OPPOSITION No B 2 684 457

S.C. Biofarm S.A., Str. Logofatul Tautu No.99, Sector 3, 031212 Bucharest, Romania (opponent), represented by Milcev Burbea Intellectual Property Office, 170 Stirbei Voda Street, Bl.10G, Entr.1, Floor 5, App.18, District 1, Bucharest, Romania (professional representative)

a g a i n s t

Gravis Pharma GmbH, Westhafenstrasse 1, 133-53 Berlin, Germany (applicant), represented by Biuro Patentowe Czesław Popławski, ul. Piecewska 18A/30, 80-288 Gdańsk, Poland (professional representative).

On 21/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 684 457 is upheld for all the contested goods.

2.        European Union trade mark application No 14 463 301 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 14 463 301. The opposition is based on, inter alia, Romanian trade mark registration No 071 459. The opponent invoked Article 8(1)(b) and 8(5) 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 Romanian trade mark registration No 071 459.

1. The goods

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

Class 5: Pharmaceutical preparations for human and veterinary use, Food supplements.

The contested goods are the following:

Class 5: Diet supplements.

Class 29: Food supplements prepared on the basis of gelatine.

Class 30: Food supplements prepared on the basis of carbohydrate components.

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 5

The contested diet supplements are identical to the opponent’s food supplements, albeit worded differently.

Contested goods in Classes 29 and 30

The contested food supplements prepared on the basis of gelatine in Class 29 and food supplements prepared on the basis of carbohydrate components in Class 30 are similar to the opponent’s food supplements in Class 5. These goods may contain the same ingredients. Insofar as they contribute to a healthy diet, their purpose is the same. Furthermore, the goods under comparison coincide in their methods of use and target the same end users. They may also share distribution channels and origins.

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 the public at large and professionals.

The degree of attention may vary from average to above average insofar as those goods may have an impact on consumers’ health.

3. The signs

BIOFARM
Earlier trade mark	Contested sign

The relevant territory is Romania.

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 relevant public may associate both marks with certain concepts. In particular, as far as the earlier mark is concerned, the public may identify the element ‘BIO’ which means ‘related to life’ in Romanian but is also used in the meaning of ‘organic’. Furthermore, the public may perceive the element ‘FARM’ which is also used in association with pharmaceutical products and forms the beginning of the Romanian word ‘farmaceutic’ (equivalent of the English word ‘pharmaceutical’) or ‘farmacie’ (equivalent of the English word ‘pharmacy’). Therefore, each of these elements, when taken separately, could be perceived as referring to the characteristics of the relevant goods, namely that they are organic or pharmaceutical products. Nevertheless, the word ‘BIOFARM’ as such does not exist in the Romanian vocabulary.

As to the contested sign, the public may perceive the element ‘BILO’ as alluding to ‘bilă’ being the Romanian word for the substance produced by the liver, helping in digestion. Therefore, such an allusion would rather be seen as a reference to the properties of the relevant goods. Finally, although there exists a word ‘far’ in the Romanian language, meaning ‘a lighthouse’, it is unlikely that the relevant public will identify this element in the contested sign and make such an association in relation to the relevant goods.

Consequently, conceptually, neither of the signs has a meaning as a whole. Even if the public perceived the concepts behind the elements ‘BIO’, ‘FARM’ and ‘BILO’, this could not help in the identification of the commercial origin of any of the marks. Therefore, the conceptual aspect does not influence the assessment of the similarity of the signs.

Visually, the signs have the same structure as each of them is composed of one word with seven letters. Despite being graphically represented, the letters of the contested sign are easily readable as their font does not depart very much from standard. The signs coincide in six letters ‛BI*OFAR*’. They differ in one letter, ‘M’ placed at the end and of the earlier mark. Since the consumers read from left to right, the letter placed at the end of the sign catches less attention. Furthermore, the signs differ in the letter ‘L’ of the contested sign. This difference is also not particularly striking as it concerns only one letter of the contested sign, surrounded by other letters which correspond to those of the earlier mark. Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛BI*OFAR*’, present in both signs. The pronunciation differs in the sound of the final letter, ‛M’ of the earlier mark and in the sound of the third letter, ‘L’ of the contested sign. Given the position of these two letters, the differences in the sound of the pronounced words are not particularly striking. Therefore, the signs are aurally highly similar.

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 has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as lower than normal for all of the goods in question as it alludes to their characteristics.

5. Global assessment, other arguments and conclusion

The goods are partly identical and partly similar and the signs are visually and aurally highly similar. The eventual concepts conveyed by the marks could not help in the identification of the commercial origin of the marks which will be perceived in their entirety as invented words.

The degree of the earlier mark’s distinctiveness is lower than normal. However, it is recalled that, although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier sign of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (13/12/2007, T-134/06, Pagesjaunes.com, EU:T:2007:387, § 70 and the case-law cited therein; 13/09/2010, T-72/08, smartWings, EU:T:2010:395, § 63 and 27/02/2014, T-25/13, 4711 Aqua Mirabilis, EU:T:2014:90, § 38).

Furthermore, 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).

A greater level of consumers’ attention does not rule out the possibility of likelihood of confusion (13/09/2010, T-72/08, smartWings, EU:T:2010:395, § 64 and the case-law cited therein).

As to the applicant’s argument that the signs differ in their beginnings, it has to be pointed out that while, in principle, the initial part of word marks is more likely to capture the attention, this argument cannot hold in all cases and does not, in any event, cast doubt on the principle that an examination of the similarity of trade marks must take into account the overall impression produced by them (16/05/2007,
T-158/05, Alltrek, EU:T:2007:143, § 70 and 09/09/2008, T-363/06, Magic seat, EU:T:2008:319, § 38).

Bearing this in mind, it is considered that, in the present case, the degree of similarity between the goods and the degree of similarity between the marks, considered cumulatively, are sufficiently high to justify the conclusion that there is a likelihood of confusion.

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

Therefore, the opposition is well founded on the basis of the opponent’s Romanian trade mark registration No 071 459. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier Romanian trade mark registration No 071 459 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).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(5) EUTMR.

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

Katarzyna ZANIECKA

Justyna GBYL

Frédérique SULPICE

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.