OPPOSITION No B 2 535 337
Sona Nutrition Limited, Unit 27-30, Tallaght Business Centre, Whitestown Industrial Park, Dublin 24, Ireland (opponent), represented by FRKelly, 27 Clyde Road Ballsbridge, Dublin 4, Ireland (professional representative)
a g a i n s t
Solgar Holdings Inc., 2100 Smithtown Avenue, Ronkonkoma, New York 11779, United States of America (applicant), represented by Gevers, Brussels Airport Business Park, Holidaystraat 5, 1831 Diegem, Belgium (professional representative).
On 17/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 535 337 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 13 781 315, namely against all the goods in Class 5. The opposition is based on Irish trade mark registration No 161 365. 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 signs
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MULTIPLUS
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Earlier trade mark |
Contested sign |
The relevant territory is Ireland.
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 distinctiveness of the marks’ elements will be assessed in relation to the following goods:
The goods on which the opposition is based:
Class 5: Vitamins, minerals, nutritional supplements, dietetic products and tonics.
The contested goods:
Class 5: Vitamins; dietetic substances; food for babies; pharmaceutical preparations; herbal preparations; all for human use.
Regarding the distinctiveness of the element ‘MULTIPLUS‘ of the earlier trade mark and the element ‘MultiPlus‘ of the contested sign, the applicant argues that the EUIPO has previously refused registration of two word marks ‘MULTIPLUS’ for the relevant goods in Class 5 on absolute grounds and that the element ‘MULTIPLUS‘/‘MultiPlus‘ is, therefore, non-distinctive.
Indeed, the EUIPO has previously assessed the distinctiveness of the word ‘MULTIPLUS’ in absolute grounds proceedings concerning two EUTM applications. The cases concerned the perception of the sign by the English-speaking public (which includes the Irish public) and related to the same goods as in the present opposition proceedings.
The first case is the EUTM application No 10 279 057 which was an application of the opponent in the present case and concerned the same goods in Class 5 as those on which the opposition is based. The application was objected to by the EUIPO for all the goods on the grounds that the word ‘MULTIPLUS’ had become customary in the current language and in the bona fide and established practices of the trade to designate the goods claimed, that the sign will be perceived by the consumers merely as designating multivitamin and multi mineral supplements and that the sign was, therefore, non-distinctive (Article 7(1)(d) and (b) and 7(2) EUTMR). This EUTM application was objected to by the EUIPO and later on withdrawn by the applicant (opponent in the present proceedings). The second case is the EUTM application No 15 108 863 which was an application from the applicant in the present case and concerned the same goods in Class 5 as the contested ones here. The application was objected to by the EUIPO for all the goods on the same grounds (Article 7(1)(d) and (b) and 7(2) EUTMR) and was finally refused. It was found that the sign had become customary and that it would be perceived by the consumers only as a product information indicating that the product contains a lot of vitamins.
Therefore, in the particular circumstances of the present case it must be concluded that the element ‘MULTIPLUS’ of which the earlier Irish registered trade mark consists enjoys only a very low degree of distinctiveness, if any. It is worth mentioning that the opponent did not claim any enhanced distinctiveness for the earlier trade mark acquired through use or reputation and did not submit any evidence relating thereto within the substantiation deadline.
As far as the contested sign is concerned, the element ‘MultiPlus’ is considered to be non-distinctive in the context of the sign and in the particular circumstances of the present case. This is because the contested sign contains the ‘SOLGAR’ logo that is fully distinctive due to the fact that the word ‘SOLGAR’ has no meaning for the relevant public and the relevant goods. The ‘SOLGAR’ logo will be perceived by the public as essentially the only indicator of commercial origin of the goods, with the other elements of the mark being either non-distinctive or weak. The inscription ‘Since 1947’ only designates the year when the ‘SOLGAR’ goods started to be produced and is, therefore, non-distinctive. ‘MultiPlus’ will be perceived by the relevant consumers as a non-distinctive element designating the type of the products and their content or nature, just like the phrase ‘WHOLEFOOD CONCENTRATE MULTIVITAMIN FORMULA’ at the bottom of the sign. The light green and light brown rectangular background of the mark plays only an ancillary decorative role and is, therefore, weak.
The contested sign has no elements that could be considered clearly more dominant (visually outstanding) than other elements. The Opposition Division cannot agree with the opponent’s argument that the element ‘MultiPlus’ is visually dominant in the contested sign. Although it is placed in the middle of the sign and on a light green stripe, the element ‘MultiPlus’ does not clearly stand out from the mark in terms of size, colour or a particular figurative depiction. It is considered that all the elements of the contested sign have more or less a comparable visual impact and that neither of the elements can be held clearly more dominant than the others.
Visually, aurally and conceptually, the signs coincide only in the element ‘MULTIPLUS’/’MultiPlus’ (as far as the conceptual comparison is concerned, reference is made to the above considerations on distinctiveness). This element has a very low degree of distinctiveness, if any, in the earlier mark and is non-distinctive within the contested sign. The marks differ in all the remaining elements of the contested sign which have no counterparts in the earlier trade mark, in particular in the distinctive ‘SOLGAR’ logo.
Although the earlier trade mark is totally included in the contested sign, that sign overlaps with the earlier mark exclusively in an element that is non-distinctive for the relevant contested goods. At the same time, the contested sign contains another distinctive element, namely the ‘SOLGAR’ logo, capable of differentiating between the signs. On the whole, the marks are considered to be dissimilar from the relevant consumers’ point of view.
For the above reasons, the Opposition Division cannot agree with the opponent’s assertion that the marks are highly similar and does not find the case-law put forward by the opponent as persuasive in the particular circumstances of the present case.
As a counterargument against the non-distinctiveness of the earlier mark ‘MULTIPLUS’ claimed by the applicant, the opponent argues that the earlier mark is a validly registered Irish trade mark and that the opponent’s rights in that mark ought not be undermined or negated in these opposition proceedings.
The Opposition Division considers that in order to avoid infringing Article 8(1)(b) of EUTMR, it is necessary to acknowledge a certain degree of distinctiveness of an earlier national mark on which an opposition against the registration of a European Union trade mark is based (24/05/2012, C-196/11 P, F1-Live, EU:C:2012:314, § 47). This circumstance is however not sufficient, to award the earlier mark with a distinctive character of such significance which would give it an unconditional right to oppose the registration of any later mark in which it is reproduced (13/05/2015, T-102/14, TPG POST / DP et al., EU:T:2015:279, § 43). As a general rule, the public will not consider a descriptive or non-distinctive element forming part of a mark as the distinctive and dominant element of the overall impression conveyed by that mark (16/05/2007, T-491/04, Focus, EU:T:2007:141, § 50-51). Consequently, the opponent’s argument is not persuasive and must be dismissed.
- Conclusion
According to Article 8(1)(b) EUTMR, the identity or similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.
Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of genuine use filed by the opponent.
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
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Richard BIANCHI
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Vít MAHELKA |
Lucinda CARNEY
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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.