OPPOSITION No B 2 757 469

Olimp Laboratories Sp. z o.o., Nagawczyna 109 c, 39-200 Dębica, Poland (opponent), represented by Kondrat & Partners, Al. Niepodległości 223/1, 02-087 Warszawa, Poland (professional representative)

a g a i n s t

Denk Pharma GmbH & Co. KG, Prinzregentenstr. 79, 81675 München, Germany (applicant), represented by Mitscherlich, Patent- und Rechtsanwälte, PartmbB, Sonnenstraße 33, 80331 München, Germany (professional representative).

On 22/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 757 469 is upheld for all the contested goods.

2.        European Union trade mark application No 15 462 096 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 462 096. The opposition is based on European Union trade mark registration No 10 708 261. 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

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

Class 3:         Cosmetics for slimming purposes and daily skin care, perfumes and perfumery, toilet water, eau de Cologne, scented water, deodorants, antiperspirants, essential oils, creams, ointments, beauty masks, cleansing milk for toilet purposes, talcum powder, for toilet use, soaps, potpourris (fragrances), hair care preparations (cosmetics).

Class 5:         Medicines for human purposes, adjuvants for medical purposes, liquid medicines, ointments for pharmaceutical purposes, laxatives, tranquillisers, purgatives, analgesics, hygienic bandages, gauze for dressings, gases for medical purposes, vulnerary sponges, plasters for medical purposes, balms for medical purposes, therapeutic preparations for the bath, chemico-pharmaceutical preparations, bacteriological, bacterial and biological preparations for medical purposes, enzymes for pharmaceutical and medical purposes, dietetic substances adapted for medical use, food for babies, disinfectants, sanitary preparations for medical purposes.

Class 29:         High-protein concentrates and supplements, enriched with vitamins, mineral salts and amino acids, milk products, milk, yoghurts, kefir, cheese, whey, milk beverages or milk beverages, milk predominating, white of eggs, meat extracts, preserved, dried and cooked fruits and vegetables, edible oils and fats.

Class 30:         Carbohydrate and high-energy concentrates and supplements, enriched with vitamins and mineral salts, bread, specialist bread, dietetic bread, mixed cereals, including: muesli, corn flakes, oat flakes, bran, farinaceous foods, cereal preparations, coffee and chocolate-based beverages.

Class 32:         Non-alcoholic beverages enriched with vitamins and minerals, isotonic beverages, fruit juice beverages, fruit nectars, protein beverages, carbohydrate beverages and energy beverages; Non-alcoholic beverages, non-alcoholic apéritifs, fruit extracts, non-alcoholic fruit extracts, mineral and aerated waters, juices, syrups for making beverages, fruit and vegetable juices.

Class 35:        Bringing together, for others, of a variety of goods, including: cosmetics for athletes, cosmetics for slimming purposes and daily skin care, perfumes and perfumery, toilet water, eau de Cologne, scented water, deodorants, antiperspirants, essential oils, creams, ointments, beauty masks, cleansing milk for toilet purposes, talcum powder, for toilet use, soaps, potpourris (fragrances), shaving and depilatory preparations, sun-tanning preparations (cosmetics), shampoos, bath salts, hair lotions, dentifrices, medicines for human purposes, adjuvants for medical purposes, liquid medicines, ointments for pharmaceutical purposes, laxatives, tranquillisers, purgatives, analgesics, medicinal hair growth preparations, medicinal herbs, hormones for medical purposes, materials for dressings, hygienic bandages, bandages for dressings, gauze for dressings, gases for medical purposes, vulnerary sponges, plasters for medical purposes, balms for medical purposes, therapeutic preparations for the bath, chemico-pharmaceutical preparations, bacteriological, bacterial and biological preparations for medical purposes, enzymes for pharmaceutical and medical purposes, salts for mineral water baths, dietetic substances adapted for medical use, food for babies, disinfectants, sanitary preparations for medical purposes, strengthening supplements containing parapharmaceutical preparations for prophylactic purposes and for convalescents, milk products, milk, yoghurts, kefir, cheese, milk protein, whey, milk beverages or milk beverages, milk predominating, white of eggs, protein for human consumption, meat extracts, preserved, dried and cooked fruits and vegetables, edible oils and fats, high-protein concentrates and supplements, enriched with vitamins, mineral salts and amino acids, bread, specialist bread, dietetic bread, mixed cereals, including: muesli, corn flakes, oat flakes, bran, farinaceous foods, cereal products, coffee and chocolate-based beverages, soya, carbohydrate and high-energy concentrates and supplements, enriched with vitamins and mineral salts, non-alcoholic beverages, non-alcoholic apéritifs, fruit extracts, non-alcoholic fruit extracts, aerated and mineral waters, juices, syrups for making beverages, whey beverages, fruit juice beverages, fruit nectars, protein and carbohydrate beverages, non-alcoholic beverages enriched with vitamins and mineral salts, fruit and vegetable juices, enabling customers to conveniently view and purchase those goods in shops, warehouses and on websites, advertising and marketing.

The contested goods are the following:

Class 5:         Pharmaceutical preparations and chemical preparations for medical purposes; healthcare preparations; dietetic preparations for medical purposes on the basis of vitamins, mineral nutrients, trace elements, proteins and carbohydrates; food supplements for medical and non-medical purposes.

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 pharmaceutical preparations and chemical preparations for medical purposes and healthcare preparations includes as a broader category, or overlaps with, the opponent’s medicines for human purposes in Class 5 of the earlier mark. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested dietetic preparations for medical purposes on the basis of vitamins, mineral nutrients, trace elements, proteins and carbohydrates and food supplements for medical purposes are included in the broad category of the opponent’s dietetic substances adapted for medical use. Therefore, they are identical.

The contested food supplements for non-medical purposes are similar to a high degree to the opponent’s dietetic substances adapted for medical use, as they are both intended to supplement the nutrition or the diet of a human being with vitamins, proteins or whatever other supplements may be needed for the correct functioning of the body. These goods have the same purpose and method of use. They target the same public. Furthermore, they are normally manufactured by the same companies and are likely to be distributed through the same channels.

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 target both the public at large and professionals in the fields of medicine and healthcare. Some of the contested goods, such as dietetic preparations for medical purposes on the basis of vitamins, mineral nutrients, trace elements, proteins and carbohydrates and food supplements for medical and non-medical purposes, are preparations that are relatively cheap and sold directly to the consumer without prescription, while others, such as pharmaceutical preparations and chemical preparations for medical purposes includes medicines for human purposes, adjuvants for medical purposes, liquid medicines, ointments for pharmaceutical purposes, laxatives, tranquillisers, purgatives, analgesics, may be more specialised drugs for treating serious health problems. It is apparent from the case-law that, insofar as pharmaceutical preparations and some other medical preparations are concerned, the relevant public’s degree of attention is relatively high, whether or not issued on prescription (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. This high degree of attention also applies to dietetic products (dietetic substances adapted for medical use), since these goods can have a direct effect on the proper functioning of the digestion and on one’s physical appearance (15/12/2009, T-412/08, Trubion, EU:T:2009:507, § 28). The degree of attention is therefore deemed to be high.

3. The signs

	Fertilo Lady Denk
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The Opposition Division finds it appropriate to focus the comparison on the part of the public to which neither of the signs as such will convey any meaning, for example the Polish-speaking part of the public.

The word ‘lady’ has no meaning for the part of the public mentioned above that does not understand English. However, the word ‘lady’, used in both signs, will be understood as ‘a woman, especially when you are showing politeness or respect’ (information extracted from Collins English Dictionary on 13/06/2017 at www.collinsdictionary.com/dictionary/english/lady) by the part of the public that understands English, considering that ‘lady’ is a common and well-known English word.

Although a part of the relevant public may understand a part of the verbal element ‘FertiLady’, the earlier mark as a whole does not have any meaning for the relevant public, as it will not split the word into separate verbal elements.

Furthermore, the prefix ‘Ferti’ is not meaningful in Poland for the public at large.

The earlier mark is figurative sign consisting of the sequence of letters ‘FertiLady’ written in a fairly standard, bold, lower case typeface. The word ‘Fertilady’ is depicted in pink. The element ‘FertiLady’ of the earlier mark has no meaning for the relevant public and is, therefore, distinctive.

The contested sign is a word mark composed of the words ‘Fertilo Lady Denk’. The elements ‘Fertilo’, ‘Lady’ and ‘Denk’ have no meaning for the relevant public and are, therefore, distinctive.

Visually and aurally, the signs and the pronunciation of the signs coincide in the letters ‘FERTI**LADY’, present identically in both signs. However, they differ in the letters ‘LO’ and in the last word, ‘DENK’, of the contested sign, which have no counterparts in the earlier mark. Visually, they also differ in the coloured typeface of the earlier mark.

The earlier mark and the first part of the contested sign are highly similar. 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.

Therefore, the signs are visually and aurally similar to an average degree.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the element ‘lady’, included in both signs, will be associated with the meaning explained above. To that extent, the signs are conceptually similar to an average degree.

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.

5. Global assessment, other arguments and conclusion

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29).

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).

The signs are visually, aurally and conceptually similar to an average degree due to their similar verbal elements (‘FertiLady’ versus ‘Ferti** Lady’). These elements are the most important elements of the contested sign, bearing in mind what has been stated above in section c), as 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. Furthermore, none of elements of the signs has a meaning for part of the relevant public (e.g. the Polish-speaking part of the public) and all are distinctive. Therefore, the signs are similar and a likelihood of confusion cannot be ruled out.

The relevant public consists of the general public and professionals in the pharmaceutical and healthcare fields and, in both cases, the degree of attention is expected to be high due to the nature of the relevant goods. It should be pointed out that 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). However, the goods covered by the conflicting marks are identical or similar to a high degree and the general principle of interdependence of the relevant factors and, in particular, the similarity between the marks and between the goods or services, must be taken into account. The distinctiveness of the earlier mark is normal.

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

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 10 708 261. It follows that the contested trade mark 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

Dorothee SCHLIEPHAKE

Patricia LOPEZ FERNANDEZ DE CORRES

Marianna KONDAS

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.