OPPOSITION No B 2 227 026

Biofarma, société par actions simplifiée, 50, rue Carnot, 92284 Suresnes cedex, France (opponent), represented by Cabinet Plasseraud, 66, rue de la Chaussée d’Antin, 75440 Paris Cedex 09, France (professional representative)

a g a i n s t

Klaral Versand GmbH, Queräckerweg 2, 6800 Feldkirch, Austria (applicant).

On 04/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 227 026 is upheld for all the contested goods, namely the following:

Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; plasters, materials for dressings; disinfectants; preparations for destroying vermin; fungicides.

2. European Union trade mark application No 11 764 503 is rejected for all the contested goods. It may proceed for the remaining goods and services.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 11 764 503, namely against some of the goods in Class 5. The opposition is based on French trade mark registration No 09 3 663 458. The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARKS

On 14/08/2013, the opponent filed an opposition against some of the goods and services of European Union trade mark application No 11 764 503, namely against all the goods in Class 5.

In its observations of 03/08/2015, the opponent explicitly indicated that the opposition is directed against the following goods:

Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; plasters, materials for dressings; disinfectants; preparations for destroying vermin; fungicides.

Consequently, the Opposition Division considers that the opponent limited the scope of its opposition, thus excluding herbicides in Class 5. Therefore, the Opposition Division will examine the opposition in relation to the remaining contested goods.

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: Pharmaceutical products for human use; dietetic substances for medical use; food supplements for medical use.

After the limitation to the specification of the list of goods made by the applicant on 06/08/2013, and the limitation to the scope of the opposition made by the opponent on 03/08/2015, the contested goods are the following:

Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; plasters, materials for dressings; disinfectants; preparations for destroying vermin; fungicides.

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 pharmaceutical preparations refer to any kind of medicine, namely substances or combinations of substances for treating or preventing disease in people or animals. They include, as a broader category, the opponent’s pharmaceutical products for human use. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested dietetic food and substances adapted for medical or veterinary use; dietary supplements for humans and animals are included in the broad category of, or overlap with, the opponent’s dietetic substances for medical use. The fact that the list of contested goods distinguishes between use for humans and use for animals does not alter the comparison, as substances adapted for medical use are substances used in any kind of medicine, namely substances prepared for special dietary requirements, with the purpose of treating or preventing disease in people or animals. Therefore, these goods are identical.

The contested veterinary preparations and the opponent’s pharmaceutical products for human use have the same purpose and nature, that is, they are medicines for treating or preventing disease; they differ in the fact that the opponent’s goods are for human use, while the contested goods are for veterinary use. They have the same distribution channels and are usually manufactured by the same undertakings. Therefore, they are highly similar.

The contested sanitary preparations for medical purposes serve purposes related to hygiene and are used in the healthcare sector, hospitals, consulting rooms, etc. These contested goods and the opponent’s pharmaceutical products for human use have the same general purpose, namely to cure diseases, disabilities or injuries. They are usually produced by the same undertakings and they have the same consumers and distribution channels. Therefore, they are highly similar.

The contested food for babies and the opponent’s dietetic substances for medical use have the same purpose of providing nutrition and they may coincide in their producers and distribution channels. Therefore, they are similar.

The contested plasters, materials for dressings and the opponent’s pharmaceutical products for human use have the same general purpose, namely to cure diseases, disabilities or injuries, and they coincide in their consumers and distribution channels. Therefore, they are similar.

The contested disinfectants and the opponent’s pharmaceutical products for human use have the same general purpose. They are usually produced by the same undertakings and they have the same consumers and distribution channels. Therefore, they are similar.

The contested preparations for destroying vermin may be used to prevent the risks to human or animal health posed by the species whose elimination is sought. As such, these goods and the opponent’s pharmaceutical products for human use have the same general medical purpose of improving human health or well-being. In addition, the use of the contested preparations may be complementary to that of the opponent’s pharmaceutical products, which may be used to treat ailments caused by the presence of, or contact with, vermin. Furthermore, the goods under comparison may be sold through the same distribution channels (e.g. pharmacies). Therefore, they are similar.

The contested fungicides include antimycotics with applications in the medical field. Therefore, these goods may have the same general medical-related purpose as the opponent’s pharmaceutical products for human use and may be complementary. Furthermore, they may have the same distribution channels. Therefore, they are similar to a low degree.

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 identical or similar (to different degrees) are directed at the public at large and at customers with specific professional knowledge or expertise in the health-care field. The degree of attention varies from average to higher than average, depending on the exact nature and purpose of the goods and the effects that they may have on human or animal health.

3. The signs

VITAVEN
Earlier trade mark	Contested sign

The relevant territory is France.

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, ‘VITAVEN’.

The contested sign is a figurative mark consisting of the words ‘VITAL VENE’ depicted in rather standard upper case letters; the letters ‘V’ are slightly larger than the other letters.

The marks under comparison have no elements that could be considered more dominant (visually eye-catching) than other elements.

The earlier mark, ‘VITAVEN’, does not have a meaning as a whole for the public in the relevant territory. The Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57). Therefore, it is reasonable to assume that, although the mark as a whole does not have any meaning, the letters ‘VITA’, at the beginning of the word, may be perceived by some French consumers as a reference to the French word ‘vital’, which means ‘that relates to life’, ‘that is essential to life’, ‘ that is absolutely necessary to maintain the existence, the level of development of a group, region, company, etc.’ (see, for example, Larousse French Dictionary online at http://www.larousse.fr/dictionnaires/francais). The word ‘VITAL’ of the contested sign will be associated with the same meaning, namely something that relates to life. Bearing in mind that the relevant goods in Class 5 are preparations and substances for treating or preventing diseases, it is considered that the letters ‘VITA’ (for the part of the public that will attribute the abovementioned meaning to them) and the word ‘VITAL’ of the marks are weak for these goods, as they allude to the characteristics of the goods, that is, that they are essential for maintaining life. As a result, the impact of these weak elements is limited when assessing the similarity between the marks at issue.

The remaining elements of the marks do not have any meaning for the public in the relevant territory, and are not descriptive or lacking distinctiveness for any of the relevant goods.

For the part of the public that will not split the earlier mark, ‘VITAVEN’, into two elements, that mark as a whole will not be associated with any meaning. Consequently, for that part of the public the earlier mark has no elements that could be considered clearly more distinctive than other elements.

Visually, the signs coincide in the sequence of letters ‘VITA*VEN*’, which constitute the entire earlier mark and are in the same order in the verbal elements of the contested sign. As discussed above, the impact of the elements ‘VITA’ and ‘VITAL’ of the signs is limited due to their weak distinctive character in relation to the relevant goods. Nevertheless, these elements are highly similar and are positioned at the beginning of the signs, which is the part that consumers generally tend to focus on when being confronted with a trade mark. This is justified by the fact that 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. Moreover, the visual commonalities between the marks are not limited to ‘VITA’ and ‘VITAL’, but relate to the marks in their entirety, as the letters ‘VEN’ are also identically contained in both marks.

The signs differ in the additional fifth letter, ‘L’, and the final letter, ‘E’, of the contested sign, as well as in their structures (the earlier mark is composed of only one word and the contested sign is composed of two words). They also differ in the slight stylisation of the contested sign, which is not particularly striking and will be perceived as an ordinary graphical means of bringing the verbal element to the attention of the public.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in their first syllables, ‘VI’, partially in their second syllables, namely ‘TA’ in the earlier mark and ‘TAL’ in the contested sign, and in their final syllables, which will be pronounced as ‘VEN’ in both marks in accordance with French pronunciation rules. The marks are composed of the same number of syllables (i.e. three) and, therefore, they have the same rhythms. The pronunciation differs in only the sound of the additional letter ‘L’ in the middle of the contested sign; however, because this letter is in the middle of the sign, it is more likely to go unnoticed by the consumer.

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

Conceptually, as discussed above, the relevant public will perceive the word ‘VITAL’ of the contested sign and associate it with the meaning of something that relates to or is essential for life. Furthermore, at least part of the relevant public will associate the letters ‘VITA’ at the beginning of the earlier mark with the same meaning, due to their similarity to the word ‘vital’. Consequently, there is a conceptual link between the signs for that part of the public. However, bearing in mind the weakness of the elements ‘VITA’ and ‘VITAL’, the signs are conceptually similar to a low degree.

Another part of the public will not associate the earlier mark with any meaning and will perceive it as a whole as a fanciful term. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar for that part of the public.

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, despite the presence of a weak element in the mark for part of the public as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The appreciation of the likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (eighth recital of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

As discussed above, the goods under comparison are partly identical and partly similar (to different degrees). The signs are similar on account of the letters ‘VITA*VEN*’ that they have in common. They differ in their structures and in the two additional letters of the contested sign, which are in the middle and at the end of the sign, where they are more likely to go unnoticed by consumers, who only rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them. The stylisation of the contested sign is minor and does not obscure or camouflage the verbal element ‘VITAL VENE’.

Although ‘VITA’ and ‘VITAL’ may be perceived as elements with limited distinctiveness in relation to the goods in question, it cannot be overlooked that these almost identical elements are clearly perceptible because they are at the beginning of the signs, which is the part that first catches the attention of the reader. Moreover, the commonalities between the marks are not limited to these elements, since the marks also identically contain the letters ‘VEN’. The letters ‘VITA*VEN*’, which the signs have in common, are in the same order in both marks and constitute the earlier mark in its entirety. The impact of only two additional letters in the contested sign and the fact that the mark consists of two separate words (in contrast to the earlier mark, which consists of only one word) are not sufficient to clearly distinguish the marks.

Therefore, despite the higher degree of attention that the relevant public may display for some of the goods at issue, the differences between the signs are not sufficient to offset the similar overall impression created by the marks in the minds of consumers.

Consequently, the Opposition Division considers that the similarities between the signs are sufficient to lead to a likelihood of confusion, including a likelihood of association, between the marks in the relevant territory. This finding is true also for the goods that are similar to only a low degree, since the similarity between the signs outweighs the low degree of similarity between these goods.

Therefore, the opposition is well founded on the basis of the opponent’s French trade mark registration No 09 3 663 458. 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

Frédérique SULPICE

Alexandra APOSTOLAKIS

Ewelina SLIWINSKA

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.