OPPOSITION No B 2 546 292

Nutrinat AG, Waldeggstrasse 37, 3097 Bern (Liebefeld), Switzerland (opponent), represented by Cabinet Morelle & Bardou, Parc Technologique du Canal 9, avenue de l’Europe, 31520 Ramonville Saint Agne, France (professional representative)

a g a i n s t

Salus Haus Dr. med. Otto Greither Nachf. GmbH & Co. KG, Bahnhofstr. 24, 83052 Bruckmühl, Germany (applicant), represented by Weickmann & Weickmann Patentanwälte-Rechtsanwalt PartmbB, Richard-Strauss Str. 80, 81679 München, Germany (professional representative).

On 13/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 546 292 is upheld for all the contested goods, namely:

Class 5:        Dietary supplements and dietetic preparations; medical and veterinary preparations and articles; food for babies; dietary supplements for animals; antioxidants; anti-oxidant food supplements; appetite stimulant preparations; appetite suppressants; appetite suppressants for medical purposes; medicated supplements for foodstuffs for animals; asthmatic tea; fibre (dietary -); dietary fiber to aid digestion; bread products for diabetics; diabetic bread adapted for medical use; diastase for medical purposes; dietetic infusions for medical use; dietetic substances for babies; dietetic preparations adapted for medical use; herbal dietary supplements for persons special dietary requirements; dietetic sugar substitutes for medical use; dietetic beverages adapted for medical purposes; dietetic substances adapted for medical use; dietetic foods adapted for invalids; dietetic foods for use in clinical nutrition; dietetic foods adapted for medical purposes; dietetic confectionery adapted for medical purposes; dietetic sugar for medical use; albuminous preparations for medical purposes; fish oil for medical purposes; nutraceuticals for use as a dietary supplement; cereals prepared for use as invalids’ foods; glucose for use as an additive to foods for medical purposes; irish moss for medical purposes; artificial sweeteners adapted for diabetics; cod liver oil; cod-liver oil drops; lysine preparations; meal replacement powders; preparations for use as additives to food for human consumption [medicated]; mineral food supplements; mineral dietary supplements for humans; multi-vitamin preparations; dietary supplemental drinks; nutritional supplements; albumin dietary supplements; flaxseed dietary supplements; flaxseed oil dietary supplements; dietary and nutritional supplements; albuminous foodstuffs for medical purposes; nutritional supplement meal replacement bars for boosting energy; nutritional additives to foodstuffs for animals, for medical purposes; alginate dietary supplements; enzyme dietary supplements; royal jelly dietary supplements; glucose dietary supplements; yeast dietary supplements; casein dietary supplements; lecithin dietary supplements; pollen dietary supplements; propolis dietary supplements; protein dietary supplements; wheat germ dietary supplements; dietary supplements for humans; health food supplements for persons with special dietary requirements; dietary supplements for infants; food for medically restricted diets; by-products of the processing of cereals for dietetic or medical purposes; protein supplements for animals; lipotropic factor preparations; soy protein dietary supplements; food for diabetics; artificial tea [for medicinal use]; vitamin A preparations; vitamin B preparations; health food supplements made principally of minerals; health food supplements made principally of vitamins; vitamin and mineral supplements; effervescent vitamin tablets; vitamin C preparations; vitamin D preparations; gummy vitamins; vitamins and vitamin preparations; vitamin drinks; mixed vitamin preparations; vitamin preparations; prenatal vitamins; vitamin preparations in the nature of food supplements; vitamin tablets; vitamin supplements; vitamin supplements for use in renal dialysis; sugar substitutes for diabetics.

Class 30:        Carbohydrate-based nutritional drink mix for use as a meal replacement; maltodextrins for nutritional use [other than medical]; tablets (non-medicated -) made of glucose with a caffeine base.

2.        European Union trade mark application No 13 846 415 is rejected for all the contested goods. It may proceed for the remaining goods.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 13 846 415, namely against some of the goods in Classes 5 and 30. The opposition is based on European Union trade mark registration No 1 876 556. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent shall furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition shall be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely European Union trade mark No 1 876 556.

The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The contested application was published on 01/04/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 01/04/2010 to 31/03/2015 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 5:        Pharmaceutical preparations; dietetic substances adapted for medical use, food for babies; vitamins and minerals.

According to Rule 22(3) EUTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 15/01/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 20/03/2016 to submit evidence of use of the earlier trade mark. On 17/03/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Annex 1:        copies of 54 invoices issued by the opponent’s subsidiary, Nutrition & Santé Iberia S.L., dated between 12/04/2010 and 23/04/2014 (10 invoices dated throughout 2010, 13 invoices dated throughout 2011, 13 invoices dated throughout 2012, 13 invoices dated throughout 2013 and 5 invoices dated throughout 2014; the invoices are in Spanish with one sample translated into English for each year). The invoices concern, inter alia, the sales of products bearing the mark ‘FERROMIX 250’ to various entities located in different provinces and towns within Spain (e.g. Santa Cruz de Tenerife, Las Palmas de Gran Canaria, Barcelona, Pontevedra, Madrid, Orense, La Rioja, Badajoz, Almeria, Cantabria, Valencia, Zaragoza, Granada and Malaga). Although it is not clear from the invoices themselves to which goods the sales refer (as also pointed out by the applicant), the invoices contain an article code, namely 20148, which corresponds to a code, namely 2.01.48, mentioned in the product catalogue submitted as Annex 3; the product catalogue describes various types of nutritional supplements offered by the opponent’s subsidiary. As can be further inferred from the invoices, the physical quantities of the goods sold range from 1 item/package to 30 items/packages per transaction, amounting to around 390 items/packages in total for the abovementioned period. The sales figures were not disclosed by the opponent in this set of evidence; however, a rate (unit) price is indicated in some invoices and varies from EUR 11.14 to EUR 12.11.

• Annex 2:        copies of five invoices issued by the opponent’s subsidiary, Nutrition & Santé Iberia S.L., dated between 07/09/2010 and 12/12/2013 (two invoices dated 2010, two invoices dated 2011 and one invoice dated 2013; the invoices are in Spanish with one sample translated into English for each year). The invoices concern, inter alia, the sales of products bearing the mark ‘FERROMIX 250’ to one entity located in the municipality of Moita, Portugal. Although it is not clear from the invoices themselves to which goods the sales refer (as also pointed out by the applicant), the invoices contain an article code, namely 20148, which corresponds to a code, namely 2.01.48, mentioned in the product catalogue submitted as Annex 3; the product catalogue describes various types of nutritional supplements offered by the opponent’s subsidiary. As can be further inferred from the invoices, the physical quantities of the goods sold are either 15 or 30 items/packages per transaction, amounting to 105 items/packages in total for the abovementioned period. The sales figures were not disclosed by the opponent in the case of two invoices; according to the other invoices, the total turnover achieved in the abovementioned period is around EUR 390. In addition, a rate (unit) price is indicated in some invoices and varies from EUR 9.66 to EUR 11.93.

• Annex 3: a product catalogue and price list for 2014 (in Spanish with a translation into English) describing a product line of nutritional supplements offered by the opponent’s subsidiary, Nutrition & Santé Iberia S.L. The catalogue contains a list of products for circulatory, digestive and immune systems, with some additional information regarding product codes, the content/purpose, packaging and package quantities, and treatment duration. Under the products described as circulatory system products, one named ‘FerroMix’ can be found (product code 2.01.48; content/purpose: with iron liposome; packaging quantity: 250 ml; package quantity: 15; treatment duration: 12-25 days), accompanied by a depiction of its packaging.

The applicant argues in its submissions of 06/06/2016 that the evidence of proof of use submitted by the opponent is not provided in a structured manner as required by the information sheet of the Office on how proof of use shall be provided. However, contrary to what the applicant argues, the evidence is clearly presented, in annexes and items, according to the structured list included in the opponent’s letter dated 17/03/2016. Moreover, all of the pieces of evidence are described and explained in the opponent’s letter mentioned above.

The applicant further argues that the opponent did not submit translations of the invoices (Annexes 1 and 2) and that therefore this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Rule 22(6) EUTMIR). Taking into account the nature of the abovementioned documents which have been translated only partially (one sample invoice for each year) and are considered relevant for the present proceedings, and their self-explanatory character, the Opposition Division considers that there is no need to request a translation.

The applicant also contests some of the evidence of use filed by the opponent (Annexes 1 and 2) on the grounds that it does not originate from the opponent itself but from another company, namely Nutrition & Santé Iberia S.L. According to Article 15(2) EUTMR, use of the European Union trade mark with the consent of the proprietor shall be deemed to constitute use by the proprietor. The fact that the opponent submitted evidence of use of its mark by a third party implicitly shows that it consented to this use (08/07/2004, T-203/02, Vitafruit, EU:T:2004:225). Consequently, since it can be presumed that the evidence filed by the opponent is an implicit indication that use has been made with its consent, the applicant’s claim is unfounded. To this extent, and in accordance with Article 15(2) EUTMR, the Opposition Division considers that the use made by the abovementioned company was made with the opponent’s consent and thus is equivalent to use made by the opponent.

Finally, the applicant argues that not all the items of evidence indicate genuine use in terms of extent (no invoice amounts or prices are mentioned in Annexes 1 and 2; low quantities of the goods sold), nature and use of the goods for which the earlier mark is registered (Annexes 1 and 2 do not show any relation to specific goods). However, this applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence (as referred to by the applicant), the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

In conclusion, under all the circumstances described above, the applicant’s arguments must be set aside as unfounded.

Assessment of evidence

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

The requirements for proof of use, namely the place, time, extent and nature of use, are cumulative (05/10/2010, T-92/09, STRATEGI / Stratégies, EU:T:2010:424, § 43). Therefore, the opponent is obliged to prove each of these requirements.

Place of use

The evidence described above shows that the place of use is Spain and Portugal. This can be inferred from the language of the documents (all of them are in Spanish with a partial translation into English), the currency mentioned (product prices are indicated in euros) and addresses in Spain and Portugal (as can be seen from the invoices submitted in Annexes 1 and 2).

Therefore, the evidence relates to the relevant territory.

Time of use

All of the evidence is dated within the abovementioned relevant period.

Extent of use

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The documents submitted, namely the invoices (Annexes 1 and 2) and the product catalogue and price list for 2014 (Annex 3), provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

As far as physical volumes are concerned, in its submission of 13/10/2016 the opponent notes that the number mentioned in the column entitled ‘amount’ corresponds to the number of packages of ordered products. In this respect, it refers to the product catalogue and price list for 2014 (Annex 3), according to which each package of the product marked ‘FERROMIX’ contains 15 items. Bearing this in mind, the overall physical volume of sales made within the relevant timeframe must be seen as sufficient, namely around 7 400 products in total ((390 packages sold in Spain + 105 packages sold in Portugal) × 15 items per package)). The turnover figures achieved under the mark ‘FERROMIX’ were disclosed in only 3 out of 59 invoices (around EUR 390 in total). Nevertheless, the Opposition Division is of the opinion that the information contained in the invoices indicates that the physical volumes of sales were not merely token, but sufficient for establishing a commercial scale of transactions related to the goods at issue. In that regard, it is recalled that use of the mark need not be quantitatively significant for it to be deemed genuine. Furthermore, the invoices submitted by the opponent are only samples of the invoices issued during the relevant period and should not be considered exhaustive. This can be inferred from the opponent’s assertion (submission of 13/10/2016, page 2, third paragraph from the bottom) and also from the non-consecutive numbering of the invoices. In addition, taking into account the nature of the goods sold under the mark ‘FERROMIX’ (inexpensive goods for everyday mass consumption), their rate (unit) price as mentioned above and the segment of the market that these goods target, it is concluded that a sufficiently high commercial volume of sales is shown by the evidence.

Further to this, the territorial scope is sufficiently indicated by the fact that, as shown in the invoices, the relevant goods were sold to customers that are based in several (widespread) locations in Spain and Portugal (particularly in Spain). The sufficiency of the duration of use is clearly indicated by the fact that the opponent submitted several invoices for almost every year of the relevant period (no invoices were submitted for 2015). With regard to the frequency of use, the invoices leave no doubt that sale transactions related to the goods offered under the mark ‘FERROMIX’ were carried out regularly throughout almost the entire relevant period (one invoice for each month from April 2010 until April 2014).

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of use of the earlier mark.

Nature of use

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 15(1), second subparagraph, point (a) EUTMR, the following shall also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, the earlier mark is registered as a word mark, ‘FERROMIX’. The invoices submitted by the opponent (Annexes 1 and 2) show use of the earlier mark with an additional verbal element, namely the numeral ‘250’, which is in fact only a descriptive indication of the content of the relevant goods in millilitres (ml). This can be inferred from the product catalogue and price list for 2014 (Annex 3). Furthermore, in the catalogue there is a product denomination ‘FerroMix’ clearly indicated among other product names along with a depiction of the packaging of the goods bearing this mark.

Even though in the catalogue and on the packages of the various products included therein the figurative mark ‘Dietisa’ can also be identified (as correctly emphasised by the applicant), it must be recalled that it is quite common in some market areas (such as in the pharmaceutical and food supplement industry) for goods and services to bear not only their individual mark, but also the mark of the business or product group (‘house mark’). In these cases, the registered mark is not used in a different form, but the two independent marks are validly used at the same time. This is fully applicable to the present case where the trade mark ‘Dietisa’ serves as a general indication of a product line offered by the opponent, without having any impact on the distinctiveness of the mark as registered.

In addition, there is no legal precept in the European Union trade mark system that obliges the opponent to provide evidence of the earlier mark alone when genuine use is required within the meaning of Article 42 EUTMR. Two or more trade marks may be used together in an autonomous way, or with the company name, without altering the distinctive character of the earlier registered trade mark (06/11/2014, T-463/12, MB, EU:T:2014:935, § 43). It is common practice in the trade to depict independent marks in different sizes and typeface, so these clear differences, which emphasise the house mark, indicate that two different marks are used jointly but autonomously (07/08/2014, R 1880/2013-1, HEALTHPRESSO/PRESSO, § 42).

It follows that the sign ‘FERROMIX’ used along with the other verbal or figurative elements mentioned above functions as a trade mark identifying the commercial origin of the goods provided by the opponent and that these other verbal or figurative elements do not alter the distinctive character of the mark as registered.

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR.

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

According to case-law, when applying the abovementioned provision the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories.

(14/07/2005, T-126/03, Aladin, EU:T:2005:288).

In the present case, the evidence proves use only for nutritional supplements for circulatory system. These goods can be considered to form an objective subcategory of dietetic substances adapted for medical use, namely nutritional supplements for medical use. Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for nutritional supplements for medical use. For the sake of completeness, it must be added that there is no evidence of use for the remaining opponent’s goods in Class 5.

Conclusion

Consequently, considered in its entirety, the evidence shows genuine use of the earlier trade mark for the following goods:

Class 5:        Nutritional supplements for medical use.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

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

Following the assessment of proof of use, the goods on which the opposition is based are the following:

Class 5:        Nutritional supplements for medical use.

The contested goods are the following:

Class 5:        Dietary supplements and dietetic preparations; medical and veterinary preparations and articles; food for babies; dietary supplements for animals; antioxidants; anti-oxidant food supplements; appetite stimulant preparations; appetite suppressants; appetite suppressants for medical purposes; medicated supplements for foodstuffs for animals; asthmatic tea; fibre (dietary -); dietary fiber to aid digestion; bread products for diabetics; diabetic bread adapted for medical use; diastase for medical purposes; dietetic infusions for medical use; dietetic substances for babies; dietetic preparations adapted for medical use; herbal dietary supplements for persons special dietary requirements; dietetic sugar substitutes for medical use; dietetic beverages adapted for medical purposes; dietetic substances adapted for medical use; dietetic foods adapted for invalids; dietetic foods for use in clinical nutrition; dietetic foods adapted for medical purposes; dietetic confectionery adapted for medical purposes; dietetic sugar for medical use; albuminous preparations for medical purposes; fish oil for medical purposes; nutraceuticals for use as a dietary supplement; cereals prepared for use as invalids’ foods; glucose for use as an additive to foods for medical purposes; irish moss for medical purposes; artificial sweeteners adapted for diabetics; cod liver oil; cod-liver oil drops; lysine preparations; meal replacement powders; preparations for use as additives to food for human consumption [medicated]; mineral food supplements; mineral dietary supplements for humans; multi-vitamin preparations; dietary supplemental drinks; nutritional supplements; albumin dietary supplements; flaxseed dietary supplements; flaxseed oil dietary supplements; dietary and nutritional supplements; albuminous foodstuffs for medical purposes; nutritional supplement meal replacement bars for boosting energy; nutritional additives to foodstuffs for animals, for medical purposes; alginate dietary supplements; enzyme dietary supplements; royal jelly dietary supplements; glucose dietary supplements; yeast dietary supplements; casein dietary supplements; lecithin dietary supplements; pollen dietary supplements; propolis dietary supplements; protein dietary supplements; wheat germ dietary supplements; dietary supplements for humans; health food supplements for persons with special dietary requirements; dietary supplements for infants; food for medically restricted diets; by-products of the processing of cereals for dietetic or medical purposes; protein supplements for animals; lipotropic factor preparations; soy protein dietary supplements; food for diabetics; artificial tea [for medicinal use]; vitamin A preparations; vitamin B preparations; health food supplements made principally of minerals; health food supplements made principally of vitamins; vitamin and mineral supplements; effervescent vitamin tablets; vitamin C preparations; vitamin D preparations; gummy vitamins; vitamins and vitamin preparations; vitamin drinks; mixed vitamin preparations; vitamin preparations; prenatal vitamins; vitamin preparations in the nature of food supplements; vitamin tablets; vitamin supplements; vitamin supplements for use in renal dialysis; sugar substitutes for diabetics.

Class 30:        Carbohydrate-based nutritional drink mix for use as a meal replacement; maltodextrins for nutritional use [other than medical]; tablets (non-medicated -) made of glucose with a caffeine base.

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.

Contested goods in Class 5

The contested dietary supplements and dietetic preparations; dietary supplements for animals; antioxidants; anti-oxidant food supplements; appetite stimulant preparations; appetite suppressants; appetite suppressants for medical purposes; medicated supplements for foodstuffs for animals; asthmatic tea; fibre (dietary -); dietary fiber to aid digestion; bread products for diabetics; diabetic bread adapted for medical use; diastase for medical purposes; dietetic infusions for medical use; dietetic substances for babies; dietetic preparations adapted for medical use; herbal dietary supplements for persons special dietary requirements; dietetic sugar substitutes for medical use; dietetic beverages adapted for medical purposes; dietetic substances adapted for medical use; dietetic foods adapted for invalids; dietetic foods for use in clinical nutrition; dietetic foods adapted for medical purposes; dietetic confectionery adapted for medical purposes; dietetic sugar for medical use; albuminous preparations for medical purposes; fish oil for medical purposes; nutraceuticals for use as a dietary supplement; cereals prepared for use as invalids’ foods; glucose for use as an additive to foods for medical purposes; irish moss for medical purposes; artificial sweeteners adapted for diabetics; cod liver oil; cod-liver oil drops; lysine preparations; meal replacement powders; preparations for use as additives to food for human consumption [medicated]; mineral food supplements; mineral dietary supplements for humans; multi-vitamin preparations; dietary supplemental drinks; nutritional supplements; albumin dietary supplements; flaxseed dietary supplements; flaxseed oil dietary supplements; dietary and nutritional supplements; albuminous foodstuffs for medical purposes; nutritional supplement meal replacement bars for boosting energy; nutritional additives to foodstuffs for animals, for medical purposes; alginate dietary supplements; enzyme dietary supplements; royal jelly dietary supplements; glucose dietary supplements; yeast dietary supplements; casein dietary supplements; lecithin dietary supplements; pollen dietary supplements; propolis dietary supplements; protein dietary supplements; wheat germ dietary supplements; dietary supplements for humans; health food supplements for persons with special dietary requirements; dietary supplements for infants; food for medically restricted diets; by-products of the processing of cereals for dietetic or medical purposes; protein supplements for animals; lipotropic factor preparations; soy protein dietary supplements; food for diabetics; artificial tea [for medicinal use]; vitamin A preparations; vitamin B preparations; health food supplements made principally of minerals; health food supplements made principally of vitamins; vitamin and mineral supplements; effervescent vitamin tablets; vitamin C preparations; vitamin D preparations; gummy vitamins; vitamins and vitamin preparations; vitamin drinks; mixed vitamin preparations; vitamin preparations; prenatal vitamins; vitamin preparations in the nature of food supplements; vitamin tablets; vitamin supplements; vitamin supplements for use in renal dialysis; sugar substitutes for diabetics in Class 5 are various kinds of dietary and dietetic products for humans as well as for animals. They mostly serve a specific medical purpose or supplement a normal diet and are usually taken under the supervision of a doctor.

The opponent’s nutritional supplements for medical use in Class 5 are products that are intended 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 (or the diet of an animal). Their main purpose is to enhance health and prevent diseases in human beings or animals along with their nutritional value. They are normally sold in pharmacies and target the general public.

On comparing the aforesaid goods, the Opposition Division finds that they are all either identical or similar to a high degree. The identity between some of the goods arises because the contested goods either include, as a broader category, the opponent’s goods (the contested nutritional supplements) or are included in the broader category of, or overlap with, the opponent’s goods, for example dietary supplements and dietetic preparations; dietary supplements for animals; anti-oxidant food supplements; dietary fiber to aid digestion; nutraceuticals for use as a dietary supplement; mineral food supplements. The remaining contested goods, although they might not be nutritional supplements per se, are closely related to the opponent’s goods, as these goods have very similar purposes, have the same producers, relevant publics, distribution channels and methods of use, and, furthermore, they might be in competition with the opponent’s goods, for instance the contested asthmatic tea; diastase for medical purposes; dietetic sugar substitutes for medical use; meal replacement powders; artificial tea [for medicinal use]. These contested goods are therefore similar to a high degree to the opponent’s goods.

The contested medical and veterinary preparations and articles refer to any kind of medicine, drug or material with various therapeutic indications, that is, a substance or combination of substances for curing or preventing diseases or other health-related problems (in human beings or animals). These goods can have the same purpose, relevant public and distribution channels as the opponent’s nutritional supplements for medical use described in detail above. Therefore, they are similar.

The contested food for babies consists of specially prepared nutritious substances for babies. These contested goods and the opponent’s nutritional supplements for medical use have the same purpose, namely that of providing nutrition, and they may also have the same producers and often have the same distribution channels. Therefore, they are considered similar.

Contested goods in Class 30

The contested carbohydrate-based nutritional drink mix for use as a meal replacement; maltodextrins for nutritional use [other than medical]; tablets (non-medicated -) made of glucose with a caffeine base are non-medicated meal replacement and food additives. Even though these goods and the opponent’s goods have different purposes (to improve the health and medical condition of humans and animals versus to supply the human body with energy) and natures (medicated preparations versus non-medicated food additives and food replacements), they can have the same producers, relevant public, distribution channels and methods of use. In addition, although they are not complementary to each other, they might be used in combination. Therefore, they are similar.

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 to varying degrees are directed at the public at large and at professionals with a certain amount of knowledge or expertise in the pharmaceutical or medical field.

The Opposition Division finds it appropriate to limit its examination to the part of the relevant public that is more prone to confusion, that is, the general public, which is assumed to have no specific medical knowledge. If a significant part of the relevant public for the goods at issue may be confused about the origin of the goods, that will be sufficient to establish a likelihood of confusion. It is not necessary to establish that all actual or potential consumers of the relevant goods are likely to be confused.

Given the health implications related to the goods at issue, the degree of attention varies from average (contested goods in Class 30) to high (goods in Class 5).

3. The signs

FERROMIX	FERRODIX
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 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.

In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-, Slavic- and Baltic-language areas, namely the English,- Polish-, Czech-, Slovak-, Slovenian-, Bulgarian-, Lithuanian- and Latvian-speaking parts of the general public, for which the verbal element ‘FERRO’ of the signs has no relevant meaning.

The signs under comparison are word marks, each of which is composed of one verbal element. The earlier mark is the word ‘FERROMIX’ and the contested sign is the word ‘FERRODIX’.

The Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).

In the present case, it can be reasonably assumed that the general public in the relevant language areas, on which the comparison of the signs is focused (i.e. non-medical professionals or non-pharmacists), or at least a significant part, will not discern the verbal element ‘FERRO’, which the signs have in common, as a prefix referring to the Latin word ‘ferrum’, that is, iron. Consequently, the verbal elements of the signs, ‘FERROMIX’ and ‘FERRODIX’, will be taken as a whole and will not have any particular meanings for the general public in those areas; therefore, the distinctiveness of both elements is considered average for the relevant goods.

In its submissions of 06/06/2016, the applicant contests the distinctiveness of the verbal element ‘FERRO’ and submits internet excerpts showing the use of this word on the packages of goods. However, the Opposition Division is of the opinion that there is no valid reason why the general public from the abovementioned linguistic areas of the relevant territory would dissect the element ‘FERRO’ in either of the signs, since it does not stand out visually in either word, both of which are undivided units. Furthermore, the general public cannot be expected to be familiar with Latin words and their meanings. Even though it cannot be completely excluded that the letter sequence ‘FERRO’ will be perceived by some consumers in the relevant territories as indicating the presence of iron in the relevant goods and could therefore be considered of limited distinctiveness, there will be still a significant part of the general public that will perceive both signs in their entirety. As regards the internet excerpts provided by the applicant, they are alone insufficient to prove that the word ‘FERRO’ is non-distinctive for nutritional supplements (more specifically, it is not clear from the excerpts when and where the products were distributed). Under these circumstances, the applicant’s argument must be set aside.

Nevertheless, it is likely that some consumers, especially those from the English-speaking part of the public, will recognise the earlier mark’s element ‘MIX’ as an abbreviation for ‘mixture’. Taking into consideration that the relevant goods are medicated nutritional supplements, this element is at least weak for these goods, since it provides information to consumers indicating that the goods are mixtures of more than one component. However, for the remainder of the public, this element is fanciful and has an average degree of distinctiveness for all the relevant goods.

For the sake of completeness, it must be noted that the element ‘DIX’ of the contested sign has no meaning for the general public in the relevant linguistic areas and is of average distinctiveness for the relevant goods.

In summary, for the general public in the relevant language areas, the element ‘FERRO’ in both marks and the element ‘DIX’ in the contested sign are distinctive to an average degree, whereas the element ‘MIX’ in the earlier mark is weak for the English-speaking part of the general public and of normal distinctiveness for the other parts of the general public.

Being composed of one verbal element, neither of the signs has any elements that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs have in common the sequence of letters ‘FERRO*IX’, present identically in the same order in both signs. Moreover, the signs are of the same length, both being composed of eight letters. However, the signs differ in their sixth letters, namely ‘M’ in the earlier mark and ‘D’ in the contested sign.

In this regard, it should be pointed out that the first parts of the conflicting signs, ‘FERRO’, which are of normal distinctiveness for the general public as stated above, are identical. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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.

Given that the signs have in common seven out of eight letters and that these letters are in identical positions, and considering their identical beginnings, the signs are visually similar to a high degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant language areas, the pronunciation of the signs coincides in the sound of the letters ‘FERRO*IX’, present identically in both signs. Furthermore, given that both signs consist of eight phonemes, of which seven are placed in the same order, they have the same rhythms and intonations. In contrast, the pronunciation differs in the sounds of the sixth letters of the signs, namely ‘M’ in the earlier mark and ‘D’ in the contested sign.

Bearing in mind that the signs have in common seven out of eight sounds, in identical positions, the signs are aurally similar to a high degree.

Conceptually, reference is made to the meanings of the signs and their particular elements given above.

As seen above, for the general public in the relevant territories, neither of the signs taken as a whole has a meaning. For this part of the public, a conceptual comparison is not possible and therefore the conceptual aspect does not influence the assessment of the similarity of the signs.

However, as also outlined above, part of the general public (the English-speaking part) may perceive the word ‘MIX’ of the earlier mark as an abbreviation for ‘mixture’. For this part of the public, 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.

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, contrary to the applicant’s argument, the earlier trade mark as a whole has no meaning for the relevant goods from the perspective of the general public in the relevant language areas defined above. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a weak element in the mark for part of the public as stated above in section c) of this decision.

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).

Account must also be 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 with 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).

The present assessment of likelihood of confusion considers the perception of the part of the public that is more prone to confusion, namely the general public, in certain linguistic areas of the relevant territory (i.e. the English,- Polish-, Czech-, Slovak-, Slovenian-, Bulgarian-, Lithuanian- and Latvian-speaking parts of the public). The degree of attention varies from average to high and the earlier mark enjoys a normal degree of inherent distinctiveness for the relevant goods.

As concluded above, the contested goods are identical or similar to varying degrees to the opponent’s goods.

The signs in dispute are visually and aurally highly similar due to the letter sequence ‘FERRO*IX’ that they have in common. The differences between the signs are limited to their sixth letters/sounds, namely ‘M’ in the earlier mark and ‘D’ in the contested sign. However, the Opposition Division is of the opinion that these differences are not sufficient to counteract the similarities between the signs, which result in very similar visual and aural impressions given by the signs. Even the public with a high degree of attention may be confused as to the origin of the goods in question.

Based on an overall assessment, and taking into account the principle of imperfect recollection, the Opposition Division concludes that there is a likelihood of confusion on the part of the English-, Polish-, Czech-, Slovak-, Slovenian-, Bulgarian-, Lithuanian- and Latvian-speaking parts of the public in the European Union, and therefore the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 1 876 556. 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. As outlined above, there is no need to establish that all actual or potential consumers of the relevant goods are likely to be confused.

It follows from the above that the contested sign must be rejected for all the contested goods.

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

Vít MAHELKA

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.

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.