OPPOSITION No B 2 798 026

Catalysis, S.L., Macarena, 14, 28016 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

Nutrifarm Sp. z o.o., Pustynia 84G, 39-200 Dębica, Poland (applicant), represented by Kondrat & Partners, Al. Niepodległości 223/1, 02-087 Warsaw, Poland (professional representative).

On 05/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 798 026 is upheld for all the contested goods.

2.        European Union trade mark application No 15 482 722 is rejected in its entirety.

3.         The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 482 722, ‘Renaloxan’. The opposition is based on, inter alia, European Union trade mark registration No 8 143 588 for the word trade mark ‘RENALOF’. 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 European Union trade mark registration No 8 143 588.

1. The goods

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

Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies (listed twice); plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

The contested goods are the following:

Class 5: Dietetic foods adapted for medical use, dietetic beverages adapted for medical purposes, dietetic substances adapted for medical use, pharmaceutical preparations; medicines for human purposes; preparations containing trace elements for human use, mineral food supplements, medicinal drinks, nutritional supplements, vitamin preparations, health food supplements; medicinal herbs, infusions and medicinal teas, infant formula; medicines for veterinary purposes, dietary supplements for animals, food supplements for animals, for medical purposes, nutritional supplements for livestock feed, vitamin and mineral supplements for pets, dietary supplements for pets in the form of treats, nutritional food supplements for animals, for medical purposes; veterinary preparations and substances, pharmaceutical preparations for veterinary use, dietetic substances adapted for veterinary use, dietetic food adapted for veterinary use.

Class 31: Foodstuffs and fodder for animals, foodstuffs and fodder for animals, fortified food substances for animals.

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

Pharmaceutical preparations; veterinary preparations; dietetic substances adapted for medical use are identically contained in the applicant’s and the opponent’s lists of goods.

The contested medicines for human purposes; medicines for veterinary purposes, veterinary substances, pharmaceutical preparations for veterinary use are included in, or overlap with, the broad category of the opponent’s pharmaceutical and veterinary preparations. These goods are identical.

The contested dietetic foods adapted for medical use, dietetic beverages adapted for medical purposes; preparations containing trace elements for human use, mineral food supplements, medicinal drinks, nutritional supplements, vitamin preparations, health food supplements; medicinal herbs, infusions and medicinal teas; dietary supplements for animals, food supplements for animals, for medical purposes, nutritional supplements for livestock feed, vitamin and mineral supplements for pets, dietary supplements for pets in the form of treats, nutritional food supplements for animals, for medical purposes; dietetic substances adapted for veterinary use, dietetic food adapted for veterinary use are included in the broad category of, or overlap with, the opponent’s dietetic substances adapted for medical use. Therefore, they are identical.

The contested infant formula is included in, or overlaps with, the opponent’s food for babies. These goods are identical.

Contested goods in Class 31

The contested foodstuffs and fodder for animals (listed twice), fortified food substances for animals are similar to a low degree to the opponent’s veterinary preparations, as these goods may have the same distribution channels and they may also target the same relevant public.

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.

As a preliminary remark, it has to be noted 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 state of health.

In the present case, the goods found to be identical or similar to a low degree are directed at the public at large, as well as at a professional public with expertise and knowledge in the medical or veterinary field. The degree of attention will vary between average (e.g. for the goods in Class 31) and high (for some of the goods in Class 5, to which a higher than average degree of attention will be paid, as explained above).

3. The signs

RENALOF	Renaloxan
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).

Both signs are word marks consisting of a single element; the earlier mark is written in upper case letters and the contested sign in title case letters. Nevertheless, in the case of words marks the word as such is protected and not its written form; therefore, it is immaterial whether the marks are depicted in lower or upper case letters.

The element ‘RENAL*’, in both signs, is meaningful in parts of the EU as indicating something related to the kidneys, in particular for medical professionals in the area, as well as for the English-, French-, German-, Italian-, Portuguese-, Romanian- and Spanish-speaking parts of the public, and therefore this element might be weak (to the extent that it will be separately perceived by these parts of the public) in relation to some of the relevant goods, namely the relevant medical preparations and dietetic substances in Class 5.

However, for the remaining parts of at least the general public, for instance the Bulgarian, Czech, Estonian, Finnish, Latvian, Lithuanian and Polish speakers, the verbal elements ‘RENALOF’ and ‘RENALOXAN’ have no meaning and are, consequently, distinctive as a whole.

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to the part of the public for which ‘RENAL’ has no meaning and for which the entire verbal elements ‘RENALOF’ and ‘RENALOXAN’ have a normal degree of distinctiveness, for the reasons explained above.

The signs have no elements that could be considered clearly more dominant than other elements, as they are word marks.

Visually and aurally, the signs coincide in the letters ‘RENALO*’. They differ in only their endings, ‘F’ in the earlier mark and ‘XAN’ in the contested sign. However, it is clear from case-law that the relevant public usually pays more attention to the beginnings of the signs. This is because consumers read from right to left and the initial parts of signs are those that first catch readers’ attention. In the present case, the signs coincide in six out of seven letters in the earlier mark and out of nine letters in the contested sign. Therefore, although the signs might have slightly different endings from a phonetic (the syllable ‘LOF’ versus the syllables ‘LO-XAN’) and visual  (‘F’ versus ‘XAN’) point of view, bearing in mind that they coincide in a significant number of letters, they are considered aurally similar to an average degree and visually similar to at least an average 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.

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.

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, aural 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’ (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

The goods in the present case are partly identical and partly similar to a low degree and the degree of attention will vary between average and high for the reasons explained above in section b).

The signs are visually similar to at least an average degree and aurally similar to an average degree, as they coincide in most of the letters of their verbal elements, namely they differ in only their endings, usually considered the less prominent parts of signs. As far as the visual and aural perceptions of the signs are concerned, account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

In addition, a conceptual comparison cannot be carried out, since the signs are meaningless to the public under consideration. Consequently, consumers have no way of safely differentiating between the signs on the basis of connotations that might indicate something to them in relation to the goods.

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 goods in question, to which a higher than average degree of attention will be paid (Class 5), are identical. Furthermore, it has not been established that these conflicting goods will be exclusively prescribed and purchased by a professional public with some medical knowledge; on the contrary, the goods in question are, in the main, nutritional supplements and preparations that could also be found on shelves in various pharmacies or pet stores. Therefore, as already stated above, the distribution channels of the goods covered by the marks may, indeed, be the same and the goods may target non-professional consumers. Bearing in mind the identity of the goods in Class 5, the only differences between the marks, at the ends (‘F’ versus ‘XAN’), are not considered sufficient to exclude a likelihood of confusion, including a likelihood of association. As far as the goods in Class 31 that have been found to be similar to only a low degree are concerned, the degree of attention will most likely be average and, therefore, the same findings about the similarity between the signs apply to these goods as well.

Considering all the above, there is a likelihood of confusion on the part of the Bulgarian-, Czech-, Estonian-, Finnish-, Latvian-, Lithuanian- and Polish-speaking parts of the public. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 8 143 588. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right mentioned above leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Ignacio IGLESIAS ARROYO

Manuela RUSEVA

Ewelina SLIWINSKA

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.