OPPOSITION No B 2 714 940

Milk Technologies, S. L., Paseo de Yeserías, N° 33 1°, 28005 Madrid, Spain (opponent), represented by Loesenbeck Specht Dantz, Am Zwinger 2, 33602 Bielefeld, Germany (professional representative)

a g a i n s t

Dimenzia spol. s.r.o., Sturova 33, 06001 Kezmarok, Slovakia (applicant), represented by Kancelaria Prawa Patentowego – Henryk Drelichowski, ul. Świętokrzyska 12, 30-015 Kraków, Polonia (professional representative).

On 21/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 714 940 is partially upheld, namely for the following contested goods:

Class 5:         Dietary supplements, not for medical purposes, not included in other classes, including in the form of an oral powder soluble in water or another fluid; caplets, pharmaceutical tablets and syrups for pharmaceutical purposes; concentrates and extracts for medical purposes; dietary supplements for children and adults in the form of syrups for beverages.

2.        European Union trade mark application No 14 994 594 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 994 594, namely against all the goods in Classes 5 and 32. The opposition is based on Spanish trade mark registration No 2 941 481. 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.

1. The goods

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

Class 5: Food for babies.

The contested goods are the following:

Class 5:        Dietary supplements, not for medical purposes, not included in other classes, including in the form of an oral powder soluble in water or another fluid; pharmaceutical preparations used in dentistry for oral and dental treatment, caplets, pharmaceutical tablets and syrups for pharmaceutical purposes; concentrates and extracts for medical purposes; dietary supplements for children and adults in the form of syrups for beverages.

Class 32: Syrups for beverages, for children and adults.

An interpretation of the wording of the applicant’s list of goods is required to determine the scope of protection of these goods.

The term ‘including’, used in the applicant’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

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

The contested dietary supplements, not for medical purposes, not included in other classes, including in the form of an oral powder soluble in water or another fluid; dietary supplements for children and adults in the form of syrups for beverages and the opponent’s food for babies have the same main purpose, which is to provide good nutrition for growth and health; therefore, it is not unusual that they have the same producers and are offered in the same outlets, often in one area in supermarkets. Therefore, they are considered similar.

The contested caplets, pharmaceutical tablets and syrups for pharmaceutical purposes; concentrates and extracts for medical purposes and the opponent’s food for babies have the same main purpose, which is to supply various nutritional substances for growth, maintenance, health and/or the improvement of the human medical state. Therefore, as they have quite similar functions, they are often distributed in the same outlets, such as pharmacies, para-pharmacies and special sections in supermarkets. For these reasons, they are considered similar to a low degree.

The contested pharmaceutical preparations used in dentistry for oral and dental treatment and the opponent’s food for babies cannot be seen as having anything in common insofar as the relevant factors are concerned. They differ in their natures, purposes and methods of use, as the contested goods are intended for oral and dental treatments only, and the opponent’s goods are prepared for babies’ special dietary requirements; therefore, they do not target the same consumers and are not produced by the same companies. They also have different distribution channels and are not in competition with or complementary to each other. Therefore, they are dissimilar.

Contested goods in Class 32

The contested syrups for beverages, for children and adults and the opponent’s food for babies are of primarily different natures, have primarily different purposes and have different methods of use, as the latter is intended for the healthy growth and nutrition of babies and infants and is specially prepared for their needs, often enriched with selected substances such as vitamins, and the former are additives or bases for various beverages intended to quench thirst. These goods are not complementary to or in competition with each other and are usually not produced by the same companies in the food sector. Although they may be sold in the same outlets (e.g. special sections in supermarkets), taking into account all the relevant factors, this is not sufficient to establish any similarity between them; therefore, they are considered 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 similar to various degrees are directed at the public at large and at business customers with specific professional knowledge or expertise, such as medical professionals and pharmacists.

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 state of health. This high degree of attention is also applied to dietary supplements, since these goods have a direct effect on the proper functioning of the intestinal transit and, therefore, on the health (15/12/2009, T-412/08, Trubion, EU:T:2009:507, § 28). Therefore, the degree of attention is rather high insofar as these goods are concerned and may be average or above average for food for babies.

3. The signs

	STIMUNIT
Earlier Spanish trade mark	Contested sign

The relevant territory is Spain.

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 word element ‘Stimumil’, which constitutes the earlier mark, is meaningless in the relevant territory and, as it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive. It is depicted in blue standard title case letters with a degree of stylisation in that the letter ‘u’ is slightly raised and has a grey dot above it.

The earlier mark has no elements that can be considered clearly more dominant than other elements.

The contested sign is a word mark consisting of the word ‘STIMUNIT’, which will not be understood by the relevant public. As it is not descriptive, allusive or otherwise weak for the goods in question, it is distinctive.

As regards the earlier figurative mark, 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 same principle applies to the present case, as the earlier trade mark has quite a high degree of stylisation; however, this is not sufficient to outweigh the impact of the verbal element on the consumer’s perception of the mark.

In the present case, the signs coincide in their first parts; it should be pointed out that 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.

Visually, the signs coincide in the letters ‘STIMU*I*’, present identically in both signs. However, they differ in their endings due to difference between the letters ‘M’/‘N’ and ‘L’/‘T’, namely ‘-MIL’ of the earlier mark and ‘-NIT’ of the contested sign. Furthermore, the signs can be differentiated visually by the blue stylised letters and the position of the letter ‘U’, which has a grey dot above it.

Therefore, and taking into consideration the lesser importance of the figurative elements than the verbal elements in the earlier mark, the signs are visually similar to an average degree.

Aurally, the signs coincide in the sound of the letters ‘STIMU*I*’, present identically in both signs. However, they differ in the sound of their endings due to the differing letters ‘M’/‘N’ and ‘L’/‘T’, namely ‘-MIL’ of the earlier mark and ‘-NIT’ of the contested sign.

Therefore, the signs are aurally similar to an above 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

Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

Furthermore, 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).

The signs  and ‘STIMUNIT’ are visually similar to an average degree and aurally similar to a higher than average degree, as they coincide in six out of eight letters and, as explained above, differ in only their endings, ‘-MIL’/‘-NIT’. It will be easily and instantly noticed by the relevant public that they coincide in their initial and middle parts, that is, the letters ‘STIMU-’. As mentioned above, this is the prevailing factor that has to be taken into account when assessing the marks, as the difference in the stylisation of the earlier mark and the arrangement of the letter ‘U’ with a grey dot above it play secondary roles in this mark.

The goods under comparison are similar to various degrees or dissimilar. The earlier mark has a normal degree of distinctiveness and the general public’s or the professional public’s (in the medial/pharmaceutical field) degree of attention may vary from average to above average, or be rather high, respectively.

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, account should be taken of the fact that average consumers rarely have the chance to make a direct comparison between the different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323). Even for goods for which the degree of attention is high, as is the case for the goods in this case, consumers need to rely on their imperfect recollection of the trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

Since a likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings, it must be concluded that, in the circumstances of the present case, part of the public may be confused as regards the origin of the goods in question; therefore, the opposition is partly well founded on the basis of the opponent’s Spanish trade mark registration No 2 941 481.

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

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

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

Francesca CANGERI SERRANO

Birgit FILTENBORG

Andrea VALISA

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.