OPPOSITION No B 2 706 250

Laboratorios Deiters, S.L., Riera Montalegre, 49 – P.I. Pomar de Dalt, 08916 Badalona (Barcelona), Spain (opponent), represented by Sugrañes Patentes y Marcas, Calle de Provenza, 304, 08008 Barcelona, Spain (professional representative)

a g a i n s t

Darragh Hammond, 4&5 Charvey Business Park, Rathnew, Co. Wicklow, Ireland, Dominic Galvin, 4&5 Charvey Business Park, Rathnew, Co. Wicklow, Ireland (applicant) represented by Purdylucey Intellectual Property, 6-7 Harcourt Terrace, Dublin 2, Ireland (professional representative).

On 31/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 706 250 is upheld for all the contested goods.

2.        European Union trade mark application No 15 139 595 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 15 139 595. The opposition is based on, inter alia, Spanish trade mark registration No 3 514 315. 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.

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 Spanish trade mark registration No 3 514 315.

1. The goods

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

Class 5:        Pharmaceutical products; food supplements.

The contested goods are the following:

Class 5:        Dietary supplements; dietary supplements containing fish oils; dietary supplements containing fatty acids; dietary supplements containing omega-3 fatty acids; dietary supplements in the form of a liquid, emulsion, powder, tablet or capsule.

The contested dietary supplements; dietary supplements containing fish oils; dietary supplements containing fatty acids; dietary supplements containing omega-3 fatty acids; dietary supplements in the form of a liquid, emulsion, powder, tablet or capsule are included in the broad category of the opponent’s food supplements. Therefore, they are identical.

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 are directed at the public at large and may also be directed at the professional medical public who may recommend the goods at hand.

The degree of attention is high in both cases given that the goods in question will have an impact on the health and wellbeing of the consumers and/or patients

3. The signs

MENOGYN	MENOMIN
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 marks are word marks, neither of which has a meaning as a whole, and so both are distinctive in relation to the goods at hand.

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, the fact remains that, 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 (judgment of 13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).

In this regard, the coinciding element ‘MENO’, will be perceived, at least by part of the public, as relating to ‘menopause’, and so is weak in relation to the goods at hand for that part of the public. For the remaining part of the public ‘MENO’ is distinctive. The second parts of the signs, ‘GYN’ and ‘MIN’ have no meaning in Spanish.

The Opposition Division finds it appropriate to proceed first on the basis that the relevant consumer does perceive the allusion to ‘menopause’.

Visually, the signs have the same length and coincide in first part of the word elements ‘MENO’ which is weak as it alludes to ‘menopause’. The signs differ, however, in the second part of the word elements ‘GYN’ in the earlier sign and ‘MIN’ in the contested sign, which are distinctive as they have no meaning.  

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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. However, the coinciding element at the start of the signs in this case is weak so the attention of the relevant public will be attracted by the remaining elements that have no meaning.

Therefore, the signs similar to an average degree.

Aurally, the signs coincide exactly in the first two syllables ‘ME-NO’ and in the sound of the last two letters ‘YN’ and ‘IN’ which will have the same pronunciation for the Spanish speaker. The pronunciation differs only in the sound of the letters ‛G’ of the earlier sign and ‘M’ of the contested mark. The vowel structure, rhythm and intonation of the marks are the same and the signs rhyme.

Therefore, the signs are similar to an above average degree.

Conceptually, the signs coincide in the concept of ‘menopause’ that the weak coinciding element ‘MENO’ will evoke.

Therefore, the signs are conceptually similar to a low 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.

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, if perceived in the mark, 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 (eighth recital of the CTMR). 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).

In the present case the goods at issue have been found to be identical, the marks are aurally similar to an above average degree, visually similar to an average degree and conceptually similar to a low degree. The level of attention of the relevant public is high and the earlier mark has a normal degree of distinctive character.

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).

For those that perceive the allusion to ‘menopause’, the coinciding element ‘MENO’ is weak and will not be given trademark significance considering the goods at issue.

The attention will be attracted by the additional verbal elements, which have no meaning.  However, despite this, the overall impression of the marks is highly similar. The remaining elements at the end of the marks although they are meaningless are too similar, in particular aurally, to rule out a likelihood of confusion, even for consumers with a high degree of attention.

For the part of the public that do not perceive the allusion to ‘menopause’ the likelihood of confusion is even greater because for this part of the public the signs coincide in the distinctive element ‘MENO’ at the start of the signs where its impact is maximised.

Considering all the above, there is a likelihood of confusion on the part of the relevant public, both general and professional, in Spain.

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 3 514 315. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier Spanish trade mark registration No 3 514 315 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 right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Swetlana BRAUN

Lynn BURTCHAELL

Martin EBERL

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.