OPPOSITION No B 2 489 105

Sanitas Sociedad Anónima de Seguros, Ribera de Loira, 52 28042 Madrid, Spain (opponent), represented by Javier Ungría López, Avda. Ramón y Cajal, 78 28043 Madrid Spain (professional representative)

a g a i n s t

NaturaSanitas KG, Trierer Str. 8, 30173, Hannover, Germany (applicant), represented by Kohlhaas Partneschaft mbB, Podbielskistraße 28, 30163, Hannover, Germany (professional representative).

On 26/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 489 105 is partially upheld, namely for the following contested goods and services:

Class 5: Pharmaceutical and veterinary preparations; dietetic preparations and food supplements for medical use; food for babies. 

Class 29: Edible oils and fats; Dietetic foodstuffs and food supplements, not for medical purposes, with a base of proteins, fats, fatty acids, fruit and vegetables, including with added vitamins, minerals and/or trace elements. 

Class 30: Tea; Dietetic foodstuffs and food supplements, not for medical purposes, with a base of carbohydrates and/or roughage, including with added vitamins, minerals and/or trace elements. 

Class 32: Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages. 

Class 33: Alcoholic beverages (except beers). 

Class 35: Wholesaling and retailing in the field of pharmacy articles and goods for the health sector and foodstuffs and beverages.

2.        European Union trade mark application No 13 239 553 is rejected for all the above goods and services. 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 European Union trade mark application No 13 239 553. The opposition is based on Spanish trade mark registration Nos 3 530 529, 2 893 579, 5 476 957, 2 627 339 and 1 550 837. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

The applicant requested that the opponent submit proof of use of the Spanish trade mark registration Nos 5 476 957, 2 627 339 and 1 550 837.

The request was filed in due time and is admissible as the earlier trade marks were registered more than five years prior to the publication date of the contested application.

On 26/05/2016, the opponent was given two months to file the requested proof of use.

The opponent did not furnish any evidence concerning the use of the earlier trade marks on which the opposition is based.

According to Rule 22(2) EUTMIR, if the opposing party does not provide such proof before the time limit expires, the Office will reject the opposition

Therefore, the opposition must be rejected pursuant to Article 42(2) EUTMR and Rule 22(2) EUTMIR as regards these earlier rights.

The examination will continue on the basis of the other earlier Spanish marks on which the opposition is based.

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 and services on which the opposition is based are the following:

1) Spanish trademark registration No 3 530 529 

Class 36: Insurance services; insurance underwriting; financial estimates on insurance; information on insurance; provision of insurance for insurance companies; financial affairs; financial analysis; monetary affairs; banking affairs; remote banking (home banking); brokerage services and quotes on canvas; administration and investment capital; administration, brokerage and appraisal of buildings; real estate services; deposit of securities; issuance of credit and debit cards; fiduciary services; constitution and investment of funds; constitution of mortgage; banking, finance, monetary, insurance and real estate services on line, through telecommunications networks (including mobile phones), telematic networks and world-wide computer networks.

Class 44: Consultancy related to health; information services related to health; professional consulting with regard to health; healthcare management or healthcare; provision of information concerning health matters by phone; health care services; medical services for the treatment of person as analysis; consultation services in the field of pharmacy services personal hygiene and beauty or facilities provided by people to people.

2) Spanish trademark registration No 2 893 579

Class 29: Meat, fish, poultry and game; meat extracts; dried, preserved, cooked and frozen fruits and vegetables; preserved, cooked and frozen meat and fish; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats; meals made from meat, fish and vegetables. 

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice.

Class 32: Beers; mineral and aerated waters and other non-alcoholic drinks; syrups and other preparations for making beverages; fruit drinks and fruit juices; syrups. 

The contested goods and services are the following:

Class 3: Soaps; Perfumery, essential oils, cosmetics. 

Class 5: Pharmaceutical and veterinary preparations; dietetic preparations and food supplements for medical use; food for babies; plasters, materials for dressings; preparations for destroying vermin. 

Class 16: Printed matter; Bookbinding material; instructional and teaching material (other then apparatus). 

Class 29: Edible oils and fats; Dietetic foodstuffs and food supplements, not for medical purposes, with a base of proteins, fats, fatty acids, fruit and vegetables, including with added vitamins, minerals and/or trace elements.

Class 30: Tea; Dietetic foodstuffs and food supplements, not for medical purposes, with a base of carbohydrates and/or roughage, including with added vitamins, minerals and/or trace elements. 

Class 32: Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages.

Class 33: Alcoholic beverages (except beers).

Class 35: Wholesaling and retailing in the field of pharmacy articles and cosmetics, home appliances, goods for the health sector, printed matter and foodstuffs and beverages. 

Class 41: Providing of training; education services; organising, arranging and conducting of colloquiums, conferences, congresses, symposiums and workshops; writing and publication of texts (except publicity texts); publication of books.

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.

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

The term ‘including’ used in the applicant’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

Contested goods in Class 3

The contested goods in this Class, being perfumery and cosmetics articles, are clearly dissimilar to all the goods and services of the opponent as they have different natures, purposes, origins and distribution channels. Furthermore, they are neither complementary nor in competition.

Contested goods in Class 5

The contested pharmaceutical and veterinary preparations and dietetic preparations and food supplements for medical use are similar to a low degree to consultation services in the field of pharmacy services in Class 44 as they can coincide in end user and distribution channels. Furthermore they are complementary.

The contested food for babies is similar to a low degree to the opponent´s milk in Class 29 as they have the same purpose and nature. They can coincide in method of use.

The contested plasters, materials for dressings are medical products relating to medicine or the care of people’s health.  They can be used while providing health care or a medical service and are not independently offered to be purchased by the provider of the service; consequently, the origin and distribution channels of the goods and services are different. These goods and services are dissimilar. The contested preparations for destroying vermin are typically chemical products used to destroy harmful animals, insects, fungi and weeds (e.g. in buildings, fields or gardens). They are normally used by people involved in agriculture or gardening or by firms specialising in disinfestation. The nature, purpose and method of use of these goods are thus clearly different from those of the opponent’s health services in Class 44. Furthermore, the goods and services target different publics and there is no apparent complementary or competitive relationship between them. Consequently, they are considered to be dissimilar.

Likewise, the Opposition Division is unable to find anything relevant in common between the contested dissimilar goods in this class and the opponent’s remaining goods in Classes 29, 30 and 32 and also to the services in Class 36. In addition to differing in their nature, because goods are tangible and services are intangible, as explained above, they do not have the same purpose or commercial origin.  Furthermore, they do not have the same end users, and nor are they complementary or in competition. It follows that they are dissimilar.

Contested goods in Class 16

The contested goods are printed matter, as well as bookbinding material and instructional and teaching material (other then apparatus) are dissimilar to all the opponent’s services in Classes 36 and 44. The nature, purpose and method of use of the contested goods and the opponent’s services differ and they do not normally come from the same kind of producer/provider. In addition their methods of use, relevant publics and distribution channels do not generally coincide. Moreover, the contested goods are clearly dissimilar to the opponent’s foodstuff and beverage related goods.

Contested goods in Class 29

Edible oils and fats are identically contained in both lists of goods.

The contested dietetic foodstuffs and food supplements, not for medical purposes, with a base of proteins, fats, fatty acids, fruit and vegetables, including with added vitamins, minerals and/or trace elements are processed food ingredients which are produced for health-conscious consumers. The goods of the opponent in Classes 29 and 30 are ordinary food products, primarily meant to be for basic nourishment. The contested goods in Class 29 are sold not only in food departments of ordinary super markets but can be found in drugstores. Therefore, the conflicting goods are of similar nature, similar purposes and overlapping distribution channels which leads to the finding of similarity.

Contested goods in Class 30

Tea is identically contained in both lists of goods

Dietetic foodstuffs and food supplements, not for medical purposes, with a base of carbohydrates and/or roughage, including with added vitamins, minerals and/or trace elements are processed food ingredients which are produced for health-conscious consumers. The goods of the opponent in Classes 29 and 30 are ordinary food products, primarily meant to be for basic nourishment. The contested goods in Class 29 are sold not only in food departments of ordinary super markets but can be found in drugstores. Therefore, the conflicting goods are of similar nature, similar purposes and overlapping distribution channels leads to the finding of similarity.

Contested goods in Class 32

Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups are identically contained in both lists of goods.

The contested other preparations for making beverages are similar to a high degree to the opponent’s other non-alcoholic beverages as they have the same purpose. They can coincide in producer, end user and distribution channels. Furthermore they are in competition.

Contested goods in Class 33

The contested alcoholic beverages (except beers) are similar to beer in Class 32 as they have the same nature. They can coincide in producer, end user and distribution channels.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar (to a low degree) to these particular goods (judgment of 05/05/2015, T-715/13, ‘Castello’, paragraph 33). Although the nature, purpose and method of use of these goods and services are not the same, it should be noted that they display similarities, having regard to the fact that they are complementary and that those services are generally offered in the same places as those where the goods are offered for sale. Furthermore, they are directed at the same public.

 

Therefore, the contested services of wholesaling and retailing in the field of foodstuffs and beverages are similar to a low degree to the opponent’s goods in Class 29 containing foodstuff such as meat, fish, poultry and game and containing beverages in Class 32 such as beers; mineral and aerated waters and other non-alcoholic drinks covered by earlier right (2).

The contested wholesaling and retailing in the field of pharmacy articles and goods for the health sector are similar to a low degree to the opponent’s consultation services in the field of pharmacy in Class 44. The services may have the same end users, providers and distribution channels.

However, retail services relating to the sale of particular goods and other goods are not similar. It should be remembered that in principle goods are not similar to services. Too broad a protection would be given to retail services if similarity were found even where the goods sold at retail were highly similar to the goods covered by the other mark. Therefore, wholesaling and retailing in the field of cosmetics, home appliances, printed matter are dissimilar to the opponent’s goods in the earlier mark (2) and also to the other services covered by the other earlier mark (1). They are specific services, supplied in areas completely unrelated to, and having different natures and purposes from, the opponent’s services. They have different providers and distribution channels and are neither complementary nor in competition. Therefore, they are dissimilar.

Contested goods in Class 41

The contested services in this Class cover services rendered by persons or institutions and organisations in the development of the mental facilities of persons or animals, as well as services intended to entertain or to engage the attention. These services, mostly related to entertainment or education and training, do not have the same natures, method of use or purpose as the opponent’s services listed above. Consequently, they do not coincide in their distribution channels as they will have different types of providers and they will be addressed to different parts of the public, in particular services in Class 36 and 44 are directed at professional customers, whereas services in Class 41 usually target the public at large. The services are not complementary or in competition with each other; the fact that these services may, for instance, appear in advertisements is insufficient for finding similarity. Taking all of these differences into consideration, they are considered to be dissimilar. A similar reasoning applies to the services and the opponent´s goods.

2. Relevant public — degree of attention

The average consumer of the category of products and services 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 and services found to be identical and similar to varying degrees are directed at the public at large and some of the goods and services are also directed at business customers with specific professional knowledge or expertise. The goods and services belong to different categories, such as foodstuff products, pharmaceuticals and medicines. With regard to the first category, consumers have an average degree of attention. The second category contains products that have an impact on health and consumers will select such products with care, leading to a higher than average degree of attention.

3. The signs

1) Spanish trademark registration No 3 530 529

2) Spanish trademark registration 2 893 579 SANITAS
Earlier trade marks	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 mark 1) and the contested sign are figurative marks containing the shared word SANITAS. Although depicted in a similar typeface they contain different colours and elements. The earlier mark 1) presents the figurative element of an electrocardiogram and on a blue rectangle. As regards the contested sign, it depicts a leaf and the additional wording NATURA SANITAS.

The element ‘SANITAS’ of the signs will evoke in the minds of the relevant public the Spanish word ‘Sanidad’ or ‘Sanitario’ (meaning ‘health’ in English)This would be, at most, allusive as the goods or services relate to health. The element has a normal degree of distinctiveness. The figurative element of the earlier mark 1 with the meaning detailed above, reinforces this meaning of ‘SANITAS’, its non-distinctive for goods or services relating to the health or medical sectors.

The element ‘NATURA’ of the contested sign, which is a Spanish word, can be translated as ‘fresh’ or ‘natural’ in English, which means, inter alia, produced or existing in nature; not artificial or manufactured. Bearing in mind that the relevant goods can be natural products and that this element could be perceived as referring to a characteristic of the products, this element is weak for these goods and will not attract the attention of the consumers

Visually and aurally, the signs coincide in SANITAS, and differ in the rest of their elements. From an aural point of view, the earlier marks will be pronounced as SANITAS and the contested sign as NATURA SANITAS, but NATURA as being of a non-distinctive character is not likely to be pronounced. The signs are similar to an average degree.

Conceptually, as explained above, the public in the relevant territory will perceive an evocation to the Spanish word ‘Sanidad’ or ‘Sanitario’ in both signs. That is reinforced by the figurative element of the earlier mark No 1. The element ‘NATURA’, although it is weak, will introduce an additional concept. The signs are conceptually highly similar.

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 marks

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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal, despite their allusive character.

5. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, phonetic and conceptual similarities between the marks. The comparison "must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components" (see judgment of 11 /11/1997, C-251/95, Sabel).

The goods and services are identical, similar to varying degrees and dissimilar.

The marks are similar overall, due to the term ‘SANITAS’. Moreover, even taking into account the different figurative effects, and the additional word ’NATURA’ in the applicant´s sign, account should be taken of the fact that consumers only rarely have the chance to make a direct comparison between the different marks but must place their trust in the imperfect picture of them that they have kept in mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

The word ‘SANITAS’ is allusive to the idea of goods or services being related for health, but it does not have a clear descriptive meaning. ‘NATURA’ is clearly descriptive for the conflicting goods, which expressly refer to a fresh or natural product.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the relevant public and therefore the opposition is partly well-founded on the basis of the opponent’s Spanish trade mark registrations.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical and similar to varying degrees to those of the earlier trade marks. This conclusion furthermore stands for the contested goods and services which have been found to be similar to a low degree. This is because the similarity between the signs is significant enough to also lead to a likelihood of confusion in relation to the goods and services which only have a low degree of similarity.

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.

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 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

Cristina CRESPO MOLTÓ

José Antonio GARRIDO OTALOA

Loreto URRACA LUQUE

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.