OPPOSITION No B 2 377 870

Tecnifar – Indústria Técnica Farmacêutica, S.A., Rua Tierno Galvan, Torre 3, 12º Piso Amorairas, 1099-036 Lisbon, Portugal (opponent), represented by J.E. Dias Costa, Lda., Rua do Salitre, 195, 1269-063 Lisbon, Portugal (employee representative)

a g a i n s t

DSM IP Assets B.V., Het Overloon 1, 6411 Te Heerlen, Netherlands (holder), represented by J. Pereira Da Cruz, S.A., Rua Victor Cordon 14, 1249-103 Lisbon, Portugal (professional representative).

On 05/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 377 870 is upheld for all the contested goods, namely: 

Class 5:        Dietetic preparations or substances adapted for medical use; food supplements for medical use; food supplements based on protein; dietetic beverages adapted for medical purposes; vitamins; vitamin preparations; natural medicines; food for babies.

2.        International registration No 1 176 074 is refused protection in respect of the European Union for all of the contested goods. It may proceed for the remaining goods.

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

REASONS:

The opponent filed an opposition against some of the goods of international registration designating the European Union No 1 176 074, namely against all the goods in Class 5. The opposition is based on Portuguese trade mark registration No 505 383. 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:    Medicines and nutritional supplements.

Class 10: Medical devices.

The contested goods are the following:

Class 5: Dietetic preparations or substances adapted for medical use; food supplements for medical use; food supplements based on protein; dietetic beverages adapted for medical purposes; vitamins; vitamin preparations; natural medicines; food for babies.

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

The contested dietetic preparations or substances adapted for medical use food supplements for medical use; food supplements based on protein and dietetic beverages adapted for medical purposes; vitamins; vitamin preparations are included in the opponent’s broader category or overlap with the opponent´s nutritional supplements. 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 natural medicines are included in the opponent’s broader category of medicines. Therefore, they are identical.

The contested food for babies are similar to the opponent´s nutritional supplement as they share the same purpose of providing nutrition. Moreover, they may have the same producers and same distribution channels.

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 and similar are directed at the public at large (i.e. general public) and at a professional public with specific professional knowledge or expertise.

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.

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).

Furthermore, this high level of attention is also applied to dietary supplements, since these goods have a direct effect on the proper functioning of the intestinal transit and, finally, having a healthy physical appearance (15/12/2009, T-412/08, Trubion, EU:T:2009:507, § 28).

Considering all the above, the degree of attention of the relevant public will be higher than average given that the relevant goods, including food for babies, affect the state of human

health.”

However, given that the general public is more prone to confusion, the examination will proceed on this basis. This part of the relevant public is assumed to have no specific medical knowledge and not to be familiar with specific Latin terms used in medicine.

3. The signs

OTOWEL	OATWELL
Earlier trade mark	Contested sign

The relevant territory is 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).

Both of the verbal elements of the signs, ‘OTOWEL’ and ‘OATWELL’, are meaningless for the part of the public on which the present comparison focuses. Therefore, they are distinctive to an average degree in respect of the relevant goods.

In its observations of 23/11/2016, the holder dissects both signs and gets into their different meaning. More specifically it claims that ‘OAT’ means aveia and ‘WELL’ means bem in Portuguese and that ‘OTO’ derives from the Portuguese word otorrino which is an abbreviation of the word otorrinolaringologia (otorhinolaryngology). In this regard, the Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words they know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).

As a result of this dissection, and relating to the term ‘OTO’, the holder submits a picture of what seems to be one of the opponent´s products to prove first the connection between ‘OTO’ and the field of ear, nose and throat medicines. Secondly, the holder maintains that the products that the holder will bring to the market under the applied for sign will have nothing to do with such medicines.. In this regard, it must be recalled that the examination of the likelihood of confusion carried out by the Office is a prospective examination. In contrast to trade mark infringement situations – where the courts deal with specific circumstances in which the particular facts and the specific nature of use of the trade mark are crucial – the deliberations of the Office on likelihood of confusion are carried out in a more abstract manner and the comparison of goods must be based on the usual meaning of the wording used in the list of goods as registered or applied for.

Furthermore, and taking into account what has been stated in section b) of the present decision, the Opposition Division is of the opinion that a significant part of the general public in Portugal will not artificially dissect the conflicting signs and will perceive them in their entirety. This is because the signs have no parts, letters or elements that would stand out visually and which would help the public to split them into separate meaningful words. Consequently, both signs are considered to be undivided units.

Taking all the above into account, the holder’s arguments must be set aside.

As both are verbal marks, none of them have any element that could be considered more dominant (visually eye-catching) than other elements.

Visually and aurally, the signs coincide in letters/sounds ‘O-T-W-E-L’, though the letter/sound ‘T’ is in different positions within the signs. However, they differ in the third letter/sound ‘O’ of the earlier mark and in the second letter/sound ‘A’ and the last letter/sound ‘L’ of the contested sign.

The signs have a similar structure and length. They both consist of one word, the earlier mark having six letters/sounds and the contested sign having seven letters and six sounds (double ‘L’ is likely to be pronounced as one). Phonetically, the sequence of the vowels ‘O-O-E’ versus ‘O-A-E’ in combination with the identical consonants ‘T-W’ gives the signs a similar rhythm and intonation.

Considering all the above, the signs are visually and aurally similar to at least an average degree.

Conceptually, neither of the signs as a whole has a meaning for the general 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 general public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal. Regarding the holder´s argument about the low distinctiveness of the earlier mark because of the presence of the prefix ‘OTO’, account must be taken of what is has been stated in section c) of the present decision. Consequently, this argument must be set aside.

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).

The relevant public on which the present decision has been constructed is the general public as it is the part of the public most prone to be confused. As explained in section b), he degree of attention will be higher than average.

This part of the relevant public will perceive both marks as undivided, meaningless and fanciful terms. The marks are visually and aurally similar to at least an average degree to the extent that they coincide in the letters ‘O*TWEL*’. The conceptual aspect does not influence the assessment of the similarity of the signs in the present case.

The Opposition Division is of the opinion that the differences between the signs, as established above in section c) of this decision, are not sufficient to counteract their similarities, which result in very similar visual and aural impressions given by the signs when being perceived by the relevant public as a whole.

While it may be true that the relevant public is more attentive when acquiring some of the contested goods, it does not mean that the purchaser always has the opportunity to compare the marks side by side. Accordingly, some degree of imperfect recollection of the absent mark at the time of acquisition cannot be totally ruled out. In fact, according to the principle of imperfect recollection, 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 with 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).

In its observations, the holder argues that it is the owner of several ‘OATWELL’ trade mark registrations in several countries, such as Chile, Colombia, Ecuador, Peru, Venezuela and Mexico, and argues that it is very unlikely that the average consumer would mistake the opponent’s Portuguese mark with the trademark of the holder. As regards this argument, the Opposition Division notes that the existence of several trade mark registrations in territories outside the European Union is not a valid argument in the current proceedings as a Portuguese trade mark has no right to prohibit the registration in the named countries nor is there any reason to believe that the average consumers of those countries will have any knowledge of the opponent’s earlier Portuguese mark. The issue here is whether the Portuguese public will perceive a likelihood of confusion and the deliberations on this must be restricted to the comparison of the conflicting signs and the goods/services as registered and applied for. If the holder could show that the Portuguese public were aware of its msign and that it already coexisted with opponent’s mark then this would have an impact on the current deliberations, however, no such evidence has been filed. Therefore, the applicant’s argument must be set aside.

Therefore, taking into account the visual and aural similarities, at least part of the relevant public might be led to believe that the identical and similar goods come from the same undertaking or economically linked undertakings, even with a higher than average degree of attention.

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

Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public, namely the professionals in the medical field.

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.

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 holder 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

Martin MITURA

Alexandra APOSTOLAKIS

Ric WASLEY

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.