OPPOSITION No B 2 740 101

Merck KGaA, Frankfurter Str. 250, 64293 Darmstadt, Germany (opponent), represented by Best Rechtsanwälte PartmbB, Hostatostr. 26, 65929 Frankfurt am Main, Germany (professional representative)

a g a i n s t

Bee On S.R.L., Via Trieste, 25, 17047 Vado Ligure (SV), Italy (applicant), represented by Accapi S.R.L., Via Garibaldi, 3, 40124 Bologna, Italy (professional representative).

On 22/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 740 101 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 367 667, namely against all the goods in Class 5. The opposition is based on, inter alia, European Union trade mark registration No 72 884. 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 72 884.

1. The goods

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

Class 5:        Pharmaceutical, and sanitary preparations; dietetic substances adapted for medical use.

The contested goods are the following:

Class 5:        Dietary supplements and dietetic preparations; nutritional supplement meal replacement bars for boosting energy; vitamin tablets; dietary and nutritional supplements; royal jelly dietary supplements; propolis dietary supplements; mineral food supplements; dietary supplements for humans not for medical purposes; food supplements; vitamin and mineral supplements; bee pollen for use as a dietary food supplement; multi-vitamin preparations; vitamin preparations; dietetic food preparations adapted for medical use; vitamins and vitamin preparations.

Some of the contested goods are identical to 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 to those of the earlier mark.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical are directed at the public at large and at professionals in the medical sector. As regards dietary and nutritional supplements, it is likely that the public would display a relatively high degree of attention when purchasing them, considering that they may, to a lesser or greater extent, affect their state of health. Therefore, the degree of attention is relatively high. In this regard, reference is made to 23/01/2014, T-221/12, Sun Fresh, EU:T:2014:25, § 64.

3. The signs

BION	BEE ON
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).

Both marks are word marks. The earlier mark is the word mark ‘BION’, while the contested sign is the word mark ‘BEE ON’.

The earlier mark, ‘BION’, has no meaning for the relevant public. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.

The verbal element ‘BEE’ is an English word that will be understood by the part of the public with a knowledge of English as referring to an insect of a large group to which the honeybee belongs (information extracted from Oxford English Dictionary on 21/06/2017 at https://en.oxforddictionaries.com/). Bearing in mind that the relevant goods are dietary supplements and dietetic preparations; bee pollen for use as a dietary food supplement in Class 5, this element is weak for these goods, as it might be perceived as an indication that they contain ingredients produced by bees, such as beeswax. For the remaining part of the public, which has no knowledge of English, the verbal element ‘BEE’ has no meaning and therefore possesses a normal degree of distinctiveness.

The verbal element ‘ON’ in the contested sign will be perceived by the part of the relevant public with a knowledge of English as the generic English word used on many electrical and electronic devices to indicate that they are functioning. Owing to the widespread use of this English word in trade, it will be understood as, inter alia, an adjective meaning ‘functioning; operating: turn the switch to the on position’, or as an adverb: ‘when something such as a machine or an electric light is on, it is functioning or in use. When you switch it on, it starts functioning’ (information extracted from Collins English Dictionary on 21/06/2017 at https://www.collinsdictionary.com). In the context of the relevant goods in Class 5, the word ‘ON’ enjoys an average degree of distinctive character. It cannot be excluded that, for the part of the relevant public that has no knowledge of English, the verbal element ‘ON’ will be perceived as a meaningless combination of two letters/characters. The distinctiveness of this element is considered normal, since it does not refer to any characteristic of the relevant goods. As a whole, the expression ‘BEE ON’ will be perceived as a fanciful expression with no meaning in relation to the relevant goods. Therefore, it is considered distinctive.

Visually, the signs have different overall structures; the earlier mark is composed of only one word while the contested mark is composed of two separate words. The signs coincide in their first letter, ‘B’, and in the letters ‘ON’, which form the end of the earlier mark and the second verbal element of the contested sign.

The opponent argues that three out of the four letters contained in the earlier mark and the same three out of the five letters contained in the contested sign are identical and appear in the same order. Although it cannot be denied that the letters ‘ON’ are included in both signs, account must be taken of the rather different positions of the graphemes ‘ON’ in each sign. Specifically, in the earlier mark these letters are embedded in its sole, indivisible element, ‘BION’. In contrast, in the contested sign, the letters ‘ON’ are separated by a space from the sign’s first verbal element and form the second verbal element of the word mark ‘BEE ON’. The public will not attach much significance to the fact that the last letters of the word ‘BION’ happen to be the same as the second component in the expression ‘BEE ON’. Rather, this will be perceived as a mere coincidence.

Therefore, the signs are visually similar to a low degree.

Aurally, it can be reasonably assumed that the part of the public with a knowledge of English is likely to pronounce the earlier mark, ‘BION’, and the contested sign, ‘BEE ON’, in accordance with English pronunciation rules. To that extent, the signs have in common the sounds corresponding to the consonant ‘B’ and the letters ‘ON’, but they differ in their first vowel sounds, namely in the sound of the letter ‘I’ in the earlier mark and the sound of the double letter ‘E’ in the contested sign. For this part of the public, the combination of letters ‘BI’ will be pronounced as /baɪ/ whereas the combination of letters ‘BEE’ of the contested sign will be pronounced in one syllable as /biː/, with an extended vowel sound.

For the remaining part of the public, which is not familiar with English, the earlier mark is pronounced in accordance with the pronunciation rules of the relevant languages. For instance, the Bulgarian-, German- and Greek-speaking parts of the relevant public will pronounce the syllable ‘BI’ as /bɪ/, whereas the verbal element ‘BEE’ of the contested sign will be pronounced as /bee/.

In any case, it should be noted that the public is more likely to allow a short audible gap or pause in the pronunciation of the contested sign, due to the space between the two verbal components, ‘BEE’ and ‘ON’.

Therefore, for the English-speaking part of the relevant public, the signs are aurally similar to a low degree. For the remaining part of the relevant public, the signs are aurally similar to an average or low degree, depending on the pronunciation rules of the relevant languages.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the English-speaking part of the relevant public will perceive the meaning of the first element of the contested sign, ‘BEE’ (which is, however, weak), and of the word ‘ON’, as explained above, the earlier mark, ‘BION’, has no meaning for that part of the public. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

For the part of the relevant public that is not familiar with English, neither of the signs has a meaning. 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.

According to the opponent, the earlier mark, ‘BION’, enjoys a high degree of distinctiveness as a result of its long-standing and intensive use in the European Union in connection with all the goods for which it is registered. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition 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).

The opponent submitted the following evidence:

• Excerpts from two online annual reports dated 2003 and 2008. The annual report for 2003 contains figures for percentage increases and decreases in the sales of pharmaceutical products under, inter alia, the brand name ‘BION 3’. The annual report for 2008 demonstrates, inter alia, the existence of the brand name ‘BION 3’, as key products in the everyday health protection sector.

• Two news releases issued by the opponent, one dated 03/07/2014 and referring generally to the brands of the Merck Consumer Health Division, including the ‘BION’ brand, their global recognition and total revenue, and the other dated 06/03/2014 and referring to the growth rate and increase in market share of the ‘BION’ brand.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark, ‘BION’, acquired a high degree of distinctiveness through its use. Despite showing some use of the trade mark ‘BION’ and the similar trade mark ‘BION 3’, the evidence provides little information on the extent of such use, because there is no corroborative material emanating from independent sources that would support the turnover figures set out in the annual reports for 2003 and 2008 or in the news releases, both these sets of evidence emanating from the opponent. The evidence does not provide any indication of the degree of recognition of the trade mark by the relevant public. The evidence concerning percentage sales figures or sales volumes is not put into the context of the market and competitors in question. Furthermore, the evidence does not indicate the market share of the trade mark or the extent to which the trade mark has been promoted. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its ‘BION’ trade mark has enhanced distinctiveness.

For the sake of completeness, it should be noted that the opponent’s reference to evidence submitted in the proceedings decided on opposition decisions No B 1 678 906, No B 1 803 645 and No B 2 451 584 cannot be taken into account, since the documents that the opponent refers to cannot be clearly identified. The opponent must indicate the number of the opposition decision it refers to, the title of the document it refers to, the number of pages of this document and, finally, the date on which this document was sent to the Office. As these conditions were not fully met, the reference to documents or evidence submitted in other proceedings will not be accepted in the present case.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

The goods were assumed to be identical and the inherent distinctiveness of the earlier mark, ‘BION’, is normal. The degree of attention of the relevant public is high.

The signs are visually similar to a low degree and aurally similar to an average or low degree (depending on the part of the public and the pronunciation rules followed). For the English-speaking part of the public, which will understand the words ‘BEE’ and ‘ON’, the signs are not conceptually similar, since the earlier mark ‘BION’ has no meaning. This part of the public will be less prone to confusion, since these consumers will clearly differentiate between words that can be associated with a meaning and a meaningless word. Therefore, for this part of the public, there will be no likelihood of confusion.

For the rest of the public, which is not familiar with English, the signs are considered conceptually neutral. Even for the part of the public that does not understand English and is therefore more prone to confusion, although the signs coincide in some letters, when comparing the signs overall the Opposition Division finds that there are sufficient differences to outweigh the tenuous similarities between them. The fact that they have in common their first letter, ‘B’, and the combination of letters ‘ON’ (which form the end of the earlier mark and the separate second verbal element of the contested sign) is insufficient to conclude that there is a likelihood of confusion between the marks, even assuming that the relevant goods are identical. Moreover, there are significant visual and aural differences between the signs, especially considering that the relevant consumer will perceive the earlier mark as a single invented word, whereas the contested sign will be perceived as an expression consisting of two individual components, due to the space between the two verbal elements; these differences will allow consumers to safely distinguish between the signs.

In the light of the relevant factors weighed against each other in the context of a global assessment, the Opposition Division finds that the differences between the signs are sufficient to enable the relevant public to safely distinguish between them, even assuming that the goods in question are identical.

It remains necessary to consider the opponent’s argument that the earlier trade marks, all characterised by the presence of the same word component ‘BION’ constitute a ‘family of marks’ or ‘marks in a series’. In its view, such a circumstance is liable to give rise to an objective likelihood of confusion insofar as the consumer, when confronted with the contested mark which contains a word component that is similar to the opponent’s ‘BION’ marks, will be led to believe that the goods identified by that mark may also come from the opponent.

In fact, the concept of the family of marks was exhaustively analysed by the General Court in its judgment of 23/02/2006, T-194/03, Bainbridge, EU:T:2006:65. When the opposition to a European Union trade mark is based on several earlier marks and those marks display characteristics which give grounds for regarding them as forming part of a single ‘series’ or ‘family’ a likelihood of confusion may be created by the possibility of association between the contested trade mark and the earlier marks forming part of the series. However, the likelihood of association described above may be invoked only if two conditions are cumulatively satisfied.

Firstly, the proprietor of a series of earlier registrations must furnish proof of use of all the marks belonging to the series or, at the very least, of a number of marks capable of constituting a ‘series’. Secondly, the trade mark applied for must not only be similar to the marks belonging to the series, but also display characteristics capable of associating it with the series.

In the present case, the contested sign does not contain the element ‘BION’. Therefore, it lacks the characteristic element of the opponent’s claimed ‘family of marks’ and the opponent’s argument in this regard is set aside, without any need to examine whether the other condition mentioned above has been satisfied.

To support its arguments the opponent refers to previous decisions of the Office involving the trade marks ‘BION 3’, ‘FEMIBION’ and ‘FEMIBION INTIMA’. 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. The cases invoked by the opponent are not relevant to the present proceedings, since the signs at issue are not comparable.

Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

The opponent has also based its opposition on the following earlier trade marks:

• German trade mark registration No 302 012 041 951 for the word mark ‘BION’, registered for goods in Class 5;
• European Union trade mark registration No 748 301 for the word mark ‘CEBION’, registered for goods in Class 5;
• European Union trade mark registration No 8 660 946 for the figurative mark , registered for goods in Class 5;
• European Union trade mark registration No 898 924 for the word mark ‘FEMIBION’, registered for goods in Class 5;
• German trade mark registration No 2 095 879 for the word mark ‘FEMIBION’, registered for goods in Class 5;
• French trade mark registration No 1 732 780 for the word mark ‘FEMIBION’, registered for goods in Class 5;
• European Union trade mark registration No 9 349 051 for the word mark ‘FEMIBION INTIMA’, registered for goods in Class 5;
• European Union trade mark registration No 954 370 for the word mark ‘NEUROBION’, registered for goods in Class 5.

The other earlier marks invoked by the opponent, with the exception of earlier German trade mark registration No 302 012 041 951, are less similar to the contested sign. This is because they consist of different words that contain further letters/syllables at their beginnings (i.e. ‘CEBION’, ‘FEMIBION’, ‘NEUROBION’) that are not present in the contested trade mark, or they contain further figurative elements or additional words (i.e. the figurative element and stylisation of the word ‘Cebion’ in European Union trade mark registration No 8 660 946 and the additional word ‘INTIMA’ of European Union trade mark registration No 9 349 051). Therefore, the outcome cannot be different with respect to these earlier marks; no likelihood of confusion exists between these marks and European Union trade mark application No 15 367 667. Finally, regarding earlier German trade mark registration No 302 012 041 951 for the identical word mark ‘BION’, the Opposition Division notes that, as the German trade mark registration is identical to earlier European Union trade mark registration No 72 884, which is registered for Germany as part of the European Union, the outcome of this decision would not be different even if the goods of the German trade mark registration had a broader scope of protection.

This finding would still be valid even if the earlier trade marks were considered to enjoy a high degree of distinctiveness. Given that the dissimilarities between the signs are so significant that they cannot be overcome by the highly distinctive character of the earlier trade marks, the evidence submitted by the opponent in this respect does not alter the outcome reached above. Therefore, the Opposition Division finds that it is not necessary to examine the evidence of extensive use submitted for the other earlier marks.

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 applicant 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 applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Francesca CANGERI SERRANO

Birgit FILTENBORG

Michele M. BENEDETTI-ALOISI

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.