OPPOSITION No B 2 697 962

PRO.MED.CS Praha a.s., Telčská 1, Prague 4, Czech Republic (opponent), represented by Klára Labalestra, Na Poříčí 12, 11000 Prague 1, Czech Republic (professional representative)

a g a i n s t

Miłosz Górecki, Miłosz Górecki trading as PROKIT-Miłosz Górecki, Kazimierów, ul. Świętokrzyska 25, 05-074 Halinów, Poland (applicant), represented by Katarzyna Sas, Kościuszki 58c, 36-020 Tyczyn, Poland (professional representative).

On 07/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 697 962 is upheld for all the contested goods, namely

Class 5:        Plant extracts for pharmaceutical purposes; Plant and herb extracts for medicinal use; Extracts based on bee glue; Royal jelly for pharmaceutical purposes; Royal jelly for medical purposes; Royal jelly dietary supplements; Bee pollen for use as a dietary food supplement; Propolis for pharmaceutical purposes; Propolis dietary supplements; Nutritional supplements; Nutritional supplements; Pollen dietary supplements; Food supplements; Dietary and nutritional supplements; Dietary supplements and dietetic preparations; Parapharmaceutical products for use in dermatology; Dietary supplements based on bee glue; Propolis tinctures for medical purposes; Propolis-based ointments; Medicinal ointments; Antiseptic ointments; Anti-inflammatory ointments; Ointments for pharmaceutical purposes; Medicinal ointments; Pharmaceutical preparations.

2.        European Union trade mark application No 14 762 322 is rejected for all the contested goods. It may proceed for the remaining goods and services.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 762 322 for the figurative mark , namely against all the goods in Class 5. The opposition is based on the Czech trade mark registration No 338 472 for the word mark ‘PROKIT’. The opponent invoked Article 8(1)(a) and (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 preparations for the treatment of gastrointestinal disorders.

The contested goods are the following:

Class 5:        Plant extracts for pharmaceutical purposes; Plant and herb extracts for medicinal use; Extracts based on bee glue; Royal jelly for pharmaceutical purposes; Royal jelly for medical purposes; Royal jelly dietary supplements; Bee pollen for use as a dietary food supplement; Propolis for pharmaceutical purposes; Propolis dietary supplements; Nutritional supplements; Nutritional supplements; Pollen dietary supplements; Food supplements; Dietary and nutritional supplements; Dietary supplements and dietetic preparations; Parapharmaceutical products for use in dermatology; Dietary supplements based on bee glue; Propolis tinctures for medical purposes; Propolis-based ointments; Medicinal ointments; Antiseptic ointments; Anti-inflammatory ointments; Ointments for pharmaceutical purposes; Medicinal ointments; Pharmaceutical preparations.

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

Pharmaceutical preparations refer to any kind of medicine, such as a substance or combination of substances for treating or preventing diseases in people or animals. Therefore, the contested pharmaceutical preparations include, as a broader category, the opponent’s pharmaceutical preparations for the treatment of gastrointestinal disorders. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Herbal and homoeopathic medicines are also comprised in the broad term of pharmaceutical preparations. Therefore, there is an overlap between the contested plant extracts for pharmaceutical purposes and plant and herb extracts for medicinal use and the opponent’s pharmaceutical preparations for the treatment of gastrointestinal disorders. The opponent´s goods, contrary to the applicant´s arguments, are not limited to pharmaceutical preparations with itopryd/itopridehydrochloride as an active substance. The compared goods are considered to be identical.

Royal jelly is a substance secreted by bees who then feed it to their larvae as a nutritional complement. It is harvested by humans for human consumption and is a nutritional complement intended for medical/pharmaceutical purposes. Propolis (also called bee glue) is a natural resinous mixture collected by bees from the buds of trees for use in the construction of hives. Due to its antimicrobial, antiviral and antioxidant properties, it is widely used in human and veterinary medicine, pharmacology and cosmetics. Consequently, the contested extracts based on bee glue; royal jelly for pharmaceutical purposes; royal jelly for medical purposes; royal jelly dietary supplements; bee pollen for use as a dietary food supplement; propolis for pharmaceutical purposes; propolis dietary supplements; nutritional supplements; nutritional supplements; pollen dietary supplements; food supplements; dietary and nutritional supplements; dietary supplements and dietetic preparations; dietary supplements based on bee glue and propolis tinctures for medical purposes are substances prepared for special dietary requirements and/or with the purpose of treating or preventing disease. Bearing this in mind, their purpose is similar to that of the opponent’s pharmaceutical preparations for the treatment of gastrointestinal disorders (substances used to treat a particular disorder) insofar as they are used to improve the medical condition of patients. The relevant public coincides and these goods generally have the same distribution channels. Therefore, these goods are considered similar.

An ointment is a smooth thick substance that is put on sore skin or a wound to help it heal. The contested propolis-based ointments; medicinal ointments; antiseptic ointments; anti-inflammatory ointments; ointments for pharmaceutical purposes; medicinal ointments, as well as the contested parapharmaceutical products for use in dermatology and the opponent’s pharmaceutical preparations for the treatment of gastrointestinal disorder share the same nature; their purpose is, broadly speaking, healing and/or curing; they are sold in the same places, namely, pharmacies; and they come from the same source, which is the pharmaceutical industry. Therefore, they are considered to be similar.

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 as well as at professional consumers.

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.

The degree of attention as regards the contested goods falling in the category of dietary and nutritional supplements is also considered to be heightened due to the potential impact on the consumers’ health.

3. The signs

PROKIT
Earlier trade mark	Contested sign

The relevant territory is the Czech Republic.

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 earlier mark is a word mark, ‘PROKIT’. In the case of word marks, it is the word as such that is protected and not the individual graphic or stylistic characteristics which that mark might possess (judgment of 22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is irrelevant whether the word mark is depicted in lower or upper case letters.

Although the word ‘PROKIT’, as such, has no meaning, the Opposition Division considers that it may not be entirely excluded that a part of the relevant public perceives in the beginning of the earlier mark the element ‘PRO’ (meaning ‘for; in favour of’) and sees it in such case as a laudatory and, hence, less distinctive element than the meaningless ending ‘KIT’. However, a relevant part of the public will perceive ‘PROKIT’ as a coined and, therefore, normally distinctive term.

Contrary to the applicant’s arguments, since the relevant territory is the Czech Republic and not Poland, possible meanings of the word ‘PROKIT’ and/or its elements in Polish are irrelevant.

The contested sign is a figurative mark comprising a figurative device in the form of a honeycomb and the word ‘PROKIT’ depicted in stylised yellow lower-case letters. The above considerations in relation to the semantic content and the distinctiveness of the word ‘PROKIT’ and/or its components equally apply in relation to the contested sign.

The Opposition Division recalls that 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). Therefore, the verbal element of the contested mark is considered to be more distinctive than the figurative device. This is even more so the case, considering that for the majority of the relevant goods the distinctiveness of this figurative element depicting a honeycomb is very limited as it will be associated with the nature of the goods (the latter being bee products).

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

Visually, the signs coincide in the word ‘PROKIT’ representing the entire earlier mark and the only verbal element of the contested sign. However, they differ in the stylisation and colours and in the figurative device of the contested sign which, as explained above, will have less impact on the relevant public than the coinciding verbal element.

Therefore, the signs are visually highly similar.

Aurally, since the figurative elements of the contested sign will not be pronounced, the signs are phonetically identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the part of the public that would perceive in both signs the laudatory element ‘PRO’, there is a certain, albeit low, degree of conceptual similarity. For the part of the public who would associate only the figurative device of the contested sign with a concept, the signs are not 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 at issue are partly identical and partly similar and target the general and professional public, both with a relatively high degree of attention.

The inherent distinctiveness of the earlier mark is normal.

The conflicting signs are visually highly similar and aurally identical on account of the coinciding word ‘PROKIT’ which constitutes the entire earlier mark and the only verbal element of the contested sign.

The differences between the signs are limited to the stylisation and colouring of the verbal element in the contested sign and the additional figurative device which is, however, not only less distinctive than the verbal element but also of limited distinctiveness for the majority of the relevant goods.

Consequently, the similarities between the signs are overwhelming. Taking into account an imperfect recollection of the signs, it is clear that there is a risk that the public, even professionals when paying a high degree of attention, will confuse the origin of the conflicting goods.

Indeed, in the present case, consumers may legitimately believe that the contested trade mark is a new stylised version or a brand variation of the earlier mark, coming from the same undertaking or from economically-linked undertakings.

The applicant argues that its EUTM application is the name of a company created by the applicant´s grandfather in 1996 and that, furthermore, the applicant is a well-known Polish company which operates in the Polish and European market since 1996 and filed various pieces of evidence to substantiate this claim.

The right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings.

Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts which happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM. Consequently, the applicant´s claims and its references to Article 53 EUTMR (in relation to invalidity proceedings) and to Polish national law in relation to possible Polish earlier rights need to be set aside.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Czech trade mark registration No 338 472. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) EUTMR.

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

Beatrix STELTER

Denitza STOYANOVA-VALCHANOVA

Julia SCHRADER

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