OPPOSITION No B 2 767 856

Andrea Bamacher, Am Walzwerk 3, 7111 Parndorf, Austria (opponent), represented by Helmut Klikovits, Hauptplatz 47, 7100 Neusiedl am See, Austria (professional representative)

a g a i n s t

Rebecca Ann McKean, 16 McGrath Pl, Noranda WA 6062, Australia (holder), represented by Michelle Anne Ward, Indelible IP Limited, Woodfield House, Llanishen, Chepstow, Monmouthshire NP16 6QS, United Kingdom (professional representative).

On 13/10/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 767 856 is partially upheld, namely for the following contested goods:

Class 5: Acne creams (pharmaceutical preparations); anti-bacterial pharmaceutical preparations; anti-cancer pharmaceutical preparations; chemico-pharmaceutical preparations; elixirs (pharmaceutical preparations); filled ampoules of pharmaceutical preparations; materials for use in applying pharmaceutical preparations; pharmaceutical preparations; pharmaceutical preparations containing vitamins; pharmaceutical preparations for animals; pharmaceutical preparations for skin care; pharmaceutical preparations for topical use; pharmaceutical products; pharmaceutical substances; pharmaceutical drugs; drugs; tablets (pharmaceuticals); wipes (tissues) impregnated with pharmaceutical lotions; transdermal patches for administering pharmaceuticals; preparations for body care (pharmaceuticals); plant extracts for pharmaceutical use; moisturisers (pharmaceuticals); medical foodstuff additives for pharmaceutical use; oils adapted for medical use; oils adapted for pharmaceutical purposes; extracts of plants in capsule form (for pharmaceutical use); digestives for pharmaceutical purposes; chemical preparations for pharmaceutical purposes; biological preparations for pharmaceutical purposes; homeopathic pharmaceuticals; natural pharmaceutical products; pharmaceutical sweets; pharmaceutical tonic preparations; skincare preparations (pharmaceutical); syrups for pharmaceutical purposes; therapeutic drugs (medical); anti-cancer drugs; drugs for medical purposes; dietary food preparations for medical use (medical food); dietary food supplements; mineral dietary supplements for humans; plant compounds for use as dietary supplements (medicinal); plant extracts (dietary supplements); vitamin supplements; vitamin drinks; analgesics; adhesive bandages (dressings); compresses; detergents for medical purposes; dog washes; energy drinks (adapted for medical purposes); first-aid boxes (filled); food for babies; gum for medical purposes; herbs for medicinal purposes; herbs for smoking (for medicinal purposes); infusions for medicinal purposes made from herbs; extracts of medicinal herbs; antiseptics; cough syrups; protein dietary supplements; herbal remedies; skin care products (medicated); dietetic infusions for medical use; protein preparations for use as additives to foodstuffs for human consumption (adapted for medical purposes); dietetic foods for use in clinical nutrition; cough mixtures; mixtures of germicides and antiseptics in ointment form; medicines for human use; medicines for veterinary purposes; liniments; medicinal infusions; medicinal tea; mineral waters for medical purposes; mud for baths; mouthwashes for medical purposes; narcotics; nutritional supplements; sedatives; sunburn ointments; suppositories; tissues impregnated with pharmaceutical lotions; vaginal washes; biological agents (bacterial, fungal or other fungicides, weedkillers, herbicides, insecticides, parasiticides, pesticides); sanitary preparations for medical purposes.

2.        International registration No 1 286 919 is refused protection in respect of the European Union for all of the above goods. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all of the goods and services of international registration designating the European Union No 1 286 919, . The opposition is based on European Union trade mark registration No 13 140 901, ‘MEDIHEMP’. The opponent invoked Article 8(1)(a) and (b) as well as Article 8(5) EUTMR.

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. All the references in this decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2)(c) EUTMIR (in the version in force at the time of commencement of the adversarial part), when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

In the present case the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.

On 30/11/2016 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 12/04/2017.

The opponent did not submit any evidence concerning the reputation of the trade mark on which the opposition is based.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods and services

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

Class 3: Bath herbs.

Class 5: Herbal medicine; Medicinal herbs; Medicinal infusions; Tisanes [medicated beverages]; Medicinal herbs; Herbal teas for medicinal purposes; Herbal beverages for medicinal use; Herbal compounds for medical use; Medicinal herbs.

Class 22: Hemp.

Class 30: Herbal honey; Marinades containing herbs; Processed herbs; Infusions, not medicinal; Crackers flavoured with herbs; Infusions, not medicinal.

Class 31: Garden herbs, fresh; Garden herbs, fresh; Unprocessed herbs; Potted fresh herbs.

The contested goods and services are the following:

Class 5: Acne creams (pharmaceutical preparations); anti-bacterial pharmaceutical preparations; anti-cancer pharmaceutical preparations; chemico-pharmaceutical preparations; elixirs (pharmaceutical preparations); filled ampoules of pharmaceutical preparations; materials for use in applying pharmaceutical preparations; pharmaceutical preparations; pharmaceutical preparations containing vitamins; pharmaceutical preparations for animals; pharmaceutical preparations for skin care; pharmaceutical preparations for topical use; pharmaceutical products; pharmaceutical substances; pharmaceutical drugs; drugs; tablets (pharmaceuticals); wipes (tissues) impregnated with pharmaceutical lotions; transdermal patches for administering pharmaceuticals; preparations for body care (pharmaceuticals); plant extracts for pharmaceutical use; moisturisers (pharmaceuticals); medical foodstuff additives for pharmaceutical use; oils adapted for medical use; oils adapted for pharmaceutical purposes; extracts of plants in capsule form (for pharmaceutical use); digestives for pharmaceutical purposes; chemical preparations for pharmaceutical purposes; capsules for pharmaceutical purposes; biological preparations for pharmaceutical purposes; homeopathic pharmaceuticals; natural pharmaceutical products; pharmaceutical sweets; pharmaceutical tonic preparations; skincare preparations (pharmaceutical); syrups for pharmaceutical purposes; therapeutic drugs (medical); anti-cancer drugs; drugs for medical purposes; dietary food preparations for medical use (medical food); dietary food supplements; mineral dietary supplements for humans; plant compounds for use as dietary supplements (medicinal); plant extracts (dietary supplements); vitamin supplements; vitamin drinks; analgesics; adhesive bandages (dressings); compresses; detergents for medical purposes; dog washes; energy drinks (adapted for medical purposes); first-aid boxes (filled); food for babies; gum for medical purposes; herbs for medicinal purposes; herbs for smoking (for medicinal purposes); infusions for medicinal purposes made from herbs; extracts of medicinal herbs; antiseptics; cough syrups; protein dietary supplements; herbal remedies; skin care products (medicated); dietetic infusions for medical use; protein preparations for use as additives to foodstuffs for human consumption (adapted for medical purposes); dietetic foods for use in clinical nutrition; cough mixtures; mixtures of germicides and antiseptics in ointment form; medicines for human use; medicines for veterinary purposes; liniments; medicinal infusions; medicinal tea; mineral waters for medical purposes; mud for baths; mouthwashes for medical purposes; narcotics; nutritional supplements; sedatives; sunburn ointments; suppositories; tissues impregnated with pharmaceutical lotions; vaginal washes; biological agents (bacterial, fungal or other fungicides, weedkillers, herbicides, insecticides, parasiticides, pesticides); sanitary preparations for medical purposes.

Class 35: Retailing of goods (by any means); wholesaling of goods (by any means); discount services (retail, wholesale, or sales promotion services); distribution of goods (not being transport services) (agent, wholesale, representative services, by any means); the bringing together, for the benefit of others, a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase the goods; advertising; marketing.

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

Taking into account that ‘medicine’ is commonly defined as a drug or preparation for the treatment or prevention of disease and that the expression ‘pharmaceutical preparation’ refers to any kind of medicine, that is, a substance or combination of substances for treating or preventing disease, it has to be considered that the terms ‘medicines’, ‘drugs’ and ‘pharmaceutical(s) (preparations)’ designate the same products.

It also follows from the above that the contested acne creams (pharmaceutical preparations); anti-bacterial pharmaceutical preparations; anti-cancer pharmaceutical preparations; chemico-pharmaceutical preparations; elixirs (pharmaceutical preparations); filled ampoules of pharmaceutical preparations; pharmaceutical preparations; pharmaceutical preparations containing vitamins; pharmaceutical preparations for animals; pharmaceutical preparations for skin care; pharmaceutical preparations for topical use; pharmaceutical products; pharmaceutical substances; pharmaceutical drugs; drugs; tablets (pharmaceuticals); preparations for body care (pharmaceuticals); moisturisers (pharmaceuticals); homeopathic pharmaceuticals; natural pharmaceutical products; pharmaceutical sweets; pharmaceutical tonic preparations; skincare preparations (pharmaceutical); therapeutic drugs (medical); anti-cancer drugs; drugs for medical purposes; medicines for human use; medicines for veterinary purposes include, are included in or overlap with the opponent’s herbal medicine. Therefore, these goods are identical.

Moreover, since the contested wipes (tissues) impregnated with pharmaceutical lotions; oils adapted for medical use; oils adapted for pharmaceutical purposes; biological preparations for pharmaceutical purposes; syrups for pharmaceutical purposes; analgesics; first-aid boxes (filled); gum for medical purposes; cough syrups; skin care products (medicated); cough mixtures; liniments; mineral waters for medical purposes; mud for baths; narcotics; sedatives; sunburn ointments; suppositories; tissues impregnated with pharmaceutical lotions also qualify as medicine and could consist in herbal medicine, the same holds true for these contested goods: they overlap with the opponent’s herbal medicine, to which they are thus identical.

The various contested food, nutritional, dietary and/or dietetic supplements, drinks and/or additives are substances prepared for special dietary requirements with the purpose of treating or preventing a disease in human beings and are concentrated sources of nutrients or other substances with a nutritional or physiological effect. They are marketed in dose form, namely capsules, pastilles, tablets, pills and other similar forms, sachets of powder, ampoules of liquids, drop dispensing bottles. Moreover, according to Article 2(b) of Directive 2002/46/EC of the European Parliament and of the Council of 10 June 2002 on the approximation of the laws of the Member States relating to food supplements, the term ‘nutrients’ refers to the following substances: (i) vitamins; (ii) minerals.

In the light of the above, it has to be considered that the contested medical foodstuff additives for pharmaceutical use; digestives for pharmaceutical purposes; dietary food preparations for medical use (medical food); dietary food supplements; mineral dietary supplements for humans; plant compounds for use as dietary supplements (medicinal); plant extracts (dietary supplements); vitamin supplements; vitamin drinks; energy drinks (adapted for medical purposes); protein dietary supplements; dietetic infusions for medical use; protein preparations for use as additives to foodstuffs for human consumption (adapted for medical purposes); dietetic foods for use in clinical nutrition; nutritional supplements form a homogeneous category of dietary, dietetic, nutritional preparations, additives or supplements.

On the other hand, the opponent’s herbal medicine and medicinal herbs could take the form of dried herbs or powders for making infusions as well as of a capsule or a topical remedy, or could even be used for smoking.

As the opponent’s herbal medicine and medicinal herbs could be in dried or powder form, and taking into account that in both forms they could be used for making infusions, it may be concluded that they also fall under dietetic substances adapted for medical use. It follows from the above that the aforesaid contested goods and the opponent’s herbal medicine and medicinal herbs overlap. Therefore, they are identical.

Taking the above into account, it has to be considered that the contested plant extracts for pharmaceutical use; extracts of plants in capsule form (for pharmaceutical use); herbs for medicinal purposes; herbs for smoking (for medicinal purposes); infusions for medicinal purposes made from herbs; extracts of medicinal herbs; herbal remedies; medicinal infusions; medicinal tea are also included in or overlap with the opponent’s herbal medicine and medicinal herbs. Therefore, these goods are identical.

The contested chemical preparations for pharmaceutical purposes; detergents for medical purposes; dog washes; antiseptics; mixtures of germicides and antiseptics in ointment form; mouthwashes for medical purposes; vaginal washes; sanitary preparations for medical purposes are similar to the opponent’s herbal medicine, as they have similar purposes (treating or preventing health problems, including skin health problems) and they coincide both in usual producer and in distribution channels.

The contested food for babies is similar to a low degree to the opponent’s herbal medicine, as they have the same purpose and they can coincide in distribution channels.

The contested biological agents (bacterial, fungal or other fungicides, weedkillers, herbicides, insecticides, parasiticides, pesticides) include goods that have some similarity to the opponent’s herbal medicine. That is the case of, for example, bacterial, fungal or other fungicides. As the Opposition Division cannot dissect ex officio the broad category of contested biological agents, they have to be considered similar to a low degree to the opponent’s herbal medicine.

The contested materials for use in applying pharmaceutical preparations; transdermal patches for administering pharmaceuticals; adhesive bandages (dressings); compresses are similar to a low degree to the opponent’s herbal medicines. Although these contested goods and the opponent’s goods differ in nature, purpose and target consumer, they coincide in usual producer and distribution channels.

The contested capsules for pharmaceutical purposes are empty containers intended to be filled with pharmaceutical preparations. As such, they target undertakings in the pharmaceutical sector and in no way the public at large. Their natures and purposes also differ from those of the opponent’s goods. Moreover, they are usually not offered by the same undertakings and are not distributed through the same channels. Finally, they are neither in competition nor complementary. Therefore, they are dissimilar.

Contested services in Class 35

As regards the contested services in Class 35, the Opposition Division notes that since the contested mark has been filed for a very general specification, these services could concern in principle, any kind of product.

Due to the vagueness of the terms retailing of goods (by any means); wholesaling of goods (by any means); discount services (retail, wholesale, or sales promotion services); distribution of goods (not being transport services) (agent, wholesale, representative services, by any means); the bringing together, for the benefit of others, a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase the goods, these services cannot be construed as relating to the opponent’s goods since the purpose, qualities and methods of use have not been expressly identified in the specification.

In the absence of an express limitation clarifying the terms, the natural meaning of retailing of goods (by any means); wholesaling of goods (by any means); discount services (retail, wholesale, or sales promotion services); distribution of goods (not being transport services) (agent, wholesale, representative services, by any means); the bringing together, for the benefit of others, a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase the goods, cannot be sufficiently identified, and the services are considered not similar to the opponent’s goods.

Likewise, the remaining contested services, namely, advertising and marketing are dissimilar to any of the goods for which the earlier mark is registered. Indeed, they differ in nature, intended purpose, target public, distribution channels and usual producer. Furthermore, they are neither in competition nor complementary.

2. The signs

MEDIHEMP
Earlier trade mark	Contested sign

The marks in conflict are both composed of the single word ‘MEDIHEMP’.

The contested mark is figurative. However, the typeface in which it is depicted is so banal that it will not be given any trade mark significance. As the differences between the signs are insignificant, they are identical (20/03/2003, C-291/00, Arthur et Félicie, EU:C:2003:169, § 50-54).

3. Global assessment, other arguments and conclusion

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 the present case, the signs were found to be identical and some of the contested goods in Class 5, namely acne creams (pharmaceutical preparations); anti-bacterial pharmaceutical preparations; anti-cancer pharmaceutical preparations; chemico-pharmaceutical preparations; elixirs (pharmaceutical preparations); filled ampoules of pharmaceutical preparations; pharmaceutical preparations; pharmaceutical preparations containing vitamins; pharmaceutical preparations for animals; pharmaceutical preparations for skin care; pharmaceutical preparations for topical use; pharmaceutical products; pharmaceutical substances; pharmaceutical drugs; drugs; tablets (pharmaceuticals); wipes (tissues) impregnated with pharmaceutical lotions; preparations for body care (pharmaceuticals); plant extracts for pharmaceutical use; moisturisers (pharmaceuticals); medical foodstuff additives for pharmaceutical use; oils adapted for medical use; oils adapted for pharmaceutical purposes; extracts of plants in capsule form (for pharmaceutical use); digestives for pharmaceutical purposes; biological preparations for pharmaceutical purposes; homeopathic pharmaceuticals; natural pharmaceutical products; pharmaceutical sweets; pharmaceutical tonic preparations; skincare preparations (pharmaceutical); syrups for pharmaceutical purposes; therapeutic drugs (medical); anti-cancer drugs; drugs for medical purposes; dietary food preparations for medical use (medical food); dietary food supplements; mineral dietary supplements for humans; plant compounds for use as dietary supplements (medicinal); plant extracts (dietary supplements); vitamin supplements; vitamin drinks; analgesics; energy drinks (adapted for medical purposes); first-aid boxes (filled); gum for medical purposes; herbs for medicinal purposes; herbs for smoking (for medicinal purposes); infusions for medicinal purposes made from herbs; extracts of medicinal herbs; cough syrups; protein dietary supplements; herbal remedies; skin care products (medicated); dietetic infusions for medical use; protein preparations for use as additives to foodstuffs for human consumption (adapted for medical purposes); dietetic foods for use in clinical nutrition; cough mixtures; medicines for human use; medicines for veterinary purposes; liniments; medicinal infusions; medicinal tea; mineral waters for medical purposes; mud for baths; narcotics; nutritional supplements; sedatives; sunburn ointments; suppositories; tissues impregnated with pharmaceutical lotions, are identical.

Therefore, the opposition must be upheld under Article 8(1)(a) EUTMR for these goods.

Furthermore, most of the remaining contested goods in Class 5, namely, materials for use in applying pharmaceutical preparations; transdermal patches for administering pharmaceuticals; chemical preparations for pharmaceutical purposes; adhesive bandages (dressings); compresses; detergents for medical purposes; dog washes; food for babies; antiseptics; mixtures of germicides and antiseptics in ointment form; mouthwashes for medical purposes; vaginal washes; biological agents (bacterial, fungal or other fungicides, weed killers, herbicides, insecticides, parasiticides); sanitary preparations are similar to varying degrees to the goods covered by the earlier trade mark.

Given the identity of the signs, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition must also be upheld for these goods.

The rest of the contested goods and services 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 and services cannot be successful.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods and services because these goods and services are obviously not identical to the opponent’s goods.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) 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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Mark KING

Marine DARTEYRE

Marianna KONDAS

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.