OPPOSITION No B 2 685 165

Esteve Quimica, S.A., Avenida Mare de Déu de Montserrat, 12, 08024 Barcelona, Spain (opponent), represented by Oficina Ponti, SLP, Consell de Cent, 322, 08007 Barcelona, Spain (professional representative)

a g a i n s t

Df Medica Oone, S.R.L., Via Pasubio 22, 24025 Gazzaniga, Italy (applicant).

On 08/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 685 165 is rejected in its entirety.

2.        The opponent bears the costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 644 454. The opposition is based on European Union trade mark registration No 3 969 136 and Spanish trade mark registrations No 2 099 966 and No 2 099 968. The opponent invoked Article 8(1)(b) EUTMR.

EUTM No 3 969 136
Spanish TM No 2 099 966
Spanish TM No 2 099 968
Earlier trade marks	Contested sign

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:

1. European Union trade mark registration No 3 969 136

Class 1:        Chemicals used in industry.

Class 40:        Services of the transformation of chemical substances and products used in the pharmaceutical and veterinary industries.

2. Spanish trade mark registration No 2 099 966

Class 1:        Chemical products used in industry.

3. Spanish trade mark registration No 2 099 968

Class 1:        Chemical products used in industry.

The contested goods are the following:

Class 3:        Cosmetics; perfume.

Class 5:        Nutritional supplements; food supplements; vitamin supplements; homeopathic supplements; probiotic supplements; anti-oxidant food supplements; medicated food supplements; dietary and nutritional supplements; beverages adapted for medicinal purposes; vitamin drinks; pharmaceutical drugs; nutritional supplement meal replacement bars for boosting energy; dietary and nutritional supplements; dietetic foods adapted for medical use; nutritional supplements; dietetic foods for use in clinical nutrition; dietary supplements and dietetic preparations; dietary supplemental drinks.

Class 30:        Cereal bars and energy bars; high-protein cereal bars.

Class 32:        Non-alcoholic beverages; isotonic drinks; energy drinks.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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.

Before carrying out the comparison itself, the Opposition Division finds it appropriate to first describe the goods and services covered by the earlier marks. The opponent’s scope of protection in Class 1 of all of its earlier marks covers raw chemicals which specifically target industrial companies or a specialised public and would be available through very specific channels. The opponent’s services in Class 40 of EUTM No 3 969 136 relate to the chemical processing or the transformation of chemical substances and products; these are specialised services offered by specialised undertakings, such as pharmaceutical laboratories.

Contested goods in Classes 3 and 5

The contested cosmetics; perfume in Class 3 include a list of preparations used to cleanse, beautify or protect the appearance or odour of the human body. They target the general public and are usually sold in cosmetics shops or the cosmetics sections of supermarkets. Some of these goods may also be found in pharmacies.

The contested nutritional supplements; food supplements; vitamin supplements; homeopathic supplements; probiotic supplements; anti-oxidant food supplements; medicated food supplements; dietary and nutritional supplements; beverages adapted for medicinal purposes; vitamin drinks; nutritional supplement meal replacement bars for boosting energy; dietary and nutritional supplements; dietetic foods adapted for medical use; nutritional supplements; dietetic foods for use in clinical nutrition; dietary supplements and dietetic preparations; dietary supplemental drinks in Class 5 are finished products designed to be included in body modification diets and preparations intended to boost the nutritional content of a diet and provide nutrients, such as vitamins, minerals and acids, that may be missing from a person’s diet. Their main purpose is to enhance health and prevent diseases in human beings or animals along with providing nutritional value. The contested pharmaceutical drugs in Class 5 are, in general, drugs or substances used for treating, preventing or alleviating the symptoms of diseases or injuries. The contested goods in Class 5 are usually produced by pharmaceutical companies or companies specialising in the field of dietetic food and nutrition. In addition, they are normally sold in pharmacies, drug stores or specialist stores for dietetic foodstuffs. They target pharmacists and the part of the general public with health issues, for example those who are overweight, have vitamin deficiencies, etc.

In this respect, account should be taken of the fact that, although major chemical companies are usually involved in the production of all kinds of basic and speciality chemicals and life science products, including pharmaceuticals, as well as consumer products, such as cosmetics and perfumes, the mere fact that these goods have the same nature – all of them can be broadly classified as chemical products – is not, contrary to the opponent’s claim, sufficient to find them similar. The specific purposes of the products are different and they have different target publics and distribution channels.

The mere fact that one product is used for the manufacture of another is not sufficient in itself to show that the goods are similar, as their natures, purposes, relevant publics and distribution channels may be quite distinct (13/04/2011, T-98/09, T Tumesa Tubos del Mediterráneo S.A., EU:T:2011:167, § 49-51). According to case-law, raw materials that are subject to a transformation process are essentially different from the finished products that incorporate, or are covered by, those raw materials, in terms of their nature, aim and intended purpose (see, to that effect, 03/05/2012, T-270/10, Karra, EU:T:2012:212, § 53). Furthermore, they are not complementary, since one is manufactured with the other, and raw material is in general intended for use in industry rather than for direct purchase by the final consumer (09/04/2014, T-288/12, Zytel, EU:T:2014:196, § 39-43).

Consequently, although the contested goods in Classes 3 and 5, as described above, are usually combinations of various chemicals (or chemical elements), they are not considered similar to the opponent’s goods in Class 1. Their purposes as finished products differ from that of the goods in Class 1, which are mainly in their raw, unfinished state and not yet mixed with other chemicals and inert carriers to form a final product. The finished products in Classes 3 and 5 usually target different publics and do not have the same distribution channels. Therefore, the contested goods in Classes 3 and 5 are dissimilar to the goods in Class 1 for which the earlier trade marks are registered.

As regards the comparison of the contested goods in Classes 3 and 5 with the opponent’s services of the transformation of chemical substances and products used in the pharmaceutical and veterinary industries in Class 40 of EUTM No 3 969 136, the Opposition Division finds that, although treatment and transformation of chemicals has some connection to the contested goods, namely pharmaceutical drugs in Class 5, it must be borne in mind that the opponent’s services are, by their nature, merely preparatory or ancillary services for the actual production of chemical substances used in the pharmaceutical industry or, possibly, other production processes. The purpose of the opponent’s services is to change the physical properties of chemical substances by using various chemical methods, on behalf of others. The mere fact that the opponent’s services could be required prior to the production of the contested pharmaceutical drugs in Class 5 is insufficient in itself to lead to a finding of similarity. Furthermore, the scope of protection sought for the services in Class 40 applies to cases where the processing or transformation is carried out for a third party. In other words, it is unlikely that an undertaking involved in the production of pharmaceutical products would offer chemical treatment services to third parties under the same trade mark. Therefore, the goods and services in question do not originate from the same undertakings and do not move through the same commercial channels. Furthermore, they have different natures, as goods are tangible whereas services are intangible, and they are neither strictly complementary nor in competition. It is considered that the contested goods in Classes 3 and 5 are dissimilar to the opponent’s services of EUTM No 3 969 136.

Contested goods in Classes 30 and 32

The contested cereal bars and energy bars; high-protein cereal bars in Class 30 are foodstuffs that are essential for people adhering to a specific diet and/or health regime. They provide fibre and energy and are consumed not only by athletes or individuals with high energy expenditure, but also by the general public as a snack.

Regarding the contested goods in Class 32, non-alcoholic beverages are various types of beverages that do not contain alcohol and isotonic drinks; energy drinks are sports drinks that help to boost physical performance, keep the body hydrated and have other effects that are desirable for athletes.

Following the same reasoning as applied in the comparison made above, all the contested goods in Class 30 and 32 are dissimilar to the opponent’s goods in Class 1 and services in Class 40. These goods and services, as described in detail above, have different natures (chemicals versus foodstuffs and beverages and services versus goods), purposes (to provide raw or semi-raw chemicals for subsequent industrial processing versus to provide nutrition and energy for human beings) and methods of use. Furthermore, they are not produced or provided by the same companies (undertakings operating in the field of the chemical industry and pharmaceutical laboratories versus companies producing foodstuffs), target different publics (various industrial and pharmaceutical companies versus the general public) and have different distribution channels (specialised shops that supply chemicals versus supermarkets and groceries). Finally, these goods and services are not in competition with or complementary to each other.

In its submission of 01/08/2016, the opponent claimed that there is a close connection between the contested goods in Classes 30 and 32 and the opponent’s goods in Class 1, since the contested goods involve chemicals that are used in the food industry. However, even if this statement were correct (which is clearly not the case, for the reasons explained above), it must be recalled that the mere fact that one product is used for the manufacture of another is not sufficient in itself to show that the goods are similar, as their nature, purpose, relevant public and distribution channels may be quite distinct (13/04/2011, T-98/09, T Tumesa Tubos del Mediterráneo S.A., EU:T:2011:167, § 49-51). Consequently, and given that all of the relevant factors determining the similarity between goods differ in the present case, the opponent’s claim must be set aside.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

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. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Lucinda CARNEY

Martin MITURA

Vita VORONECKAITĖ

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.