OPPOSITION No B 2 655 275

Biofarm SA, Str. Logofătul Tăutu nr. 99, 031212 Bucarest, Romania (opponent), represented by Doina Țuluca, Bd. Lacul Tei 56, bl. 19, sc. B, ap, 52, sector 2, 020392 Bucuresti, Romania (professional representative)

a g a i n s t

Phyto Garda S.R.L., Via Europa Unita 1A/4, 37011 Bardolino (VR), Italy (applicant), represented by Studio Legale Alberini Panicieri, Piazza IV Novembre 4, 37010 Piovezzano di Pastrengo (VR), Italy (professional representative).

On 25/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 655 275 is upheld for all the contested goods:

Class 5: Dietary supplements and dietetic preparations.

2.        European Union trade mark application No 14 795 751 is rejected for all the contested goods. It may proceed for the remaining goods.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 795 751, namely against all the goods in Class 5. The opposition is based on, inter alia, on Romanian trade mark registration No 128 725. 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Romanian trade mark registration No 128 725.

1. The goods

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

Class 5: Dietetic substances for medical use; dietary supplements.

The contested goods are the following:

Class 5: Dietary supplements and dietetic preparations.

Contested goods in Class 5

Dietary supplements are identically contained in both lists of goods.

The contested dietetic preparations include, as a broader category the opponent’s dietetic substances for medical use. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical 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 are directed at the public at large and at professionals in the medical field, such as dieticians and or even pharmacists, with specific professional knowledge or expertise. The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the purchased goods.

In the present case, the relevant products can be also pharmaceutical preparations or for medical use. 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.

3. The signs

FERMENT MAX	FERMENTIX
Earlier trade mark	Contested sign

 

The relevant territory is Romania.

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 element ‘FERMENT’ of the earlier mark refers to a protein substance produced by living cells and acting as catalysts in specific biochemical reactions, with a fundamental role in regulating metabolic processes; synonymous to enzyme (see:  https://dexonline.ro/definitie/ferment). 

The word ‘MAX’ of the earlier mark does not exist as such in Romanian. However, contrary to the applicant’s argument, it cannot be excluded that it may be perceived as an abbreviation or shortened form of the Latin word ‘maximum’ which means ‘the most significant, highest, furthest, or greatest thing’. The online version of the Oxford English Dictionary (http://www.oed.com/view/Entry/251556?rskey=SGrY9h&result=4&isAdvanced=false#eid) also mentions, as one of the meanings of ‘-MAX’, its customary use in the formation of proper nouns and commercial names, indicating a greater capacity than others in a class or a higher quality.

Although the contested sign ‘FERMENTIX’ as a whole lacks a meaning as such for the relevant public, it can be reasonably assumed that the average consumer will perceive the element ‘FERMENT’ in the contested mark with the same meaning as in the earlier mark. The relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58).

In the context of the relevant goods dietary supplements and dietetic preparations, the common element ‘FERMENT’ will convey descriptive information, namely that the goods are fermented and therefore possess various nutritional and therapeutic properties and will therefore be seen as a non-distinctive element of the signs. The term ‘MAX’ due to its position at the end of the earlier mark, will be perceived by the relevant public as a superlative of the object it accompanies, and will, therefore also be considered non-distinctive for all the goods, particularly as the part of the relevant public is likely to expect that the goods themselves or their contents have maximum effect. Therefore, the inherent distinctiveness of all these elements is limited.

The marks are both word marks and have therefore no elements that could be considered clearly more dominant than other elements.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually and aurally, the signs coincide in the letters/word ‘FERMENT-’ and in the final letter ‘X’. However, they differ in the fact that the earlier mark is composed of two words, while the contested mark is composed of one word. The marks also differ in the letters ‘MA’ of the earlier mark and ‘I’ of the contested mark. However, since the word ‘MAX’ is considered to play a secondary role within the earlier mark, the degree of similarity must be considered high.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

The relevant public will understand in the element ‘FERMENT’, included in both signs, as something to with the process of fermentation and will therefore see this element as non-distinctive. Additionally, the element ‘MAX’ of the earlier mark is also considered non-distinctive due to the fact that it will be perceived by the relevant public as a superlative (in this case of the word ‘ferment’).

Therefore, taking into account the above-mentioned the marks are conceptually similar to a high degree.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as lower than average for all of the goods in question. It is, however, noted that the word combination ‘FERMENT MAX’ is registered in Romania for the goods in question and, therefore, for the purpose of the present proceedings, it must be deemed to be endowed with at least some degree of distinctive character.

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 goods at issue are identical and they are directed at the public at large and the professional public. The degree of attention will vary from average to high.

Although the distinctive character of an 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, on the one hand, and a trade mark applied for which is not a complete reproduction of it, on the other, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (16/03/2005, T-112/03 ‘Flexi Air’, EU:T:2005:102).

The signs are considered visually, aurally and conceptually similar to a high degree since they both contain the same verbal element ‘FERMENT’ which is the first and an independent element of the earlier mark and is entirely included at the beginning of the contested sign. Although, this element is non-distinctive for the relevant goods, as mentioned above, the additional verbal element ‘MAX’, which is placed at the end of the earlier mark, is also considered to be non-distinctive. As explained above in section c) of this decision, due to its position at the end of the earlier mark, this element will be perceived by the relevant public as a superlative of the object it accompanies and would not in itself serve in trade to distinguish the goods of one undertaking from those of other undertakings. Therefore, the difference in the word ‘MAX’ of the earlier mark or more precisely in the letters/phonemes ‘MA’ and the additional penultimate letter/phonem ‘I’ in the contested mark and the fact that the earlier mark is composed of two elements while the contested mark only consists of one element is not enough to dispel the existence of a strong similarity between the marks.  

While it is true that the more distinctive the earlier mark, the greater will be the likelihood of confusion, given the identity of the goods covered by the respective marks, combined with a visual, phonetic and visual similarity of the signs they consist of, suffice to create a likelihood of confusion within the meaning of Article 8(1) (b) EUTMR. Since likelihood of confusion is the specific prerequisite for protection of the earlier mark, that protection applies irrespective of whether the earlier mark has only weak distinctiveness (12/01/2006, T-147/03 ‘Quantum’, EU:T:2006:10).

In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323). 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).

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 Romanian trade mark registration No 128 725. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier Romanian trade mark registration leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Lars HELBERT

Janja FELC

Judit NÉMETH

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.