OPPOSITION No B 2 738 923

Protina Pharmazeutische Gesellschaft mbH, Adalperostr. 37, 85737 Ismaning, Germany (opponent), represented by Eisenführ Speiser Patentanwälte Rechtsanwälte PartGmbB, Arnulfstr. 27, 80335 Munich, Germany (professional representative)

a g a i n s t

Optima Naturals S.r.l., Via Marsala, 36B, 21013 Gallarate, Italy (applicant), represented by Stefano Brustia, Via Famagosta, 63 Interno 7/A, 00192 Rome, Italy (professional representative).

On 23/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 738 923 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 of European Union trade mark application No 15 148 208, namely against all the goods in Class 5. The opposition is based on the following earlier marks:

• European Union trade mark registration No 220 483 for the word mark ‘PROTINA’; and

• German trade mark registration No 302 012 012 533  .

 The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of European Union trade mark registration No 220 483 for the word mark ‘PROTINA’.

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

On 24/02/2017, 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 mark on which the opposition is based. It did not argue that there were proper reasons for non-use either.

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 far as it is based on European Union trade mark registration No 220 483 for the word mark ‘PROTINA’.

As the opponent was not required to demonstrate use of the earlier German trade mark registration, the likelihood of confusion must be assessed in relation to this earlier mark.

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

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

Class 5: Pharmaceutical, veterinary and sanitary preparations, medicines, dietetic substances adapted for medical use; nutritional supplements for not medical use for substitute of electrolyte losses based on carbonic hydrates with added minerals, trace elements and vitamins, either individually or in combination, as far as included in this class.

Class 30: Dietetic preparations for food supplement and nutritional supplements for not medical use for substitute of electrolyte losses based on carbonic hydrates with added minerals, trace elements and vitamins, either individually or in combination, as far as included in class 30.

The contested goods are the following:

Class 5: Digestive enzymes; enzymes for medical purposes; enzyme dietary supplements; pharmaceutical preparations; food supplements; dietary and nutritional supplements; enzymes for veterinary purposes; ferments for pharmaceutical purposes; milk ferments for pharmaceutical purposes; ferments for medical or veterinary use.

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.

The contested digestive enzymes; enzyme dietary supplements; food supplements; dietary and nutritional supplements are included in the broad category of, or overlap with, the opponent’s dietetic substances adapted for medical use. Therefore, they are identical.

Pharmaceutical preparations are identically contained in both lists of goods.

The contested enzymes for medical purposes; enzymes for veterinary purposes; ferments for pharmaceutical purposes; milk ferments for pharmaceutical purposes; ferments for medical or veterinary use are at least highly similar to the opponent’s pharmaceutical and veterinary preparations. These goods have the same medical or veterinary purpose. They can have the same producers, end users and distribution channels or, at the very least, the same distribution channels and relevant users.

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 highly similar are directed at the public at large and at medical professionals with specific professional knowledge or expertise.

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 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 health.

The same reasoning applies to dietary and food supplements etc. in Class 5 because they also have an impact on the public’s health.

3. The signs

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).

Both trade marks are figurative signs containing verbal and figurative elements. In such cases, 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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

The contested sign consists of the word ‘PROVÍDA’ in red upper case letters (with fine yellow outlines). To the right of the sign is the element ‘®’.

Although consumers normally perceive a mark as a whole and do not proceed to analyse its various details (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25), the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a concrete meaning or which resemble words known to them (13/06/2012, T-342/10, Mesilette, EU:T:2012:290, § 33).

It is settled case-law that an important part of the non-English-speaking part of the public understands the word ‘PRO’ (11/09/2014, T-127/13, Pro outdoor, EU:T:2014:767, § 58), which is included in both marks in the present case, as an abbreviation for ‘professionals’. Account should also be taken of the fact that this word is similar to the German word ‘profi’. Therefore, the Opposition Division considers that the relevant consumers will understand the word ‘pro’, because they are familiar with it. This is made all the more likely by the letter ‘V’ in the contested sign being slightly larger than the other letters, creating de facto two words.

The word ‘PRO’ is laudatory, since it refers to the positive, or best, qualities associated with goods used by professionals or the level of service provided by a professional. Therefore, this element is weak (08/02/2016, R 2302/2011-2, OutDoor (fig.) / OUTDOOR PRO et al., § 75 and 80).

The element ‘VIDA’ is meaningless for the relevant public (13/06/2016, R 773/2015-4, GULLON DARVIDA / DAR VIDA (fig.) § 30 and 32). Therefore, this element is distinctive to a normal degree.

The element ‘®’ has no influence on the comparison of the signs, as it merely indicates a registered mark and is a negligible element with no trade mark significance (06/09/2013, T-599/10, Eurocool, EU:T:2013:399, § 108).

The earlier trade mark is a figurative mark consisting of a figurative depiction of the letter ‘P’ on the left, while, on the right, the word ‘PROTINA’ is written in grey upper case letters. The element ‘PHARMA-ERNÄHRUNG’ is written below ‘PROTINA’, also in grey upper case letters.

The word ‘PHARMA’ will be understood by the relevant public as standing for ‘PHARMAZIE’, which is the equivalent of ‘pharmacy’ (‘pharmacy is the job or the science of preparing medicines’, definition extracted from Collins Dictionary, on 22/08/2017 at https://www.collinsdictionary.com/dictionary/english/pharmacy). Moreover, ‘ERNÄHRUNG’ is the German word for ‘NUTRITION’ (‘nutrition is the process of taking food into the body and absorbing the nutrients in those foods’, definition extracted from Collins Dictionary, on 22/08/2017 at  https://www.collinsdictionary.com/dictionary/english/nutrition). Therefore, in relation to the goods in question, these words are non-distinctive.

As explained above, the word ‘PRO’ will be understood by the German-speaking public and, given its laudatory character, has weak distinctive character.

The figurative ‘P’ will be perceived as the first letter of the word ‘PROTINA’ and has a limited impact in the sign.

The figurative ‘P’ and the word ‘PROTINA’ are the dominant elements of the earlier mark.

Visually, the signs coincide in the letters ‘PRO*I*A’. In addition to their different typefaces, they also differ in their fourth letters (‘T’ in the earlier mark and ‘V’ in the contested sign) and sixth letters (‘N’ in the earlier trade mark and ‘D’ in the contested sign), in the additional elements of the earlier mark and in the element ‘®’ (which will not be taken into account) in the contested sign. Finally, a slight difference arises from the accent over the letter ‘I’ in the contested mark.

Given the abovementioned degrees of significance of the different elements of the signs, the most distinctive elements of the signs are ‘VIDA’ in the contested sign and ‘TINA’ in the earlier mark. These are relatively short elements and it is settled case-law that differences in short elements are very noticeable. In the present case, two out of the four letters of these distinctive elements are different. Furthermore, the fact that the letter ‘V’ is larger than the other letters of the contested sign increases its impact on the visual impression of the signs, and therefore its omission in the earlier mark has to be taken into particular consideration.

Given the above, the signs are visually similar to a low degree.

Aurally, the signs coincide in the sound of the letters ‘PRO*I*A’. They differ in their fourth and sixth letters.

It is settled case-law that the relevant consumer will tend to shorten long signs (11/01/2013, T-568/11, interdit de me gronder IDMG, EU:T:2013:5, § 44). Moreover, the General Court has previously concluded that only the dominant part of a mark would normally be pronounced by consumers (03/07/2013, T-206/12, LIBERTE american blend, EU:T:2013:342, § 44; 30/11/2011, T-477/10, SE© Sports Equipment, EU:T:2011:707, § 55). Finally, consumers do not tend to pronounce non-distinctive verbal elements (04/02/2013, T-159/11, Walichnowy Marko, EU:T:2013:56, § 44). Therefore, neither ‘PHARMA’ nor ‘ERNÄHRUNG’ will be pronounced in the earlier mark.

The verbal elements ‘PROVIDA’ and ‘PROTINA’ each consist of three syllables but only one is the same. Nevertheless, this identical syllable consists of a weak element and therefore has a limited impact. The remaining and distinctive elements ‘TINA’ and ‘VIDA’ have significant differences, which will be immediately perceived by the consumers. In this case, the difference in two of the four letters is significant and will not be disregarded by the consumers. This difference is emphasised by the differences in sound between the first letters of the second and third syllables of the marks.

Therefore, given the above, the signs are aurally similar to a low degree.

Conceptually, the signs coincide in the element ‘PRO’. This element has a fairly limited capacity to indicate the commercial origin of the relevant goods. Therefore, the coincidence in the element ‘PRO’ generates, at most, a low degree of conceptual similarity. Moreover, as regards the influence of the elements ‘PHARMA-ERNÄHRUNG’, it should be noted that non-distinctive elements have no influence on the conceptual comparison (04/02/2013, T-159/11, Walichnowy Marko, EU:T:2013:56, § 45).

In view of this, the signs are conceptually similar to a 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.

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 some non-distinctive words and a weak element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

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. Therefore, a lesser degree of similarity between 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, the conflicting signs are visually, aurally and conceptually similar to a low degree. The contested goods are either identical or at least highly similar to the opponent’s goods.

The signs coincide in the element ‘pro’ of the verbal elements ‘PROVIDA’ and ‘PROTINA’. However, this element is fairly weak for the reasons explained above. Therefore, in the present case, the most distinctive parts of the signs are the sequences of letters ‘TINA’ and ‘VIDA’. The first letters of these elements, namely ‘V’ and ‘T’, differ both in appearance and in the sound they produce, which makes this difference clearly perceptible, both visually and aurally, for the relevant public. Furthermore, the fact that two of the four letters in the elements ‘TINA’ and ‘VIDA’, and therefore the first letters of the two syllables of these elements, are different is a relevant factor to consider when evaluating the likelihood of confusion between the conflicting signs. In addition, account should be taken of the fact that these distinctive verbal elements have different stylisation. All these differences offset the similarities between the marks and make the signs sufficiently distinguishable in the relevant public’s perception.

In the present case, an important aspect is that, given the goods at issue, the relevant public will display a high degree of attention. The General Court and the Court of Justice have already stated that the probability of a likelihood of confusion is reduced due to a high level of attention, because the relevant public, spending more time in purchasing the goods, will examine them carefully (12/01/2006, C-361/04 P, Picaro, EU:C:2006:25, §40; 12/07/2012, T-517/10, Hypochol, EU:T:2012:372, § 53). In the present case, as the goods have an impact on health, consumers will examine them carefully.

Given the above, and in particular the differences between the most distinctive verbal elements of the signs, taking into consideration the weakness of their coinciding component and bearing in mind the high degree of attention of the relevant public, it follows that there is no likelihood of confusion. 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

Gueorgui IVANOV

Patricia LOPEZ FERNANDEZ DE CORRES

Adriana VAN ROODEN

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.