OPPOSITION No B 2 712 472

Probi AB, Forskarbyn Ideon, 223 70 Lund, Sweden (opponent), represented by Advokatbyrån Gulliksson AB, Carlsgatan 3, 211 20 Malmö, Sweden (professional representative)

a g a i n s t

Menssana AG, Am Bahnhof 1, 74670 Forchtenberg, Germany (applicant), represented by Haver & Mailänder Rechtsanwälte Partnerschaft mbB, Lenzhalde 83-85, 70192 Stuttgart, Germany (professional representative).

On 27/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 712 472 is upheld for all the contested goods.

2.        European Union trade mark application No 15 402 852 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 15 402 852. The opposition is based on, inter alia, European Union trade mark registration No 7 449 051. 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 European Union trade mark registration No 7 449 051.

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1. The goods

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

Class 5:        Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth; dental wax; disinfectants; preparations for destroying vermins; fungicides, herbicides; bacteriological preparations and preparations of microorganisms for medical and veterinary use, namely probiotic bacteria and bacteria cultures being ingredients for dietetic substances for pharmaceutical, medical and veterinary use; media for bacteriological cultures.

Class 32:        Fruit drinks, fruit juices.

The contested goods are the following:

Class 5:        Pharmaceutical preparations, dietetic substances adapted for medical use; healthcare preparations; nutritional supplements; vitamin preparations in the form of granules, powders, emulsions, dragees, capsules, juices, sweetmeats, drops; dietetic foods and/or food supplements not adapted for medical use with a base of proteins and/or amino acids and/or fats and/or fatty acids and/or carbohydrates or roughage, including with added soya goods, including with added vitamins.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘including’, used in the applicant’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

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.

Pharmaceutical preparations, dietetic substances adapted for medical use are identically contained in both lists of goods.

The contested healthcare preparations include or overlap with the opponent’s pharmaceutical preparations to the extent that the contested goods may consist of pharmaceutical products. Therefore, they are identical.

The contested nutritional supplements are substances intended to provide nutrients that are claimed to have a biologically beneficial effect. These goods include, as a broader category, the opponent’s dietetic substances adapted 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.

The contested vitamin preparations in the form of granules, powders, emulsions, dragees, capsules, juices, sweetmeats, drops are nutritional supplements that provide vitamins in various forms. These goods overlap with the opponent’s dietetic substances adapted for medical use because the opponent’s goods can consist of vitamin preparations and the contested goods can have medical applications. Therefore, they are identical.

The contested dietetic foods and/or food supplements not adapted for medical use with a base of proteins and/or amino acids and/or fats and/or fatty acids and/or carbohydrates or roughage, including with added soya goods, including with added vitamins are foods and other substances intended to fulfil specific nutritional needs without treating diseases. These goods are at least similar to the opponent’s dietetic substances adapted for medical use. Admittedly, the contested goods are not designed to treat medical conditions, as the opponent’s goods are; however, their general purpose is the same, that is, to improve the health and wellbeing of consumers. Moreover, these goods have the same public and distribution channels and may be manufactured by the same undertakings.

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 are directed at both the public at large and healthcare professionals.

Regarding the pharmaceutical and healthcare preparations, it is apparent from the case-law that, insofar as these goods 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.

Regarding the other goods, the degree of attention of the public will vary from average to high depending on whether the goods – which are, essentially, food supplements, vitamins and dietary preparations – are or are not for medical use (04/03/2015, T-543/13, PRANAYUR, EU:T:2015:134, § 25, referring to goods in Class 5 not for medical use; 10/02/2015, T-368/13, ANGIPAX, EU:T:2015:81, § 42-46, referring to dietetic products for medical purposes).

3. The signs

PROBI	PROBIDOC
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The element ‘DOC’ of the contested sign is meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, such as the public in the United Kingdom, Ireland and Malta.

The earlier mark is the word mark ‘PROBI’, which has no meaning for the relevant public and is, therefore, distinctive.

The contested sign is also a word mark, ‘PROBIDOC’. As a general rule, dissecting a mark into separate elements is not appropriate unless the relevant public will clearly perceive the components in question as separate elements. This may happen, for instance, when a word element can be identified as such because of its clear meaning. Consumers perceiving a complex verbal sign will break it down into elements which, for them, suggest a concrete meaning or which resemble words known to them (06/10/2004, T-356/02, Vitakraft, EU:T:2004:292, § 51, 13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57). In the present case, the relevant public will easily identify the word ‘DOC’ in the contested sign due to its clear meaning, that is, ‘doctor’ (information extracted from Oxford Dictionaries on 26/07/2017 at https://en.oxforddictionaries.com/definition/doc). This element has a weak distinctive character, since it alludes to the health-related nature of the relevant goods. Therefore, it has a secondary relevance in the present comparison. The element ‘PROBI’ will be perceived as meaningless and is therefore distinctive.

Visually and aurally, the signs coincide in the letters/sounds ‘PROBI’ and differ in the weak, and therefore less relevant, element ‘DOC’ 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. Therefore, consumers are likely to focus more on the initial, distinctive part of the contested sign, ‘PROBI’, than on its final and, moreover, weak part.

In view of the above and also of the fact that the earlier mark is fully included in the contested sign, the signs are visually and aurally highly similar.

Conceptually, the earlier mark and the first part of the contested sign, ‘PROBI’, lack any meaning for the public in the relevant territory, while the weak verbal element ‘DOC’ in the contested sign will be understood as explained above. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar. However, this circumstance must be evaluated in the context of the weak distinctive character of the differing element.

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 covered by the trade marks in dispute are partly identical and partly similar. They target both the general and a professional public, and the public’s degree of attention will vary from average to high depending on the nature of the goods in question, as seen above. The distinctiveness of the earlier mark must be seen as normal.

The signs are visually and aurally similar to a high degree, because the earlier mark is fully included in the first (and most relevant) part of the contested sign and because its differing element, ‘DOC’, has a weak distinctive character and therefore plays a secondary role in the present comparison.

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).

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. Considering all the above, the Opposition Division finds that the relevant public could believe that the goods came from the same undertaking or from economically-linked undertakings.

Therefore, given that the only difference between the signs is confined to a secondary element, the Opposition Division considers that there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 7 449 051. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right European Union trade mark registration No 7 449 051 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

Andrea VALISA

Orsola LAMBERTI

María Clara IBÁÑEZ FIORILLO

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.