OPPOSITION DIVISION
OPPOSITION No B 2 698 143
Giuliani S.P.A., Via Palagi, 2, 20129 Milano, Italy (opponent), represented by
Barzano’ & Zanardo Milano S.P.A., Via Borgonuovo, 10, 20121 Milano, Italy
(professional representative)
a g a i n s t
Mediseb Spółka Z Ograniczona Odpowiedzialnościa, Ul. Mokotowska 1, 00-640
Warszawa, Poland (holder), represented by Łukasz Jerzy Żelechowski,
Staroscinska 10/12 M. 22, 02-516 Warszawa, Poland (professional representative).
On 10/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 698 143 is partially upheld, namely for the following
contested goods:
Class 5: Dietetic foods adapted for medical purposes; dietetic beverages
and substances adapted for medical purposes; nutritional dietary
supplements; dietary supplements for humans; foods for diabetics
adapted for medical use.
2. International registration No 1 259 599 is refused protection in respect of the
European Union for all of the above goods. It may proceed for the remaining
goods.
3. Each party bears its own costs.
PRELIMINARY REMARK
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against some of the goods of international
registration designating the European Union No 1 259 599 of the figurative mark
, namely against all the goods in Class 5. The opposition is based on
European trade mark registration No 12 542 783 of the word mark ‘DIABEL’. The
opponent invoked Article 8(1)(b) EUTMR.
Decision on Opposition No B 2 698 143 page: 2 of 7
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.
a) The goods
The goods on which the opposition is based are the following:
Class 5: Food supplements for non-medical use.
The contested goods are the following:
Class 5: Dietetic foods adapted for medical purposes; dietetic beverages and
substances adapted for medical purposes; nutritional dietary
supplements; dietary supplements for humans; medical dressings for
diabetics; bandages for dressings for diabetics; gauze for dressings
for diabetics; foods for diabetics adapted for medical use.
Preliminary remark
In its observations, the holder argues that, according to the explanations of the Nice
Classification, the goods on which the opposition is based are normally classified in
classes 29 to 32 rather than in class 5. The Opposition Division notes, however, that,
apart from the fact that according to Article 33(7) EUTMR, goods or services are not
regarded as being similar to or dissimilar from each other on the ground that they
appear in the same or different classes under the Nice Classification, the
‘Harmonised Database’ classifies the opponent’s food supplements for non-medical
use to class 5. It has to be reminded that the ‘Harmonised Database’ is the official list
of acceptable terms for Goods and Services agreed by the EUIPO and all EU
national trademark offices. Consequently, the holder’s argument must be set aside.
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.
The contested nutritional dietary supplements include, as a broader category the
opponent’s food supplements for non-medical use. Since the Opposition Division
cannot dissect ex officio the broad category of the contested goods, they are
considered identical to the opponent’s goods.
The contested dietary supplements for humans are included in, or overlap with, the
broad category of the opponent’s food supplements for non-medical use. Therefore,
they are identical.
The contested dietetic foods adapted for medical purposes; dietetic beverages and
substances adapted for medical purposes; foods for diabetics adapted for medical
use are dietary substances (food and beverages) prepared for special dietary
Decision on Opposition No B 2 698 143 page: 3 of 7
requirements, with the purpose of treating or preventing disease. The opponent’s
food supplements for non-medical use supplement (i.e. they are taken in conjunction
with) everyday food to maintain a healthy diet. Although the opponent’s goods cannot
constitute the sole diet of a person, whereas the earlier goods are for medical use,
and thus may indeed substitute everyday food which has not been adapted for the
medical needs of the end consumer, the goods, nevertheless may have the same
relevant public, have an identical dietetic purpose, the same general method of use
(ingestion) and may share distribution channels. Therefore, the goods are similar.
The remaining contested medical dressings for diabetics; bandages for dressings for
diabetics; gauze for dressings for diabetics are medical dressings and coverings.
Contrary to the opponent’s opinion, these goods have no point in common with the
opponent’s food supplements for non-medical use. They serve other purposes and
they do not necessarily coincide in their producers, end users and distribution
channels. They are neither complementary nor in competition. Therefore, the goods
are dissimilar.
b) 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.
It is apparent from the case-law that, insofar as pharmaceutical preparations,
whether or not issued on prescription, are concerned, the relevant public’s degree of
attention is relatively high (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 same principle applies to the goods at issue which are dietary products for
medical use and affect the state of health. Therefore, the level of attention will be
rather high.
c) The signs
DIABEL
Earlier trade mark Contested sign
The relevant territory is the European Union.
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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 unitary character of the European Union trade mark means that an earlier
European Union trade mark can be relied on in opposition proceedings against any
application for registration of a European Union trade mark that would adversely
affect the protection of the first mark, even if only in relation to the perception of
consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam,
EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the
relevant public of the European Union is sufficient to reject the contested application.
The word elements of both marks are not meaningful in certain territories, for
example in those countries where German is spoken. Consequently, the Opposition
Division finds it appropriate to focus the comparison of the signs on the German-
speaking part of the public.
The contested sign is a figurative mark, consisting of a device of three cubes,
interconnected in a way that gives a 3D impression and followed on its right by the
word element ‘Diabee’, written in standard letters. Both, figurative device and word
element are depicted in light blue colour.
The holder argues in this regard, that the word element of the contested mark will not
be perceived as an entirely fanciful word, but as a combination of two words, namely
‘dia’, being the beginning of the disease ‘diabetes’ and ‘bee’. The Opposition Division,
however, does not agree with the holder. First of all and as mentioned above, the
examination focuses on the German speaking public, which will not recognize the
syllable ‘bee’ as a word, since the equivalent term in German is ‘Biene’. Second, ‘dia’
is the first part of many words in German, such as ‘Dialog’, ‘Diamant’, ‘diagonal’ etc. It
also appears as the beginning of many medical terms, such as ‘Diagno-se’, ‘Dialy-
se’, ‘Diarrhö-e’, ‘Diaphragma’ etc. Therefore, the relevant public will not immediately
recognize the term ‘Diabetes’. Even the fact that in both signs the first five letters
‘diabe’ coincide with the beginning of the term ‘Diabetes’ does not lead to any related
allusion, since all the respective terms like ‘Diabetiker, ‘Diabetes’, Diabetologe’ etc.
start with ‘dia’ followed by the syllable ‘bet’, that is, with the letter ‘t’ which, however, is
not present in the signs at hand. It follows that the word element has no meaning for
the relevant public and is, therefore, distinctive.
The earlier mark is a word mark consisting of the single word ‘DIABEL’. Since it has
no meaning for the relevant public, it is distinctive. It must also be noted here that in
the case of word marks it is the word as such that is protected regardless the way it
is written.
The contested sign has no element that could be considered clearly more dominant
than other elements. Likewise, it has no element that could be considered more
distinctive than other elements.
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).
Decision on Opposition No B 2 698 143 page: 5 of 7
Furthermore, 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 ‘DIABE’. However, they differ in the last letters, namely
‘L’ in the earlier mark and ‘E’ in the contested sign. They further differ in the graphical
stylization of the contested sign, that is, the presence of the device and the
typographical and colour depiction. Therefore, the signs are highly similar.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛DIABE’,
present identically in both signs. The pronunciation differs in the sound of the last
letters, namely ‘L’ in the earlier mark and ‘E’ in the contested sign. The figurative
device of the contested sign will not affect the pronunciation. Therefore, the signs are
highly similar.
Conceptually, although the public in the relevant territory will perceive at least the
figurative device of the contested sign as three interconnected cubic elements, the
other sign has no meaning in that territory. Since one of the signs will not be
associated with any meaning, the signs are not conceptually similar.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) 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.
e) Global assessment, other arguments and conclusion
The goods and services are partly identical and similar and partly dissimilar. The
signs are aurally and visually similar to a high degree.
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). In this context the Opposition Division notes that even consumers who pay a
high degree of attention, like in the present case, need to rely on their imperfect
recollection of trade marks (21/11/2013, T 443/12, ancotel, EU:T:2013:605, § 54).
As stated above under part c), the verbal component of a mixed sign usually has a
stronger impact on the consumer than the figurative component. This is more so in
the present case where the word element of the contested mark and the earlier word
Decision on Opposition No B 2 698 143 page: 6 of 7
mark coincide in five out of their six letters, that is, the beginning of the marks is
identical. Consequently, the coincidences in the verbal elements play an important
role in the evaluation of likelihood of confusion.
Finally, evaluating likelihood of confusion implies some interdependence between the
relevant factors and, in particular, a similarity between the marks and between the
goods or services. Therefore, a lesser degree of similarity between goods and
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). In the case at hand the
identity and/or similarity between the goods outweighs any difference between he
signs.
Considering all the above, the Opposition Division finds that there is a likelihood of
confusion on the part of the German-speaking part of the public and therefore the
opposition is partly well founded on the basis of the opponent’s European Union
trade mark registration. As stated above in section c) of this decision, a likelihood of
confusion for only part of the relevant public of the European Union is sufficient to
reject the contested application.
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 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party. According to Article 109(3)
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 for only some 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
Sigrid DICKMANNSKonstantinos MITROURenata COTTRELL
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 EUTMR, notice of appeal
must be filed in writing at the Office within two months of the date of notification of
Decision on Opposition No B 2 698 143 page: 7 of 7
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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been filed only when the appeal fee of EUR 720 has been paid.