OPPOSITION No B 2 568 155

Nutrition & Sante Iberia, S.L., C/ Jesus Serra i Santamans 4,1a planta, 08174 San Cugat del Valles (Barcelona), Spain (opponent), represented by Cabinet Morelle & Bardou, Parc Technologique du Canal, 9 Avenue de l'Europe, 31520 Ramonville Saint Agne, France (professional representative)

a g a i n s t

Nutrifood, Actinova Bat C, 37 Francois Gernelle, ZAC Saint Martin, 84120 Pertuis, France (applicant), represented by Legabrand, 13, Rue Roux de Brignoles, 13006 Marseille, France (professional representative).

On 14/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 568 155 is partially upheld, namely for the following contested goods:

Class 5: Pharmaceutical and medical preparations, pharmaceutical and medical preparations for dermatological purposes, creams for medical purposes; Dermatological preparations for the face and body, Chemical preparations for medical or pharmaceutical purposes; Dietic preparations and substances adapted for medical use, Nutritional supplements for medical purposes, Food supplements; Dietetic beverages adapted for medical purposes; Body creams for medical purposes, hair preparations for medical purposes, vitamins and vitamin preparations, powdered meal replacement preparations, cooked dishes for medical purposes and dietetic food adapted for medical use, medicinal tea, herbal teas for medical purposes, medicinal infusions, appetite suppressants for medical purposes.

2.        European Union trade mark application No 13 717 814 is rejected for all the above goods. It may proceed for the remaining contested goods and the remaining uncontested goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 13 717 814, , namely against some of the goods in Class 3 and all of the goods in Classes 5 and 32. The opposition is based on Spanish trade mark registration No 3 028 049,  and Portuguese trade mark registration No 364 687, ‘DIETISA’. 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 must 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 will be rejected.

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

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

The contested application was published on 27/05/2015. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in Spain and Portugal, respectively, from 27/05/2010 to 26/05/2015 inclusive.

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

From Spanish trade mark registration No 3 028 049:

Class 5: Pharmaceutical products; dietetic substances adapted for medicinal use; foods for babies; plasters; materials for dressings; infusions for medical and disinfectant. 

Class 29: Meat; fish; meat extracts; preserved, dried and cooked fruits and vegetables; jellies and marmalade; eggs; milk and dairy products; edible oils and fats; sauces for salads; preserves.

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes; flour and preparations made from cereals; bread; pastry and confectionery; ice creams; honey; treacle syrup; yeast; baking powder; salt; mustard; vinegar; sauces (except salad dressings); spice.

From Portuguese trade mark registration No 364 687:

Class 5: Dietetic substances adapted for medicinal use; foods for babies.

Class 29: Meat; fish; poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies; jams; marmalade; eggs; milk and dairy products; edible oils and fats. 

Class 30: Coffee; tea; cocoa; sugar; rice; tapioca; sago; artificial coffee; flours and preparations made from cereals; bread; pastry and confectionery; ices; honey; treacle; yeast; baking powder; salt; mustard; vinegar; sauces (condiments); spices; ice.

According to Rule 22(3) EUTMIR, the evidence of use must 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.

The opponent filed evidence of use of the earlier trade marks on 20/05/2016. Furthermore, on 05/09/2016, and in accordance with Rule 22(2) EUTMIR, the Office officially gave the opponent until 10/11/2016 to submit evidence of use of the earlier trade marks. No further evidence was filed.

The evidence to be taken into account is the following:

Annex 1: Invoices in Spanish (although one from each year has the headings translated) and addressed to customers in Spain, dated from 05/2010 to 05/2015 and showing the sale of DIETISA products (amongst other trademarked goods). The invoices show the quantities of goods but the sale price is not shown. The items that appear with DIETISA are goods such as noni juice, biobebida soja ecologi, zumo de ciruela, gel de aloe vera, omega 3, refort, salchichas de tofu, hamburguesas de quinoa, aceite pepita uva, etc.

Annex 2: Invoices in Portuguese (although one from each year has the headings translated) and addressed to customers in Portugal, dated from 06/2010 to 05/2015 and showing the sale of DIETISA products (amongst other trademarked goods). The invoices show the quantities of goods but the sale price is not shown. The items that appear with DIETISA are goods such as zumo de noni, colestcontrol, venovar capsulas, sirope de savia, refort, gel de aloe vera, aceite pepita uva, minerals – magnesium, abedul bio, omegas 369, arandano rojo bio, propolis bio spray, etc.

Annex 3: Catalogues from 2010 to 2015 showing DIETISA products and reference to a service offered under the mark DIETISA silueta sana. The opponent’s cover letter states that “these catalogues show the sale of nutritional supplements for medical purposes, health foods and cosmetics”.

Annex 4: Two examples of product packaging (in Spanish with a partial translation into English), both bearing the mark . The goods are both supplements with the first intended to promote flexible and resistant articulations and the second a red cranberry extract. The packages bear the dates 06/2016 and 07/2014.

In addition to this evidence, the opponent also filed, together with the notice of opposition, a one page extract from their website. This is also admissible for proving use as it was filed before the deadline (namely, on 25/08/2015) and will be referred to in this document as Annex 5.

Annex 5: One undated page extract from the opponent’s website in Spanish with a partial translation in English, showing the mark at the top and  next to a product packaging (β-Caroteno), together with a list of products including Royal Jelly, nutritional supplements, healthy food, medicinal plants, natural cosmetics, etc.

The applicant has undertaken a rather piecemeal approach to the evidence which goes against the global assessment as carried out by the Opposition Division. Indeed, all the circumstances of the specific case have to be taken into account. Furthermore, all the materials submitted must be assessed in conjunction with each other. Pieces of evidence may be insufficient by themselves to prove the use of an earlier trade mark, but may contribute to proving use in combination with other documentation and information.

Preliminary remark on translations

The applicant argued that as the evidence was not translated into English, the Office should reject them.

According to Rule 22(6) EUTMIR, where the evidence supplied pursuant to paragraphs 1, 2 and 3 is not in the language of the opposition proceedings, the Office may require the opponent to submit a translation of that evidence in that language, within a period specified by the Office.

It is left to the discretion of the Office whether the opponent has to submit a translation of the evidence of use into the language of the proceedings. In exercising its discretion, the Office balances the interests of both parties.

It has to be borne in mind that it might be extremely costly and burdensome for the opponent to translate the evidence of use submitted into the language of the proceedings.

On the other hand, the applicant has the right to be informed about the content of the evidence filed in order to be capable of defending its interests. It is absolutely necessary that the applicant is able to assess the content of the evidence of use submitted by the opponent. In this regard, the nature of the documents submitted has to be taken into account. For example, it might be considered that ‘standard’ invoices and samples of packaging do not require a translation in order to be understood by the applicant (judgment of 15/12/2010, T-132/09, Epcos, EU:T:2010:518, § 51 et seq.; decisions of 30/04/2008, R 1630/2006-2, DIACOR, § 46 et seq. (under appeal T-258/08); 15/09/2008, R 1404/2007-2, FAY, § 26 et seq.).

In the present case, the opponent provided sample translations of the invoices and partial translations of the catalogues and other items. It is true, however, that many of the individual items listed in the invoices and catalogues are not translated into English, remaining, principally, in Spanish (see for examples the listings above). Some of them, however, can be understood due to the similarity of the terms used, for example gel de aloe vera, omega 3, tofu, capsulas, hamburguesas de quinoa, minerals – magnesium, propolis bio spray. Furthermore, the catalogues (Annex 3) contain images of some of the goods which appear in the invoices and these have been grouped under the categories, which have been translated, healthy food, nutritional supplements and natural cosmetics, for example hamburguesas de quinoa, refort, colestcontrol, venovar, noni juice, gel de aloe vera, etc.

Therefore, taken as a whole, the Opposition Division finds that the evidence is sufficient intelligible despite the lack of full translations.

Place of use

The evidence filed shows that the place of use is both Spain and Portugal due to the language of the documents and the addresses in the invoices, although the use in Portugal is demonstrated only by the invoices in Annex 2. However, the evidence clearly relates to the relevant territory.

Time of use

Almost all of the evidence is dated and dated within the relevant period, therefore, there are sufficient indications as regards the time of use of the earlier marks. The applicant argued that as the catalogues were not complete it was not possible to verify if the dated cover page and the subsequent pages could be linked to one another. However, as some of the goods listed in the catalogues appear in the invoices from the corresponding year there is sufficient reason to believe the documents. The applicant also argued that the dates on the packaging are insufficient to show that the goods were sold during the relevant period. The first item is dated after the relevant period and, therefore, will not be taken into account. However, the other date is of the type commonly found on products intended for human consumption, amongst others, which indicate either the production date or the use by date. Therefore, the Opposition Division finds that this evidence is in line with common industry practises and is acceptable for dating purposes.

Extent of use

In assessing the extent of the use of the earlier marks, account must be taken, in particular, of the commercial volume of all the acts of use on the one hand and the duration of the period in which those acts of use occurred, and the frequency of those acts, on the other (08/07/2004, T-334/01, Hipoviton, EU:T:2004:223, § 35). Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the marks was extensive or very regular, and vice versa (08/07/2004, T-203/02, Vitafruit, EU:T:2004:225, § 42).

The documents listed above, in particular the invoices and the catalogues, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. The invoices demonstrate sales and they also encompass a continuous period of five years.

Moreover, the purpose of the proof of use is not to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade mark protection to the case where large-scale commercial use has been made of the marks (08/07/2004, T-203/02, Vitafruit, EU:T:2004:225, § 36 to 38, and the case-law cited therein).

Therefore, even though the volume of sales included in the invoices is not particularly impressive, it is offset by the continuous use during the period.

Nature of use

Sign used as a trade mark

Nature of use requires, inter alia, that the sign is used as a trade mark, which is, for identifying origin, thus making it possible for the relevant public to distinguish between goods and/or services of different providers.

The materials submitted, when assessed as a whole, show that the earlier marks are used in such a way as to establish a clear link between the goods and the opponent. In the invoices, catalogues and packaging the marks appear alongside the goods and the name of the opponent (along with the address) appears in a secondary position (in the bottom corner in the catalogues and on the reverse of the packaging). The Opposition Division considers, therefore, that the evidence shows use of the sign as a trade mark.

Use of the mark as registered

According to Article 15(1), second subparagraph, point (a) EUTMR, the following also constitutes use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered. When examining the use of an earlier registration for the purposes of Article 57(2) and (3) EUTMR, Article 15 EUTMR may be applied by analogy to assess whether or not use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

The purpose of Article 15(1), second subparagraph, point (a), ‘is to allow its proprietor, on the occasion of its commercial exploitation, to make variations in the sign, which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned. In accordance with its purpose, the material scope of that provision must be regarded as limited to situations in which the sign is actually used by the proprietor of a trade mark to identify the goods or services in respect of which the mark was registered constitutes the form in which that same mark is commercially exploited. In such situations, where the sign used in trade differs from the form in which it was registered only in negligible elements, so that the two signs can be regarded as broadly equivalent, the abovementioned provision envisages that the obligation to use the trade mark registered may be fulfilled by furnishing proof of use of the sign which constitutes the form in which it is used in trade’ (23/02/2006, T-194/03, Bainbridge, EU:T:2006:65, § 50).

A finding of an alteration of the distinctive character of the mark as registered requires an assessment of the distinctive and dominant character of the added and/or omitted elements, carried out on the basis of the intrinsic qualities of each of those elements, as well as of the relative position of the different elements within the arrangement of the trade mark (10/06/2010, T-482/08, Atlas Transport, EU:T:2010:229, § 31 and the case-law cited).

With regard to omissions in the mark when used, if the omitted element is in an accessory position in the presentation of the sign and not distinctive, the omission does not alter the distinctive character of the trade mark (24/11/2005, T-135/04, Online Bus, EU:T:2005:419, § 37). The same applies to additions to the mark as used.

Having regard to the aforesaid considerations, to decide whether or not the form of the mark as used constitutes use of the form of the mark as registered, the Opposition Division will have to establish if the possible differing elements between the marks as used and registered are negligible.

In the present case, the earlier marks are registered as follows:

and ‘DIETISA’ (word mark).

The evidence which is related to goods shows the earlier trade marks as a word mark in the invoices and various figurative signs, namely:

Given that the relevant territory includes Spain where the other verbal elements present in the figurative marks can be considered weak because they are either descriptive or laudatory, and the other figurative elements are decorative, the marks used preserve the distinctive character of the marks as registered.

It follows that the use shown constitutes use of the marks as registered or in a form essentially the same as that registered and, therefore, constitutes use of the mark under Article 15 EUTMR. The same reasoning applies to the labels. Word marks are considered to be used as registered regardless of typeface, use of upper/lower case or colour. Therefore, the depiction of the marks on the labels constitutes use of the marks under Article 15 EUTMR.

Use in relation to the registered goods

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).

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade marks during the relevant period in the relevant territory.

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

The evidence shows repeated use of the trade marks for goods which fall under the protected Class 5 goods dietetic substances adapted for medicinal use. This can be seen because the goods which appear in the catalogue’s nutritional supplements section are described as being for the circulatory system, digestive system, immune system, locomotor system, neural system, respiratory system and urogenital system and appear frequently in the invoices, and, therefore, clearly fall under this broad category.

Furthermore, it is clear that as far as the other Class 5 goods that the opponent has protection for, namely pharmaceutical products; foods for babies; plasters; materials for dressings; infusions for medical and disinfectant, the opponent has not proved use of them. In this respect it has to be remembered that the opponent stated that “these catalogues show the sale of nutritional supplements for medical purposes, health foods and cosmetics” but made no statements or provided clear submissions for any of these other Class 5 goods. Therefore, use of them has not been proved.

As far as the opponent’s goods in Classes 29 and 30 are concerned there are only very limited indications of such goods, primarily in the catalogues. For example whilst the tofu and hamburguesa items appear in both the invoices and catalogues, but only in one invoice from October 2010. Therefore, based on these limited indications the Opposition Division finds that there are insufficient indications of use for goods in these classes.

Finally, it should be mentioned that there is some degree of evidence for cosmetics (for example gel de aloe vera which is listed under the cosmetics section of the catalogues) or juices but as these goods are not protected by the earlier rights they cannot be used as a basis for the opposition.

Therefore, in the present case the evidence shows genuine use of the earlier trade marks for the following goods:

Class 5: Dietetic substances adapted for medicinal use. 

The Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

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: Dietetic substances adapted for medicinal use. 

The contested goods are the following:

Class 3: Slimming cosmetics, for cosmetic purposes.

Class 5: Pharmaceutical and medical preparations, pharmaceutical and medical preparations for dermatological purposes, creams for medical purposes; Dermatological preparations for the face and body, Chemical preparations for medical or pharmaceutical purposes; Dietic preparations and substances adapted for medical use, Nutritional supplements for medical purposes, Food supplements; Dietetic beverages adapted for medical purposes; Body creams for medical purposes, hair preparations for medical purposes, vitamins and vitamin preparations, powdered meal replacement preparations, cooked dishes for medical purposes and dietetic food adapted for medical use, medicinal tea, herbal teas for medical purposes, medicinal infusions, appetite suppressants for medical purposes.

Class 32: Mineral water and aerated drinks; Fruit drinks and fruit juices; Syrups and other preparations for making beverages; Fruit nectars, non-alcoholic; Isotonic drinks; High energy drinks, Soda water, Lemonades, powders for making beverages, Preparations for making beverages, Mixed vegetable beverages, Vegetable drinks and juices.

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 3

The contested slimming cosmetics, for cosmetic purposes are dissimilar to the opponent’s dietetic substances adapted for medicinal use. The natures, purposes, methods of use and usual producers of these goods are different. Furthermore, the goods at issue are not complementary in the sense that one is indispensable (essential) or important (significant) for the use of the other.

Contested goods in Class 5

Dietetic substances adapted for medicinal use (despite the misspelling in the contested sign’s specification) are identically contained in both lists of goods.

The contested dietic preparations adapted for medical use, nutritional supplements for medical purposes, food supplements; dietetic beverages adapted for medical purposes; vitamins and vitamin preparations, powdered meal replacement preparations, cooked dishes for medical purposes and dietetic food adapted for medical use, medicinal tea, herbal teas for medical purposes, medicinal infusions, appetite suppressants for medical purposes are included in the broad category of the opponent’s dietetic substances adapted for medicinal use. Therefore, they are identical.

The contested pharmaceutical and medical preparations, pharmaceutical and medical preparations for dermatological purposes, creams for medical purposes; dermatological preparations for the face and body, chemical preparations for medical or pharmaceutical purposes; body creams for medical purposes, hair preparations for medical purposes are similar to dietetic substances adapted for medical as they have the same medical purpose. Furthermore, they can coincide in end users and distribution channels.

Contested goods in Class 32

The contested goods can be summarised as non-alcoholic beverages and preparations for making beverages. All these goods are drinks or their preparations and are intended to quench thirst or for refreshment. The opponent’s goods are dietetic substances adapted for medicinal use. The contested goods have certain links in common with the opponent’s goods, for example in their nature and method of use. However, they have very different purposes (medicinal versus thirst quenching or refreshment) and it is not common industry practice for them to have the same producers. Furthermore, the distribution channels are different and they are neither in competition nor complementary. Therefore, the contested mineral water and aerated drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages; fruit nectars, non-alcoholic; isotonic drinks; high energy drinks, soda water, lemonades, powders for making beverages, preparations for making beverages, mixed vegetable beverages, vegetable drinks and juices are considered dissimilar 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/or healthcare professionals.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

3. The signs

Spanish trade mark No 3 028 049   Portuguese trade mark No 364 687 DIETISA
Earlier trade marks	Contested sign

The relevant territory is Spain and Portugal.

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 is also to be recognised that the public does not usually dissect trade marks.

The marks are as shown above.

The element ‘DIET’ present in all the signs will be seen as alluding to the Spanish and Portuguese words ‘dieta’ (meaning a special course of food to which a person restricts themselves, either to lose weight or for medical reasons). The Opposition Division finds this element weaker than normal given the goods in question. The applicant argued that the earlier marks would be understood as related to the terms ‘dietista’ and ‘dietetics’ and, therefore, has a low degree of distinctiveness. In support of their argument they filed copies of previous opposition decisions, namely opposition No B 1 682 510 and No B 1 260 506. Having analysed these decisions the Opposition Division sees that these cases are different from the present case as there the signs were either already dissected into two elements or could be dissected as the sign consisted of two intelligible terms. This is not case here as the remaining elements do not form recognizable words.

The Opposition Division also finds that the signs as a whole have no meaning for the relevant consumers.

None of the signs have an element that could be considered clearly more dominant than other elements.

The typeface of the contested sign is only marginally stylized and therefore non-distinctive, whilst the underlining is merely decorative and therefore non-distinctive as well. Likewise, the elliptical background in the earlier Spanish mark is also merely decorative and therefore non-distinctive.

Visually, the signs coincide in having a single verbal element of similar length (7 versus 8 letters long) in which the first six letters (DIETIS*) and the last letter (******A) are the same. However, they differ in the additional letter ‘P’ present towards the end of the contested sign and in the figurative components of the Spanish earlier right and the contested sign, namely the elliptical background in the Spanish right and the stylised typeface and underlining in the contested sign.

Therefore, the signs are similar to an above average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territories, the pronunciation of the signs coincides in the sound of the letters ‛DIETIS-A’, present identically in all the signs. The pronunciation differs in the sound of the letter ‘P’ of the contested sign. It is worth noting that as the signs share the same vowels in the same places the rhythm and intonation is also similar. Furthermore, the different letter appears almost at the end of the contested sign and this is where they will have less impact on the consumer.

Therefore, the signs are similar to a high degree.

Conceptually, as the signs all allude to the Spanish and Portuguese words ‘dieta’ (meaning a special course of food to which a person restricts themselves, either to lose weight or for medical reasons) the signs are conceptually similar, although when it is remembered that the Opposition Division has also found that ‘dieta’ is weaker than normal given the goods in question, the impact of this conceptually similarity is reduced.

As the signs have been found similar in at least one aspect of the comparison for a part of the relevant public, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier marks

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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal, despite the presence of an allusive term as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 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).

Such a global assessment of likelihood of confusion implies some interdependence between the relevant factors and, in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

The goods have been found to be identical, similar and dissimilar and are directed at the public at large and healthcare professionals whose degree of attention will vary from average to higher than average depending on the goods.

The signs are visually similar to an above average degree and aurally highly similar. Conceptually they are similar but only in a weaker than normal element, which reduces the impact of this conceptual similarity.

The applicant made reference to eight other previous decisions of the Office to support its argument that whilst the beginnings of the signs are identical they are also descriptive and, therefore, there is no likelihood of confusion. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

Yet, before that it should be remembered that the Opposition Division found the element ‘DIET’ only weaker than normal rather than descriptive (section c) above). Still, it is true that a part of the similarity lies in the shared element ‘DIET’ which, as just mentioned, was found weaker than normal. However, it is to be recalled that, although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a high degree of similarity between the signs and between the goods or services covered (13/12/2007, T-134/06, Pagesjaunes.com, EU:T:2007:387, § 70).

In the present case, the previous cases referred to by the applicant are not relevant, since they refer to different scenarios (i.e. different signs where in some cases the signs as a whole had a meaning, or the signs were made up of verbal elements that could be dissected) which lead inevitably to different analysis and outcomes. It should also be noted that none of the cases mentioned by the applicant involved signs which had the same ending or the same sequence of vowels throughout the signs, both of which are the circumstances of the present case.

It is the opinion of the Opposition Division that the differences between the signs will largely go unnoticed: one letter almost at the end of the contested sign and the decorative figurative elements do very little to assist in distinguishing between the marks.

In this regard, 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). 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).

Consequently, the relevant consumer is likely to confuse the marks. The differences between the signs are simply not enough to outweigh the clear similarities.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s Spanish and Portuguese trade mark registrations.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar 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 will 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

Eva Inés PÉREZ SANTONJA

Ric WASLEY

Vita VORONECKAITĖ

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.