OPPOSITION No B 2 224 817
St. Johanser Naturmittelvertrieb GmbH, Starnberger Str. 15 , 82131 Gauting, Germany (opponent), represented by Kraus & Weisert, Thomas-Wimmer-Ring 15, 80539 Munich, Germany (professional representative)
a g a i n s t
Marigot Limited, Strand Farm, Currabinny Carrigaline, Co. Cork, Ireland (applicant), represented by Tomkins & Co., 5 Dartmouth Road, Dublin 6, Ireland (professional representative).
On 31/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 224 817 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 11 660 917. The opposition is based on German mark registration No 39 842 000. 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 goods
The goods on which the opposition is based are the following:
Class 5: Dietetic preparations for medical use, namely food supplements, except those containing carnitine.
The contested goods are the following:
Class 5: Dietary and nutritional supplements; vitamin and mineral preparations; multi-vitamin and multi-mineral preparations; nutritional and dietary supplements; dietetic substances adapted for medical use; food supplements; tonics and nutritional additives; vitamins, minerals and mineral salts; preparations included in Class 5 consisting of vitamins and/or minerals.
An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.
The term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.
The contested dietary and nutritional supplements; vitamin and mineral preparations; multi-vitamin and multi-mineral preparations; nutritional and dietary supplements; dietetic substances adapted for medical use; food supplements; tonics and nutritional additives; vitamins, minerals and mineral salts; preparations included in Class 5 consisting of vitamins and/or minerals are substances intended to supply one or more nutrients missing from a diet and, when they have medical use, they are also aimed at preventing and/or treating diseases. These goods overlap with, the opponent’s food supplements, except those containing carnitine, when they do not contain carnitine. 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 both the public at large and healthcare professionals, such as, for instance, dieticians, trainers and fitness professionals. The degree of attention of the public will vary from average to high depending whether the goods – which are, essentially, food supplements, vitamins and dietary preparations – are, or are not, for medical use (04/03/2015, T-543/13, PRANAYUR, EU:T:2015:134, § 25, referring to goods in Class 5 not for medical use; 10/02/2015, T-368/13, ANGIPAX, EU:T:2015:81, § 42-46, referring to dietetic products for medical purposes).
- The signs
| BiOcean
|
OSEAN
|
|
Earlier trade mark |
Contested sign |
The relevant territory is Germany.
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).
As a general rule when a sign is registered as a word mark, it is the word as such what is protected and not its written form; therefore, the typeface actually used at the moment of the filing of the mark is irrelevant. In the present case differences in the use of lower or upper case letters as it is in the case of the earlier mark ‘BiOcean’ are immaterial, even if lower case and upper case letters alternate. Dissecting a mark in more elements is not appropriate unless the relevant public will clearly perceive the components in question as separate elements. This may happen, for instance, when a word element can be identified as such in an isolated manner because of its clear meaning. Indeed, a consumer perceiving a complex verbal sign will break it down into elements which, for it, suggest a concrete meaning or which resemble words known to it (06/10/2004, T-356/02, Vitakraft, EU:T:2004:292, § 51, and 13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).
In the present case, given the nature of the goods at hand, it cannot be excluded that some consumers may see the mark as containing the prefixes ‘BIO’ (used to describe the ‘biological’/’organic’ nature of, for instance, supplements) or ‘BI’ (used in terms such as ‘bicarbonate’ or meaning ‘double’, as mentioned by the parties). Nonetheless, in this case, dissecting the mark would create expressions such as ‘BIO-CEAN’ or ‘BI-OCEAN’ that, taken as a whole, convey no clear meaning in the mind of the relevant public. Hence, the Opposition Division finds that the earlier mark will be perceived by the majority of the German relevant public as the meaningless and, therefore, distinctive word ‘BIOCEAN’.
The contested sign consists of a single word ‘OSEAN’, which will not trigger any meaning in German and is, therefore, distinctive.
Both the earlier mark and contested sign are word marks and, therefore, they have no elements that could be considered clearly more dominant than other elements.
Visually, the signs coincide in the letters ‘*-*-O-*-E-A-N’. However, they differ in the letters ‘B-I’ and ‘C’ of the earlier mark, as well as in the letter ‘S’ of the contested sign. 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. Therefore, the differing elements ‘BI’ in the beginning of the earlier mark will have a relevant impact to the visual perception of the sign. Moreover, the marks do not have the same length (seven versus five letters) and structure. Therefore, they are visually similar to a low degree.
Aurally, the earlier mark will be pronounced in four syllables as ‘BI/O/CE/AN’, while the contested sign is pronounced in three syllables as ‘O/SE/AN’. The presence of the first syllable ‘BI’ in the earlier sign, which has no counterpart in the contested EUTM application, and the different length of the signs will lead to a different intonation and rhythm when pronouncing the words BI/O/CE/AN’ and ‘O/SE/AN’. In addition, the different sound of the syllable /CE/ (in the earlier mark) and of the syllable /SE/ will definitely be noticed by the German relevant public. Therefore, the similarity of the signs is limited to a low degree.
Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.
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 relevant goods are identical and target both the professional and the general public, whose level of attention will vary from average to high. The earlier mark has a normal degree of distinctive character.
The signs have been considered visually and aurally similar only to a low degree, while a conceptual comparison is not possible, due to the lack of meaning of the words ‘BIOCEAN’ ad ‘OSEAN’ for the majority of the German public. In fact, the tenuous similarities between the marks are overshadowed by the relevant differences in their length and structure, as well as, in their intonation and rhythm, when pronounced. In particular, one of the differences (i.e. the ‘BI’ of the earlier mark) is positioned in the beginning of the sign, where consumers tend to focus their attention. Another relevant difference observed by the Opposition Division is in the pronunciation of the letters ‘C’ of the earlier mark and ‘S’ of the contested sign, which have a total different sound in German. Therefore, it has to be considered that the presence of the additional and differing letters is clearly perceptible and sufficient to exclude any likelihood of confusion between the marks.
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; a lesser degree of similarity between the 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, however, taking into account the overall impression of the signs, it is considered that the visual and aural differences cannot be outweighed by the identity between the relevant goods, for the reasons explained above.
In its observations, the opponent states that the earlier mark may be perceived as the combination of the prefix ‘BI’ and the English term ‘OCEAN’ and, consequently, understood as meaning ‘two oceans’. According to the opponent, such perception will lead the public to confuse the marks in conflict. However, besides noting that it appears unlikely that the majority of the German relevant public will understand the earlier mark as referring to the expression ‘two oceans’, whose meaning seems rather abstract and vague, even under such scenario, the overall impression of the signs will be dissimilar. Indeed, the presence of the prefix ‘BI’, which has no descriptive meaning in relation to the relevant goods, will not be visually and aurally overlooked by consumers. In addition, should the earlier mark evoke the concept of ‘two oceans’ or ‘a double ocean’, such perception would lead to a finding that there is no conceptual similarity between the signs.
Considering all the above, the Opposition Division finds that there is no likelihood of confusion on the public. Therefore, the opposition must be rejected.
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
| Pierluigi M. VILLANI | Orsola LAMBERTI | María Clara
IBÁÑEZ FIORILLO |
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.