DECISION

of the Fifth Board of Appeal

of 12 July 2016

In Case R 920/2015-5

Novartis AG
Trademark Department 4002 Basel Switzerland	Applicant / Appellant

represented by FRIEDRICH GRAF VON WESTPHALEN & PARTNER MBB, Kaiser-Joseph-Straße 284, 79098 Freiburg i. Br., Germany

v

LABORATOIRE MOTIMA
19, rue de Passy 75016 Paris France	Opponent / Respondent

represented by STRATO-IP, 18, rue Soleillet, 75020 Paris, France

APPEAL relating to Opposition Proceedings No B 1 981 441 (European Union trade mark application No 10 413 011)

The Fifth Board of Appeal

composed of G. Humphreys (Chairperson), V. Melgar (Rapporteur) and A. Pohlmann (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 28 October 2011, Novartis AG (‘the applicant’) sought to register the word as amended

OPHIDEL

for the following list of goods:

Class 5 ‒ Pharmaceutical preparations.

2. The application was published on 30 November 2011.

3. On 29/02/2012, LABORATOIRE MOTIMA (‘the opponent’) filed an opposition against the registration of the published trade mark application for as amended goods.

4. The grounds of opposition were those laid down in Article 8(1)(b) EUTMR.

5. The opposition was based on the following earlier right:

• French national mark No 95 581 894 OPHIDUS

filed and registered on 25/07/1995 for goods in Classes 5, 29 and 31 namely:

Class 5 ‒ Pharmaceutical, veterinary and sanitary preparations, dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants;

Class 29 ‒ Edible oils and fats;

Class 31 ‒ Agricultural, horticultural and forestry products (neither prepared, nor processed), grains (seeds), seeds, natural plants and flowers; foodstuffs for animals, malt.

6. The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based.

7. The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the publication of the contested application.

8. The contested application was published on 30 November 2011. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in France from 30 November 2006 to 29 November 2011 inclusive.

9. The Office gave the opponent until 14 July 2014 to submit evidence of use of the earlier trade mark. On 11 July 2014, within the time-limit, the opponent submitted evidence of use.

10. By decision of 11 March 2015 (‘the contested decision’), the Opposition Division upheld the opposition for all the contested goods, on the grounds that there was likelihood of confusion. It gave, in particular, the following grounds for its decision:

On the proof of use

• Having examined the material filed, the Opposition Division finds that, despite being somewhat limited for the relevant goods and the extent of use of the earlier mark, the evidence proves that earlier French trade mark No 95 581 894 has been genuinely used in the course of trade.

• As a whole, the documents filed provide a minimum satisfactory amount of relevant information concerning the commercial volume, the duration and the frequency of use. Therefore, it can be determined that the opponent has actively used the earlier mark in its commercial activities.

• The Opposition Division considers that the fact that the opponent has submitted invoices which exemplify the actual sale of the ‘OPHIDUS’ preparation during each of the relevant years (from 2006 to 2011) is an important indication that these goods were successfully and continuously sold by this company throughout the relevant period. Use of the mark need not be quantitatively significant for it to be deemed genuine.

• In addition, the mark was used as registered by the opponent (accompanied by promotional slogans and decorative figurative elements which, however, do not alter its distinctive character). Therefore, the goods at issue were clearly marketed under the brand ‘OPHIDUS’.

• Therefore, the catalogues and invoices submitted confirm that the mark was used as registered, at least in relation to some of the goods protected under the French trade mark registration. Consequently, the Opposition Division considers that the opponent has provided sufficient indications concerning the nature and extent of the use of the earlier mark.

• The Opposition Division also finds that the evidence filed by the opponent does not show genuine use of the trade mark in connection with all the goods in respect of which it is registered and on which the opposition is based.

• The evidence proves use only for a ‘probiotic dietetic preparation, containing two lactic bacteria and intended to provide digestive equilibrium’. These goods can be considered to form an objective subcategory of dietetic substances adapted for medical use in Class 5, namely ‘probiotic dietetic substances adapted for medical use’.

• Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for ‘probiotic dietetic substances adapted for medical use’.

On the likelihood of confusion

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

Class 5 ‒ Probiotic dietetic substances adapted for medical use.

• The contested goods are the following:

Class 5 ‒ Pharmaceutical preparations.

• The opponent’s ‘probiotic dietetic substances adapted for medical use’ consist of substances prepared for special dietary requirements, with the purpose of treating or preventing disease and contributing to the normal functioning of the digestive system. More specifically, probiotics are harmless bacteria found in food products or in dietary supplements, which can beneficially affect the consumers’ health by improving the balance of the gut bacteria. There are many different types of probiotics which are available in fermented milk drinks and some yoghurts, but also in dietetic substances in the form of tablets, capsules or sachets.

• Consequently, these goods are properly classified in Class 5 (and, consequently, duly covered by the earlier mark in this class), owing to their healing properties. The Opposition Division considers that it is a well-known fact that such substances may be an essential part of therapeutic treatments prescribed by doctors and/or nutritionists. Bearing this in mind, the purpose of the opponent’s goods is similar to that of the applicant’s pharmaceutical preparations, insofar as they are used to improve the medical condition of patients. Furthermore, the relevant public may also coincide and these goods generally have the same distribution channels (see judgment of 15/12/2009, T-412/08, Trubion,, EU:T:2009:507 § 29-32). Therefore, they are considered similar.

• The relevant territory is France.

• Both signs are word marks composed of a single word which contains a total of seven letters. The earlier sign consists of the word ‘OPHIDUS’, and the contested sign of the word ‘OPHIDEL’.

• Visually, the signs are highly similar to the extent that they coincide in their initial string of letters ‘OPHID-’, which constitutes five of their seven letters. The marks differ in the last two letters of each sign (‘-US’ versus ‘-EL’).

• Aurally, the pronunciation of the marks coincides in the sound of the letters ‘OPHID’, present identically in both signs. Furthermore, the marks have the same aural length, as they are both pronounced in three syllables of equal proportions (‘o-phi-dus’ and ‘o-phi-del’). Consequently, the pronunciation of the marks produces a similar rhythm and intonation and, therefore, the marks are aurally similar. The pronunciation of the marks differs only in the final sounds of their last syllables (‘-us’ versus ‘-el’).

• 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.

• Taking into account the abovementioned visual and aural coincidences, it is considered that the signs under comparison are similar.

• The marks under comparison have no elements which could be considered clearly more distinctive or dominant (visually eye-catching) than other elements.

• 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 in relation to any of the goods at hand from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

• The goods found to be similar are directed at professional customers from the pharmaceutical, medical and/or nutrition fields, with specific professional knowledge or expertise, as well as at the public at large.

• The level of attention of the relevant consumers (both the professional public and the general public) in relation to pharmaceuticals and similar goods in Class 5 tends to be higher than average, regardless of whether or not they are issued on prescription, because of their direct impact on human health.

• The signs in comparison are word marks and have an identical beginning, namely ‘OPHID-’. The visual and aural difference resulting from the last two letters of the marks (‘US’ versus ‘EL’) is not significant, as it occurs in the final and, therefore, less conspicuous part of the signs.

• Furthermore, it must also be noted that the degree of distinctiveness of the earlier trade mark is average and that neither of the marks under comparison has a meaning which could help the relevant consumers to distinguish between them.

• Therefore, taking all the relevant factors into consideration, the Opposition Division finds that the difference established by the final letters of the signs under comparison, ‘OPHIDUS’ and ‘OPHIDEL’, is not sufficient to counterbalance the similar overall impression which they convey and will not avoid confusion between them, in relation to similar goods, even considering the heightened attentiveness of the consumers.

• There is a likelihood of confusion on the part of the public.

11. On 11 May 2015, the applicant filed an appeal against the contested decision, requesting that the decision be as amended set aside as amended accepted. The statement of grounds of the appeal was received on 13 July 2015.

12. In its observations in reply, received on 15 September 2015, the opponent requests that the appeal be dismissed.

Submissions and arguments of the parties

13. The arguments raised in the statement of grounds may be summarised as follows:

• The documents filed do not constitute proof of genuine use. The use of 113 packages of probiotics is clearly insufficient as compared for example with the use of ACTIMEL in the French market.

• The low figures of sales seem to plead in favour of a bad product as normally probiotics are taken during life time.

• The printout from the web site being clearly outside the relevant period should not have been taking into consideration.

• The products are not similar and they do not belong to Class 5.

• The signs are not similar, the signs are very short and being healthcare products the small differences will be noticed.

• There is no likelihood of confusion.

14. The arguments raised in reply to the appeal may be summarised as follows:

• The applicant does not provide any new argument.

• The use has been proven.

• There is likelihood of confusion.

Reasons

15. The appeal complies with Articles 58, 59 and 60(1) EUTMR and Rules 48 and 49 CTMIR. It is, therefore, admissible. It is however not well founded for the reasons set out below.

On the proof of use

16. The Board notes that, in accordance with settled case-law, a request for proof use of the earlier mark adds to the opposition proceedings the specific and preliminary question which, once raised by the applicant, must be settled before a decision is given on the opposition. Because of its specific and preliminary nature, that question does not fall within the context of the examination of the opposition proper, alleging the existence of a likelihood of confusion with that mark. Thus, where, as in the present case, the Opposition Division concludes that proof of genuine use of the earlier mark has been provided and, accordingly, upholds the opposition, the Board of Appeal can re-examine the question of that proof only if the applicant for the mark raises it specifically in its appeal before that Board (see 14/12/2011, T-504/09, Völkl, EU:T:2011:739, § 35-35; 13/09/2010, T-292/08, Often, EU:T:2010:399, §§33, 39 and 40).

17. This is the case here and therefore the Board will examine the issue of proof of use as a preliminary question.

18. According to case-law use of a mark need not always be quantitatively significant for it to be deemed genuine, as that depends on the characteristics of the goods or services concerned on the corresponding market (judgment of 11/03/2003, C‑40/01, Ansul, EU:C:2003:145, § 39 and order of 27/01/2004, C-259/02, La Mer Technology, EU:C:2004:50, § 19). Even minimal use of a mark is capable of being classified as genuine, provided that it is justified, in the economic sector concerned, taking into account other relevant factors such as the volume of business of the undertaking which is the proprietor of the mark in question and the degree of diversification in their business activities.

19. Pursuant to Rule 22(3) CTMIR, the indications and evidence for furnishing proof of use shall consist of indications concerning the place, time, extent and nature of use of the earlier trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

20. In order to assess whether a trade mark has been put to genuine use in a particular case, an overall assessment of the documents in the file must be carried out, taking account of all the relevant factors in the case. In such an assessment, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark (19/12/2012, C-149/11, Leno, EU:C:2012:816, § 29; 27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50, § 27; 11/03/2003, C-40/01, Minimax, EU:C:2003:145, § 37).

21. Genuine use must be proven by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned, and cannot be supposed on the basis of probabilities (12/12/2002, T-39/01, Hiwatt, EU:T:2002:316, § 37).

22. As to the extent of use of the earlier trade mark, account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use (08/07/2004, T-203/02, Vitafruit, EU:T:2004:225, § 41, and 08/07/2004, T-334/01, Hipoviton, EU:T:2004:223, § 35).

23. The evidence submitted by the opponent can be summarised as follows:

• Catalogue from November 2006 (information visible on the page identified as ‘Last page - Catalogue 2006’) issued by the opponent. The catalogue is in French and shows use of the mark ‘OPHIDUS’ for a probiotic dietetic preparation, containing two lactic bacteria and intended to provide digestive equilibrium. The product is advertised as a box of 30 capsules and the brand ‘OPHIDUS’ appears on the packaging as follows:

According to the catalogue, the product is available in pharmacies, from the opponent’s website (www.motima.fr ) or by directly contacting the opponent’s French offices by telephone.

• Catalogue from May 2007 (information visible on the page identified as ‘Last page - Catalogue 2007’) issued by the opponent. The catalogue is in English and shows use of the mark ‘OPHIDUS’ for a probiotic dietetic preparation, containing two lactic bacteria and intended to provide digestive equilibrium. The product is advertised as a box of 30 capsules and the brand ‘OPHIDUS’ appears on the packaging as follows:

According to the catalogue, the product is available in pharmacies, from the opponent’s website (www.motima.fr ) or by directly contacting the opponent’s French offices by telephone.

• Catalogue from December 2010 (information visible on the page identified as ‘Last page - Catalogue 2010/2011’) issued by the opponent. The catalogue is in French and shows use of the mark ‘OPHIDUS’ for a probiotic dietetic preparation, containing two lactic bacteria and intended to provide digestive equilibrium. The product is advertised as a box of 30 capsules and the brand ‘OPHIDUS’ appears on the packaging as follows:

According to the catalogue, the product is available in pharmacies, from the opponent’s website (www.motima.fr) or by directly contacting the opponent’s French offices by telephone.

• 12 invoices in French, dated within the relevant period (1 from 2006, 2 from 2007, 3 from 2008, 1 from 2009, 3 from 2010 and 2 from 2011). All the invoices were issued in euros. These documents refer to the sale of 113 boxes of the product ‘OPHIDUS’. It is not possible to establish the total sales amount, since the prices were erased by the opponent for confidentiality reasons, considering that some of the invoices were issued to distributors and not final consumers. All invoices were issued by the opponent and were addressed to different clients in France (which may be confirmed by the clients’ addresses). 6 invoices were addressed to physical persons (final consumers); the remaining 6 were addressed to other businesses to the opponent, distributors of pharmaceuticals and health products).

• Extracts from the opponent’s website (www.motima.fr ) displaying the sale of the ‘OPHIDUS’ product for digestive equilibrium identified in the catalogues as follows:

The extracts are dated 08/07/2014.

Pursuant to Rule 22(3) CTMIR, proof of use must relate to the place, time, extent and nature of the use made of the earlier trade mark.

Time and place of use

24. The contested application was published on 30 November 2011. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in France from 30 November 2006 to 29 November 2011 inclusive.

25. Most of the previously mentioned evidence is dated within the relevant period. There is however one exception: the extracts from the opponent’s website, dated from 8 July 2014, fall outside of the relevant period.

26. The applicant submits that this document which comes 30 months after the end of the relevant period cannot be taken into consideration.

27. According to case-law evidence referring to use made outside the relevant timeframe is disregarded unless it contains conclusive indirect proof that the mark must have been put to genuine use as well during the relevant period of time. Events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the CTM proprietor at that time (see order of 27/01/2004, C-259/02, La Mer Technology, EU:C:2004:50).

28. In the present case these extracts, refer to use outside of the relevant period, but are relevant evidence for the present proceedings, as they refer to the sale of goods identified in the opponent’s catalogues dated 2006, 2007 and 2010, exemplifying how these goods are sold online from the opponent’s website (information which is mentioned in all the catalogues). Hence, even though such extracts are not capable, per se, of proving the genuine use of the earlier mark, they are nonetheless an additional indication that such use has continued even after the relevant period in the present proceedings.

29. The Board confirms that the evidence of use shows use within the relevant period and in the relevant territory; the invoices are in French language, in euros and addressed to places located in France.

Nature and extent of use

30. On the way the mark was used, even if this is not challenged by the parties, the Board for sake of clarity confirms the decision of the Opposition Division when it concluded that the mark was used as registered by the opponent (accompanied by promotional slogans and decorative figurative elements which, however, do not alter its distinctive character). Therefore, the goods at issue were clearly marketed under the brand ‘OPHIDUS’. The mark has been used as registered, or at least as a variation thereof which, pursuant to Article 15(1)(a) EUTMR, does not alter the distinctive character of the contested EUTM.

31. The applicant argues that the invoices and the catalogues do not constitute enough proof of genuine use of the earlier mark.

32. The opponent supports the Opposition Division when it held that the evidence filed did constitute proof of use.

33. Indeed the contested decision considered that the documents filed, provide a minimum satisfactory amount of relevant information concerning the commercial volume, the duration and the frequency of use.

34. The contested decision held that the opponent has actively used the earlier mark in its commercial activities. it also considered that the fact that the opponent has submitted invoices which exemplify the actual sale of the ‘OPHIDUS’ preparation during each of the relevant years (from 2006 to 2011) is an important indication that these goods were successfully and continuously sold by this company throughout the relevant period.

35. Furthermore it took the view that the catalogues and invoices submitted confirm that the mark was used as registered, at least in relation to some of the goods protected under the French trade mark registration.

36. The Board can confirm this conclusion.

37. In relation with the extent of use, challenged by the applicant, the Board would like to recall that in La mer 2004 (order of 27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50), the Court elaborated the criteria as follows:

• The question whether use is sufficient to preserve or create market share for those goods or services depends on several factors and on a case-by-case assessment. The characteristics of those goods and services, the frequency or regularity of the use of the mark, whether the mark is used for the purpose of marketing all the identical goods or services of the proprietor or merely some of them, or evidence that the proprietor is able to provide, are among the factors that may be taken into account (paragraph 22);

• Use of the mark by a single client which imports the goods for which the mark is registered can be sufficient to demonstrate that such use is genuine, if it appears that the import operation has a genuine commercial justification for the proprietor of the mark (paragraph 24);

• A de minimis rule cannot be laid down (paragraph 25).

38. Furthermore, the Board would like to recall that extent of use is not a concept linked to commercial success. The obligation to produce evidence of genuine use of an earlier trade mark is not designed to monitor the commercial strategy of an undertaking. It may be economically and objectively justified for an undertaking to market a product or a range of products even if their share in the annual turnover of the undertaking in question is minimal (judgment of 08/07/2004, T-334/01, Hipoviton, EU:T:2004:223, § 49).

39. The Board has analysed the invoices filed by the opponent and can confirm the Opposition Division’s conclusion that although low the evidence shows sufficient proof of genuine use.

Use for the products for which the mark is registered

40. The products considered for which use was demonstrated according to the contested decision and not challenged by the opponent are ‘probiotic dietetic preparation, containing two lactic bacteria and intended to provide digestive equilibrium’.

41. The Board cannot follow the reasoning of the applicant when it claims that the products of the opponent are not to be classified in Class 5 as they are not pharmaceuticals.

42. In this respect the Board confirms the approach of the Opposition Division when it held that it is a well-known fact that such preparations may be bought directly by consumers not only in pharmacies, but also in health and nutrition shops. Furthermore, these goods may be sold without medical prescription. Consequently, there is no legal impediment for the manufacturing company to proceed with direct sales of such goods to final consumers.

43. These goods are properly classified in Class 5 (and, consequently, duly covered by the earlier mark in this class), owing to their healing properties.

44. The Board agrees with the finding of the Opposition Division as it is a well-known fact that such substances may be an essential part of therapeutic treatments prescribed by doctors and/or nutritionists. Bearing this in mind, the purpose of the opponent’s goods is similar to that of the applicant’s pharmaceutical preparations, insofar as they are used to improve the medical condition of patients.

45. The applicant takes the view that the opponent’s product should be compared with the ACTIMEL yogurt from DANONE product in terms of assessment of the extent of use.

46. The Board cannot follow this line as ACTIMEL is probably the most successful yogurt containing probiotics on the market. Moreover, the Board is not tasked with evaluating commercial success since this is not a prerequisite for showing genuine use.

47. The Board is of the opinion that 113 boxes of the OPHIDUL product sold during a five year period in France is sufficient evidence for it to be accepted as genuine use.

On the likelihood of confusion

48. In accordance with Article 8(1)(b) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered if because of its similarity to the earlier trade mark and the identity or similarity of the goods 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.

49. The risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically linked undertakings, constitutes a likelihood of confusion within the meaning of that article (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 16-18; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 30).

50. It is clear from that provision that a likelihood of confusion presupposes both that the mark applied for and the earlier mark are identical or similar, and that the goods or services covered by the application for registration are identical or similar to those in respect of which the earlier mark is registered. Those conditions are cumulative (12/10/2004, C-106/03, Hubert, EU:C:2004:611,51).

51. The likelihood of confusion must be appreciated globally, taking into account all factors relevant to the circumstances of the case. That 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. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. In that perspective, the more distinctive the earlier mark, the greater will be the likelihood of confusion (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22-24).

On the relevant public

52. For the purpose of the global appreciation, the average consumer of the category of goods or services concerned is deemed to be reasonably well informed and reasonably observant and circumspect. The consumer’s level of attention is likely to vary according to the category of goods or services in question and the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26; 30/06/2004, T-186/02, Dieselit, EU:T:2004:197, § 38).

53. The goods are addressed to the general public but also to professionals involved in the supervision of specific diets. The general public may purchase the dietetic products with or without the assistance of health-care professionals. Giving that the goods involve the health of consumers, they will display an above average degree of attentiveness (see judgment of 29/02/2012, T-77/10 and T- 78/10, L112, EU:T:2012:95,§ 76).

On the comparison of the goods

54. In order for the similarity of the goods or services at issue to be assessed, all the relevant features of the relationship between those goods or services should be taken into account. Those factors include, inter alia, their nature, their intended purpose, their method of use, their end users and whether they are in competition with each other or are complementary (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 23). Other factors may also be taken into account such as, for example, the distribution channels of the goods concerned (11/07/2007, T-443/05, Pirañam, EU:T:2007:219, § 37). The reference point is whether the relevant public would perceive the relevant products as having a common commercial origin (04/11/2003, T-85/02, Castillo, EU:T:2003:288, § 38).

55. The Boards have already had the occasion of defining what probiotics are. In a decision of 1 August 2013 in case R-811/2012-1 ARKOPROBIOTICS versus PROBIOTIK, the First Board established that: ‘Conceptually, the word “Probiotik” with a “k” or a “c” has as such no direct meaning in the German language. However, as mentioned by the Opposition Division, the word “probiotik” refers to live microorganisms added to food or dietary supplements with a view to improving the condition of the host organism. Probiotics are commonly added to fermented foods, such as yogurt. As a result, the marks are conceptually similar for part of the German population which is familiar with this word. There is nothing in the prefix “AKRO” to suggest that it will be interpreted as the designation of the company name. “AKRO” has no meaning in German, and does not, therefore, introduce a conceptual difference between the marks’.

56. In another decision of 31 May 2012 in case R-1397/2011-1 PROBIOTIC SUFFICIENCY versus PROBIOTIK, the same Board held that: ‘Conceptually, the word “probiotik” with a “k” or a “c” has as such no direct meaning in the German language. However, as mentioned by the Opposition Division, the word “probiotika” refers to live microorganisms added to food or dietary supplements with a view to improving the condition of the host organism. Probiotics are commonly added to fermented foods, such as yogurt. As a result, the marks are conceptually similar for part of the German population which is familiar with this word.’

57. Contrary to what the applicant claims that the goods were wrongly classified and in fact are not similar, the Board confirms the approach of the Opposition Division.

58. The opponent’s ‘probiotic dietetic substances adapted for medical use’ consist of substances prepared for special dietary requirements, with the purpose of treating or preventing disease and contributing to the normal functioning of the digestive system.

59. It is indeed a well-known fact as shown above and contrary to the statement of the applicant that probiotics are harmless bacteria found in food products or in dietary supplements, which can beneficially affect the consumers’ health by improving the balance of the gut bacteria.

60. It is true, as argued by the applicant, that there are many different types of probiotics which either are available in fermented milk drinks and some yoghurts, but also in dietetic substances in the form of tablets, capsules or sachets.

61. The example of the ACTIMEL taken by the applicant to compare the evidence of use filed by the opponent is not relevant here. The OPHIDUS probiotic substances are in the form of capsules and cannot be compared with probiotic used in food as additives.

62. According to the case-law, medicines have all the same nature (pharmaceutical products), purpose (treatment of human health problems), consumers (medical professionals and patients) and distribution channels (typically pharmacies). They belong to the same general category of goods: medicines.

63. The Board therefore confirms the contested decision when it held that the opponent’s ‘probiotic dietetic substances adapted for medical use’ are similar to the applicant’s ‘pharmaceutical preparations’.

On the comparison of the signs

64. In order to assess the degree of similarity between the marks concerned, the degree of visual, aural or conceptual similarity between them must be determined and, where appropriate, the importance to be attached to those different elements must be evaluated, taking into account the category of goods or services at issue and the circumstances in which they are marketed (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, §27).

65. The assessment of the visual, phonetic or conceptual similarity of the signs in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (11/11/1997, C-251/95, Sabel, EU:C:1997:528, § 23; 06/10/2005, C-120/04, Thomson Life, EU:C:2005:594, § 28). The comparison must be based on the perception, pronunciation and meaning of the conflicting signs in the languages of the Member State where the earlier mark is protected, i.e. Ireland, and by reference to the target public of the goods at issue.

66. Both signs are verbal marks composed of seven letters.

67. The earlier sign is the word OPHIDUS and the contested sign is the word OPHIDEL.

68. It is clear that from the visual point of view that the signs are highly similar as they coincide in their initial string of letters ‘OPHID-’, which constitutes five of their seven letters. The marks differ in the last two letters of each sign (‘-US’ versus ‘-EL’).

69. As a consequence the French-speaking public will pronounce the signs in a highly similar way: in three syllables of equal proportions (‘o-phi-dus’ and ‘o-phi-del’). Consequently, the pronunciation of the marks produces a similar rhythm and intonation and, therefore, the marks are aurally similar.

70. The pronunciation of the marks differs only in the final sounds of their last syllables (‘-us’ versus ‘-el’).

71. Conceptually, neither of the sign has a meaning in the relevant territory, as a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

72. Moreover the Board is of the opinion that none of the signs has a relation with the goods in question and therefore the signs are perfectly distinctive for the goods in Class 5.

73. The Board can therefore confirm the assessment of the contested decision that the signs under comparison are similar

Global assessment of the likelihood of confusion

74. In accordance with the case-law of the Court of Justice, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion. It follows from the very wording of Article 8(1)(b) EUTMR that the concept of a likelihood of association is not an alternative to that of a likelihood of confusion, but serves to define its scope (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17).

75. A likelihood of confusion on the part of the public must be assessed globally. That global assessment implies some interdependence between the factors taken into account and in particular the similarity between the trade marks and between the goods or services covered. Accordingly, a lesser degree of similarity between these goods or 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; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19). The more distinctive the earlier mark, the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

76. The goods have been considered similar.

77. The marks under comparison have no elements which could be considered clearly more distinctive or dominant (visually eye-catching) than other elements.

78. There is no claim from the opponent that its mark is particularly distinctive by virtue of intensive use or reputation.

79. Visually the signs under comparison are similar as they coincide in their initial string of letters ‘OPHID-’, which constitutes five of their seven letters. The marks differ only in their last two letters (‘-US’ versus ‘-EL’).

80. The marks are also aurally similar. Their pronunciation coincides in the sound of the letters ‘OPHID’, present identically at the beginning of both signs. Furthermore, the marks have the same aural length, as they are both pronounced in three syllables of the same proportions (‘o-phi-dus’ and ‘o-phi-del’).

81. As a result, their pronunciation produces a similar pattern and rhythm that is not counteracted by the difference resulting from the final sounds of their last syllables (‘-us’ versus ‘-el’).

82. The Board would like to stress that in word signs, the first part is usually the one primarily catches the consumer’s attention and, therefore, will be remembered more clearly than the rest of the sign. This means that, in general, the beginning of a sign has a significant influence on the overall impression made by the mark (judgment of 15/12/2009, T-412/08, Trubion, EU:T:2009:507 § 40; judgment of 25/03/2009, T-109/07, Spa Therapy, § , EU:T:2009:8130).

83. It is also important to recall that, account should be taken of the fact that consumers only rarely have the chance to make a direct comparison between the different marks and must place their trust in the imperfect picture of them that they have kept in their minds (judgment of 22/06/1999, C-342/97, Lloyd Schuhfabrik Meyer, EU:C:1999:323 § 26).

84. Even if the relevant public displays a higher level of attention taking all the relevant factors into consideration, the Board is of the opinion that the Opposition Division rightly found that the differences established by the final letters of the signs under comparison, ‘OPHIDUS’ and ‘OPHIDEL’, are not sufficient to counterbalance the similar overall impression which they convey and will not avoid confusion between them, in relation to similar goods.

85. Considering all the above, the Board confirms the rejection of the contested application on the basis that there is a likelihood of confusion on the part of the public.

Costs

86. The applicant, as the losing party in the appeal proceedings, must bear the fees and representation costs of the opponent pursuant to Article 85(1) and (6) EUTMR. It follows that it must bear the representation costs of the opponent in the appeal proceedings to the amount of EUR 550 in accordance with Rule 94(7) (d) CTMIR.

Order

On those grounds,

THE BOARD

hereby:

1. Dismisses the appeal;

2. Orders the applicant to reimburse the opponent’s representation costs

in the appeal proceedings;

3. Fixes the amount of representation costs at EUR 550.

Signed G. Humphreys

Signed V. Melgar

Signed A. Pohlmann

Registrar: Signed H.Dijkema