OPPOSITION No B 2 745 183

S.C. Biofarm S.A., Str. Logofatul Tautu No.99, Sector 3, 031212 Bucharest, Romania (opponent), represented by Milcev Burbea Intellectual Property Office, 170 Stirbei Voda Street, Bl.10G, Entr.1, Floor 5, App.18, District 1, Bucharest, Romania (professional representative)

a g a i n s t

Beyer Global Healthcare GmbH, Edisonstr. 6, 59199 Bönen, Germany (holder), represented by Meinke Dabringhaus & Partner, Rosa-Luxemburg-Str. 18, 44141 Dortmund, Germany (professional representative).

On 30/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 745 183 is upheld for all the contested goods, namely:

Class 5:        Pharmaceutical and veterinary preparations; dietetic foods and substances adapted for medical and veterinary use; food for babies; food supplements for humans and animals; food supplements not for medical purposes, with a base of amino acids, minerals, trace elements and vitamins; food supplements not for medical purposes, with a base of proteins, fats, fatty acids, with added vitamins, minerals, trace elements, either singly or in combination; food supplements containing algae and/or vitamins; preparations for health care; dietetic produce adapted for medical use; medicines for human purposes; bacteriological preparations for medical use; balms for medical purposes; biological preparations for pharmaceutical purposes; haematogens; depuratives; confectionery, medicated; chemical preparations for medical purposes; chemical preparations for pharmaceutical purposes; chemico-pharmaceutical preparations; diet drinks for medical purposes; dietetic substances for medical purposes; diet food for medical purposes; food on the base of proteins for medical purposes; protein preparations for medical purposes; elixirs (pharmaceutical preparations); gelatin for medical purposes; royal jelly for medical purposes; medical drinks; glucose for medical purposes; pharmaceutical products for skincare; yeast for pharmaceutical purposes; herbal tinctures; hop extracts for pharmaceutical purposes; hormones for medical purposes; preparations of lime for pharmaceutical purposes; capsules for medical purposes; lecithin for medical purposes; lotions for pharmaceutical purposes; vitamin and mineral lozenges; magnesia for pharmaceutical purposes; malt for pharmaceutical purposes; medicinal drinks; medicinal herbal teas; medicinal tea; mineral salts; nutrients of protein base; sodium salts for medical purposes; nervines; pharmaceutical preparations; pills for pharmaceutical purposes; slimming tea for medical purposes; dextrose for medical purposes; digestives for pharmaceutical purposes; vitamin preparations; medicinal roots; sugar for medical purposes; dietetic food supplements for medical purposes; balanced diet foods with a base of minerals, vitamins in the form of drinking ampoules and tablets.

2.        International registration No 1 294 274 is refused protection in respect of the European Union for all of the contested goods. It may proceed for the remaining goods.

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

REASONS:

The opponent filed an opposition against some of the goods of international registration designating the European Union No 1 294 274 ‘Macavit’, namely against all the goods in Class 5. The opposition is based on, inter alia, Romanian trade mark registration No 124 071 ‘CAVIT’. The opponent invoked Article 8(1)(b) and 8(5) 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Romanian trade mark registration No 124 071.

1. The goods

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

Class 5:        Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

The contested goods are the following:

Class 5:        Pharmaceutical and veterinary preparations; dietetic foods and substances adapted for medical and veterinary use; food for babies; food supplements for humans and animals; food supplements not for medical purposes, with a base of amino acids, minerals, trace elements and vitamins; food supplements not for medical purposes, with a base of proteins, fats, fatty acids, with added vitamins, minerals, trace elements, either singly or in combination; food supplements containing algae and/or vitamins; preparations for health care; dietetic produce adapted for medical use; medicines for human purposes; bacteriological preparations for medical use; balms for medical purposes; biological preparations for pharmaceutical purposes; haematogens; depuratives; confectionery, medicated; chemical preparations for medical purposes; chemical preparations for pharmaceutical purposes; chemico-pharmaceutical preparations; diet drinks for medical purposes; dietetic substances for medical purposes; diet food for medical purposes; food on the base of proteins for medical purposes; protein preparations for medical purposes; elixirs (pharmaceutical preparations); gelatin for medical purposes; royal jelly for medical purposes; medical drinks; glucose for medical purposes; pharmaceutical products for skincare; yeast for pharmaceutical purposes; herbal tinctures; hop extracts for pharmaceutical purposes; hormones for medical purposes; preparations of lime for pharmaceutical purposes; capsules for medical purposes; lecithin for medical purposes; lotions for pharmaceutical purposes; vitamin and mineral lozenges; magnesia for pharmaceutical purposes; malt for pharmaceutical purposes; medicinal drinks; medicinal herbal teas; medicinal tea; mineral salts; nutrients of protein base; sodium salts for medical purposes; nervines; pharmaceutical preparations; pills for pharmaceutical purposes; slimming tea for medical purposes; dextrose for medical purposes; digestives for pharmaceutical purposes; vitamin preparations; medicinal roots; sugar for medical purposes; dietetic food supplements for medical purposes; balanced diet foods with a base of minerals, vitamins in the form of drinking ampoules and tablets.

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.

Pharmaceutical and veterinary preparations; dietetic substances adapted for medical use; food for babies; dietetic substances for medical purposes; pharmaceutical preparations are identically contained in both lists of goods (including synonyms).

The contested preparations for health care overlap with the opponent’s pharmaceutical preparations, as far as they both could be preparations for health care with pharmaceutical application. These are, therefore, considered identical.

The contested medicines for human purposes; bacteriological preparations for medical use; balms for medical purposes; biological preparations for pharmaceutical purposes; haematogens; depuratives; confectionery, medicated; chemical preparations for medical purposes; chemical preparations for pharmaceutical purposes; chemico-pharmaceutical preparations; elixirs (pharmaceutical preparations); gelatin for medical purposes; royal jelly for medical purposes; glucose for medical purposes; pharmaceutical products for skincare; yeast for pharmaceutical purposes; herbal tinctures; hop extracts for pharmaceutical purposes; hormones for medical purposes; preparations of lime for pharmaceutical purposes; capsules for medical purposes; lecithin for medical purposes; lotions for pharmaceutical purposes; vitamin and mineral lozenges; magnesia for pharmaceutical purposes; malt for pharmaceutical purposes; nervines; pills for pharmaceutical purposes; dextrose for medical purposes; digestives for pharmaceutical purposes; vitamin preparations; medicinal roots; sugar for medical purposes; vitamins in the form of drinking ampoules and tablets; medical drinks; medicinal drinks; mineral salts; sodium salts for medical purposes are included in the broad category, or overlap with the opponent’s pharmaceutical preparations. Therefore, they are identical.

The contested dietetic substances adapted for veterinary use; dietetic foods adapted for medical and veterinary use; diet food for medical purposes; food on the base of proteins for medical purposes; protein preparations for medical purposes; dietetic food supplements for medical purposes; dietetic produce adapted for medical use; diet drinks for medical purposes; medicinal herbal teas; medicinal tea; slimming tea for medical purposes (the last three could be in the form of dried herbs for making infusions) are all substances prepared for special dietary requirements, with the purpose of treating or preventing disease in humans or animals. All these goods are included in the broad category of, or overlap with the opponent’s dietetic substances adapted for medical use. The fact that some of the contested goods distinguish between human and animal use does not alter the comparison as the earlier right has protection for all dietetic substances adapted for medical use regardless of the final user. Therefore, they are considered identical.

The contested food supplements for humans and animals; food supplements containing algae and/or vitamins; balanced diet foods with a base of minerals; nutrients of protein base; food supplements not for medical purposes, with a base of amino acids, minerals, trace elements and vitamins; food supplements not for medical purposes, with a base of proteins, fats, fatty acids, with added vitamins, minerals, trace elements, either singly or in combination are concentrated sources of nutrients or other substances with a nutritional or physiological effect, whose purpose is to supplement the normal diet. The opponent’s dietetic substances adapted for medical use as specified above are substances prepared for special dietary requirements, with the purpose of treating or preventing disease in humans or animals. The goods in comparison serve for covering nutritional needs of the organism as to maintain its healthy condition. The goods in comparison could be used in combination and their method of use, namely oral administration is the same. Furthermore, they share producer, end user and distribution channels. These are, therefore, considered similar to a high degree.

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 a high degree are directed at the public at large, but also at business customers with specific professional knowledge or expertise, such as medical practitioners.

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.

It follows that the public’s degree of attentiveness may vary from average to high, depending on the price, sophistication, specialised nature, or terms and conditions of the purchased goods.

3. The signs

CAVIT                                                   Macavit

Earlier trade mark	Contested sign

The relevant territory is Romania.

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).

Both signs are word marks, the earlier one consists of the element ‘CAVIT’ and the contested one of the element ‘Macavit’. In the case of word marks, it is the word as such that is protected, and not its written form. Therefore, the use of upper or lower case letters is immaterial.

The earlier mark is a word mark, consisting of the sole element ‘CAVIT’, which does not exists as a word in the relevant territory. It is however, not excluded that part of the relevant public may dissect the element to ‘CA’ (and perceive it as referring to ‘calciu’ as in the Romanian word for calcium, see http://dictionary.reverso.net/english-romanian/calcium) and ‘VIT’ (and perceive it as referring to ‘vitamină’, as in the Romanian word for vitamin, see http://dictionary.reverso.net/english-romanian/vitamin). However, significant part of the relevant public would not dissect the sign and for this part of the relevant public the sign will bear no meaning. Therefore, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the relevant public that would not perceive any meaning in the earlier mark. As the element ‘CAVIT’ has no meaning for this part of the public, it is distinctive.

As far as the contested sign is concerned, it consists of the sole element ‘Macavit’, which has no meaning for the public in the relevant territory. In its submission, the holder argues that the contested sign ‘is made up of the substance name ‘Maca’ and the abbreviation “vit” for “vitamin”’ and it would be perceived as such. However, as far as the public in the relevant territory is concerned, it is unlikely that this public would dissect or perceive the contested sign the way it is claimed by the holder. Furthermore, the holder does not submit any evidence in support of its claim. It is, therefore, considered that the element ‘Macavit’ has no meaning and it is distinctive.  

It follows that, conceptually, neither of the signs has a meaning for the relevant part of the public. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

Visually and aurally, the signs coincide in the sequence of letters (and the sounds) ‘CAVIT’, forming the entire earlier mark and present as ‘**cavit’ in the contested sign and forming five out of seven letters in that sign. The signs differ in the first two letters (and sounds) ‘Ma’ of the contested sign, which have no counterparts in the earlier mark.

As the signs coincide in the sequence of all the letters and sounds of the earlier mark and taking in to account the distinctiveness of the sole elements of the marks, the signs are considered visually and aurally similar to an average degree.   

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.

According to the opponent, the earlier mark has been extensively used and enjoys reputation. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 relevant part 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

As concluded above, the contested goods are partly identical and partly similar to a high degree to the opponent’s goods. The degree of attention will vary from average to high when choosing the relevant goods. Furthermore, the earlier sign has an average degree of distinctiveness and the signs are found visually and aurally similar to an average degree.

The similarity between the marks lies in the visual and aural similarities arising from the sequence in common, ‘CAVIT’. This is the only element of the earlier sign and it forms the last five letters of the contested sign. Although the signs differ in their overall length, the common sequence forms a significant part of the contested sign.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

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).

Bearing in mind the foregoing, and especially the fact that the only element of the earlier mark is entirely reproduced in the contested sign, the features that the earlier mark has in common with the contested sign prevail over the differences resulting from the differing letters, ‘Ma’, of the contested sign.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public that would not dissect the element ‘CAVIT’ of the earlier mark as to perceive meanings in it. Although it cannot be excluded that part of the relevant public would dissect the sign and perceive the meanings specified above,  there is no need to establish that all actual or potential consumers of the relevant goods are likely to be confused. If a significant part of the relevant public of the goods at issue may be confused as to the origin of the goods (as is the case here), this is sufficient.

Therefore, the opposition is well founded on the basis of the opponent’s Romanian trade mark registration No 124 071. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier Romanian trade mark registration No 124 071 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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 holder 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

André Gerd Günther BOSSE

Irina SOTIROVA

Erkki MÜNTER

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.