PROSEVEL | Decision 2683095
Date Published: May 1, 2018
OPPOSITION No B 2 683 095
biosyn Arzneimittel GmbH, Schorndorfer Str. 32, 70734 Fellbach, Germany (opponent)
a g a i n s t
Proton Pharma Anonymi Pharmakeftiki Etaireia / Proton Pharma A.E., 5 Achaias & Troizinias Str, 14564 Nea Kifissia, Greece (applicant), represented by Ourania Siorenta, Dimokritou 4, 10671 Athens, Greece (professional representative).
On 10/02/2017, the Opposition Division takes the following
1. Opposition No B 2 683 095 is upheld for all the contested goods.
2. European Union trade mark application No 14 937 015 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 320.
The opponent filed an opposition against all the goods of European Union trade mark application No 14 937 015. The opposition is based on German trade mark registration No 30 2013 049 486. 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 goods
The goods on which the opposition is based are the following:
Class 5: Dietetic food and products for medical and veterinary medical purposes, food supplements for humans and animals.
The contested goods are the following:
Class 5: Dietary and nutritional supplements; dietary supplemental drinks; dietary supplements consisting of vitamins; dietary supplements for controlling cholesterol; dietary supplements for humans; dietary supplements for infants; dietetic beverages adapted for medical purposes; dietetic confectionery adapted for medical purposes; dietetic food preparations adapted for medical use; dietetic foods adapted for medical use; dietetic foods for use in clinical nutrition; dietetic infusions for medical use; dietetic preparations adapted for medical use; effervescent vitamin tablets; enzyme dietary supplements; food for diabetics; food for infants; food for medically restricted diets; food supplements; food supplements consisting of amino acids; food supplements consisting of trace elements; glucose dietary supplements; gummy vitamins; health food supplements for persons with special dietary requirements; health food supplements made principally of minerals; health food supplements made principally of vitamins; herbal dietary supplements for persons special dietary requirements; mineral dietary supplements for humans; mineral food supplements; mineral nutritional supplements; mixed vitamin preparations; multi-vitamin preparations; nutraceuticals for use as a dietary supplement; nutritional supplement meal replacement bars for boosting energy; nutritional supplements; preparations for use as additives to food for human consumption [medicated]; vitamin and mineral supplements; vitamin drinks; vitamin preparations; vitamin preparations in the nature of food supplements; vitamin supplements; vitamins and vitamin preparations; medicated food supplements.
The contested goods are identical to the opponent’s dietetic food and products for medical and veterinary medical purposes, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, are included in, or overlap with, the contested goods.
- 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 identical are directed at the public at large. The degree of attention may vary from average to high. A high degree of attention will be more frequent when the goods in question bear health claims and nutrition claims.
- The signs
Earlier trade mark
The relevant territory is Germany.
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 signs are word marks which have no elements that could be considered clearly more distinctive or more dominant (visually eye-catching).
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.
Visually and aurally, the signs coincide in the sequence of letters ‘PROS(*)E*EL’. However, the earlier mark has one letter more than the contested sign, namely the fifth letter, ‘T’. The signs also differ in the seventh letter ‘S’ of the earlier mark and the sixth letter, ‘V’, of the contested sign.
The length of the signs may influence the effect of the differences between them. In this particular case, the signs are relatively long and the public will be less aware of the differences between them than for short signs, all the more so that the additional/different letters are placed in the middle of the signs.
Therefore, the signs are visually and aurally similar to a high degree.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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.
- Global assessment, other arguments and conclusion
Article 8(1)(b) EUTMR states that, upon opposition, a EUTM application shall not be registered if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.
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 et seq.).
The goods, found to be identical, are directed at the public at large whose degree of attention is likely, in this case, to vary from average to high. Visually and aurally, the signs are similar to a high degree what is considered, in this case, as a decisive factor in determining the existence of likelihood of confusion, all the more so that the earlier has a normal degree of distinctiveness and there is no concept in the signs that could contribute in differentiating them.
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).
Moreover, 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 with a high degree of attention need to rely on the their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).
Considering all the above, there is a likelihood of confusion on the part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 30 2013 049 486. It follows that the contested trade mark must be rejected for all the contested goods.
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. In the present case the opponent did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.
The Opposition Division
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.