic foods for medicinal

purposes; dietetic food adapted for veterinary use; dietetic foods adapted for medical

purposes; dietetic substances adapted for medical use; dietetic substances adapted

cosmetic brushes; cosmetic utensils; mascara brushes; hair for brushes; combs;

sponges; household or kitchen utensils; kitchen utensils; eyelash combs; kitchen

containers; household containers.

An interpretation of the wording of the list of goods and services is required to

determine the scope of protection of these goods and services.

The term ‘namely’, used in the applicant’s list of goods to show the relationship of

individual goods and services with a broader category, is exclusive and restricts the

scope of protection only to the specifically listed goods.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR,

goods or services are not regarded as being similar or dissimilar to each other on the

Contested goods in Class 3

The contested cosmetics, namely facial care products, distributed through applicant’s

own stores and/or website as well as available in cosmetic studios, spas and salons

of third parties only are included in the broad category of the opponent’s cosmetics.

Therefore, they are identical.

Contested goods in Class 5

The contested dietary supplements for humans; dietetic substances adapted for

medical use include, as broader categories, or overlap with, the opponent’s dietary

supplements for humans; none of the aforementioned being antimycotic

preparations. Since the Opposition Division cannot dissect ex officio the broad

The contested dietary supplements for animals; dietetic food adapted for veterinary

use; dietetic substances adapted for veterinary use and the opponent’s dietary

supplements for humans; none of the aforementioned being antimycotic preparations

Decision on Opposition No B 2 792 110 page: 4 of 12

have the same purpose of providing nutrition. They differ in the fact that the

opponent’s goods are for human use, while the contested goods are for veterinary

use. Nevertheless, they may have the same distribution channels and are usually

channels and are usually manufactured by the same undertakings. Therefore, they

are highly similar.

The contested material for stopping teeth; dental wax are items related to the care of

the teeth used by dental specialists in dental clinics. These goods share some

relevant points of contact with the opponent’s medical device in Class 10, which

cover, inter alia, dental apparatus and devices. The goods under comparison have

the same general purpose, as they are all or may be used in dental treatment. They

may have the same producers, distribution channels and relevant public.

Furthermore, they may be complementary. Therefore, they are similar.

The contested food for babies refer to foods that must be eaten by babies because

they are physically incapable of eating any other type of food or it is medically

antimycotic preparations have the same purpose of providing nutrition and they may

aforementioned being antimycotic preparations have the same general purpose,

namely to cure diseases, disabilities or injuries, and they coincide in their consumers

and distribution channels. Therefore, they are similar.

The contested preparations for destroying vermin may be used to prevent the risks to

human or animal health posed by the species whose elimination is sought. As such,

these goods and the opponent’s dermatological preparations for cleansing,

moisturizing and nourishing the skin; none of the aforementioned being antimycotic

preparations have the same general medical purpose of improving human health or

to that of the opponent’s dermatological products, which may be used to treat

ailments caused by the presence of, or contact with, vermin. Furthermore, the goods

under comparison may be sold through the same distribution channels (e.g.

pharmacies). Therefore, they are similar to a low degree.

channels. They are neither complementary nor in competition and are not produced

by the same undertakings. Therefore, they are dissimilar.

Decision on Opposition No B 2 792 110 page: 5 of 12

The contested herbicides are chemical substances used to destroy or inhibit the

growth of plants, especially weeds. The opponent’s goods and services in Classes 3,

5, 10 and 44 consist of cosmetic and hygienic preparations, preparations for treating

The contested brushes [except paintbrushes]; brushes; eye make-up applicators;

applicators for applying eye make-up; eyebrow brushes; skin cleansing brushes;

applicators for cosmetics; cosmetic brushes; cosmetic utensils (which include goods

as cosmetics applicators, appliances for removing make up); mascara brushes;

combs (which include eyelash and eyebrow combs); sponges (which include make-

up sponges); eyelash combs and the opponent’s cosmetics in Class 3 can share the

same purpose and be complementary to each other. These goods have the same

distribution channels, target the same relevant public and can be produced by the

same undertakings. Therefore, they are highly similar.

The contested cosmetic bags [fitted]; cases adapted for toilet utensils; cases adapted

for cosmetic utensils; electric hair combs; comb (electric); hair combs and the

they are similar.

and services in Classes 3, 5, 10 and 44 These goods have different natures,

purposes and methods of use. They are neither complementary nor in competition.

They are not sold in the same outlets and are not produced by the same

manufacturers. Therefore, they are dissimilar.

b) Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be

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 different degrees are

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

Decision on Opposition No B 2 792 110 page: 6 of 12

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).

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

indicate commercial origin. It may be more difficult to establish that the public may be

confused as to origin due to similarities that solely pertain to non-distinctive or weak

elements.

The coinciding element of the marks under comparison is the verbal element

‘NUTRA’. When assessing the similarity of the signs, the degree of distinctiveness of

the common element (or elements) must be taken into account. The more distinctive

the common element is, the higher the degree of similarity in each aspect of the

comparison (visual, phonetic and conceptual). Therefore, a finding that the common

element has a limited distinctiveness will lower the similarity, with the consequence

that it may be more difficult to establish that the public may be confused about origin.

Decision on Opposition No B 2 792 110 page: 7 of 12

or ‘nutriment’ – ‘any material providing nourishment’. This element is likely to be

perceived as weak for part of the relevant goods.

However, the Court has held that, although the average consumer normally

perceives a mark as a whole and does not proceed to analyse its various details,

when perceiving a word sign, they will break it down into elements which, for them,

suggest a specific meaning or which resemble words known to them (13/02/2007,

T-256/04, Respicur, EU:T:2007:46, § 57). Therefore, the element ‘DERM’, included at

Decision on Opposition No B 2 792 110 page: 8 of 12

a sign when they encounter a trade mark. This is because 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.

distinctive letters and have the same length, the signs are visually similar to an

average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘NUTRA’,

constituting the first two identical syllables in both signs. The pronunciation differs in

the sound of their final letters, namely ‘DERM’ in the earlier mark and ‘SKIN’ in the

contested sign, forming one syllable in each mark. Consequently, the marks are

composed of the same number of syllables (three) and, therefore, they have the

same rhythm.

their identical beginnings, which are the most conspicuous parts of the marks.

perceived as meaningless by the public taken into account. The marks differ

earlier mark as referring to ‘skin’, the marks also differ in this concept, which is,

however, weak and has a limited impact on the perception of the public. As the signs

will be associated with different meanings by that part of the public, the signs are not

conceptually similar.

Another part of the public will not dissect the letters ‘DERM’ in the earlier mark and

will perceive the mark ‘NUTRADERM’ as a whole as meaningless. Since one of the

signs (the earlier mark) will not be associated with any meaning, the signs are not

conceptually similar for that part of the public either.

As the signs have been found similar in at least one aspect of the comparison, the

examination of likelihood of confusion will proceed.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its

distinctiveness per se.

Decision on Opposition No B 2 792 110 page: 9 of 12

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

‘NUTRA’ and that the element ‘DERM’ may refer to characteristics of the goods and

element ‘NUTRA’ is not per se particularly conclusive of this element being perceived

as common and weak, 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 the elements constituting the earlier mark are non-

distinctive or weak.

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 as a whole must be seen as normal

the relevant consumers as stated above in section c).

(recital 11 of the EUTMR). It must be appreciated globally, taking into account all

factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd

Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528,

§ 22).

As seen above, the goods and services under comparison are partly identical, partly

similar (to different degrees) and partly dissimilar.

The signs are visually and aurally similar to at least an average degree on account of

consideration and are placed at the beginning of the marks to which consumers

normally attach more importance, and the marks’ similar overall structure and aural

rhythm. The impact of the differing four letters at the end of the verbal elements is not

sufficient to clearly distinguish the marks visually and aurally.

perceived by a part of the public with a meaning, is limited due to the weak distinctive

character of these letters.