OPPOSITION DIVISION
OPPOSITION No B 2 837 915
GEK Srl, Via Frua n. 24, 20146 Milan, Italy (opponent), represented by Maria
Cristina Murelli, Via E. Visconti Venosta 1, 20122 Milan, Italy (professional
representative)
a g a i n s t
GP Hellenic Soil Limited, Κολοκοτρώνη 6, 1101 Λευκωσία, Cyprus (applicant),
represented by Νικολαοσ Μαγκλαρασ, Φειδιου 2, 10678 ΑΘΗΝΑ, Greece
(professional representative).
On 23/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 837 915 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
PRELIMINARY REMARK
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against all the goods of European Union trade mark
application No 15 880 933 for the figurative mark . The opposition is
based on European Union trade mark registration No 10 985 786 for the word mark
‘ZEROTOX’. 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.
Decision on Opposition No B 2 837 915 page: 2 of 9
a) The goods
The goods on which the opposition is based are the following are, inter alia, the
following:
Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for
medical purposes; dietetic food and substances adapted for medical or
veterinary use, food for babies; dietary supplements for humans and
animals; plasters, materials for dressings; material for stopping teeth,
dental wax; disinfectants; preparations for destroying vermin; fungicides,
herbicides; tanning pills; dental abrasives; acaricides; fly catching paper;
acetates for pharmaceutical purposes; aluminium acetate for
pharmaceutical purposes; acids for pharmaceutical purposes; gallic acid
for pharmaceutical purposes; aconitine; sea water for medicinal bathing;
melissa water for pharmaceutical purposes; lead water; mineral waters for
medical purposes; thermal water; nutritional supplements; adhesives for
dentures; alkaloids for medical purposes; medicinal alcohol; formic
aldehyde for pharmaceutical purposes; aldehydes for pharmaceutical
purposes; algicides; alginates for pharmaceutical purposes; albuminous
foodstuffs for medical purposes; dietetic foods adapted for medical
purposes; food for babies; dental amalgams; gold (dental amalgams of -);
starch for dietetic or pharmaceutical purposes; amino acids for medical
purposes; amino acids for veterinary purposes; analgesics; anti-
rheumatism rings; corn rings for the feet; anaesthetics; fumigating sticks;
antibiotics; antioxidant pills; antiseptics; headache (articles for -);
dressings, medical; sanitary towels; sanitary pads; styptic preparations;
oxygen baths; bath preparations, medicated; vaginal washes; balms for
medical purposes; frostbite salve for pharmaceutical purposes; gurjun
[gurjon, gurjan] balsam for medical purposes; stick liquorice for
pharmaceutical purposes; hygienic bandages; bandages for dressings;
dietetic beverages adapted for medical purposes; bicarbonate of soda for
pharmaceutical purposes; biocides; medicine cases, portable, filled; anti-
rheumatism bracelets; bracelets for medical purposes; media for
bacteriological cultures; bromine for pharmaceutical purposes; corn
remedies; calomel; camphor for medical purposes; capsules for medicines;
candy, medicated; charcoal for pharmaceutical purposes; carbolineum
[parasiticide]; fly glue; mothproofing paper; paper for mustard plasters;
poultices; rubber for dental purposes; caustics for pharmaceutical
purposes; stem cells for medical purposes; stem cells for veterinary
purposes; dental cements; cement for animal hooves; bone cement for
surgical and orthopaedic purposes; molding wax for dentists; cinchona for
medical purposes; quinine for medical purposes; chinoline for medical
purposes; belts for sanitary napkins [towels]; chloroform; adjuvants for
medical purposes; cocaine; antiparasitic collars for animals; collyrium;
collodion for pharmaceutical purposes; biological tissue cultures for
medical purposes; biological tissue cultures for veterinary purposes;
albumin dietary supplements; dietary supplements for animals;
compresses; cachets for pharmaceutical purposes; chemical conductors
for electrocardiograph electrodes; contraceptives (chemical -); barks for
pharmaceutical purposes; mangrove bark for pharmaceutical purposes;
antiseptic cotton; aseptic cotton; cotton for medical purposes; cream of
tartar for pharmaceutical purposes; creosote for pharmaceutical purposes;
cultures of microorganisms for medical and veterinary use; curare; bunion
pads; breast-nursing pads; decoctions for pharmaceutical purposes;
Decision on Opposition No B 2 837 915 page: 3 of 9
deodorants, other than for human beings or for animals; air deodorising
preparations; deodorants for clothing and textiles; depuratives; detergents
for medical purposes; diastase for medical purposes; digestives for
pharmaceutical purposes; digitalin; disinfectants for hygiene purposes;
disinfectants for chemical toilets; drugs for medical purposes; elixirs
[pharmaceutical preparations]; hematogen; hemoglobin; enzymes for
medical purposes; enzymes for veterinary purposes; smoking herbs for
medical purposes; medicinal herbs; dill oil for medical purposes; oil of
turpentine for pharmaceutical purposes; balsamic preparations for medical
purposes; siccatives [drying agents] for medical purposes; cellulose esters
for pharmaceutical purposes; esters for pharmaceutical purposes; hops
(extracts of -) for pharmaceutical purposes; tobacco extracts [insecticides];
cellulose ethers for pharmaceutical purposes; ethers for pharmaceutical
purposes; eucalyptus for pharmaceutical purposes; eucalyptol for
pharmaceutical purposes; evacuants; mud (medicinal -); mud for baths;
linseed meal for pharmaceutical purposes; fish meal for pharmaceutical
purposes; lacteal flour for babies; meal for pharmaceutical purposes; first-
aid boxes, filled; appetite suppressants for medical purposes; febrifuges;
phenol for pharmaceutical purposes; milk ferments for pharmaceutical
purposes; ferments for pharmaceutical purposes; fiber (dietary -); lint for
medical purposes; fennel for medical purposes; flowers of sulphur for
pharmaceutical purposes; phosphates for pharmaceutical purposes;
fungicides; gauze for dressings; gases for medical purposes; petroleum
jelly for medical purposes; gelatine for medical purposes; gentian for
pharmaceutical purposes; germicides; jalap; glycerine for medical
purposes; glycerophosphates; glucose for medical purposes; gamboge for
medical purposes; chewing gum for medical purposes; gum for medical
purposes; greases for medical purposes; greases for veterinary purposes;
milking grease; guaiacol for pharmaceutical purposes; hydrastine;
hydrastinine; hydrated chloral for pharmaceutical purposes; surgical
implants [living tissues]; plasters for medical purposes; insect repellent
incense; medicinal infusions; insecticides; insect repellents; alginate
dietary supplements; casein dietary supplements; enzyme dietary
supplements; wheat germ dietary supplements; glucose dietary
supplements; lecithin dietary supplements; yeast dietary supplements;
pollen dietary supplements; propolis dietary supplements; protein dietary
supplements; protein supplements for animals; mineral food supplements;
iodine for pharmaceutical purposes; iodoform; alkaline iodides for
pharmaceutical purposes; iodides for pharmaceutical purposes; isotopes
for medical purposes; dental lacquer; laxatives; milk of almonds for
pharmaceutical purposes; malted milk beverages for medical purposes;
lactose for pharmaceutical purposes; lecithin for medical purposes; alloys
of precious metals for dental purposes; cedar wood for use as an insect
repellent; yeast for pharmaceutical purposes; liniments; liquorice for
pharmaceutical purposes; dog lotions; lotions for pharmaceutical
purposes; lotions for veterinary purposes; personal sexual lubricants;
lupulin for pharmaceutical purposes; magnesia for pharmaceutical
purposes; malt for pharmaceutical purposes; eyepatches for medical
purposes; dental mastics; dental impression materials; teeth filling
material; wart pencils; caustic pencils; headache pencils; hemostatic
pencils; medicines for human purposes; medicines for dental purposes;
medicines for veterinary purposes; serotherapeutic medicines; mint for
pharmaceutical purposes; menthol; moleskin for medical purposes; fly
destroying preparations; mustard for pharmaceutical purposes; irish moss
for medical purposes; pants, absorbent, for incontinents; sanitary panties;
Decision on Opposition No B 2 837 915 page: 4 of 9
narcotics; adhesive bands for medical purposes; nervines; medicinal oils;
camphor oil for medical purposes; cod liver oil; mustard oil for medical
purposes; castor oil for medical purposes; linseed oil dietary supplements;
opodeldoc; opiates; opium; hormones for medical purposes; oxygen for
medical purposes; absorbent cotton; wadding for medical purposes;
diabetic bread adapted for medical use; diaper-pants (babies’ -); napkins
for incontinents; diapers [babies’ napkins]; royal jelly dietary supplements;
royal jelly for pharmaceutical purposes; parasiticides; jujube, medicated;
lozenges for pharmaceutical purposes; pectin for pharmaceutical
purposes; pepsins for pharmaceutical purposes; peptones for
pharmaceutical purposes; hydrogen peroxide for medical purposes;
pesticides; slimming pills; appetite suppressant pills; blood plasma; powder
of cantharides; pearl powder for medical purposes; pyrethrum powder;
pomades for medical purposes; porcelain for dental prostheses; medicinal
drinks; biological preparations for veterinary purposes; diagnosis of
pregnancy (chemical preparations for the -); chemical preparations for
pharmaceutical purposes; chemical preparations for medical purposes;
chemical preparations for veterinary purposes; aloe vera preparations for
pharmaceutical purposes; trace elements (preparations of -) for human
and animal use; enzyme preparations for medical purposes; enzyme
preparations for veterinary purposes; medicinal hair growth preparations;
bronchodilating preparations; douching preparations for medical purposes;
contact lens cleaning preparations; eye-washes; albuminous preparations
for medical purposes; bacterial preparations for medical and veterinary
use; bacteriological preparations for medical and veterinary use; bismuth
preparations for pharmaceutical purposes; vitamin preparations; slimming
purposes (medical preparations for -); teething (preparations to facilitate -);
bath (therapeutic preparations for the -); lime (preparations of -) for
pharmaceutical purposes; anticryptogamic preparations; hemorrhoid
preparations; antiparasitic preparations; sunburn ointments; mothproofing
preparations; anti-uric preparations; biological preparations for medical
purposes; phylloxera (chemical preparations for treating -); vine disease
treating chemicals; mildew (chemical preparations to treat -); wheat smut
(chemical preparations to treat -); chemico-pharmaceutical preparations;
sunburn preparations for pharmaceutical purposes; dry rot fungus
(preparations for destroying -); chilblain preparations; callouses
(preparations for -); burns (preparations for the treatment of -);
pharmaceutical preparations; pharmaceutical preparations for treating
dandruff; skin care (pharmaceutical preparations for -); opotherapy
preparations; vermin destroying preparations; mice (preparations for
destroying -); larvae exterminating preparations; slug exterminating
preparations; fumigation preparations for medical purposes; diagnostic
preparations for medical purposes; herbicides; air purifying preparations;
reducing sexual activity (preparations for -); sterilising preparations;
mouthwashes for medical purposes; animal washes; dog washes; cattle
washes; radioactive substances for medical purposes; soil-sterilising
preparations; veterinary preparations; propolis for pharmaceutical
purposes; panty liners [sanitary]; quassia for medical purposes; quebracho
for medical purposes; rhubarb roots for pharmaceutical purposes;
medicinal roots; radium for medical purposes; chemical reagents for
medical or veterinary purposes; repellents for dogs; by-products of the
processing of cereals for dietetic or medical purposes; tonics [medicines];
constipation (medicines for alleviating -); remedies for perspiration;
remedies for foot perspiration; mineral water salts; potassium salts for
medical purposes; sodium salts for medical purposes; smelling salts; salts
Decision on Opposition No B 2 837 915 page: 5 of 9
for mineral water baths; bath salts for medical purposes; salts for medical
purposes; sarsaparilla for medical purposes; blood for medical purposes;
leeches for medical purposes; scapulars for surgical purposes; syrups for
pharmaceutical purposes; angostura bark for medical purposes;
condurango bark for medical purposes; croton bark; myrobalan bark for
pharmaceutical purposes; ergot for pharmaceutical purposes; linseed
dietary supplements; linseed for pharmaceutical purposes; serums;
tobacco-free cigarettes for medical purposes; mustard plasters; solutions
for contact lenses; solvents for removing adhesive plasters; soporifics;
radiological contrast substances for medical purposes; dietetic substances
adapted for medical use; nutritive substances for microorganisms; bismuth
subnitrate for pharmaceutical purposes; semen for artificial insemination;
cooling sprays for medical purposes; vulnerary sponges; steroids; surgical
dressings; sulphur sticks [disinfectants]; strychnine; sulphonamides
[medicines]; suppositories; court plaster; sanitary tampons; tartar for
pharmaceutical purposes; asthmatic tea; medicinal tea; surgical tissues;
thymol for pharmaceutical purposes; tincture of iodine; tinctures for
medical purposes; herbal teas for medicinal purposes; tissues
impregnated with pharmaceutical lotions; sedatives; turpentine for
pharmaceutical purposes; cachou for pharmaceutical purposes; mercurial
ointments; ointments for pharmaceutical purposes; vaccines; poisons;
bacterial poisons; rat poison; vermifuges; vesicants; candy for medical
purposes; sugar for medical purposes.
The contested goods are the following:
Class 5: Medical and veterinary preparations and articles; pest control preparations
and articles; dental preparations and articles; hygienic preparations and
articles; food supplements; medicated food supplements.
The contested medical and veterinary preparations and articles; pest control
preparations and articles are identically contained in both lists of goods (including
synonyms).
The contested food supplements include, as a broader category the opponent’s
mineral food supplements. 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 dental preparations include, as a broader category the opponent’s
dental lacquer. 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 dental articles include, as a broader category the opponent’s rubber
for dental 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 hygienic preparations and articles are hygienic preparations and
absorbent articles for personal hygiene. These goods overlap with the opponent’s
sanitary preparations for medical purposes, which are special hygienic substances
prepared to treat or prevent a disease. Therefore, they are identical.
Decision on Opposition No B 2 837 915 page: 6 of 9
The contested medicated food supplements overlap with the opponent’s mineral food
supplements. Therefore, they are identical.
b) 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 at business customers with specific professional knowledge or expertise in the
pharmaceutical and medical field for both humans and animals. In particular, medical
professionals have a high degree of attentiveness when prescribing medicines. Non-
professionals also show a higher than average degree of attention, regardless of
whether the pharmaceuticals are sold with or without prescription, as these goods
affect their state of health.
Medicines, whether or not issued on prescription, can be regarded as receiving a
high degree of attention from consumers, who are reasonably well informed and
reasonably observant and circumspect. This high level of attention is also applied to
the remaining goods, for example food supplements, since these goods have a direct
effect on the proper functioning of the intestinal transit and, finally, having a healthy
physical appearance (15/12/2009, T-412/08, Trubion, EU:T:2009:507, § 28).
c) The signs
ZEROTOX
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).
It should be pointed out that 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, the fact remains that, when perceiving a word sign, they will break it down
into elements which, for them, suggest a specific meaning or which resemble words
they know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).
Regarding the earlier mark ‘ZEROTOX’, in light of the above judgment, the
Opposition Division considers that at least part of the relevant public will dissect the
first element ‘ZERO’ being a basic English word indicating the arithmetical figure ‘0’
which denotes ‘nought’ or no quantity or number, nothing (see Collins English
Dictionary online). This holds true, not only for English-speaking part of the relevant
Decision on Opposition No B 2 837 915 page: 7 of 9
public, but also, among others, the Polish, Spanish, French, Italian, Portuguese and
Romanian public, since said term is identical or highly similar to the equivalent word
in these languages, ‘zero’ (‘cero’, ‘zéro’ and ‘zero’) having the same meaning
(09/02/2017, T-106/16, ziro, ECLI:EU:T:2017:67, §47). Bearing in mind the goods at
stake, this element has a normal distinctiveness. The remaining element of the mark,
namely ‘TOX’ has no meaning and so its distinctiveness in relation to the goods
concerned should be also seen as normal. In light of the foregoing, the earlier mark
has no element which could be perceived more distinctive than the other.
It cannot be excluded that for part of the public, e.g. the Bulgarian part of the relevant
public, the term ‘ZERO’ will not be associated with any meaning. If this is the case,
this part of the public will perceive ‘ZEROTOX’ as a whole, without artificially splitting
it up into various components. Since the element ‘ZEROTOX’ of the earlier mark
does not convey a particular meaning for this part of the relevant public, its
distinctiveness should be seen as normal.
Regarding the contested sign, the relevant public will dissect the terms ‘Zeo’ and
‘DETOX’, even though the former has no meaning in relation to the goods concerned
and so its distinctiveness should be seen as normal. This is not only due to the fact
that the term ‘DETOX’ conveys a meaning in relation to the goods at stake, as
referred to below, but also, and foremost, because ‘Zeo’ and ‘DETOX’ are visually
separated due to the latter being in capital letters. Insofar as the term ‘DETOX’ is
concerned, it is reasonable to assume that the relevant public throughout the EU will
associate said term with the English word ‘DETOX’ referring to ‘a process or period of
time in which one abstains from or rids the body of toxic or unhealthy substances;
detoxification’ (see Collins English Dictionary online). In relation to the goods at
issue, it indicates that they are used for ‘detox’ purposes, for example
pharmaceuticals or chemicals designed to rid the human or animal body of
poisonous substances. Therefore, it is considered a weak element and,
consequently, ‘Zeo’ is the most distinctive element of the contested sign.
Visually, the signs coincide in the sequence of letters ‘ZE(-)O(-)(-)TOX’ and to that
extent they are similar. However, they differ in both the additional third letter ‘R’ of the
earlier mark and the middle string ‘DE’ of the contested sign having no counterpart in
the earlier sign. Regarding the typeface in which the verbal elements of the contested
sign are written, their stylisation is fairly standard and will not lead the consumer’s
attention away from the elements they seem to embellish.
As a result of the above, and taking into account what has been said regarding the
distinctiveness of the elements (and components) of the signs, the signs are
considered visually similar to a low degree.
Aurally, irrespective of the different pronunciation rules in different parts of the
relevant territory, the pronunciation of the signs coincides in the sound of the
letters /ZE*O-/ and the element /-TOX/, in case of the contested sign being preceded
by the sound of the additional syllable /-DE-/. Moreover, the marks differ in the sound
of the additional third letter ‘R’ of the earlier mark. Said differences change the
intonation and slightly the length of the marks.
Taking into account what has been said above, the signs are aurally similar to a low
degree.
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks. If the element ‘ZERO’ in the earlier mark is
associated with the meaning specified above by part of the relevant public and the
Decision on Opposition No B 2 837 915 page: 8 of 9
term ‘DETOX’ in the contested sign conveys the weak concept referred to above, the
signs are conceptually dissimilar. However, for another part of the public in the
relevant territory, the earlier mark has no meaning. 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 to a low degree in at least one aspect of the
comparison, the examination of likelihood of confusion will proceed.
d) 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 mentions that its company is well-known in Italy and within the
European Union in the market for food supplements. Despite these general
comments, the opponent did not clearly and 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.
e) Global assessment, other arguments and conclusion
A likelihood of confusion (including a likelihood of association) 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.
The contested goods are identical to the earlier mark’s goods. The relevant public’s
level of attention is higher than average, meaning that consumers will be more
informed and observant. The earlier mark has a normal degree of distinctiveness.
In the present case, the Opposition Division is of the opinion that both the low visual
similarity and the low aural similarity between the signs is not enough to lead to a
likelihood of confusion, even in relation to the identical goods directed at the both
public and large and professionals with a higher level of attention. Due to the higher
level of attention, these consumers are even less vulnerable to confuse the marks.
Considering all the above, there is no likelihood of confusion on the part of the public.
Therefore, the opposition must be rejected.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party.
Since the opponent is the losing party, it must bear the costs incurred by the
applicant in the course of these proceedings.
Decision on Opposition No B 2 837 915 page: 9 of 9
According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3)
and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the
applicant are the costs of representation, which are to be fixed on the basis of the
maximum rate set therein.
The Opposition Division
Eva Inés PÉREZ
SANTONJA
Klaudia MISZTAL Chantal VAN RIEL
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.