OPPOSITION No B 2 753 872

BIOFARMA, société par actions simplifiée, 50, rue Carnot, 92284 Suresnes cedex, France (opponent), represented by Cabinet Plasseraud, 66, rue de la Chaussée d’Antin, 75440 Paris Cedex 09, France (professional representative)

a g a i n s t

Nutrifarm Sp. z o.o., Pustynia 84G, 39-200 Dębica, Poland (applicant), represented by Kondrat & Partners, Al. Niepodległości 223/1, 02-087 Warsaw, Poland (professional representative).

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

DECISION:

1.        Opposition No B 2 753 872 is upheld for all the contested goods, namely:

Class 5: Dietetic foods adapted for medical use, dietetic beverages adapted for medical purposes, dietetic substances adapted for medical use; medicines for human purposes; preparations containing trace elements for human use, mineral food supplements, medicinal drinks, nutritional supplements, vitamin preparations, food supplements with medical properties; medicinal herbs, infusions and medicinal teas, Infant formula; medicines for veterinary purposes, dietary supplements for animals, food supplements for animals, for medical purposes, nutritional supplements for livestock feed, vitamin and mineral supplements for pets, dietary supplements for pets in the form of treats, nutritional food supplements for animals, for medical purposes; veterinary preparations and substances, pharmaceuticals for veterinary use, dietetic substances adapted for veterinary use, dietetic food adapted for veterinary use.

2.        European Union trade mark application No 15 570 377 is rejected for all the contested goods. It may proceed for the remaining goods.

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

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 570 377, ‘Proteloxan’, namely against all the goods in Class 5. The opposition is based on European Union trade mark registration No 2 849 008, ‘PROTELOS’. The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods

The goods on which the opposition is based are the following:

Class 5: Pharmaceutical preparations; dietetic substances adapted for medical use.

The contested goods are the following:

Class 5: Dietetic foods adapted for medical use, dietetic beverages adapted for medical purposes, dietetic substances adapted for medical use; medicines for human purposes; preparations containing trace elements for human use, mineral food supplements, medicinal drinks, nutritional supplements, vitamin preparations, food supplements with medical properties; medicinal herbs, infusions and medicinal teas, Infant formula; medicines for veterinary purposes, dietary supplements for animals, food supplements for animals, for medical purposes, nutritional supplements for livestock feed, vitamin and mineral supplements for pets, dietary supplements for pets in the form of treats, nutritional food supplements for animals, for medical purposes; veterinary preparations and substances, pharmaceuticals for veterinary use, dietetic substances adapted for veterinary use, dietetic food adapted for veterinary use.

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.

As a preliminary remark, it is important to define the opponent’s goods.

The opponent’s dietetic substances adapted for medical use are substances prepared for special dietary requirements with the purpose of treating or preventing a disease in human beings.

On the other hand, the opponent’s pharmaceutical preparations, in general, are drugs or substances used for treating, preventing or alleviating the symptoms of diseases or injuries in human beings.

The contested dietetic foods adapted for medical use, dietetic beverages adapted for medical purposes; mineral food supplements, medicinal drinks, nutritional supplements, vitamin preparations, food supplements with medical properties; medicinal herbs, infusions and medicinal teas; dietary supplements for animals, food supplements for animals, for medical purposes, nutritional supplements for livestock feed, vitamin and mineral supplements for pets, dietary supplements for pets in the form of treats, nutritional food supplements for animals, for medical purposes; dietetic substances adapted for veterinary use, dietetic food adapted for veterinary use are included in the broad category of, or overlap with, the opponent’s dietetic substances adapted for medical use. Therefore, they are identical.

Dietetic substances adapted for medical use are identically contained in both lists of goods.

The contested medicines for human purposes; preparations containing trace elements for human use are included in the broad category of the opponent’s pharmaceutical preparations. Therefore, they are identical.

As the opponent’s pharmaceutical preparations refer to any kind of medicine, that is, a substance or combination of substances for treating or preventing disease in people or animals, the contested medicines for veterinary purposes, veterinary preparations and substances, pharmaceuticals for veterinary use are included in the broader term pharmaceutical preparations. Therefore, they are identical.

The contested infant formula is similar to the opponent’s dietetic substances adapted for medical use. These goods have the same purpose, namely feeding with the purpose of preventing a disease. Moreover, they have the same distribution channels and producers.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical or similar are directed at the public at large and at medical professionals with specific professional knowledge or expertise.

It is apparent from the case-law that, insofar as pharmaceutical preparations are concerned, the relevant public’s degree of attention is relatively high, whether or not issued on prescription (15/12/2010, T-331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T-288/08, Zydus, EU:T:2012:124, § 36 and cited case-law).

In particular, medical professionals have a high degree of attentiveness when prescribing medicines. Non-professionals also have a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their health.

The same reasoning applies to dietary and food supplements and infant formula in Class 5 because they also have an impact on the public’s health. Moreover, parents will display a high degree of attentiveness in purchasing infant formula, because they will be mindful of their children’s needs.

3. The signs

PROTELOS	Proteloxan
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).

Both trade marks are single-word marks. The earlier mark is ‘PROTELOS’ and the contested sign is ‘Proteloxan’. ‘PROTELOS’ and ‘Proteloxan’ are meaningless for the relevant public and have a normal degree of distinctiveness (in relation to the mark ‘PROTELOS’, see 26/05/2016, R 1797/2015-2, PROTELASI / PROTELOS et al.; 14/07/2015, B 2 326 406).

Visually, the signs coincide in the first seven letters of both signs, ‘PROTELO’, and differ in the final letters of both marks, ‘S’ in the earlier mark and ‘XAN’ in the contested mark.

Taking into account the fact that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark, the signs are visually similar to a high 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 ‘PROTELO’, present identically in both signs. The pronunciation differs in the sound of the syllable ‘XAN’ in the contested sign and of the letter ‘S’ in the earlier mark. However, for part of the public, for instance the French-speaking part of the public, the final letter ‘S’ is likely to be silent, reinforcing the aural commonalities between the signs.

Furthermore, the letters ‘X’ and ‘S’ have a certain degree of similarity in some relevant languages, such as German and English, in which the letter ‘X’ is pronounced ‘ks’, which also makes the signs even more similar.

For the reasons given above and taking into account that the beginnings of the signs have more weight than their ends, the signs are aurally similar to a high degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs

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

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

In the present case, the conflicting signs are visually and aurally similar to a high degree, inasmuch as they have the first seven letters in common. It is also important that the signs have the same beginning, because the consumers read from the left to the right. Moreover, for part of the public, the earlier mark is aurally entirely included in the contested sign. Therefore, when ordering the goods, this part of the public may think that the contested sign is a new brand of the earlier mark.

On the other hand, the conceptual comparison has no influence on the assessment.

The contested goods are partly identical and partly similar.

Moreover, 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).

Bearing in mind the abovementioned principles, the Opposition Division considers that the visual and aural similarities between the signs, and the absence of a conceptual distinction between them, are sufficient to lead to a likelihood of confusion between the marks in the relevant territory, in relation to identical and similar goods.

It follows from the above that there is a likelihood of confusion on the part of the public. Therefore, the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 2 849 008. It follows that the contested trade mark must be rejected for all the contested goods.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Gueorgui IVANOV

Patricia LOPEZ FERNANDEZ DE CORRES

Dorothee SCHLIEPHAKE

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.