OPPOSITION No B 2 625 369

Sucralin de Sucralose, S.L., Esla, 21 Edificio Trafise 23, Pol. Ind. Sta Margarita, 08223 Terrassa, Spain (opponent), represented by Isern Patentes y Marcas, S.L., Avenida Diagonal, 463 bis, 2° piso, 08036 Barcelona, Spain (professional representative)

a g a i n s t

Sanset Gida Turizm Sanayi ve Ticaret Anonim Sirketi, Istinye Mahallesi Balabandere Caddesi No: 14, Sariyer, Istanbul 34460, Turkey (holder), represented by Zivko Mijatovic & Partners, Avenida Fotógrafo Francisco Cano 91A, 03540 Alicante, Spain (professional representative).

On 20/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 625 369 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 international registration designating the European Union No 1 239 752. The opposition is based on European Union trade mark registration No 9 162 331. The opponent invoked Article 8(1)(b) EUTMR.

1. The goods

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

Class 5: Sweetening and dietetic agents adapted for medical use; dietetic preparations for medical use in weight control; dietetic preparations for the control of diabetes; dietetic sugar substances adapted for medical use, in particular in the form of pills and tablets, as well as in the form of granules, crystals, powder and liquids; pharmaceutical preparations; dietary substances for medical purposes; dietary foods for medical use; Candy for medical purposes; milk sugar (lactose); sugar for medical purposes; dietetic beverages adapted for medical purposes; medicinal infusions; medicinal teas

Class 30: Natural sweeteners; natural sweeteners in the form of pills, tablets, powder, granules and crystals; low-calorie natural sweetener mixtures; sugar; confectionery; confectionery; chocolates; natural sweeteners with fruit flavorings; flavourings (other than essential oils).

Class 32: Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for the preparation of beverages.

The contested goods are the following:

Class 1: Chemicals used in industry, science, photography, agriculture, horticulture and forestry; manures and soils; unprocessed artificial resins and unprocessed plastics; fire extinguishing compositions; artificial sweeteners, artificial sweeteners (chemical preparations).

Class 5: Pharmaceutical and veterinary preparations for medical purposes; chemical preparations and chemicals for pharmaceutical purposes; dietary supplements, including those adapted for medical purposes; nutritional supplements; dietary supplements for slimming purposes; food for babies; herbs and herbal beverages adapted for medicinal purposes; preparations for use in dentistry, other than tools and apparatus; sanitary preparations for medical use; hygienic pads; hygienic tampons; plasters; materials for dressings; diapers, including those made of paper and textiles; preparations for destroying vermin; fungicides, herbicides; deodorants, other than for human beings or for animals; air deodorising preparations; disinfectants; antiseptics; detergents for medical purposes.

Class 16: Paper, cardboard ; paper towels; toilet paper; paper napkins; paper for packaging and wrapping purposes; cardboard boxes; plastic materials for packaging and wrapping purposes; printing blocks and types; bookbinding material; printed matter; printed publications; calendars; posters; photographs (printed); paintings; stickers (stationery); postage stamps; stationery, office stationery, instructional and teaching material (except furniture and apparatus); writing and drawing implements; artists’ materials; paper products for stationery purposes; adhesives for stationery purposes; office requisites; paint rolls and paint brushes for painting.

Class 29: Meat, fish, poultry and game; processed foodstuff based on meat; dried pulses; soups, bouillon; processed olives, olive paste; milk and milk products, butter; edible oils; dried, preserved, frozen, cooked, smoked or salted fruits and vegetables; pollen prepared as foodstuff; prepared nuts and dried fruits as snacks; hazelnut and peanut paste; tahini (sesame seed paste); eggs and powdered eggs; potato chips.

Class 30: Coffee, cocoa; coffee or cocoa based beverages, chocolate based beverages; pasta, stuffed dumplings, noodles; pastries and bakery products based on flour, desserts based on flour and chocolate; honey, bee glue for human consumption, propolis for food purposes; spices and condiments for foodstuff; yeast, baking powder; flour, semolina, starch for food; sugar, cube sugar, powdered sugar; tea, ice tea; confectionery, chocolate, biscuits, crackers, wafers; chewing gums; ice-cream, edible ices; salt; cereals and cereal-based foodstuff; molasses for food; natural sweeteners.

Class 32: Beers; preparations for making beer; mineral water, spring water, table water, soda water; fruit and vegetable juices, fruit and vegetable concentrates and extracts for making beverages, non-alcoholic soft drinks.

Some of the contested goods are identical to the goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark.

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 assumed to be identical are directed at the public at large. The degree of attention is considered average.

3. The signs

SUCRALIN DE SUCRALOSE	sucracare
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 earlier mark is a word mark composed of three words, ‘SUCRALIN DE SUCRALOSE’. The word ‘SUCRALIN’ has no meaning in the relevant territory. The word ‘SUCRALOSE’ means, in English and in French, ‘a very sweet synthetic compound derived from sucrose and unable to be metabolized by the body, used as an artificial sweetener’ (information extracted from Oxford Dictionaries on 08/03/2017 at https://en.oxforddictionaries.com/definition/sucralose), and this word may also be understood by another part of the public (e.g. the Spanish- and Italian-speaking parts of the public) due to its similarity to the equivalent word in those languages (the equivalent Spanish word is ‘Sucralosa’ and the Italian is ‘Sucralosio’). For the rest of the public, the word is meaningless.

The contested sign is a word mark, ‘sucracare’. The sign as a whole has no meaning for the majority of the relevant public and is, therefore, normally distinctive. Part of the public (the English-speaking public) may perceive the element ‘Sucra’ as having the meaning explained in the following paragraph and ‘care’ as referring to ‘the provision of what is necessary for the health, welfare, maintenance, and protection of someone or something’ (information extracted from Oxford Dictionaries on 13/03/2017 at https://en.oxforddictionaries.com/definition/care). The relevant goods include sweeteners and pharmaceuticals or medical products, and therefore for this part of the public the elements of the contested sign, taken individually, have a low degree of distinctiveness for some of the goods; however, as the sign as a whole has no meaning, it has an average degree of distinctiveness. As the relevant goods include pharmaceuticals or medical products, the element ‘care’ has a rather low degree of distinctiveness for some of the goods and for part of the relevant public (the English-speaking public).

The prefix ‘sucra’, present twice in the earlier mark and once in the contested sign, may be associated by part of the relevant public (e.g. the public that speaks French or another romance language) with the concept of ‘sugar’, as the word for sugar in these languages is very similar (e.g. ‘sucre’ in French). As the relevant goods include sweeteners, this part of the marks has a rather low degree of distinctiveness for some of the goods and for part of the relevant public.

The element ‘SUCRALOSE’ of the earlier sign will be associated with ‘an artificial sweetener and sugar substitute’. Bearing in mind that the relevant goods include sweeteners for foodstuffs and drinks, this element is non-distinctive for these goods, for the part of the relevant public (e.g. the English-, French-, Italian- and Spanish-speaking parts of the public) that understands this word. Therefore, for this part of the public, this non-distinctive word has less impact on the comparison of signs.

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

Visually, the signs coincide in the string of letters ‘SUCRA’, present at the beginnings of two words in the earlier mark and at the beginning of the only word in the contested sign. However, they differ in the rest of the letters of the earlier sign, ‘LIN’, ‘DE’ and ‘LOSE’, and in the second part of the contested sign, ‘care’. There is also an important visual difference in that the earlier mark is composed of three words with nineteen letters in total whereas the contested sign is a one-word sign of nine letters.

Therefore, the signs are visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛SUCRA’, present identically in both signs, and repeated in the earlier mark. The pronunciation differs in the sound of the letters ‘LIN’, ‘DE’ and ‘LOSE’ of the earlier sign and in the sound of the letters ‘care’ in the contested sign. Although the signs coincide in the sound of the string of letters ‘sucra’, the differing lengths and structures of the signs, described above, result in significant phonetic differences.

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

Conceptually, neither of the signs has a meaning as a whole. The element ‘SUCRALOSE’ in the earlier mark will be associated with the meaning explained above (a sweetener) but only by a part of the relevant public (e.g. the English-, French-, Italian- and Spanish-speaking parts of the public). On the other hand, in French and other romance languages, ‘sucra’ will evoke the concept of ‘sugar’, and, therefore, although this word is not particularly distinctive for some of the contested goods, the signs are conceptually similar to a rather low degree for this part of the public.

For the part of the relevant public that does not understand either ‘Sucralose’ or ‘Sucra’, neither of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for this part of the public.

As the signs have been found similar to a low degree 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 and/or weak elements in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The goods were assumed to be identical.

The signs are visually and aurally similar to a low degree and conceptually they have no meaning for a part of the relevant public and are similar to a low degree for another part. The signs coincide in the string of letters ‘SUCRA’, but there is no likelihood of confusion, as there are additional significant differences between them: the contested sign is a nine-letter word, whereas the earlier mark is a three-word mark with nineteen letters; consequently, the marks differ significantly visually and aurally.

Generally, a mere coincidence in a string of letters is not sufficient to conclude that there is likelihood of confusion. Furthermore, ‘assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the general rule should be to compare these signs in their entirety, taking into account primarily the overall impression conveyed. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details’ (12/06/2007, C-334/05 P, Limoncello, EU:C:2007:333, § 35).

In the present case, considering the signs as a whole, the mere coincidence in a string of letters has less impact than the clear visual and aural differences between the signs, due to their additional letters and differing lengths; these differences are significant and clearly outweigh the coincidence.

Considering all the above, the Opposition Division considers that the differences between the signs are sufficient to counteract the visual and aural similarities between them. Consequently, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

There is no likelihood of confusion even for the part of the public that understands the meaning of the prefix ‘Sucra’. This is because, as a result of the weak distinctive character of that element, that part of the public will perceive the signs as even less similar.

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 LÓPEZ FERNÁNDEZ DE CORRES

Dorothee SCHLIEPHAKE

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.