THE BOARDS OF APPEAL
DECISION of the Fifth Board of Appeal of 8 March 2017
In Case R 720/2016-5
ABOCA S.p.A. SOCIETA' AGRICOLA Frazione Aboca, 20 52037 Sansepolcro (Arezzo) Italy IR Holder / Appellant represented by Dr. Modiano & Associati S.p.A., Via Meravigli, 16, 20123 Milano, Italy
v
Velinor AG c/o Dr. iur. Adrian von Segesser Kapellplatz 1 6004 Luzern Switzerland Opponent / Respondent represented by Bletry & Associés, 82, boulevard de Sébastopol, 75003 Paris, France
APPEAL relating to Opposition Proceedings No B 2 442 187 (International Registration designating the European Union No 1 193 050)
THE FIFTH BOARD OF APPEAL
composed of G. Humphreys (Chairperson), A. Pohlmann (Rapporteur) and V. Melgar (Member)
Registrar: H. Dijkema
gives the following
Language of the case: English
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Decision
Summary of the facts
1 By an application filed on 22 February 2013, ABOCA S.p.A. SOCIETA'
AGRICOLA (‘the IR holder’) sought to register the figurative as amended
2
for goods in Classes 3, 5, 10, 29 and 30, among them the following (‘the goods at issue’):
Class 5 – Single-dose honey based preparations for enemas; single-dose preparations for enemas based on honey mixtures and plants or herb extracts and complexes; rectal honey based solutions for micro enemas; rectal solutions based on honey mixtures and plants or herb extracts and complexes for micro enemas; medicinal preparations [named "medical devices" in accordance with the Community Directive 93/42/EEC] for the treatment of constipation; enema preparations for rectal use; ointments for medical purposes; pomades for medical purposes; gels for medical purposes; medicinal herbs; mixtures of medicinal herbs and natural substances; honey mixtures and plants or herb extracts and complexes for medical purposes; pharmaceutical preparations for the treatment of pathologies related to the gastrointestinal tract; sanitary preparations for the treatment of pathologies related to the gastrointestinal tract; dietetic food and substances adapted for medical or veterinary use; food for babies; dietary supplements for humans; plasters; materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides.
2 The application was published on 21 February 2014.
3 On 21 November 2014, Velinor AG (‘the opponent’) filed an opposition against the registration of the published mark applied for, for as amended goods, namely goods in Class 5.
4 The grounds of opposition were those laid down in Article 8(1)(b) EUTMR.
5 The opposition was based on the following earlier right:
– International registration for the word mark ‘MOVILAX’ No 1 061 598, registered on 6 December 2010, in Class 5, for ‘pharmaceutical goods’ designating, inter alia, the Benelux, the Czech Republic, Denmark, Germany, Greece, France, Italy, Cyprus, Latvia, Hungary, Austria, Romania, Slovenia, Slovakia, Finland, Sweden and the United Kingdom.
6 By decision of 24 February 2016 (‘the contested decision’), the Opposition Division partially upheld the as amended on the grounds that there was as amended likelihood of confusion, for the goods listed above at paragraph 1.
7 It gave, in particular, the following grounds for its decision:
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– The contested ‘single-dose honey based preparations for enemas; single- dose preparations for enemas based on honey mixtures and plants or herb extracts and complexes; rectal honey based solutions for micro enemas; rectal solutions based on honey mixtures and plants or herb extracts and complexes for micro enemas; medicinal preparations [named "medical devices" in accordance with the Community Directive 93/42/EEC] for the treatment of constipation; enema preparations for rectal use; ointments for medical purposes; pomades for medical purposes; gels for medical purposes; medicinal herbs; mixtures of medicinal herbs and natural substances; honey mixtures and plants or herb extracts and complexes for medical purposes; pharmaceutical preparations for the treatment of pathologies related to the gastrointestinal tract’ are all pharmaceutical and medical preparations or substances included in the broad category of the opponent’s ‘pharmaceutical products’. Hence, they are deemed identical.
– The contested ‘sanitary preparations for the treatment of pathologies related to the gastrointestinal tract’ have the same purpose, of treating, preventing or alleviating the symptoms of diseases, such as the opponent’s ‘pharmaceutical products’. The goods have the same distribution channels, target the same end-users and usually originate from the same producers. Therefore, the goods are similar to a high degree.
– The remaining contested goods (except for ‘herbicides’) are similar to varying degrees to the earlier mark’s pharmaceuticals. The contested ‘herbicides’ refer to substances designed to protect the environment, and in particular crops against undesirable plants. Thus, the objective of such a product is entirely separate from the objective of the opponent’s goods which are to protect human health and it is well known that the active substances which they contain are not generally related to those used in ‘pharmaceutical products’. In addition, the distribution channels are also different. Lastly, they are not in competition with, or complementarity to, pharmaceutical products. Therefore, they must be considered dissimilar to the opponent’s ‘pharmaceutical products’.
– The goods found to be identical or similar to varying degrees are directed at the public at large as well as business customers with specific professional knowledge or expertise, namely health professionals. It is likely that the public will display a relatively high degree of attention when purchasing the aforementioned goods, given that they may affect their state of health.
– As regards the comparison of the signs, visually, both signs have the same lengths and coincide in five out of seven letters: ‘M—ILAX’. As a consequence, they begin with the same letter ‘M’ and end with the same sequence ‘ILAX’. The signs are highly similar visually. Aurally, the signs will be pronounced with the same ternary rhythm. Moreover, their pronunciation coincides in the sound of the first letter ‘M’ as well as the ending sequence ‘ILAX’ present identically in both signs. On the other hand, the pronunciation differs in the sound of the second and third letters, respectively ‘OV’ for the earlier mark and ‘EL’ for the contested mark. As a consequence, the first two syllables of the trade marks present perceivable
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dissimilarities despite their common letters: ‘MOVI’/’MELI’. The signs are considered similar to an average degree.
– Conceptually, both the earlier sign and the verbal element of the contested sign do not exist as such in any of the official languages spoken in the relevant territory. However, a part of the public will understand the verbal element ‘LAX’, present in both trade marks, as referring to the word ‘laxative’, namely a ‘medicine tending to stimulate or facilitate evacuation of the bowels’. Likewise, the element ‘MOVI’ of the earlier mark may refer to the concept of ‘movement’ for a part of the relevant public as it is a Latin verb meaning ‘to move’. The element ‘MELI’ of the contested mark may refer to the concept of ‘honey’ for the Greek-speaking part of the public, as it is the transliteration of its Greek equivalent ‘μέλι¡’.
– For part of the public for whom neither of the signs has any meaning, since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity between the signs. As regards the part of the relevant public who understands the meaning of the element ‘MOVI’ and/or ‘MELI’ but not the component ‘LAX’, the signs are conceptually not similar or dissimilar, depending on the public understanding one or both of the aforementioned elements. That being said, it must be borne in mind that the element ‘MELI’ is descriptive in relation to some of the goods for the part of the public who will understand it. Hence, the impact of any conceptual dissimilarity arising from that element for this particular part of the relevant public has to be lessened to that extent in the present comparison. As for the part of the public who will understand the reference to the concept of ‘laxative’, the signs will be conceptually similar. However, here again this conceptual similarity is not of particular importance in the present assessment to the extent that this element will appear weak in relation to some of the relevant goods for part of the public who will understand it.
– The distinctiveness of the earlier mark is seen as normal.
– The differences stemming from the differing letters and stylisation of the contested mark do not outweigh the similarities between the signs. Consequently, the public could believe that the goods come from the same undertaking or from an economically-linked undertaking. Bearing in mind that some of the contested goods are identical or similar to varying degrees, there is a likelihood of confusion between the signs.
– It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to varying degrees to those of the earlier trade mark.
8 On 19 April 2016, the IR holder filed an appeal against the contested decision, requesting that the decision be set aside as amended accepted. The statement of grounds of the appeal was received on 16 June 2016.
9 In its observations in reply received on 17 August 2016, the opponent requests
that the appeal be dismissed.
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Submissions and arguments of the parties
10 The arguments raised in the statement of grounds may be summarized as
follows:
– The marks at issue are not sufficiently similar to create a risk of confusion
amongst relevant consumers.
– In fact, there are substantial visual differences between the IR holder’s EU designation and the opponent’s mark. The latter is a word mark written in standard characters while the contested one is written in an original font and with an original graphic shape.
– In addition to the graphic differences between the signs, they are also clearly different in their initial parts (‘MELI’ vs. ‘MOVI’), an important difference, given that the beginning of a mark has a significant influence on the general impression given by the sign and may be capable of excluding similarity.
– Contrary to what the Office stated, the different second and third letters (‘EL’ for the IR holder’s mark and ‘OV’ for the opponent’s mark) have a clear and evident different visual impact on the overall impression of the trade marks. They are evidently different in terms of shape and form.
– The final part of the signs, i.e. the verbal element ‘LAX’, is endowed with a very limited degree of distinctive character (if any) and it has very little weight in the overall impression conveyed by the mark. In fact, the word ‘LAX’ has a clear meaning known all over the world owing to the fact that it is widely used for indicating ‘laxatives’, and not just for a part of the public.
– The average consumer’s attention would be caught by the verbal components ‘MELI’ and ‘MOVI’, which are the distinctive and dominant elements of the respective trade marks, in addition to being the first parts of the two marks.
– Moreover, the pronunciation of the marks in conflict will be extremely
different in their initial part ‘MELI’ vs. ‘MOVI’.
– The overall phonetic impression produced by the conflicting marks is
different and therefore there is no phonetic similarity between them.
– Independently from the meaning of the verbal components ‘MELI’ and ‘MOVI’, the clear and evident visual and phonetic differences between the signs will suffice to exclude any likelihood of confusion and association between them.
– The opponent’s sign claims goods in Class 5 without any indication of their specific purpose. As a consequence, all the specific goods covered by the opposed EU designation in Class 5 cannot be considered as comprised in the generic ‘pharmaceutical goods’ claimed by the opponent’s mark.
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– Numerous trade marks containing the final sequence of letters ‘LAX’ and covering, among others, laxatives in Class 5 exist both in the EUIPO’s Register and in the register of international trade marks.
– The average consumer of the signs in conflict has a high degree of attention given the nature of the goods in question and is perfectly able to distinguish the opponent’s goods from the IR holder’s.
– The opponent’s sign ‘MOVILAX’ has a low degree of distinctiveness due to it being made up of two weak components (‘MOVI’ and ‘LAX’); therefore, the trade marks in conflict can coexist even more so without a risk of confusion.
11 The arguments raised in reply to the appeal may be summarized as follows:
– The contested sign is not a device mark. Its font is not original, the letters are classic capital letters which are perfectly legible and understandable.
– The marks apply to pharmaceutical goods, where the verbal elements are the
most important ones.
– From a phonetic point of view, the resemblance between the signs is also very strong as they share the same rhythm of three syllables with the same beginnings and endings.
– As to the ending ‘LAX’, there is no indication that it would be perceived as
‘meaning of laxative’, despite the examples quoted by the IR holder.
– As for the comparison of the goods in Class 5, the fact that the opponent’s goods contain no indication of their specific purposes has no effect on their comparison, as the specific goods are comprised in the generic goods claimed.
Reasons
12 The appeal complies with Articles 58, 59 and 60(1) EUTMR and Rules 48 and
49 CTMIR. It is, therefore, admissible.
13 The appeal is also well founded.
On the likelihood of confusion
14 Article 8(1)(b) EUTMR provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with, or similarity to, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
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15 The risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. The likelihood of confusion must be assessed globally, according to the perception which the relevant public has of the signs and the goods or services in question, account being taken of all factors relevant to the circumstances of the case, including the interdependence between the similarity of the signs and that of the goods or services covered (see 09/07/2003, T-162/01, Giorgio Beverly Hills, EU:T:2003:199, § 30 to 33 and the case-law cited therein).
16 For the purposes of applying Article 8(1)(b) EUTMR, a likelihood of confusion presupposes both that the two marks are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see 22/01/2009, T-316/07, easyHotel, EU:T:2009:14, § 42 and the case-law cited therein).
The relevant public
17 The earlier mark is protected in Benelux, the Czech Republic, Denmark, Germany, Greece, France, Italy, Cyprus, Latvia, Hungary, Austria, Romania, Slovenia, Slovakia, Finland, Sweden and the United Kingdom. The perception of the mark by the consumer of the goods in those territories will be taken into account.
18 The goods covered by the conflicting marks are pharmaceutical products and sanitary preparations, in particular those for the treatment of pathologies related to the gastrointestinal tract, dietetic food and substances adapted for medical or veterinary use, food for babies, dietary supplements for humans, plasters, materials for dressings, material for stopping teeth, dental wax, disinfectants, preparations for destroying vermin and fungicides.
19 Most of the conflicting goods are directed at a general public and at a professional public, for example, healthcare professionals or pharmacists. Other products such as food for babies are, in principle, everyday consumer products aimed mainly at the general public (13/05/2015, T-169/14, Koragel / CHORAGON, EU:T:2015:280, § 26). With regard to both groups, the perception of the reasonably well informed, observant and circumspect consumer has to be taken into account (05/04/2006, T-202/04, Echinaid, EU:T:2006:106, § 23).
20 The average consumer’s level of attention is likely to vary according to the category of goods or services in question (see 07/10/2010, T-244/09, Acsensa, EU:T:2010:430, § 18 and the case-law cited therein). As regards pharmaceuticals and sanitary preparations, the level of attention of the relevant public composed of professionals and end consumers will be relatively high in relation to those goods (28/10/2010, T-131/09, Botumax, EU:T:2010:458, § 25, 65). The general public is assisted in their choice by highly qualified professionals (see, to that effect, 26/04/2007, C-412/05 P, Travatan, EU:C:2007:252, § 61; 16/12/2010, T-363/09, Resverol, EU:T:2010:538, § 24 ; 05/04/2006, T-202/04, Echinaid, EU:T:2006:106, § 29). A high level of attention is also applied to dietetic products in general and substances adapted for medical or veterinary use (15/12/2009, T-412/08, Trubion, EU:T:2009:507, § 28).
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21 Moreover, by analogy with the case-law cited above, it can be assumed that the professional public will display a high degree of attentiveness with regard to plasters and materials for dressings, disinfectants, food for babies, preparations for destroying vermin, fungicides, material for stopping teeth and dental wax (13/05/2015, T-169/14, Koragel / CHORAGON, EU:T:2015:280, § 37).
22 Products which concern the health of final consumers or that of their domestic animals, such as sanitary preparations for medical purposes, dietetic substances adapted for medical or veterinary use, plasters and materials for dressings and disinfectants, will receive a heightened level of attention from those same consumers (11/06/2014, T-281/13, Metabiomax, EU:T:2014:440, § 30-32 and the case-law cited). Similarly, as the Court has already held, since it is necessary for the well-being and health of children, and moreover those of a young age, food for babies is likely to be the subject of a level of attention from consumers which is at least above average, even if it is an everyday consumer product marketed by large retailers (22/05/2012, T-546/10, Milram, EU:T:2012:249, § 27).
23 The same is true of preparations for destroying vermin and fungicides. First, consumers will pay particular attention to the effectiveness of those goods which they buy to protect themselves against the presence, in their environment, of harmful or undesirable living organisms. Secondly, the average consumer is aware that those goods may present health risks because of their biocidal properties (13/05/2015, T-169/14, Koragel / CHORAGON, EU:T:2015:280, § 39).
24 Therefore, it must be concluded that the level of attention of the relevant public
for all the goods at issue will be at least above average.
On the comparison of the goods
25 The Board endorses the Opposition Division’s findings that the contested goods ‘single-dose honey based preparations for enemas; single-dose preparations for enemas based on honey mixtures and plants or herb extracts and complexes; rectal honey based solutions for micro enemas; rectal solutions based on honey mixtures and plants or herb extracts and complexes for micro enemas; medicinal preparations [named "medical devices" in accordance with the Community Directive 93/42/EEC] for the treatment of constipation; enema preparations for rectal use; ointments for medical purposes; pomades for medical purposes; gels for medical purposes; medicinal herbs; mixtures of medicinal herbs and natural substances; honey mixtures and plants or herb extracts and complexes for medical purposes; pharmaceutical preparations for the treatment of pathologies related to the gastrointestinal tract’ are included in the earlier mark’s general term ‘pharmaceutical products’. The goods are identical. Likewise, there is a high degree of similarity between the contested goods ‘sanitary preparations for the treatment of pathologies related to the gastrointestinal tract’ and the earlier pharmaceutical products since the latter also include medicines for the treatment of diseases relating to the gastrointestinal tract.
26 Moreover, the Board agrees with the Opposition Division that the goods ‘dietetic food and substances adapted for medical or veterinary use; dietary supplements
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for humans; plasters; materials for dressings; disinfectants‘ of the contested mark are similar to the pharmaceutical products covered by the earlier mark. All the conflicting goods have the purpose of treating or preventing disease in humans or, in the case of dietetic preparations, animals. Their purpose is similar to that of the opponent’s ‘pharmaceutical products’ insofar as they are used to improve the medical condition of patients (or domestic animals). The relevant public coincides and these goods generally have the same distribution channels. Therefore, these goods are considered similar (see 15/10/2015, R 3057/2014-5 – ALUSPRAY / ALDOSPRAY, § 16-19). The similarity between these products was not contested by the parties.
27 The contested goods ‘preparations for destroying vermin and fungicides’ cover a large spectrum of goods which are not restricted to goods intended for the protection of plants. Thus, the ordinary meaning of the English term ‘vermin’ refers in everyday language to animal species whose presence is considered to be a risk or a nuisance to humans, their environment and human activities. That term may therefore refer, inter alia, to animal species representing a potential risk or nuisance to human health and to the health of domestic animals, for example, a parasitic species or a species which may be the source, by its presence or contact, of various animal and/or human diseases.
28 Consequently, it is possible that some preparations for destroying vermin may be used in order to prevent risks to human or animal health which the species whose elimination is sought represent. In addition, the use of those preparations may be complementary to that of pharmaceutical or veterinary preparations used to treat ailments caused, directly or indirectly, by the presence of those animal species or contact with them. Moreover, some of those preparations, in particular some insecticides, may be sold in pharmacies.
29 Thus, in light of the intended purpose of part of the preparations for destroying vermin, their complementary nature in relation to pharmaceutical or veterinary preparations and their distribution channels, it must be held that there is a low degree of similarity of that category with the goods covered by the earlier mark (13/05/2015, T-169/14, Koragel / CHORAGON, EU:T:2015:280, § 48-51).
30 Similarly, the ordinary meaning, in everyday language, of the English term ‘fungicide’ is not restricted to phytosanitary chemical products. It appears that that term generally refers to any active ingredient used to kill parasitic fungi, without a restriction to a specific sector. Thus, the specialised terms used to refer to treatments for human or animal fungal infections refer to subcategories included in the general notion of ‘fungicide’ rather than to separate categories thereof.
31 Moreover, the Court of Justice has held that fungicides could have a medical or therapeutic purpose (12/07/2012, T-470/09, Medi, EU:T:2012:369, § 36-38). Consequently, for reasons similar to those set out in above, it must be held that there is a low degree of similarity between fungicides and the goods covered by the earlier mark (13/05/2015, T-169/14, Koragel / CHORAGON, EU:T:2015:280, § 52-54)
32 Finally, it should be noted that the contested goods ‘food for babies’ cover a large spectrum of goods, the majority of which are everyday consumer goods
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and which do not have a medical purpose or properties. That said, those goods are nevertheless defined as food which, from a medical point of view, is suitable for consumption by babies who, because of their physiology or for other medical reasons, are not yet able to consume all types of normal food. They are therefore goods which are especially composed in order to safeguard the health of infants and young children. Moreover, it cannot be ruled out that some foods for babies might be complementary to medicines which are administered to them, particularly within the context of the treatment of nutritional deficiencies in young children, in the sense that one is indispensable or important for the use of the other. Lastly, the fact that some foods for babies are sold in pharmacies cannot generally be considered to be insignificant. The distribution channels of the goods concerned may constitute a relevant factor for the purpose of the comparison of those goods. Consequently, in light of a certain connection between some foods for babies and pharmaceutical products and substances in respect of their intended purpose, their method of use and their distribution channels, it must be held that there is a low degree of similarity between those goods (13/05/2015, T-169/14, Koragel / CHORAGON, EU:T:2015:280, § 55-58).
On the comparison of the signs
33 The signs to be compared are:
Contested sign Earlier international registration
10
MOVILAX
34 The relevant territory covers the Member States of the Czech Republic, Denmark, Germany, Greece, France, Italy, Cyprus, Latvia, Hungary, Austria, Romania, Slovenia, Slovakia, Finland, Sweden, the United Kingdom and the Benelux countries.
35 The conflicting marks have to be compared visually, phonetically and conceptually. Such a comparison must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (06/10/2005, C-120/04, Thomson Life, EU:C:2005:594, § 28; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25).
36 Furthermore, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more visual, phonetic or conceptual aspect (02/12/2009, T-434/07, Solvo, EU:T:2009:480, § 31; 13/09/2010, T-149/08, Sorvir, EU:T:2010:398, § 29; 14/04/2011, T-466/08, Acno focus, EU:T:2011:182, § 52).
37 The assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain
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circumstances, be dominated by one or more of its components (12/06/2007, C- 334/05 P, Limoncello, EU:C:2007:333, § 41).
38 The contested sign is a figurative mark consisting of the word ‘MeliLAX’, written in slightly stylised letters. The earlier international registration is the word mark ‘MOVILAX’.
39 The Board will first examine the dominant and distinctive elements of the signs
at issue before evaluating their similarities.
40 The first elements ‘MOVI’ and ‘MELI’ will be perceived as prefixes without any meaning by the relevant public in most Member States of the relevant territory. Although ‘Meli’ will be associated with ‘honey’ by the Greek public, it is unlikely that the public outside this country will understand this term. On the other hand, a significant part of the relevant public will understand the common suffix ‘LAX’ as an abbreviation for ‘laxative’. The Board takes the view that the different beginnings ‘MOVI’ and ‘MELI’ of the conflicting signs play a more important role in the consumer’s perception than the common suffix ‘LAX’, for the following reasons.
41 Firstly, it should be borne in mind that consumers normally attach more importance to the beginnings of words (see, to that effect, 30/11/2011, T-477/10, SE© Sports Equipment, EU:T:2011:707, § 54; 17/03/2004, T-183/02 and T-184/02, Mundicor, EU:T:2004:79, § 81). It is therefore likely that the public will pay more attention to the first elements ‘MOVI’ and ‘MELI’ than to the suffix ‘LAX’ of the conflicting signs.
42 Secondly, a significant part of the relevant public in the European Union will assume that the pharmaceuticals, sanitary preparations and dietetic substances covered by the marks are laxatives or have a laxative effect when being confronted with the suffix ‘LAX’. According to the Oxford English Dictionary, ‘lax’ refers to ‘a laxative medicine’, ‘Looseness of the bowels, diarrhœa (in men and cattle)’ (see http://www.oed.com/view/Entry/106466?rskey=- 8wHidt&result=2&isAdvanced=false#eid). The term ‘laxatives’ and variants exist in most languages of the Member States concerned (French: ‘laxatifs’, Spanish: ‘laxantes’, German: ‘Laxative’, Italian: ‘Lassativi’, Czech: ‘Laxativa’, Dutch: ‘Laxeermiddelen’, Finnish: ‘Laksatiivit’ etc.). The existence of these terms in the different EU languages is a well-known fact, i.e. a fact which is likely to be known by anyone or which may be learnt from generally accessible sources (22/06/2004, T-185/02, Picaro, EU:T:2004:189, § 29).
43 The term ‘LAX’ will be immediately associated with the function of drugs or other preparations for the treatment of constipation (i.e. laxatives) by those consumers. It is therefore hardly surprising that there are other products for the treatment of constipation on the market containing the ending -LAX in their brand name, as demonstrated by the IR holder in its briefs of 11 June 2015 (Exhibit B) and 16 June 2016. To sum up, the suffix ‘LAX’ of the marks is likely to be seen by a considerable part of the relevant public as a suggestive reference to laxatives. This element can therefore not be regarded as the focal point of any comparison of the signs in conflict in this case (see 20/10/2006, R 434/2006-2, IMOLAX / IDROLAX; 14/04/2005, R 632/2004-1, COLAX / CODALAX).
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44 It is with this in mind that the similarity of the conflicting signs has to be
assessed.
45 Visually, the beginnings ‘MOVI’ and ‘Meli’ are completely different. As mentioned above, consumers normally attach more importance to the beginnings of words (see paragraph 41 above). Consequently, the similarities in the endings of the signs are less important.
46 In order to assess the similarity between a figurative mark and an earlier word mark, the particular graphic or stylistic aspects that the earlier mark might adopt are irrelevant. The assessment of the similarity with the earlier word mark, which is the only relevant assessment in the present case, should not be replaced by an assessment of similarity with a figurative element which does not form part of the protection conferred by the earlier registration. It is not because an earlier word mark may adopt a written form in the future which would make it identical or similar to a complex mark applied for that the latter mark must be refused registration (20/04/2005, T-211/03, Faber, EU:T:2005:135, §§ 37-38). Consequently, the stylised form of the letters included in the contested sign adds to the visual differences between the marks.
47 Overall, the visual differences clearly outweigh the similarities between the signs. The Board concludes that the signs are visually similar only to a low degree.
48 As regards the phonetic comparison of the marks, both signs consist of three syllables. However, the first two syllables [mo-vi] versus [me-li] are pronounced differently. The differences between the pronunciation of the first and second syllables of the two marks are significant enough to overcome the similarity caused by the identical ending ‘LAX’. The differences listed above will not be ‘unheard’ by the consumers. Overall, the signs are phonetically similar only to a low degree.
49 Conceptually, consumers perceiving a complex verbal sign tend to break it down into elements which, for him or her, suggest a concrete meaning or which resemble words known to him or her (see judgment 06/10/2004, T-356/02, Vitakraft, EU:T:2004:292, § 51, and 13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57). This mental process of finding or breaking down meaningful elements within a compound, abstract word will help the consumer to remember and recall the sign later and help to reduce the probability of an imperfect recollection. Thus, those consumers who perceive the suffix ‘LAX’ as an abbreviation for ‘laxative’, will identify this part of the conflicting signs as a separate element. For those consumers, the signs will be associated with similar concepts. However, one has to bear in mind that the conceptual similarities refer to a suggestive element in relation to products which are used for the treatment of constipation.
50 A conceptual comparison cannot be carried out for those consumers in the relevant territories who do not associate any element of the conflicting signs with any meaning. Finally, the signs evoke different conceptual associations for those consumers who associate the prefix ‘MOVI’ with ‘move; movement; movimento etc.’ or ‘Meli’ with ‘honey’.
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51 To sum up, the signs are only similar overall to a low degree.
On the global assessment of likelihood of confusion
52 A likelihood of confusion on the part of the public must be assessed globally. That global assessment implies some interdependence between the factors taken into account and in particular similarity between the trade marks and between the goods or services covered. Accordingly, a lesser degree of similarity between these goods or 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; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19). The more distinctive the earlier mark, the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).
53 In the case at hand, the Board concludes that a likelihood of confusion does not exist between the conflicting marks, not even for identical goods: The visually and phonetically different beginnings ‘MOVI’ and ‘Meli’ outweigh any similarity caused by the identical endings, bearing in mind that a) the public tends to focus on the first elements of a trade mark and b) the common suffix ‘LAX’ is perceived by a substantial part of the relevant public as a weak element for the identical or highly similar goods since it will be associated with products which have a laxative effect.
54 Even if a part of the public does not associate the abbreviation ‘LAX’ with ‘laxatives’, the result would still be the same: As mentioned above, the attention of the public is enhanced in relation to the goods at issue (see paragraphs 17-24 above). A highly attentive consumer will be in a position to safely distinguish
the signs ‘MOVILAX’ and ‘
’, even for identical goods.
55 Based on the above, and taking into account the visual and aural discrepancies between the signs, it is found that notwithstanding the partial identity of the conflicting goods there is no risk that relevant consumers – whose attentiveness will be high – would confuse the signs in the sense that they would be led to
believe that the goods covered by the contested sign ‘
’ originate from the opponent being the holder of earlier mark ‘MOVILAX’ or from an undertaking economically linked to it.
56 Accordingly, the appeal must be upheld.
Costs
57 Pursuant to Article 85(1) EUTMR, the opponent, as the losing party, shall bear the fees and costs incurred by the IR holder in the appeal proceedings. Pursuant to Article 85(6) EUTMR, the opponent is, therefore, ordered to reimburse the IR holder the appeal fee of EUR 720 (Annex I of Council Regulation No. 207/2009 as amended by Regulation No. 2015/2424), as well as the costs of professional
08/03/2017, R 720/2016-5, MeliLAX (fig.) / MOVILAX
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representation for the appeal proceedings fixed by the Board at EUR 550 in accordance with Rule 94(7)(d)(v) CTMIR. As the Opposition Division’s decision has been annulled and the result is that the IR holder succeeds on all heads, the Board must also fix the costs of the opposition proceedings. These are fixed at EUR 300 in accordance with Rule 94(7)(d)(ii) CTMIR in respect of the IR holder’s representation costs.
08/03/2017, R 720/2016-5, MeliLAX (fig.) / MOVILAX
Order On those grounds,
THE BOARD
hereby:
1. Annuls the contested decision;
2. Rejects the opposition and accepts the contested EU designation of the
IR for all the goods applied for;
3. Orders the opponent to bear the costs incurred by the IR holder both in the opposition and appeal proceedings to the amount of EUR 1 570.
Signed
G. Humphreys
Signed
A. Pohlmann
Signed
V. Melgar
Registrar:
Signed
H.Dijkema
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08/03/2017, R 720/2016-5, MeliLAX (fig.) / MOVILAX