OPPOSITION No B 2 775 271

Marco Viti Farmaceutici S.p.A., Via Mentana, 38, 36100 Vicenza, Italy (opponent), represented by Barzanò & Zanardo Roma S.p.A., Via del Commercio, 56, 36100 Vicenza, Italy (professional representative)

 

a g a i n s t

Audevard société par actions simplifiée, 42/46 rue Médéric, 92110 Clichy, France (applicant).

On 17/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 775 271 is partially upheld, namely for the following contested goods:

Class 5:        Dietary supplements and dietetic preparations; hygienic preparations and articles; dental preparations and articles; medical and veterinary preparations and articles; pest control preparations and articles.

2.        European Union trade mark application No 15 541 923 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 541 923. The opposition is based on European Union trade mark registration No 12 028 551. 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.

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1. The goods and services

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

Class 3:        Massage gels other than for medical purposes; lotions for cosmetic purposes; cosmetic preparations for baths; douching preparations for personal sanitary or deodorant purposes [toiletries]; sunscreen preparations; cosmetic preparations for slimming purposes; cosmetic preparations for skin care.

Class 5:        Pharmaceutical and veterinary preparations; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals: amino acids for medical purposes; antioxidant pills; enzymes for medical purposes; medicinal herbs; balsamic preparations for medical purposes; casein dietary supplements; enzyme dietary supplements; wheat germ dietary supplements; glucose dietary supplements; lecithin dietary supplements; yeast dietary supplements; pollen dietary supplements; propolis dietary supplements; protein dietary supplements; protein supplements for animals; mineral food supplements; iodine for pharmaceutical purposes; cod liver oil; chemico-pharmaceutical preparations; pharmaceutical preparations; propolis for pharmaceutical purposes, dietetic substances adapted for medical use; herbal teas for medicinal purposes.

Class 41:        Education; providing of training; arranging and conducting of conferences; arranging and conducting of congresses; arranging and conducting of colloquiums; arranging and conducting of seminars; arranging and conducting of symposiums; arranging and conducting of workshops [training]; vocational guidance [education or training advice].

The contested goods are the following:

Class 1:        Starches for use in manufacturing and industry; detergents for use in manufacture and industry; fertilisers, and chemicals for use in agriculture, horticulture and forestry; putties, and fillers and pastes for use in industry; unprocessed plastics; filtering media of chemical and non-chemical substances included in the class; chemical preparations and materials for film, photography and printing; unprocessed and synthetic resins; salts for industrial purposes; chemical substances, chemical materials and chemical preparations, and natural elements; adhesives for use in industry; gluconic acid; concentrated proteinic acid for use in cheese making; succinic acid; acids for use in the preparation of animal foodstuffs; fatty acids; polyunsaturated fatty acids; chemical additives for food; additives (chemical -) for use in the preparation of animal foodstuffs; flavour improvers for coffee; flavour improvers for tea; chemical additives for meat processing; chemical additives for use as binding agents for feed pellets; agar-agar; defoamers for use in the food processing industry; finings; fining agents for beer; fining agents for cider; preservatives for animal feeds [chemical]; release agents for use in baking; gelling agents; stabilising agents for use in food; albumin [animal or vegetable, raw material]; animal albumen [raw material]; malt albumen; malt albumen [raw material]; casein for the food industry; wine finings; food-grade wax for the food industry; metal plating compositions; food preservative compositions; dough stabilizers; cream of tartar for the food industry; cream of tartar for chemical purposes; cream of tartar for industrial purposes; albumen; iodised albumen; alcohol for pickling foodstuffs; alginates for the food industry; flour improvers; dough conditioners; flavour improvers for foodstuffs; chemical seasonings [for food manufacture]; oenological bactericides [chemical preparations for use in wine making]; meat tenderizers [preparations]; bacteria for use in food manufacture; ammonium bicarbonate; sodium bisulphite; calcium bisulphide; caffeine and caffeine extract used in industry; carrageenin for use in the manufacture of food; bacterial cultures for addition to food products; lactic cultures for the food industry; diastase for industrial purposes; diglycerides; enzymes for use in drinks; sulphur dioxide for use as additives to beverages to prevent spoilage; enzymes for use in the bakery industry; enzymes for use in ice cream; enzymes to assist in digestion for use in the manufacture of animal feeds; fungal enzymes for use in brewing; enzymes for use in foodstuffs; enzymes for food or drinks; enzymes for use in flavouring; enzymes for the food industry; enzymes for the brewing industry; enzymes for use in the manufacture of nutraceuticals; enzymes for use in the manufacture of pet food; enzymes for use in the manufacture of fruit juice; enzymes for industrial purposes; artificial sweeteners [chemical preparations]; low calorie sweeteners [artificial, chemical]; emulsifiers for use in the food processing industries; emulsifiers for use in the manufacture of foods; emulsifiers for food preparations; emulsifiers for sausages; enzymes for use in the processing of food by-products; enzymes for use in the processing of sugar cane; enzymes for use in the dairy industry; food esters, other than for pharmaceutical purposes; diaccetyl tartaric acid esters of glycerides; esters of polyols for use as ingredients in foodstuffs; tea extracts for the food industry; oilseed flour for industrial use; potato flour for industrial purposes; tapioca flour for industrial purposes; flour for industrial purposes; milk ferments [bacteria preparations] used in making foodstuffs; milk ferments for the food industry; milk ferments for chemical purposes; milk ferments for industrial purposes; ferments for chemical purposes; probiotic bacterial formulations [other than for medical use]; galactose for industrial purposes; industrial gases for use in food processing; gliadin for industrial purposes; carbohydrates used as an ingredient in nutraceuticals; glucose for the food industry; glucose for industrial purposes; gluten for industrial purposes; erythritol; gluten for the food industry; spray dried gum acacia for use in the manufacture of drinks; spray dried gum acacia for use in the manufacture of foodstuffs; brominated vegetable oil for use as an emulsifier in the manufacture of food; oils for the preservation of food; isoflavone for preparing foodstuffs; lactitol to be used in the manufacture of foodstuffs; lactose [raw material]; lactose for the food industry; lactose for industrial purposes; lecithin derived from soya for use in the manufacture of foodstuffs; lecithin for use in manufacture; lecithin for the food industry; lecithin for use in the manufacture of chocolate; lecithin for industrial use in the manufacture of food products; maltitol; maltodextrins for use in manufacture; monoglycerides; nutrients for algae; pectin for the food industry; polydextrose for use in low-calorie foods; sugar alcohols; polysaccharides for use in flavouring; polysaccharides for use in colouring; polysaccharides for use in fermentation; polysaccharides for use in preservation; polysaccharides for use in the manufacture of foodstuffs; polysaccharides for use in binding; oxidised saccharides in solution form; oxidised saccharides in dry form; glucose powder for industrial purposes; chemicals for use in brewing; chemicals for use in the making of wine; chemicals used in the manufacture of confectionery; chemical products for stabilising foodstuffs; chemical products for preserving the freshness of feedstuffs; chemical products for preserving the freshness of fruit; chemical products for preserving the freshness of vegetables; preparations for stimulating cooking for industrial purposes; preservatives for maintaining the viability of micro-organisms in cultures [industrial]; meat tenderizers for industrial purposes; biological preparations, other than for medical or veterinary purposes; chemical preparations for use in the food industry; chemical preparations for the clarification of beverages; purification preparations; enzyme preparations for use in the alcohol industry; enzyme preparations for the food industry; enzyme preparations for industrial purposes; glucose preparations for industrial purposes; saccharide preparations, other than for medical use; proteins for the food industry; chemical preparations for smoking meat; beer-clarifying and preserving agents; beer preserving agents; preparations for the separation of greases; must-fining preparations; protein [raw material]; protein for food for human consumption [raw material]; food protein as a raw material; protein for use in the manufacture of foodstuffs; protein prepared from soya beans for use in the manufacture of foodstuffs; raw proteins for use in industry; raw proteins for use in manufacture; wheat proteins [raw material]; wheat proteins for industrial use; proteins for human foodstuffs which form gels as part of the manufacturing process; proteins for human foodstuffs which form emulsions as part of the manufacturing process; saccharin; glucose syrups for industrial purposes; produce stabilizer used for preserving foods; chemical substances absorbed on carriers for use as food preservatives; chemicals for use in fermenting; chemical substances for preserving and emulsifying foodstuffs; chemical substances for preserving foodstuffs; chemical substances for use as fat replacements; chemical substances for use as food ingredients; sugar substitutes (chemical -); sulfite for preserving food; sodium tartrate; trypsin; vitamins for the food industry.

Class 5:         Dietary supplements and dietetic preparations; hygienic preparations and articles; dental preparations and articles; medical and veterinary preparations and articles; pest control preparations and articles.

Class 31:        Foodstuffs and fodder for animals; live animals, organisms for breeding; bedding and litter for animals; agricultural and aquacultural crops, horticulture and forestry products.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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 1

The contested goods for which protection is sought in this Class (see listing above) are chemical products used in industry, science and photography, as well as in agriculture, horticulture and forestry, or other general applications. These goods are all dissimilar to the opponent’s goods and services in Classes 3, 5 and 41.

As regards the closest opponent’s goods in Classes 3 and 5, although major chemical companies are usually involved in the production of all kinds of basic chemicals, speciality chemicals and life science products, including pharmaceuticals, as well as consumer products, such as cosmetics, the mere fact that the producer of these goods may coincide and that they may be broadly classified as chemical products is not sufficient to find them similar, owing to the differing specific purposes of these chemicals and to their differing publics, methods of use and distribution channels.  In addition, these goods are neither in competition with each other.

The mere fact that one product is used for the manufacture of another is not sufficient
in itself to show that the goods are similar, as their nature, purpose, relevant public
and distribution channels may be quite distinct (13/04/2011, T-98/09, T Tumesa
Tubos del Mediterráneo S.A., EU:T:2011:167, § 49-51). According to case law, raw
materials that are subject to a transformation process are essentially different from
the finished products that incorporate, or are covered by, those raw materials, in
terms of their nature, aim and intended purpose (see, to that effect, 03/05/2012,
T-270/10, Karra, EU:T:2012:212, § 53). Furthermore, they are not complementary,
since one is manufactured with the other, and raw material is in general intended for
use in industry rather than for direct purchase by the final consumer (09/04/2014,
T-288/12, Zytel, EU:T:2014:196, § 39-43)

Consequently, although the opponent’s goods in Classes 3 and 5 are usually
combinations of various chemicals, they are not, in principle, considered similar to
the contested goods in Class 1. The purpose as a finished product differs from that
of goods in Class 1, which are mainly in their raw, unfinished state and not yet mixed
with other chemicals and inert carriers into a final product. The finished products in
Classes 3 and 5 usually also target a different public and do not have the same
distribution channels. Therefore, the contested goods in Class 1 are
dissimilar to all the goods in Classes 3 and 5 for which the earlier mark is registered.

A fortiori, the opponent’s earlier educational services in Class 41 differ even more from the contested goods in Class 1. In addition to the fact that services are essentially different in nature to goods since they are intangible, while goods are tangible, these goods and services also differ in methods of use, in distribution channels and are not in competition with each other. Furthermore, there is no relationship of complementarity between the contested goods and the earlier services, and they will be provided by different companies. It is therefore unlikely that consumers will attribute the same origin to these goods and services; consequently, also these services are dissimilar to the contested goods.

Contested goods in Class 5

The contested dietary supplements and dietetic preparations in Class 5 are also protected under the earlier mark albeit in slightly varying wording, namely as dietetic food and substances adapted for medical or veterinary use and dietary supplements for humans and animals in the opponent’s Class 5. Therefore, they are identical.

The contested medical and veterinary preparations and articles include, as a broader category, or overlap with, the opponent’s pharmaceutical and veterinary preparations in Class 5. 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 hygienic preparations and articles in Class 5 are similar to the opponent’s douching preparations for personal sanitary or deodorant purposes [toiletries] in Class 3 as they have the same purpose. They can coincide in producer, relevant public and distribution channels.

The contested pest control preparations and articles are similar to the opponent’s pharmaceutical preparations in Class 5 as they have the same purpose. They can coincide in distribution channels. Furthermore they are complementary.

The contested dental preparations and articles are similar to a low degree to the opponent’s pharmaceutical preparations in Class 5; as they can coincide in relevant public and distribution channels.

Contested goods in Class 31

The contested foodstuffs and fodder for animals; bedding and litter for animals are dissimilar to all the opponent’s earlier goods and services in Classes 3, 5 and 41. As regards the closest goods of the opponent, veterinary preparations in Class 5, these goods differ in nature, distribution channels and producers; they are not complementary nor in competition with each other. The same reasoning applies to the remaining goods and services of the opponent in Classes 3, 5 and 41 that are even more distant from the contested goods.  

The contested live animals, organisms for breeding; agricultural and aquacultural crops, horticulture and forestry products are dissimilar to all the opponent’s earlier goods and services in Classes 3, 5 and 41. They differ in nature and purpose, in method of use and they do not coincide in distribution channels and producers. Furthermore, these goods are not complementary nor in competition with each other.

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 (to various degrees) are directed at the public at large and at business customers with specific professional knowledge or expertise in the specific field.

The degree of attention may vary from average to high; in particular, 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). The same goes for goods that affect the consumer’s health.

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

MASSIGEN	MATRIGEN
Earlier trade mark	Contested sign

The relevant territory is the European Union.

Both signs do not have a meaning for a significant part of the public taken into account as detailed above under b); consequently, their distinctiveness is average.  

 

Visually, the signs coincide in ‘MA**IGEN’. However, they differ in the consonant in the third and fourth position in each mark, namely the letters ‘-SS-’ in the earlier mark and the letters ‘-TR-’ in the contested sign. The first two letters and the ending parts of the conflicting marks are identical. The signs share the same number of letters and thus length. Therefore, 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 initial syllable ‘MA-’ and in the sound of the last letters ‘IGEN’, present identically in both signs. Moreover, the signs have the same number of syllables, rhythm and intonation. The pronunciation differs in the sound of the letters ‛SS’ of the earlier mark and in the sound of the letters ‘TR’ of the contested sign. 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 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

The goods are partly identical, partly similar (to various degrees) and partly dissimilar. The goods that are identical or similar target (amongst others) the general public.

The signs are highly similar visually and aurally to the extent that they coincide in six out of eight letters in each mark. The only differing letters are in the middle of the signs, and thus, less noticeable.

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).

Therefore, on an overall assessment, and in particular against the background of the
principle of interdependence, namely that a higher degree of similarity of the signs
may be offset by a lesser degree of similarity of the goods, the high similarity of the
signs, even outweighs the low similarity of the goods being suffice to create a likelihood of confusion within the meaning of article 8(1)(b) EUTMR, including on the part of an average public with a high degree of attention.

Considering all the above, there is a likelihood of confusion on the part of the general public.

Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 12 028 551. It follows that the contested trade mark must be rejected for all the contested goods that are identical or similar (to various degrees).

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful. Furthermore, there is no need to proceed to the comparison of the signs for the professional part of the public in relation to these goods since the outcome does not change.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Oana-Alina STURZA

Edith Elisabeth VAN DEN EEDE

Andrea VALISA

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.