OPPOSITION No B 2 517 657

Planta Medica S.r.l., Via della Libertà, 37/bis- Frz. Pistrino, 06010 Citerna (PG), Italy (opponent), represented by Dr. Modiano & Associati S.P.A., Via Meravigli, 16, 20123 Milano, Italy (professional representative)

a g a i n s t

Manfred Scheffler, Am Sportplatz 3, 56291 Leiningen, Germany (applicant), represented by Forstmann & Büttner Rechtsanwaltkanzlei, Beethovenstr. 35, 60325 Frankfurt am Main, Germany (professional representative).

On 06/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 517 657 is partially upheld, namely for the following contested goods:

Class 5:        Healthcare products, dietetic foods; dietetic foodstuffs for special medical purposes, medicinal products; food supplements for medical and non-medical purposes; pharmaceutical preparations.

Class 30:        Tea.

2.        European Union trade mark application No 13 614 664 is rejected for all the above goods. It may proceed for the remaining goods, namely for:

Class 29:        Meat, fish, poultry and game; Meat extracts; Preserved, frozen, dried and cooked fruits and vegetables; Jellies, jams; Fruit, stewed; Eggs, milk and milk products; Edible oils and fats.

Class 30:        Coffee, 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.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 13 614 664. The opposition is based on:

• European Union trade mark registration No 1 047 539 ;

• Italian trade mark registration No 543 661 ;

• Italian company name ‘PLANTA MEDICA’ (word).

The opponent invoked Article 8(1)(b) and 8(4) 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 European Union trade mark registration No 1 047 539.

1. The goods

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

Class 5:        Dietetic food preparations adapted for medical purposes, balsamic preparations, drugs for medical purposes, elixirs [pharmaceutical preparations], medicinal herbs, medicinal infusions, laxatives, oils for medical purposes, medicinal drinks, medicinal roots, tonics [medicine], vitamin preparations, sedatives, herb teas.

The contested goods are the following:

Class 5:        Healthcare products, dietetic foods; dietetic foodstuffs for special medical purposes, medicinal products; food supplements for medical and non-medical purposes; pharmaceutical preparations.

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

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.

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

Dietetic foodstuffs for special medical purposes are identically contained in both lists of goods (including synonyms).

The contested healthcare products, dietetic foods include, as broader categories, or overlap with the opponent’s dietetic food preparations adapted 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 medicinal products include, as a broader category, the opponent’s drugs for medical purposes. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested food supplements for medical and non-medical purposes include, as a broader category, the opponent’s vitamin preparations. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested pharmaceutical preparations include, as a broader category, the opponent’s elixirs [pharmaceutical preparations]. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Contested goods in Class 29

The contested meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams; fruit, stewed; eggs, milk and milk products; edible oils and fats include mainly foodstuffs of animal origin, as well as vegetables and other horticultural comestible products that are prepared for consumption or conservation. These contested goods, being foodstuffs or food-related goods, such as ingredients for preparing food, and all the opponent’s goods in Class 5, which are pharmaceutical and medicinal products, clearly have different natures, purposes (providing nutrition or for preparing meals versus treating or preventing diseases), producers, relevant publics and distribution channels (groceries and supermarkets versus pharmacies and specialised shops), and they are not interchangeable or in competition with each other. Therefore, they are dissimilar.

Contested goods in Class 30

The contested tea and the opponent’s herb teas in Class 5 could have the same distribution channels, and they have the same nature, target the same public and have the same method of use. Therefore, they are similar.

The contested coffee, 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 include mainly foodstuffs of flour or bean origin, as well as additives for baking or cooking, substances for making beverages and cooling agents. These contested goods, being foodstuffs or food-related goods, such as ingredients for preparing food, and all the opponent’s goods in Class 5, which are pharmaceutical and medicinal products, clearly have different natures, purposes (providing nutrition or for preparing meals versus treating or preventing diseases), producers, relevant publics and distribution channels (groceries and supermarkets versus pharmacies and specialised shops), and they are not interchangeable or in competition with each other. Therefore, they are dissimilar.

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 or similar are directed at the public at large as well as professionals.

The degree of attention may vary from average (e.g. for tea in Class 30) to high, depending on the specialised nature of the goods in Class 5.

It is apparent from the case-law that, insofar as pharmaceutical 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 case-law cited).

In particular, medical professionals have a high degree of attentiveness when prescribing medicines. The public at large also have a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health.

Given that the public at large is more prone to confusion, the examination will proceed on this basis.

3. The signs

	Plantafood Medical
Earlier trade mark	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.

The element ‘PLANTA’, which the signs have in common, is not meaningful in certain territories for the public at large, for example, in those countries where Spanish or Italian is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Estonian-, Latvian- and Lithuanian-speaking parts of the public such as the public in Estonia, Latvia and Lithuania.

The earlier mark is a figurative mark containing the words ‘PLANTA MEDICA’ written in upper case letters. Above the textual element, there is a circular figure separated into four equal parts forming a cross inside a circle. In each of the four parts there is an identical image of a leaf. The contested mark, ‘Plantafood Medical’, is a word mark and therefore the word as such is protected and not its written form.

The element ‘FOOD’ of the contested sign is a common and basic English word that will immediately be associated by the relevant public with ‘any nutritious substance that people or animals eat or drink in order to maintain life and growth; nourishment, provisions’ (information extracted from Oxford English Dictionary online on 06/06/2017 at http://www.oed.com/view/Entry/72632?rskey=iPhKBD&result=1#eid ); therefore, the public is likely to recognise it and split up the word ‘plantafood’. Bearing in mind that the relevant goods are or may be related to ‘food (supplements)’, this element is weak for these goods.

The elements ‘MEDICA’ in the earlier mark and ‘MEDICAL’ in the contested sign are common and basic words in the relevant market segment, the health and pharmaceutical sector, so they will be understood even if they are not part of the language of the relevant public. Bearing in mind that the relevant goods are health care products and pharmaceutical products or products that may also have health benefits, these elements are weak for all the relevant goods.

The most distinctive verbal element in each of the marks is the word ‘PLANTA’, which is present as the first verbal element in both marks.

Neither of the marks has any elements that could be considered clearly more dominant than other elements.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

The figurative elements in the earlier mark will be of limited distinctiveness, since the goods are medical- and health-related preparations, and crosses are associated with medical products. The leaves in the earlier mark will also be of limited distinctiveness, since they will be seen as indicating that the goods are of plant origin (e.g. herbal products such as tea). The verbal element of the opponent’s mark will therefore have a greater impact on the consumers.

Visually, the signs coincide in that they both include the strings of letters ‘PLANTA*’ and ‘MEDICA*’. However, they differ in the additional letters ‘FOOD’ in the middle of the contested sign and in the letter ‘L’ at the end of the contested sign. They also differ in that the earlier mark includes a figurative element that has no counterpart in the contested sign.

Both marks include the text ‘PLANTA’ and ‘MEDICA’, which together form all the text in the earlier mark. Therefore, and considering that the element ‘PLANTA’ is distinctive in both signs, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛PLANTA*’ and ‘MEDICA*’, present identically in both signs. The pronunciation differs in the sound of the letters ‛*FOOD’ and ‘*L’ of the contested sign, which have no counterparts in the earlier 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, and taking into account the above considerations with regard to the distinctiveness of the verbal elements of the signs, the signs are aurally similar to at least an average degree.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the elements ‘MEDICA’ and ‘MEDICAL’, in the earlier and contested signs, respectively, will be associated with the meaning explained above (reinforced to a certain extent also by the figurative device in the earlier mark) and are therefore weak. To that extent, the signs are conceptually similar to a lower than average 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 weak elements in the mark as stated above in section c) of this decision.

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5. Global assessment, other arguments and conclusion

A likelihood of confusion on the part of the public must be assessed globally. That global assessment implies some interdependence between the factors taken into account and in particular a similarity between the marks and between the goods or services covered. Accordingly, a lesser degree of similarity between these goods or 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; and 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19). The more distinctive the earlier mark, the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

The goods are partly identical, partly similar and partly dissimilar. The signs are visually and aurally similar to an average degree and conceptually similar to a lower than average degree.

Taking into account the visual, aural and conceptual similarities between the signs and the distinctive element ‘PLANTA’ that the marks have in common, the average degree of distinctiveness of the earlier trade mark and the identity and similarity between the goods, even for those members of the public with a higher than average degree of attention, and despite the figurative element in the earlier mark, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public at large in Estonia, Latvia and Lithuania and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since some of the goods are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected, as far as the dissimilar goods are concerned.

The opponent has also based its opposition on the following earlier trade mark:

• Italian trade mark registration No 543 661 .

Since this mark covers a narrower scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

Therefore, the opposition is partly well founded under Article 8(1)(b) EUTMR.

NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR – ITALIAN COMPANY NAME PLANTA MEDICA

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a)        rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b)        that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

• the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

• pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

• the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non-registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

1. Prior use in the course of trade of more than mere local significance

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights. Furthermore, such use must indicate that the sign in question is of more than mere local significance.

It must be recalled that the object of the condition laid down in Article 8(4) EUTMR relating to use in the course of trade of a sign of more than mere local significance is to limit conflicts between signs by preventing an earlier right which is not sufficiently definite — that is to say, important and significant in the course of trade — from preventing registration of a new European Union trade mark. A right of opposition of that kind must be reserved to signs with a real and actual presence on their relevant market. To be capable of preventing registration of a new sign, the sign relied on in opposition must actually be used in a sufficiently significant manner in the course of trade and its geographical extent must not be merely local, which implies, where the territory in which that sign is protected may be regarded as other than local, that the sign must be used in a substantial part of that territory. In order to ascertain whether that is the case, account must be taken of the duration and intensity of the use of the sign as a distinctive element for its addressees, namely purchasers and consumers as well as suppliers and competitors. In that regard, the use made of the sign in advertising and commercial correspondence is of particular relevance. In addition, the condition relating to use in the course of trade must be assessed separately for each of the territories in which the right relied on in support of the opposition is protected. Finally, use of the sign in the course of trade must be shown to have occurred before the date of the application for registration of the European Union trade mark (29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 157, 159, 160, 163 and 166).

Therefore, contrary to what the opponent submits, the fact that a sign confers on its proprietor an exclusive right throughout the national territory is in itself insufficient to prove that it is of more than mere local significance within the meaning of Article 8(4) EUTMR. The requirement of ‘more than local significance’ relates also to the use that is made of the sign on the basis of which the opposition is entered and not only to the geographic area in which the sign may be protected according to the law governing the sign in question (29/03/2011, C-96/09 P, Bud, EU:C:2011:189, § 156).

In the present case, the contested trade mark was filed on 22/12/2014. Therefore, the opponent was required to prove that the sign on which the opposition is based was used in the course of trade of more than local significance in Italy prior to that date. The evidence must also show that the opponent’s sign has been used in the course of trade for the transformation, production, extraction and sale of natural products; vegetables and animals, plants and seeds and all their extracts and derivatives. The production and wholesale and retail sale of alimentary, cosmetic, liquor, dietetic, pharmaceutical, over-the-counter and chemical products, herbal and macrobiotic products, fresh and dried plants and flowers, sanitary, medical, orthopaedic and surgical instruments, apparatus and articles, gift and national and foreign craft articles; animal husbandry and winemaking, articles in straw, wicker, reed and cane, didactic, editorial activities and consultancy on the subjects connected with the principal objects.

On 22/06/2016, the opponent submitted the following evidence:

• the National Italian Law on which the claim for Article 8(4) EUTMR is based: Article 12(1)(b) of the Italian Intellectual Property Rights Code (Legislative Decree no 30 of 10/02/2005, as modified by Legislative Decree no 1 of 24/01/2012), both in its original language and in the language of the proceedings;

• a registration certificate for an Italian trade name from the Camera di Commercio Industria Artigianato e Agricoltura di Perugia for the trade name Planta Medica s.r.l.; this document has not been translated into the language of the proceedings;

• business information from a database, ‘Cerved’, concerning the Italian company Planta Medica s.r.l. in Italian and a partial English translation, showing the economic and financial situation of the company from 2012 to 2014;

• the opponent also refers to a website for further information but does not provide any extracts from this website.

The evidence of use does not show that the sign has been used for the specific goods and services that have been claimed. The evidence shows only that the company name is registered and that there have been business activities during the period 2012 to 2014. There is no evidence such as invoices, advertisements or product samples to show that the sign has been used and in relation to which goods and/or services it was used.

While the evidence suggests that some use of the sign has been made, it does not meet the minimum threshold of ‘more than local significance’ set out in Article 8(4) EUTMR.

Furthermore, the onus of providing proof of use of a trade name, according to Article 8(4) EUTMR is on the opponent and not on the Office or the applicant. Therefore, a mere indication of the website where the Office can find further information is insufficient, as this does not provide the Office with sufficient indications about place, nature, time and extent of use (31/10/2001, B 260 192).

Considering all the above, the Opposition Division concludes that the evidence submitted by the opponent is insufficient to prove that the earlier sign was used in the course of trade of more than local significance in connection with the goods and services on which the opposition was based before the relevant date and in the relevant territory.

As one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded.

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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Tobias KLEE

Magnus ABRAMSSON

Denitza STOYANOVA-VALCHANOVA

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.