OPPOSITION No B 2 689 316

Cape Kingdom Nutraceuticals (Pty) Ltd, Unit 80, Eden on the Bay, Big Bay Beach Estate, Big Bay 7441, South Africa (opponent), represented by Patent- und Rechtsanwaltskanzlei Daub, Bahnhofstr. 5, 88662 Überlingen, Germany (professional representative)

a g a i n s t

Bernd-Michael Löffler, Knesebeckstraße 68/69, 10623 Berlin, Germany (applicant), represented by Haupt Rechtsanwälte, Märkisches Ufer 28, 10179 Berlin, Germany (professional representative).

On 12/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 689 316 is partially upheld, namely for the following contested goods:

Class 5: Biological preparations for medical purposes; Magnesia for pharmaceutical purposes; Mineral food supplements; Nutritional supplements; Pharmaceutical preparations for animals; Pharmaceutical preparations for human use; Preparations of trace elements for human and animal use; Vitamin preparations.

2.        European Union trade mark application No 15 024 458 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 024 458. The opposition is based on European Union trade mark registration No 11 843 158. 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 5: Pharmaceutical preparations, namely anti-inflammatory capsules.

The contested goods are the following:

Class 5: Biological preparations for medical purposes; Capsules for medicines; Magnesia for pharmaceutical purposes; Mineral food supplements; Nutritional supplements; Pharmaceutical preparations for animals; Pharmaceutical preparations for human use; Preparations of trace elements for human and animal use; Vitamin preparations.

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

The term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

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 biological preparations for medical purposes; pharmaceutical preparations for animals; pharmaceutical preparations for human use; preparations of trace elements for human and animal use; vitamin preparations overlap with the opponent’s anti-inflammatory capsules. It is not unusual to find in the market preparations of trace elements and vitamin preparations serving anti-inflammatory purposes. 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 magnesia for pharmaceutical purposes; mineral food supplements; nutritional supplements are considered similar to the opponent’s anti-inflammatory capsules because they have the same purpose, namely to improve a patient’s health, they have the same distribution channels and they target the same relevant public.

The contested capsules for medicines are empty and are designed to hold a certain dosage of medicine. They have a different nature and purpose from the opponent’s anti-inflammatory capsules. The purpose of the opponent’s goods is to reduce inflammation, whereas the purpose of capsules is to hold a certain dosage of medicine – in the form of a powder or a liquid – allowing it to be taken orally. Companies producing capsules for medicine do not produce medicine as such. Capsules are sold through specialised distribution channels to pharmaceutical companies. They fill the capsules with particular medicines. Capsules for medicines are not available through pharmacies, which is where the general public buys pharmaceuticals. Consequently, their producers, end users and distribution channels are also different. The mere fact that these contested goods and the opponent’s goods are related to the medical field in general is not sufficient for a finding of similarity between them. Therefore, they are dissimilar.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical or similar are directed at the public at large and at specialised customers with specific professional knowledge or expertise.

It is apparent from the case-law that, insofar as pharmaceutical 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.

The degree of attention may vary from average to high.

3. The signs

INFLA-ACTIVE
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 common element INFLA is not meaningful in certain territories, in particular for the part of the relevant public that does not understand English. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Greek-speaking part of the public.

It cannot be ruled out that at least part of the public in Greece will understand the elements ‘ACTIVE’ and ‘ACTIF’, which form the second parts of the signs, to mean, in English, ‘in a state of action; moving, working, or doing something’ (information extracted from Collins Online Dictionary on 05/05/2017 at https://www.collinsdictionary.com/dictionary/english/active). Bearing in mind that the relevant goods are pharmaceuticals and products relating to human/animal health, these elements are weak for these goods from the perspective of the relevant public that understands their meaning, as explained above, since they may be perceived as indicating that the goods contain active pharmaceutical or medical ingredients. Therefore, taking into account the weak character of these verbal elements, it is considered that part of the public will focus its attention on the beginnings of the marks, namely the word ‘INFLA’. However, part of the public will not understand the meaning of these elements.

The contested sign has no elements that could be considered clearly more dominant 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).

Visually, the signs coincide in the string of letters ‘INFLA-ACTI’. However, they differ in the last two letters of the earlier mark and the last letter of the contested sign, namely ‘VE’ versus ‘F’, and in the figurative elements of the contested mark.

Therefore, and since the signs have a similar structure and have in common 9 out of the 11 letters of the earlier mark, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘INFLA-ACTI’, present identically in both signs. The pronunciation differs in the sound of the last two letters of the earlier mark, ‘VE’, and the last letter of the contested sign, ‘F’. However, this difference lies in the letters placed at the ends of the signs, where consonants in particular are not so strongly pronounced, while the nine letters placedat the beginnings of the signs are in identical positions.

Therefore, the signs are aurally highly similar.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territories, the elements ‘ACTIVE’ and ‘ACTIF’, may be associated by part of the public with the meaning explained above. For this part of the public, there is a low degree of conceptual similarity, considering the weak character of these elements and also the fact that they do not appear identically in the signs. Moreover, the majority of the relevant public will perceive the circle and the arrow in the figurative element of the contested mark. To that extent, the signs are conceptually dissimilar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a weak element in the mark from the perspective of part of the public as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

Article 8(1)(b) EUTMR states that, upon opposition, an EUTM application shall not be registered if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

The goods are partly identical, partly similar and partly dissimilar.

The signs are visually and aurally similar to a high degree. Conceptually, part of the relevant public may understand the elements ‘ACTIVE’ and ‘ACTIF’ in the same way and therefore, for this part of the public, there is a certain degree of conceptual similarity, although these elements are weak for the goods in question.

As the applicant correctly states in his observations, 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 his observations, the applicant argues that the earlier trade mark has a low degree of distinctive character given that there are many trade marks that include the element ‘INFLA’ or ‘ACTIVE’/‘ACTIF’. In support of his argument the applicant refers to a number of trade mark registrations in the European Union.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the abovementioned elements. Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Greek-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 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

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

The Opposition Division

Martin EBERL

Anna POLITI

Vít MAHELKA

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.