OPPOSITION No B 2 727 462

Walmark A.S., Oldřichovice 44, 73961  Třinec, The Czech Republic (opponent), represented by Baker & Mckenzie, S.R.O., Advokátní Kancelář, Klimentská 46, 110 02  Praha 1, The Czech Republic (professional representative)

a g a i n s t

Merz Pharma GmbH & Co. KGaA, Eckenheimer Landstr. 100, 60318 Frankfurt am Main, Germany (holder).

On 14/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 727 462 is upheld for all the contested goods, namely 

Class 5:        Herbal teas for medical purposes, nutritional supplements, pharmaceutical cold preparations, pharmaceutical preparations, preparations for treating colds, all aforementioned goods except gastrointestinal preparations.

Class 30:        Infusions, not medicinal.

2.        International registration No 1 297 605 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 620.

REASONS:

The opponent filed an opposition against some of the goods of international registration designating the European Union No 1 297 605, namely against all the goods in Classes 5 and 30. The opposition is based on, inter alia, Polish trade mark registration No R.249 059. The opponent invoked Articles 8(1)(b) and 8(5) 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 on Polish trade mark registration No R.249 059.

1. The goods

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

Class 5:        Pharmaceutical products, medicines, vitamins, minerals, mineral food supplements for medicinal purposes, mineral water for medicinal purposes, auxiliary products for medicinal purposes, dietary supplements for medical purposes, dietetic food for medical purposes, dietetic substances adapted for medical use, herbal preparations for medicinal purposes, medicinal herbs, infusions medicinal teas healing, biocides, biological products for medicinal purposes, vaccines, serums, blood products, biotechnology products for medicinal purposes, medical devices, materials for dental treatment, food for babies, plasters, materials dressings, sanitary preparations for medical purposes, disinfectants, veterinary products, preparations for destroying vermin, fungicide, herbicides, chemicals used in medical sciences, diagnostic preparations for medical purposes.

Class 29:        Yogurts, yogurt probiotic, probiotic products, kefir, milk drinks, drinks with a predominance of milk, dairy products, milk, protein foods, dietetic substances adapted for feeding, appetite suppressants for nutrition, diet food, groceries complementary for the purpose of feeding on based proteins, fats, amino acids, fatty acids vitamins, minerals, trace elements, either separately or in combination, as contained in class 29, milk drinks diet for the feeding, milk drinks dietetic nutrition purposes, soups dietetic nutrition purposes, dietetic food products based on processed fruit and vegetables, high-protein concentrates and supplements enriched with vitamins, minerals, amino acids, fatty acids.

Class 30:        Infusions diet for nutrition purposes, dietetic beverages adapted for the purposes of nutrition, dietary beverages based on chocolate, tea, cocoa and coffee adapted for the purposes of nutrition, slimming tea for nutrition, herbal tea slimming for nutrition, probiotic products, food products dietary purposes nutrition supplements for nutrition, food dietary starch for nutrition, candy diet for nutrition, cereal preparations diet for nutrition, diet food based on flour for nutrition purposes, dietetic food products based on oats for feeding, bread diet for nutrition, nutritional supplements for nutrition.

The contested goods are the following:

As a preliminary remark it must be clarified that, in the notice of opposition, the opponent states that it directs the opposition against the following goods in Class 5, namely herbal teas for medical purposes, nutritional supplements, pharmaceutical cold preparations, pharmaceutical preparations, preparations for treating colds without mentioning the remaining limitation all aforementioned goods except gastrointestinal preparations. In this regard the Opposition Division notes that this limitation cannot be omitted when comparing the goods in question because it would enlarge the scope of protection of the contested mark. Consequently, the Opposition Division considers that the opponent directs its opposition against all the goods in Class 5.

Class 5:        Herbal teas for medical purposes, nutritional supplements, pharmaceutical cold preparations, pharmaceutical preparations, preparations for treating colds, all aforementioned goods except gastrointestinal preparations.

Class 30:        Infusions, not medicinal.

Contested goods in Class 5

The contested pharmaceutical cold preparations, pharmaceutical preparations, all aforementioned goods except gastrointestinal preparations, are included in the broad category of the opponent’s pharmaceutical products. Therefore, these goods are identical. 

The contested herbal teas for medical purposes, all aforementioned goods except gastrointestinal preparations, overlap with the opponent’s infusions medicinal teas healing. These goods are identical. 

The contested nutritional supplements, all aforementioned goods except gastrointestinal preparations, are included in the opponent’s dietetic substances adapted for medical use. These goods are identical. 

The contested preparations for treating colds include as a broad category the opponent’s herbal preparations for medicinal purposes. Therefore, these goods are identical. 

Contested goods in Class 30

The contested infusions, not medicinal, include as a broader category the opponent’s infusions diet for nutrition purposes. 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 business customers 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. Taking into account the abovementioned facts, the attention of this part of the public will vary from average (e.g. for infusions, not medicinal) to high.

3. The signs

SINULAN	Sinusan
Earlier trade mark	Contested sign

The relevant territory is Poland.

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 marks are word marks. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether the signs are represented in upper- or lowercase characters. This principle applies to the case at hand.

Both signs are meaningless for the relevant pubic and therefore their inherent distinctiveness is normal.

Since the marks in conflict are word marks, they have no elements that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the majority of their letters, namely, S-I-N-U-A-N., which include their respective beginnings and this factor will have a greater impact on the relevant public as well as their endings.  The signs differ only in one letter ‘L’ of the earlier mark versus ‘S’ of the contested sign, which are placed in towards the end of the signs.  

The consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. Bearing in mind the coincidence in their initial letters, the signs are visually similar to a high degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛S-I-N-U-* -A-N’, present identically in both signs. The pronunciation merely differs in the sound of one letter, namely ‘L’ of the earlier mark versus ‘S’ of the contested sign, placed in the third syllable of each sign. Both signs are composed of three syllables and, though their differing letters ‘L’ and ‘S’ respectively have different sounds, their rhythm and intonation are similar due to the fact that they coincide in most of their letters.

Therefore, 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 of the comparison, the examination of the 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 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

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 goods at issue are identical.

The distinctiveness per se of the earlier mark is normal.

The earlier mark and the contested sign are visually and aurally similar to a high degree and neither of them have any meaning and hence, the conceptual aspect does not influence the assessment of the similarity of the signs.

The signs in dispute coincide in the majority of their letters, in particular their respective beginnings are identical and this fact will have a great impact on the relevant public when assessing a likelihood of confusion. The difference between the signs is limited to a single letter ‘L’ of the earlier mark versus ‘S’ of the contested sign which, though may have different sounds, this fact alone is not sufficient to overweigh the coincidence in the rest of the letters in identical position. Furthermore, these letters are placed in the third syllable of both signs, preceded and followed by coinciding vowels, ‘U’ and ‘A’ which, in addition is where the attention of the relevant public is not normally focused.

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). This principle applies to the case at hand because the conflicting goods are identical.

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 (judgment of 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).

The Opposition Division considers that the visual and aural similarities between the signs are sufficient to lead to a likelihood of confusion between the marks in the relevant territory for identical goods, even considering that the degree of attention of the relevant consumers in relation to the goods at issue may be higher than average.

Therefore, the opposition is well founded on the basis of the opponent’s Polish trade mark registration No R. 249 059. 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/reputation 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 Polish trade mark registration No R.249 059 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).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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

Patricia LÓPEZ FERNÁNDEZ DE CORRES

Monika CISZEWSKA

Liliya YORDANOVA

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.