OPPOSITION No B 2 758 988

Indena S.p.A, Viale Ortles, 12, 20139 Milano, Italy (opponent), represented by Bianchetti Bracco Minoja S.R.L., Via Plinio, 63, 20129 Milano, Italy (professional representative)

a g a i n s t

Patehelen Health Care AG, Schurtannenstr. 19a, 94000 Rorschach, Switzerland (applicant), represented by (F200) ASG Rechtsanwälte GmbH, Friedrichstr. 200, 10117 Berlin, Germany (professional representative).

On 30/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 758 988 is upheld for all the contested goods.

2.        European Union trade mark application No 15 391 857 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 15 391 857 for the word mark ‘Tumerics’. The opposition is based on international trade mark registration No 1 174 164 designating European Union of the figurative mark . 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 1:        Chemicals derived from botanical extracts or combinations of botanical extracts for use in the manufacture of pharmaceutical products, and foodstuffs.

Class 5:        Medicinal plants extracts for pharmaceutical and medical use, namely for the treatment of cardiovascular system diseases, gastroenteric system diseases, respiratory system diseases, immune and endocrine systems diseases and for the treatment of chronic inflammatory diseases.

The contested goods are the following:

Class 5:        Nutritional supplements.

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

The term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

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 nutritional supplements are substances prepared for special dietary requirements, including e.g. vitamins, minerals, herbs. They can be added to the diet to boost overall health and energy; to provide immune system support and reduce the risks of illness and age-related conditions; to improve performance in athletic and mental activities; and to support the healing process during illness and disease. Bearing this in mind, their purpose is similar to that of the opponent’s medicinal plants extracts for pharmaceutical and medical use, namely for the treatment of cardiovascular system diseases, gastroenteric system diseases, respiratory system diseases, immune and endocrine systems diseases and for the treatment of chronic inflammatory diseases (substances used to treat disease) insofar as they are used to improve a patient’s medical condition. The relevant public coincides and the goods generally have the same distribution channels. Therefore, these goods are considered similar.

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 are directed at the public at large as well as at business customers 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 state of health.

The same reasoning applies to nutritional supplements etc. in Class 5 since they also have an impact on the public’s health.

3. The signs

	Tumerics
Earlier trade mark	Contested sign

The relevant territory is 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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Both marks are very likely to create a very strong allusion to the word turmeric, which is an English designation for a spice with anti-inflammatory effects. According to the online Oxford English dictionary it is ‘an aromatic and pungent root-stock of an East Indian plant, or the powder made of this, the chief ingredient in curry powder, used also in dyeing yellow, and as a chemical test, and in the East as a condiment and medicinally; also called curcuma’. However, the word turmeric or its misspellings are not meaningful in other languages, for example, in French, German, Italian Spanish or Slovak where turmeric is called curcuma, Kurkuma, curcumina, curcuma, kurkuma respectively. For the reason of procedural economy, the Opposition Division finds it appropriate to focus the comparison of the signs on the German and Italian-speaking part of the relevant public.

The earlier mark is a figurative mark composed of the verbal element ‘TRUMERIC’ written in standard upper case black letters placed on a white background whereas the contested sign is a word mark, formed of the single verbal element ‘Tumerics’. In the case of word marks, it is the words as such that are protected and not their written form. Therefore, it is irrelevant whether they are presented in upper or lower case letters, or in a combination thereof.

Neither the word ‘TRUMERIC’ nor ‘TUMERICS’ has a meaning in the relevant territory; therefore, the Opposition Division considers that both the earlier mark and the contested sign, will be perceived as fanciful terms by the relevant consumers and consequently are distinctive in relation to the goods at issue.

Visually, the signs coincide in seven out of eight letters which moreover are placed in the same sequence ‘T*UMERIC*’ and differ only in one letter respectively, which are placed in a different position. The additional letter ‘R’ in the earlier mark, is situated in the second position and the additional letter ‘S’ in the sign applied for is the last letter in that word. Since both sign consist of eight letters, they are of same length.  

Admittedly, the General Court has held that the same number of letters in two marks is not, as such, of any particular significance for the relevant public, even for a specialised public. Since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar. However, in the present case, the visual similarities between the signs lie not in the fact that they have similar lengths or some letters in common, but in the fact that they coincide in the majority of their letters, which are in the same order.

Therefore, the signs are visually similar to a high 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 ‛T-U-M-E-R-I-C’, present identically in both signs. The pronunciation differs in the in the sound of the second letters ‛R’ of the earlier sign and the last letter ‘S’ in the contested sign, which have no counterparts in the other sign. The only relevant difference between the two signs is the additional letter ‘R’ in the earlier mark, which contributes to a slightly different sound of the two marks. As for the letter ‘S’ in the contested sign due to its position at the end of the word and the fact that it is a voiceless consonant, it will not have much influence on the overall aural impression produced by the signs in question. Moreover, the two marks have an identical number of syllables (three) which are pronounced very similar despite the said differences in the two letters and have a highly similar rhythm and intonation.

Therefore, the signs are considered aurally similar to a high 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

The likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

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).

As concluded above, the contested goods are similar to the opponent’s goods and they target the public at large and business consumers, which have a higher than average degree of attention. The degree of distinctiveness of the earlier mark is average.

The signs are visually and aurally highly similar whereas none of the signs has a meaning that could help to differentiate them.

The similarities between the signs result from the coincidence in seven out of eight letters which moreover are placed in the same sequence. The differences are only in the letters, ‘R’ and ‘S’ respectively, which are placed in different positions. The impact of these differences on visual and aural similarity is quite low and the Opposition Division is of the opinion that the relevant consumer could be confused by the fact that the earlier mark and the contested sign are composed to a great extent of the same letters in the same order and may not even recall repetitions of the abovementioned letters.

In view of the foregoing and considering 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) and that 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), the Opposition Division considers that the differences between the signs are not sufficient to enable the consumers to safely distinguish between the marks at issue and therefore they are likely to believe that the goods originate from the same undertaking or from economically related undertakings.

Considering all the above, there is a likelihood of confusion on the part of the German and Italian-speaking part 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 international trade mark registration No 1 174 164 designating European Union. It follows that the contested trade mark must be rejected for all the contested goods.

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

Konstantinos MITROU

Renata COTTRELL

Julia SCHRADER

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.