OPPOSITION No B 2 452 335
Sigma-Tau Industrie Farmaceutiche Riunite, S.p.A. trading as Sigma-Tau S.P.A., Viale Shakespeare 47, 00144 Roma, Italy, (opponent), represented by Con Lor S.P.A., Avda. Aguilera, 19 – 1ºB, 03007 Alicante, Spain (professional representative)
a g a i n s t
Maximum Human Performance LLC, 165 Clinton Road, West Caldwell, New Jersey 07006, United States of America (applicant), represented by Cabinet Germain & Maureau 12, rue Boileau, 69006 Lyon, France (professional representative).
On 26/09/2017, the Opposition Division takes the following
DECISION:
- Opposition No B 2 452 335 is upheld for all the contested goods.
2. European Union trade mark application No 13 302 963 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 13 302 963. The opposition is based on, inter alia, international trade mark registration No 441 222 designating Spain ‘CARNICOR’.
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 international trade mark registration No 441 222 designating Spain.
- The goods
The goods on which the opposition is based are the following:
Class 5: Pharmaceutical, veterinary and sanitary products; dietetic products for children and sick persons; plasters, materials for dressings; material for dental fillings and dental impressions; disinfectants; herbicides and pesticides.
The contested goods are the following:
Class 5: Dietary and nutritional supplements; food supplements.
All the contested goods are identical to dietetic products for children and sick persons protected by the earlier mark because the opponent’s goods include are included or overlap in the contested goods.
- 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 professionals in the relevant field and the degree of attention will vary from average to high, depending on the exact nature and purpose of the goods.
- The signs
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CARNICOR |
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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).
The earlier trade mark is a word mark and, as such, it lacks dominant elements. As for the contested sign, the most dominant element, due to size and position in the sign, is the term “CARNIVOR”. The denominations “Performance Technologies”, which appear under the expression “MuscleMeds” is so small that it is likely to be disregarded by the consumers and, therefore, the Opposition Division will not take it into account in the evaluation of the signs.
In its observations, the opponent mentions that “CARNI-“, common to the marks, evokes the term “carnitine”, a compound that may be used as an athletic performance enhancer. The Opposition Division considers, however, that this knowledge will be restricted to the professionals in the medical field and will not be universally known; therefore, the average consumers will be, on the whole, unware of it and, if at all, the Spanish consumers will be instead reminded of the word “carne” (“meat”), which is not connected to the goods at issue and, therefore, this common part in the marks is distinctive. Given that the general public is more prone to confusion, the examination will proceed on this basis. The expression “MuscleMeds” is meaningless for the Spanish consumers and it is distinctive.
Visually, the signs coincide in the letters “CARNI*OR”, that is, seven out of the eight letters that compose the most dominant verbal element of the contested sign and the only element of the earlier mark and differ in the expression "MuscleMeds" and in the colours present in the contested sign. Taking into account that the only different letter in the only element of the earlier sign “CARNICOR” versus the dominant element of the contested sign “CARNIVOR” is placed in the middle of the sign, which is the part of the sign which consumers tend to forget more easily, that the size of the expression "MuscleMeds" is smaller than that of the common element and that the colours in the contested mark do not form a remarkable difference between the marks, the visual similarity between the signs is average.
The expression "MuscleMeds" will very probably be disregarded in the pronunciation of the contested sign and, consequently, aurally the signs are highly similar on account of the common sounds of the letters /carni*or/.
Conceptually, when the consumers see no concept in the marks, neither of the signs has a meaning for the public in the relevant territory. In this case, since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs. Otherwise, if the consumers see a reference to “carne” (“meat”) in “carni”, the signs are linked conceptually.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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.
- Global assessment, other arguments and conclusion
The signs are similar as regards the most dominant element of the contested mark, which accounts for an average degree of visual similarity and a high degree of aural similarity. Also, for a part of the public, the signs are conceptually linked. Taking this into account the public concerned, who is the public at large, with an average degree of attention might think that the identical goods originate from the same company or companies with economic connections.
Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 441 222 designating Spain. It follows that the contested trade mark must be rejected for all the contested goods.
As the earlier international trade mark registration No 441 222 designating Spain 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
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Angela DI BLASIO
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María Belén IBARRA DE DIEGO |
Carmen SÁNCHEZ PALOMARES
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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.