OPPOSITION No B 2 611 229
Laboratorios Normon, S.A., Ronda de Valdecarrizo, 6, 28760 Tres Cantos (Madrid), España (opponent), represented by Vadimark, S.L., Galería de Vallehermoso, 4 -1º, 28003 Madrid, España (professional representative)
a g a i n s t
“L-Top” Ltd., Afonskaya str., 2, lit. A, St. Petersburg 197341, Russian Federation (holder), represented by Rott, Růzička & Guttmann Patentová, Známková A Advokátní Kancelář, Vinohradská 37/938, 120 00 Praha 2, Czech Republic (professional representative).
On 05/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 611 229 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against all the goods of international registration designating the European Union No 1 236 107. The opposition is based on, inter alia, European Union trade mark registration No 4 385 399. 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 4 385 399.
- The goods
The goods on which the opposition is based are the following:
Class 5: Food for babies.
The contested goods are the following:
Class 5: Dietetic substances adapted for medical use; nutritional supplements; dietary supplements adapted for medical use; mineral food supplements; pharmaceutical preparations and medicines for medical purposes; dietary supplements; albumin dietary supplements; alginate dietary supplements; glucose dietary supplements; casein dietary supplements; lecithin dietary supplements; linseed oil dietary supplements; propolis dietary supplements; protein dietary supplements; protein supplements for animals; royal jelly dietary supplements; pollen dietary supplements; wheat germ dietary supplements; flaxseed dietary supplements; enzyme dietary supplements; gelatine for medical purposes; cod liver oil; cultures of microorganisms for medical and veterinary use; dietetic beverages adapted for medical purposes; albuminous preparations for medical purposes; vitamin preparations; albuminous foodstuffs for medical purposes; dietetic foods adapted for medical purposes; by-products of the processing of cereals for dietetic or medical purposes; steroids; diabetic bread adapted for medical use.
Some of the contested goods are identical or similar to the goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical or similar to those of the earlier mark.
- 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 assumed to be identical or similar are directed at both the public at large and the professional customers with specific professional knowledge or expertise.
The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.
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.
- The signs
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NORMON
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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).
Since the earlier mark and contested sign have no meaning for the relevant public they have no elements that could be considered clearly more distinctive than other elements.
Visually, the signs coincide in the sequence of letters ‘NORM’, placed at the beginning of the earlier mark and at the end of the contested sign. However, they differ in their composition, namely one word in the earlier mark and two in the contested sign, in the final letters ‘ON’ of the earlier mark and in the word ‘XEЛиHOPM’, written in Cyrillic characters, and the letters ‘HELI’ of the contested sign.
Therefore, the signs are visually similar to a low degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛NORM’, placed at the beginning of the earlier mark and at the end of the second element of the contested sign, and for the Bulgarian public also in the Cyrillic letters ‘HOPM’, placed at the end of the first element of the contested sign. The pronunciation differs in the sound of the final letter ‘O’ of the earlier mark and in the sequence of letters ‘XEЛиHOPM’, to be pronounced only in the territory where Cyrillic alphabet is used, namely Bulgaria, and ‘HELI’ of the contested sign, which have no counterpart in the other mark.
Therefore, the signs are aurally similar to a low 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.
- 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.
- Global assessment, other arguments and conclusion
The opponent refers to a previous decision of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.
This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).
Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.
In the present case, the previous cases referred to by the holder are not comparable to the present proceedings. The marks in conflict were ‘NORMON’ vs ‘OSTEONORM’. The opposition decision concluded that the contested mark ‘OSTEONORM’ will be dissected by the Spanish consumers into the elements ‘OSTEO’ and ‘NORM’. Furthermore, the element ‘OSTEO’ was considered non-distinctive for the at least part of the relevant goods. Therefore, the examination of the marks was mainly focused on the earlier mark ‘NORMON’ and the element ‘NORM’ of the contested sign, reaching the conclusion of risk of likelihood of confusion. However, in the present case, where the marks are ‘NORMON’ vs ‘XEЛиHOPM HELINORM’, the contested mark does not have any non-distinctive or weak element.
The signs are visually and aurally similar to a low degree and the goods have been assumed to be identical.
It must be noted that the coincidences between the marks happen at the beginning of the earlier mark and the end of the contested mark, and also aural coincidences at the end of the first element of the contested sign for the Bulgarian public. Therefore, the beginnings of the marks are different. In this respect, it worth mentioning that 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. Additionally, while the earlier mark is composed of one word with six letters (NORMON) the contested sign is composed of two words, both with eight letters each (XEЛиHOPM HELINORM). The contested sign is thus articulated in a much longer manner. Moreover, the sequence of syllables, rhythm and intonation of the signs is different. The mere coincidence in four letters between the signs is not sufficient to outweigh the differences and conclude that there would be a risk of likelihood of confusion, above all among consumers who will pay a level attention that may vary from average to high.
Considering all the above, even assuming that the goods are identical or similar, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.
The opponent has also based its opposition on the following earlier Spanish trade mark:
- No 2 402 142, NORMON, registered for pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides, in Class 5.
Since this mark is identical to the European Union trade mark registration No 4 385 399, which has been compared with the contested sign, even assuming the identity of the goods, the outcome cannot be different with respect to the Spanish trade mark No 2 402 142, NORMON.
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 opponent is the losing party, it must bear the costs incurred by the holder in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the holder are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
| Sandra
KASPERIUNAITE |
Juan Antonio
MORALES PAREDES |
Dorothee
SCHLIEPHAKE
|
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.