OPPOSITION No B 2 707 837
Alter Farmacia, S.A., Mateo Inurria, 30, 28036 Madrid, Spain (opponent), represented by RyO Rodriguez Oca, S.L., Calle Juan Hurtado de Mendoza, 9 Apto. 507, 28036 Madrid, Spain (professional representative)
a g a i n s t
Cabassi & Giuriati Spa, Via Uruguay 20/22, 35100 Padova, Italy (applicant), represented by Giacinto Tommasini, Contrà Piazza del Castello 16, 36100 Vicenza, Italy (professional representative).
On 31/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 707 837 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 107 931, namely against all the goods in Classes 5 and 31. The opposition is based on European Union trade mark registration No 3 823 333 and Spanish trade mark registration No 688 618. 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 688 618.
- The goods
The goods on which the opposition is based are the following:
| Class 31: | Agricultural, horticultural and forestry products and grains not included in other classes; live animals; fruits, fresh vegetables; seeds, live plants and flowers; substances for animal feed and malt.
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The contested goods are the following:
| Class 5: | Dietary supplements and dietetic preparations; medical and veterinary preparations and articles.
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| Class 31: | Plants.
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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
The contested dietary supplements and dietetic preparations; medical and veterinary preparations and articles relate to human and animal healthcare. Their nature, purpose and method of use are different from those of all of the opponent’s goods, which are agricultural products, plants, flowers, live animals and substances for feeding them. They are not in competition or complementary and are not typically produced by the same undertaking or related undertakings. Moreover, they target different publics and are commercialised through different distribution channels. Therefore, they are dissimilar.
Contested goods in Class 31
The contested plants are included in the broad category of, or overlap with, the opponent’s live plants and flowers. Therefore, they are identical.
- 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. The public’s degree of attention will be average.
- The signs
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NUTRIBABY
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Nutriva Spirulina MR |
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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).
When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.
As regards both signs, the relevant consumers will break down the whole earlier mark and the first element of the contested sign into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58). More specifically, they will clearly perceive the element ‘Nutri’ as referring to the word ‘nutrition’ (i.e. ‘nutrición’ in Spanish), and, in relation to the relevant goods that are plants, this element will be considered weak, as it could describe the purpose of the goods in question. As regards the earlier mark, its second element, ‘BABY’, will be understood by the relevant public as referring to a characteristic of the goods (plants), as it is a very basic English word. It will therefore also be weak in relation to such goods.
The word ‘Spirulina’ (i.e. ‘espirulina’ in Spanish) in the contested sign could be associated by a part of the relevant public with the common dietary supplement of the same name, made of biomass of cyanobacteria (blue-green algae) that can be consumed by humans and other animals. Therefore, for this part of the public, it will be non-distinctive for all the relevant goods that are plants. For the remaining part of the public, which does not understand this technical term, it will be distinctive.
The opponent states that the verbal element ‘MR’ in the contested sign will be associated by the relevant public with the abbreviation for the English word ‘mister’; however, the Opposition Division does not agree. Bearing in mind the relevant goods, it is considered that the relevant public will not associate it with that meaning. Even if it does, the element ‘MR’ is still considered not descriptive, allusive or otherwise weak for the relevant goods, and it is, therefore, distinctive.
The comparison of the signs will focus on the best-case scenario for the opponent, that is, on the part of the public that will understand the term ‘Spirulina’, and for which it will be non-distinctive.
Since both signs are word marks, they have no elements that could be considered more dominant (visually eye-catching) than other elements.
Visually, the signs coincide in the weak element ‘Nutri’. However, they differ in the endings of their verbal elements, ‘BABY’ (also weak) versus ‘va’, and in the additional verbal elements of the contested sign, namely ‘Spirulina’ (non-distinctive) and ‘MR’ (distinctive). Moreover, the earlier mark is significantly shorter (9 versus 18 letters) and its structure is also quite different (one word versus three words).
Therefore, as the signs differ significantly in their lengths and structures, and coincide mainly in a weak element, they are visually similar to a low degree.
Aurally, the pronunciation of the signs coincides in the sound of the first three syllables, /Nu-tri-(b/v)a/ (the letters ‘b’ and ‘v’ are pronounced identically in Spanish). These three syllables belong to weak elements of the earlier mark. The pronunciation differs in the fourth syllable, /BY/, of the earlier mark, and in the sound of the letters of the additional elements /Spirulina/ (non-distinctive) and /MR/ (distinctive) of the contested sign, none of which has a counterpart in the other sign.
Therefore, because the additional elements make the contested sign much longer (with a higher number of syllables), its rhythm and intonation are quite different from those of the earlier mark. Furthermore, the coincidence results from weak elements of the earlier mark. The signs are aurally similar to a low degree.
Conceptually, reference is made to the meanings explained above. The earlier mark will be associated with the combination of the concepts carried by ‘NUTRI’ (nutrition) and ‘BABY’ (referring to the intended public or the size or age of the goods). In the contested sign, although as a whole it does not have any meaning for the public in the relevant territory, the weak element ‘Nutri’ will be associated with the same meaning explained above. The word ‘Spirulina’ will be associated with the meaning explained above, and, despite being non-distinctive, will have an impact on the overall concept conveyed by the contested sign and also to the presence of the distinctive element ‘MR’ in the contested mark.
As the signs incorporate elements with different meanings and as the coinciding element is weak for the relevant goods, the signs are conceptually similar to a very 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.
- 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 clear meaning for any of the goods in question from the perspective of the public in the relevant territory, since the combination of its elements is unusual and fanciful. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of weak elements in the mark as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
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.
The goods in this case are identical, and the degree of attention of the relevant public will be average. The distinctiveness of the earlier mark is considered normal.
The commonalities between the signs result from a weak element (‘NUTRI’) and are less obvious than the differences. Moreover, the impact of the commonalities will be limited when assessing the overall likelihood of confusion, as there are additional elements of normal distinctiveness that are able to counterbalance them. All of this ultimately renders the signs similar to a low or very low degree in all three aspects of the comparison, as the elements that differ between the earlier mark and the contested sign are clearly perceptible and sufficient to exclude any likelihood of confusion between the signs, even though ‘Spirulina’ is non-distinctive and ‘BABY’ is weak. When considered as a whole, the differences are sufficient to counteract the commonalities between the signs even for identical goods.
Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
This absence of a likelihood of confusion equally applies to the part of the public for which the element ‘Spirulina’ is distinctive. This is because, as a result of the distinctive character of that element, that part of the public will perceive the signs as being even less similar.
The rest of the contested goods 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 based on the opponent’s Spanish trade mark registration No 688 618 cannot be successful.
As the opposition is based on more than one earlier trade mark, the Opposition Division will continue with the examination of the opposition in relation to the opponent’s European Union trade mark registration No 3 823 333.
- The goods
The goods on which the opposition is based are the following:
| Class 5: | Dietetic food products for medical purposes; dietetic substances adapted for medical use; food for babies; vitaminized products.
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| Class 29: | Meat, fish and poultry; meat extracts; eggs, milk and milk products; preserved fruits and vegetables; jellies, jams, compotes.
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| Class 30: | Tea, cocoa, sugar, flour and preparations made from cereals; ices.
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| Class 32: | Mineral and aerated waters and other non-alcoholic drinks; fruit juices.
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The contested goods are the following:
| Class 5: | Dietary supplements and dietetic preparations; medical and veterinary preparations and articles.
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| Class 31: | Plants.
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Contested goods in Class 5
The contested medical preparations and articles; dietary supplements and dietetic preparations include, as broader categories, or overlap with, the opponent’s dietetic food products for medical purposes. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.
The contested veterinary preparations and articles overlap with the opponent’s vitaminized products. Therefore, they are identical.
Contested goods in Class 31
The contested plants are agricultural products not having been subjected to any form of preparation for consumption and the opponent’s goods are basically medical products (Class 5), foodstuffs of animal origin and vegetables and other horticultural comestible products prepared for consumption or conservation (Class 29), products of plant origin prepared for human consumption or for conservation (Class 30) and non-alcoholic beverages (Class 32). Therefore, they have different natures, purposes and methods of use. They are not in competition or complementary and are not typically produced by the same undertaking or related undertakings. They are generally commercialised through different distribution channels and target different publics. The fact that some plants are used as ingredients or components that, after processing or preparation for human consumption, are the basis or main ingredient of goods included in the opponent’s list is too tenuous a link to consider that there is any similarity between them. Therefore, they are dissimilar.
- 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 at business customers with specific professional knowledge or expertise in the medical and veterinary fields.
The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the purchased goods and services.
It is apparent from the case-law that, insofar as medical 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.
- The signs
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NUTRIBEN
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Nutriva Spirulina MR |
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Earlier trade marks |
Contested sign |
The relevant territory is the European Union.
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.
Although the signs as a whole do not have any meaning for the public in the relevant territory, the element ‘NUTRI’, included in both signs, could be perceived by part of the public as referring to the word ‘nutrition’, either because it is used in the language of the territory (e.g., in Spanish, in words such as ‘nutrición’ or ‘nutrir’) or because, as a prefix coming from Latin used in science and medicine, it may be associated by professionals in the pharmaceutical and medical fields with a reference to nourishment. For part of the public in the relevant territory, for example the Polish-speaking part of the general public, this prefix will not convey any meaning and, therefore, ‘NUTRIBEN’ and ‘Nutriva’ will be perceived as meaningless, fanciful and indivisible terms.
Since both signs are word marks, they have no elements that could be considered more dominant (visually eye-catching) than other elements.
The word ‘Spirulina’ in the contested sign exists in some of the relevant languages, such as Polish, and will be associated by a part of the relevant public with the common dietary supplement of the same name, made of biomass of cyanobacteria (blue-green algae) that can be consumed by humans and other animals. Therefore, for this part of the public, it will be non-distinctive, as it could be perceived as referring to the main ingredient of all the relevant goods. For the remaining part of the public, which does not understand this term, it will be distinctive.
As stated above, the opponent states that the verbal element ‘MR’ in the contested sign will be associated by the relevant public with the abbreviation for the English word ‘mister’; however, the Opposition Division does not agree. Bearing in mind the relevant goods, it is considered that the relevant public will not associate it with that meaning. Even if it does, the element ‘MR’ is still considered not descriptive, allusive or otherwise weak for the relevant goods, and it is, therefore, distinctive.
The comparison of the signs will focus on the best-case scenario for the opponent, that is, on the part of the public, such as the Polish-speaking part of the general public, that does not attribute any meaning to the prefix ‘NUTRI’ and consequently will not dissect the words ‘NUTRIBEN’ and ‘Nutriva’, and at the same time will understand the term ‘Spirulina’.
Visually, the signs coincide in five letters, namely ‘Nutri’. However, they differ in the endings of the earlier mark and of the first element of the contested sign, namely ‘BEN’ versus ‘va’, and in the additional verbal elements of the contested sign, namely ‘Spirulina’, which is not distinctive, and ‘MR’, which is distinctive to an average degree. Moreover, the earlier mark is significantly shorter (8 versus 18 letters) and the structures of the signs are also quite different (one word versus three words).
Therefore, as the signs differ significantly in their lengths and structures, they are visually similar to a low degree.
Aurally, the pronunciation of the signs coincides in the sound of the first two syllables, /Nu-tri/, in both signs. The pronunciation differs in their third syllable, /BEN/ versus /va/, and in the sound of the letters of the additional elements of the contested sign, /Spirulina/ (non-distinctive) and /MR/ (distinctive to an average degree), neither of which has a counterpart in the earlier mark.
Therefore, because the additional elements make the contested sign much longer (with a higher number of syllables), its rhythm and intonation are different from those of the earlier mark. Consequently, the signs are aurally similar to a low degree.
Conceptually, reference is made to the meanings explained above. The earlier mark has no meaning for the relevant public. In the contested sign, although as a whole it does not have any meaning for the public in the relevant territory, the non-distinctive word ‘Spirulina’ will be associated with the dietary supplement, as explained above. Since one of the signs will not be associated with any meaning, the signs are conceptually not similar.
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 this earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
The goods are partly identical and partly dissimilar.
The commonalities between the signs again result from the letters ‘NUTRI’. However, as explained in section e) of this decision, once again the differing elements are able to safely counterbalance the commonalities by virtue of ‘MR’, which is distinctive to an average degree, the differing endings ‘BEN’ versus ‘va’ and the additional term ‘Spirulina’, which, in spite of being non-distinctive, is clearly perceptible and introduces an additional concept that will help the public distinguish between the signs. All of this makes the signs visually and aurally similar to a low degree and conceptually not similar.
This holds true for the relevant public, both the general public and specialised consumers, who will pay a high degree of attention when purchasing or selecting the relevant goods in Class 5. When considered as a whole, the differences stated above are sufficient to counteract the similarities between the signs. Therefore, the similarities are not sufficient to lead to a likelihood of confusion on the part of the public.
Considering all the above, even for identical goods, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
This absence of a likelihood of confusion equally applies to the part of the public for which the element ‘Spirulina’ is distinctive. This is because, as a result of the distinctive character of that element, that part of the public will perceive the signs as being even less similar. By the same token, those who would dissect the words that contain the coinciding letters would associate the element ‘NUTRI’ with the meanings explained above, and this element would be weak for the relevant goods. Consequently, this element also would have less impact on the overall perception of the signs.
The rest of the contested goods 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 based on the opponent’s European Union trade mark registration No 3 823 333 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.
Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
| Elisa ZAERA CUADRADO | Fabián GARCIA QUINTO | Zuzanna STOJKOWICZ |
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.