OPPOSITION No B 2 690 298

Laboratoire Phyto-Actif, S.A.S., 21, Z.I. Auguste, 33610 Cestas, France (opponent), represented by Ipsilon, Le Centralis,  63, avenue du Général Leclerc, 92340 Bourg-la-Reine, France (professional representative)

a g a i n s t

Biogena Naturprodukte GmbH & Co KG, Strubergasse 24, 5020 Salzburg, Austria (applicant), represented by Irina Schiffer, Biraghigasse 33, 1130 Wien, Austria (professional representative).

On 04/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 690 298 is partially upheld, namely for the following contested goods:

Class 5:         Food supplements, in particular antioxidants, adapted for medical use; Dietetic preparations and food supplements for medical use; Dietetic preparations for the manufacture of beverages for medical use; Dietetic products for specific medical use (balanced diet); Infant formula; Milk powders [foodstuff for babies]; Food supplements and dietetic food supplements for sport and performance enhancement, adapted for medical use; Mineral food supplements; Starch for dietetic or pharmaceutical purposes; Food supplements, mainly consisting of vitamins, amino acids, minerals and trace elements for medical purposes; Herbal teas for medicinal purposes.

Class 30:         Dried herbs; Preserved herbs; Infusions, not medicinal; Black tea; Tea essences; Tea extracts; Instant tea; Tea mixtures.

2.        European Union trade mark application No 14 955 355 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 955 355. The opposition is based on European Union trade mark registration No 13 844 451. 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.

1. The goods and services

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

Class 3:         Aromatherapy oils; essential oils; cosmetics.

Class 5:        Food supplement for medical use; food for babies; dietetic substances adapted for diet and medical use; pharmaceutical and veterinary products, all these products being certified organic by an official organism; dietary supplements for humans and animals; dietetic food and substances adapted for medical or veterinary use; nutritional supplements.

Class 44:        Hygienic and beauty care for human beings or animals, all these services being certified and approved by an official organism; aromatherapy services; dietary and nutritional guidance; beauty care services; medical services.

The contested goods are the following:

Class 5:        Food supplements, in particular antioxidants, adapted for medical use; Dietetic preparations and food supplements for medical use; Dietetic preparations for the manufacture of beverages for medical use; Dietetic products for specific medical use (balanced diet); Infant formula; Milk powders [foodstuff for babies]; Food supplements and dietetic food supplements for sport and performance enhancement, adapted for medical use; Mineral food supplements; Starch for dietetic or pharmaceutical purposes; Food supplements, mainly consisting of vitamins, amino acids, minerals and trace elements for medical purposes; Herbal teas for medicinal purposes.

Class 29:        Preserved fruit; Dried fruit; Cooked fruits; Preserved vegetables; Leaf, fruit and root extract and leaf, fruit and root concentrate for food (other than essential oils); Vegetables, dried; Vegetables, cooked.

Class 30:        Dried herbs; Preserved herbs and spices; Infusions, not medicinal; Black tea; Tea essences; Tea extracts; Instant tea; Tea mixtures.

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

The term ‘in particular’, 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).

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 food supplements for medical use are included identically in the earlier goods.

The contested Food supplements, in particular antioxidants, adapted for medical use; Food supplements and dietetic food supplements for sport and performance enhancement, adapted for medical use; Mineral food supplements; Food supplements, mainly consisting of vitamins, amino acids, minerals and trace elements for medical purposes fall under the earlier broader term food supplements for medical use in Class 5. These goods are therefore identical.

The contested dietetic preparations for medical use; dietetic preparations for the manufacture of beverages for medical use; dietetic products for specific medical use (balanced diet) fall under the earlier broader term dietetic substances adapted for […] medical use in Class 5. These goods are therefore identical.

The contested Infant formula; Milk powders [foodstuff for babies] fall under the earlier broader term food for babies in Class 5. These goods are therefore identical.

The contested Starch for dietetic or pharmaceutical purposes; Herbal teas for medicinal purposes fall under the earlier broader term dietetic food and substances adapted for medical use in Class 5. These goods are therefore identical.

Contested goods in Class 29

The contested goods are types of processed fruits and vegetables, and extracts and concentrates for food. Although the earlier goods in Class 5 include products related broadly to food, such as food supplements for medical use and dietetic food and substances adapted for medical or veterinary use, this is not sufficient to find these goods similar to the applicant’s goods. This is because the earlier goods are designed and sold for medical use, usually to assist a person (or animal) in following a healthy diet. The opponent’s goods are designed to provide nutritional benefits in the form of vitamins, or other substances. The contested goods are basically types of processed fruits and vegetables, sold to be used in cooking. It is clear that although connected to foods, the goods at issue will be provided by different companies and via different sales channels. They are also different in nature and purpose, to some extent, and not in competition with one another. The goods are therefore deemed dissimilar.

The contested goods are also dissimilar to the opponent’s aromatherapy oils; essential oils; cosmetics in Class 3. It is clear that the contested foodstuffs have no points in common with the earlier goods, which are cosmetics and fragranced oils. These goods will be produced by different companies, distributed through different channels, and are not in competition with one another or complementary. They are also different in nature and purpose. Finally, the contested goods are dissimilar to the earlier services in Class 44, which encompass hygienic and beauty care, medical and dietary and nutritional services. Services are essentially different in nature to goods since they are intangible, while goods are tangible. Furthermore, there is no relationship of complementarity between the contested goods and the earlier services, and they will be provided by different companies.

Contested goods in Class 30

The earlier goods dietetic food and substances adapted for medical or veterinary use in Class 5 include herbal teas for medicinal purposes which have added properties which enable them to be used for health purposes, for example as a diuretic substance. The contested Infusions, not medicinal; Black tea; Tea essences; Tea extracts; Instant tea; Tea mixtures may contain herbs such as chamomile which can be used to prevent and treat colds. Therefore, the contested goods share a similar purpose to the earlier goods in that they may be used for health reasons. All of the goods are types of tea and will be consumed in a similar manner. The goods at issue may be distributed through the same channels and aimed at the same consumers. The contested goods are therefore similar to the earlier goods. The contested Dried herbs, preserved herbs, although they do not explicitly state that they are for making herbal tea, can clearly be used to this end. It is quite common to purchase packets of dried herbs such as nettle leaf or peppermint to make tea. Therefore, these contested goods are similar to the earlier goods as well, for all the same reasons as described above.

The remaining contested goods spices are essentially condiments that will be added to cooked food. Unlike the dried herbs mentioned above, it is not usual for these goods to be bought to make tea or infusions. Therefore, there are no relevant points of contact between the contested spices and the earlier goods in Class 5. The contested goods are also dissimilar to the opponent’s aromatherapy oils; essential oils; cosmetics in Class 3. It is clear that the contested spices have no points in common with the earlier goods, which are cosmetics and fragranced oils. These goods will be produced by different companies, distributed through different channels, and are not in competition with one another or complementary. They are also different in nature and purpose. Finally, the contested goods are dissimilar to the earlier services in Class 44, which encompass hygienic and beauty care, medical and dietary and nutritional services. Services are essentially different in nature to goods since they are intangible, while goods are tangible. Furthermore, there is no relationship of complementarity between the contested goods and the earlier services, and they will be provided by different companies.

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. Some of the goods, such as dietetic preparations for the manufacture of beverages for medical use, are aimed at a more specialised public, such as beverage manufacturers.  

The public’s degree of attentiveness may vary from average for some of the goods, such as teas, to high for most of the goods in Class 5 since these goods concern the consumer’s state of health.

3. The signs

BIOREGENA
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 contested sign is a figurative mark consisting of the word ‘BIOGENA’ with a depiction of a very slim human figure over the top of the word ‘BIOGENA’. The device element is perhaps slightly more dominant at a visual level than the word. However, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

As regards the earlier mark and the contested sign, although they are composed of or contain one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T 256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T 146/06, Aturion, EU:T:2008:33, § 58).The element ‘BIO’ of the earlier mark and the contested sign will be associated by the vast majority of the relevant consumers with organic or natural products since it is an abbreviation derived from the word for ‘biological’ or the equivalent words in other languages (for example, ‘biologique’ in French, ‘biologisch’ in Dutch and German, ‘biológiai’ in Hungarian and ‘Biologinis’ in Lithuanian). Bearing in mind that the relevant goods are all related to improving health, it is considered that this element is weak for all the goods.

The remaining parts of the signs, ‘-REGENA’ and ‘-GENA’, have no meaning. The Opposition Division does not concur with the applicant’s claim that ‘REGENA’ will be seen as referring to a queen because it is similar to the Latin word for queen, ‘REGINA’. It cannot be assumed that the consumers of the products at issue will have a working knowledge of a classical language such as Latin. It is highly unlikely that anyone will perceive the earlier mark as referring to a queen.

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.

Visually, the signs coincide in the sequence of letters ‘BIO-*-*-GENA’. They differ in the middle letters ‘RE’ in the earlier mark and the device element of the contested sign. As explained above, ‘BIO’ is weak in connection with the goods, so despite appearing at the beginning of the signs, it will not be viewed by consumers as the most distinctive part of the signs. Nevertheless, it will by no means be ignored.

Taking all this into account, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the signs coincide in the sequence of letters ‘BIO-*-*-GENA’. They differ in the middle letters ‘RE’ in the earlier mark, which will not be so noticeable when pronounced due to appearing in the middle of the word element. As explained above, ‘BIO’ is weak in connection with the goods, so despite appearing at the beginning of the signs, it will not be viewed by consumers as the most distinctive part of the signs. Nevertheless, it will by no means be ignored.

Taking all this into account, the signs are aurally similar to a high degree.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the element ‘BIO’, included in both signs, will be associated with the meaning explained above. However, this element is weak in connection with the goods. For this reason, the signs are conceptually similar to a low degree. The contested sign also contains a device element which depicts a human form and this represents a difference in meaning with regard to the earlier mark.

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, despite the presence of a weak element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The signs have been found visually similar to an average degree, and aurally similar to a high degree. There is also a conceptual link between them, albeit low. The goods at issue have been found identical, similar and dissimilar.

The marks coincide almost entirely in all the letters contained in the words ‘BIOREGENA’ and ‘BIOGENA’. Although the prefix at the beginning of these words, ‘BIO’, has been found weak in connection with the goods, it will not be overlooked precisely because it appears at the beginning of the signs. The remaining letters in the signs also coincide to a large extent, with the main difference of two letters, ‘RE’, almost concealed in the middle of the earlier mark. This difference of two letters will have a minimal impact visually and aurally, possibly being ignored altogether. So it seems reasonable to conclude that even a more attentive consumer could easily confuse these two marks. The device element in the contested sign, although a little bigger than the word ‘BIOGENA’, does little to mitigate the similarities between them since consumers will inevitably choose to identify a sign by referring to a word as opposed to a picture.

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).

For all these reasons, the Opposition Division believes that the relevant consumer is likely to confuse the marks.

The applicant argues that it holds several trade mark registrations which include ‘BIOGENA’ and which predate the opponent’s right.

However, the right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings.

Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts which happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Chantal VAN RIEL

Lucinda CARNEY

Vanessa PAGE

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.