OPPOSITION No B 2 809 823

MIP Metro Group Intellectual Property GmbH & Co. KG, Metro-Str. 1, 40235 Düsseldorf, Germany (opponent), represented by Eileen Hudson, MIP Metro Group Intellectual Property GmbH & Co. KG, Metro-Str. 1, 40235 Düsseldorf, Germany (employee representative)

a g a i n s t

MDM Holding SPA, Via Meucci 36, 56121 Ospedaletto, Pisa, Italy (applicant), represented by Raffaella Toccafondo, Abiogen Pharma S.p.A., Via Meucci 36, 56121 Ospedaletto, Pisa, Italy (employee representative).

On 22/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 809 823 is upheld for all the contested goods.

2.        European Union trade mark application No 15 716 863 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 716 863. The opposition is based on European Union trade mark registration No 9 512 609. 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, inter alia, the following:

Class 5:        Pharmaceutical and veterinary preparations; hygiene preparations for medical purposes; dietic products for medical use, food for babies; plasters, medical dressings; teeth filling material and dental impression materials; disinfectants; preparations for killing vermin; fungicides, herbicides, algicides, medicines for human purposes, medicines for veterinary purposes, medicines for dental purposes, acetates for pharmaceutical purposes, bath salts for medical purposes, therapeutic preparations for the bath, balm for medical purposes, hygienic bandages, haemostatic pencils; chemical preparations for medical purposes, medicated confectionery, chemical preparations for pharmaceutical purposes, chemical preparations for veterinary purposes, chemico-pharmaceutical preparations, sanitary towels, deodorants, other than for personal use, dietetic beverages adapted for medical purposes, dietetic substances adapted for medical use, dietetic foods adapted for medical purposes, albuminous foodstuffs for medical purposes, aluminium acetate for pharmaceutical purposes, greases for medical purposes, fly catching paper, fly glue, additives to fodder for medical purposes, glucose for medical purposes, belts for sanitary napkins (towels), adhesives for dentures, anti parasitic collars for animals, herbal teas for medicinal purposes, corn remedies, corn rings for the feet, repellents for dogs, dog lotions, dog washes, absorbent pants for incontinents, insecticides, chewing gum for medical purposes, germicides, adhesive tapes for medical purposes, compresses, air freshening preparations, medicinal drinks, medicinal hair growth preparations, medicinal tea, milking grease, sanitary panties, menstruation pads, mineral food-supplements, mineral water for medical purposes, menstruation bandages, sanitary panties, moth proofing preparations, moth proofing paper, mouth washes for medical purposes, albuminous foodstuffs for medical purposes, medicinal oils, pesticides, plasters for medical purposes, pharmaceutical preparations, rat poison, fumigating sticks, medicine cases, portable, filled, pesticides, panty liners (sanitary), breast-nursing pads, tobacco-free cigarettes for medical purposes, tissues impregnated with pharmaceutical lotions, first-aid boxes (filled), medical dressings, surgical dressings, absorbent cotton, vitamin preparations, wadding for medical purposes, napkins for incontinents, dietic foodstuffs for healthcare purposes based on vitamins, minerals, trace elements, either individually or in combination, nutritional additives based on amino acids, minerals and trace elements, feminine hygiene products, solid air fresheners, deodorants for clothing and textiles; food supplements not for medical purposes based on white of egg, fats, fatty acids, with added vitamins, minerals, trace elements, either individually or in combination, included in this class; food supplements not for medical purposes based on carbohydrates, fibre, with the addition of vitamins, minerals and trace elements individually or in combination, included in this class.

The contested goods are the following:

Class 5:         Dietetic food and substances adapted for medical use; food supplements for humans; food supplements for human use; mineral and vitamin supplements for human beings.

Dietetic food and substances adapted for medical use are identically contained in both lists of goods, albeit with slightly different wording (e.g. dietetic food adapted for medical use versus dietetic foods adapted for medical purposes).

The contested food supplements for humans (listed twice) include, as a broader category or overlap with, the opponent’s food supplements not for medical purposes based on white of egg, fats, fatty acids, with added vitamins, minerals, trace elements, either individually or in combination, included in this class. 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 mineral vitamin supplements for human beings are included in the broad category of, or overlap with, the opponent’s mineral food-supplements. Therefore, they are identical.

The contested vitamin supplements for human beings are included in the broad category of, or overlap with, the opponent’s vitamin preparations. Therefore, they are identical.

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 specialists 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 state of health.

Given that the general public is more prone to confusion, the examination will proceed on this basis.

3. The signs

	REAL FUEL
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).

The earlier mark is a figurative mark consisting of the word ‘REAL’ written in rather standard bold red lower case letters leaning slightly to the right. The word ‘REAL’ is followed by a device in blue made up of two lines that resembles a comma followed by a dash. The latter is an abstract and distinctive element that does not convey any particular meaning. However, it has limited relevance in the present comparison due to its graphic nature. Indeed, when signs consists 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 (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37). This also applies to the stylisation of the mark.

The contested sign is the word mark ‘REAL FUEL’. The word ‘FUEL’ is meaningless for part of the public and, therefore, distinctive. The part of the public that understands English will perceive the term as meaning, inter alia, nutritive material in the sense of food, drink, drugs and in general any edible goods that can be a source of energy for human beings. For this part of the public, and considering that the relevant goods are dietetic substances and nutritional supplements, it has a limited degree of distinctive character and consequently limited relevance in the present comparison.

The word ‘REAL’, present in both marks under comparison, exists in several languages in the relevant territory (e.g. in English, German, Portuguese, Romanian and Spanish) and has similar equivalents in most of the other languages (e.g. ‘reale’ in Italian, ‘reāls’ in Latvian, ‘realny’ in Polish, ‘reálny’ in Slovenian, ‘реален’, transliterated as ‘realen’, in Bulgarian). Consequently, it will be understood by the great majority of the relevant public as referring to something not imaginary but existing or in the physical world. This element is a vague adjective that, per se, has no direct connection to any of the relevant services. It is also distinctive for the part of the public that will not understand its meaning and will perceive it as a fanciful term.

Neither of the marks has any element that could be considered dominant over the other elements.

Visually, the signs coincide in the word ‘REAL’, which constitutes the only verbal element of the earlier mark and is included as an identifiable and independent element at the beginning of the contested sign. 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.

The marks differ in the additional second verbal element of the contested sign, ‘FUEL’, which has limited relevance for at least the part of the public that understands English.

The remaining differences between the signs lie in the graphic elements and stylisation of the earlier mark, which are of secondary importance for the reasons explained above.

Therefore, the marks are visually similar to an average 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 word ‘REAL’, constituting the only verbal element of the earlier mark and present as the first, and therefore most relevant, word of the contested sign. The pronunciation differs in the sound of the word ‘FUEL’ of the contested sign, which has no counterparts in the earlier mark and has less relevance for the English-speaking part of the public.

Therefore, the signs are aurally similar to a high degree.

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

There is a conceptual similarity between the signs for the part of the relevant public that will understand the meaning of the coinciding word, ‘REAL’. Therefore, the marks are conceptually similar to an average degree for the part of the public that will understand the meaning of ‘REAL’ but will perceive the word ‘FUEL’ as meaningless (e.g. part of the Spanish-speaking public).

For the part of the public that understands the word ‘FUEL’, the marks differ in the additional concept present in the contested sign; however, this must be seen in the light of the weak distinctive character of that element. The words ‘REAL’ and ‘FUEL’ in the contested sign may also be perceived as a logical and conceptual unit by the part of the public that understands the meanings of both elements (e.g. the English-speaking part of the public), indicating that a certain nutritive material is actual, existing or material, true or genuine. For those parts of the public, the marks are conceptually similar to a low degree on account of the distinctive verbal element ‘REAL’, which the marks have in common.

Part of the public may perceive the marks as meaningless. For this part of the public, since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs with respect to this part of the relevant public.

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. In the present case, the earlier trade mark as a whole has no meaning for any of the services 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

As concluded above, the relevant goods are identical and they target the general and professional public with a degree of attention that is higher than average. The earlier mark has been deemed to enjoy a normal degree of inherent distinctiveness for the relevant goods.

The signs are visually similar to an average degree and aurally similar to a high degree because they coincide in the word ‘REAL’, which is the only verbal element of the earlier mark and the first (and therefore more relevant) word of the contested sign. Due to that commonality, for a substantial part of the public, the signs are conceptually similar to varying degrees.

The word ‘FUEL’ in the contested sign will not go unnoticed by consumers, even considering that for the English-speaking part of the public it has a weak distinctive character. However, the element ‘REAL’, which is identical to the earlier mark’s verbal element, is distinguishable in the contested sign and plays an independent role in it.

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).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

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 identity between the services is sufficient to overcome the (limited) differences between the signs.

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 European Union trade mark registration No 9 512 609. 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.

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

Francesca CANGERI SERRANO

Orsola LAMBERTI

Michele M. BENEDETTI-ALOISI

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.