CANCELLATION No 11 173 C (INVALIDITY)

Body Attack Sports Nutrition GmbH Co. KG, Schnackenburgallee 217-223, 22525 Hamburg, Germany (applicant), represented by Glawe, Delfs, Moll, Rothenbaumchaussee 58, 20148 Hamburg, Germany (professional representative)

a g a i n s t

Laboratorios Farmaceuticos Nutrition Center 1985 SLU, Marina 1, 21001 Huelva, Spain (EUTM proprietor), represented by Newpatent, Puerto, 34, 21001 Huelva, Spain (professional representative).

On 16/03/2017, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is partially upheld.

2. European Union trade mark No 11 881 323 is declared invalid for some of the contested goods and services, namely:

Class 5: Pharmaceutical preparations; Dietetic substances adapted for medical use, food for babies; Medical preparations for slimming purposes; Food additives for medical purposes; Medicinal food additives for pharmaceutical purposes; Mineral additives, Mineral additives to foodstuffs for human consumption; Low-calorie foodstuffs for persons with special dietary needs due to a medical condition; Dietetic food adapted for medical use; Foodstuffs adapted for medical purposes which aid slimming; Dietetic food adapted for medical use, in the form of prepared meals; Medicinal foodstuffs for athletes; Protein foodstuffs for dietetic purposes (adapted for medical use); Dietetic food and beverages adapted for medical use; Slimming aids for medical use; Dietetic shakes adapted for medical use, Dietary supplemental drinks; Vitamin drinks; Nutritionally-fortified beverages; Combinations of vitamins and minerals; Prepared meals for use in a controlled diet for persons requiring a special diet due to a dietary condition; Mineral food supplements; Medicinal dietary supplements for nutritional purposes; Dietary food supplements; Dietary supplements containing vitamins and minerals; Food supplements for dietetic use; Nutritional supplements; Preparations of trace elements for human and animal consumption; Diet pills; Medical preparations for slimming purposes; Dietetic food preparations with a lowered fat content (altered).

Class 44: Pharmacy advice; Pharmacists’ services to make up prescriptions; Compilation of information relating to the use of pharmaceutical preparations, consultancy relating to pharmacology, providing of information relating to pharmaceutical preparations, pharmaceutical consultancy, professional consultancy in the field of nutrition, Providing information relating to nutrition, Consultancy and advice relating to dietary nutrition, consultancy associated with nutrition, Consultancy in the dietetic field, Preparation and dispensing of medications.

3. The European Union trade mark remains registered for all the remaining goods and services, namely:

Class 5: Sanitary preparations for medical purposes; Plasters, materials for dressings; Material for stopping teeth, dental wax.

Class 35: Commercial information and advice for consumers (consumer advice shop); Procurement services for others (purchasing goods and services for other businesses); Demonstration of goods; And direct mail advertising; Distribution of samples; Commercial administration of the licensing of the goods and services of others; Import-export agencies; Business management consultancy; Presentation of goods on communication means of all kinds, for retail purposes; Advertising; On-line advertising on a computer network; Radio advertising; Television advertising; Presentation of goods on communication media, for retail purposes; Sales promotion for third parties; Administrative processing of purchase orders, business marketing, organisation of events for commercial and promotional purposes, franchising, relating to the providing of consultancy and assistance in business management, organisation and promotion, promotion of the goods and services of others by means of the arranging of sponsors to support their goods and services via a prize scheme, sporting competition and sporting activities, promotion of goods and services for others, marketing of goods, advertising relating to pharmaceutical preparations and in-vivo imaging goods, online promotion via a computer network and website.

Class 44: Medical assistance; Services of stylists; Beauty salons; Plastic surgery; Medical clinics; Healthcare; Teledoctor services; Physiotherapy, Services rendered by a dietician, Dietician services, Telemedicine, guidance relating to social relief for medical complaints, Paramedic services.

4. Each party bears its own costs.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods and services of European Union trade mark No 11 881 323. The application is based on German trade mark registration No 30 2009 010 779 and on international trade mark registration No 1 012 879 designating the European Union. The applicant invoked Article 53(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that a likelihood of confusion exists because the goods and services are identical or highly similar and the signs are visually, aurally and conceptually highly similar. It quotes judgments from the Court stating, on the one hand, that the fact that an earlier mark is weak does not preclude a likelihood of confusion and, on the other hand, that earlier national trade marks should be considered to have at least a certain degree of distinctiveness.

The EUTM proprietor requests that the applicant provide proof of genuine use of both earlier marks.

The EUTM proprietor claims that the trade marks currently coexist without confusion and that its own trade mark has acquired distinctiveness on the market in the form in which it was registered, namely as a figurative trade mark, which differs from the earlier word marks. It introduces itself as a company that is a reference point for nutritional counselling in pharmacies and which has created a range of nutritional supplements for both weight control and health/well-being. It explains that its philosophy is based on providing individualised advice and that its products are distributed mostly in pharmacies. The EUTM proprietor submits evidence in support of the effective use of its trade mark on the market, also with a view to showing that it is indeed used as registered. The documents also contain information concerning the company and the goods.

The EUTM proprietor contends that the coincidence in the number ‘100’ in the trade marks is irrelevant considering the limited distinctive character of this element and its minor visual impact in its own trade mark. It also claims that the other coinciding verbal element of the signs, namely the Greek prefix ‘LIPO’, which according to English dictionaries means ‘relating to fat or other lipids’, is weak and of no particular relevance. It further claims that consumers will perceive the contested mark’s verbal element ‘LIPOCROM’ as a whole; therefore, consumers will not single out the component ‘LIPO’. It also emphasises the differences resulting from the figurative elements of its own mark. In the EUTM proprietor’s opinion, the signs are dissimilar in all aspects of the comparison and there is no likelihood of confusion, especially given that the goods marketed under the trade marks are pharmaceuticals or other goods sold exclusively in pharmacies, which target a public of both professionals and individual consumers with a relatively high degree of attention.

The applicant submits proof of use of the earlier German trade mark and claims that its earlier international registration designating the EU is not under use requirement.

The EUTM proprietor reiterates its request that the applicant prove use of the international registration. It argues that the evidence submitted in relation to the earlier German trade mark does not suffice to establish genuine use, and it reiterates its previous argument that the element ‘LIPO’ will be understood as ‘fat’ by customers throughout the European Union and is therefore descriptive of the goods, which are ‘fat burners’. Therefore, in its opinion, the coincidence is not enough for a likelihood of confusion to be established. The EUTM proprietor submits a printout from Wikipedia in English concerning the word ‘liposuction’.

PRELIMINARY REMARK

The application is based on more than one earlier trade mark. The Cancellation Division finds it appropriate to first examine the application in relation to the applicant’s international trade mark registration No 1 012 879 designating the European Union.

PROOF OF USE

According to Article 57(2) and (3) EUTMR (in the version in force at the time of filing of the invalidity application), if the EUTM proprietor so requests, the applicant shall furnish proof that, during the five-year period preceding the date of the application for a declaration of invalidity, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the applicant cites as justification for its application, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years. If, on the date of publication of the contested EUTM, the earlier mark had been registered for not less than five years, the applicant must submit proof that, in addition, the conditions set out in Article 42(2) EUTMR were satisfied on that date.

The same provision states that, in the absence of such proof, the application for a declaration of invalidity shall be rejected.

The EUTM proprietor requested that the applicant submit proof of use of international trade mark registration No 1 012 879 designating the European Union.

As stated above, according to Article 57(2) and (3) EUTMR, the earlier mark can only be subject to the use obligation when it has been registered for not less than five years on the date of the application for a declaration of invalidity.

The present application for a declaration of invalidity was filed on 14/07/2015.

Earlier trade mark No 1 012 879 is an international registration designating the EU. Article 160 EUTMR provides that for the purposes of applying Article 42(2) EUTMR, the date of publication pursuant to Article 152(2) EUTMR shall take the place of the date of registration for the purpose of establishing the date as from which the mark which is the subject of an international registration designating the EU must be put into genuine use in the Union.

The date of publication pursuant to Article 152(2) EUTMR for the earlier trade mark at issue is 16/08/2010. Therefore, the request for proof of use is inadmissible.

LIKELIHOOD OF CONFUSION — ARTICLE 53(1)(a) EUTMR IN CONNECTION WITH 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 and services

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 (Canon criteria).

The goods and services on which the application is based are the following:

Class 5: Preparations for medical use and nutritional supplements for medical use based on carbohydrates, proteins, triglycerides and/or fibres, also with supplements of flavours, spices, plant extracts, amino acids, lecithin, minerals and/or other agents.

Class 29: Preparations for non-medical use, also as nutritional supplements, based on triglycerides and/or proteins, also with supplements of flavours, spices, plant extracts, amino acids, lecithin and/or other agents.

Class 30: Preparations for non-medical use, also as nutritional supplements, based on carbohydrates and/or fibres, also with supplements of flavours, spices, plant extracts, amino acids, lecithin, minerals, vitamins and/or other agents.

The contested goods and services are the following:

Class 5: Pharmaceutical preparations; Sanitary preparations for medical purposes; Dietetic substances adapted for medical use, food for babies; Plasters, materials for dressings; Material for stopping teeth, dental wax; Medical preparations for slimming purposes; Food additives for medical purposes; Medicinal food additives for pharmaceutical purposes; Mineral additives, Mineral additives to foodstuffs for human consumption; Low-calorie foodstuffs for persons with special dietary needs due to a medical condition; Dietetic food adapted for medical use; Foodstuffs adapted for medical purposes which aid slimming; Dietetic food adapted for medical use, in the form of prepared meals; Medicinal foodstuffs for athletes; Protein foodstuffs for dietetic purposes (adapted for medical use); Dietetic food and beverages adapted for medical use; Slimming aids for medical use; Dietetic shakes adapted for medical use, Dietary supplemental drinks; Vitamin drinks; Nutritionally-fortified beverages; Combinations of vitamins and minerals; Prepared meals for use in a controlled diet for persons requiring a special diet due to a dietary condition; Mineral food supplements; Medicinal dietary supplements for nutritional purposes; Dietary food supplements; Dietary supplements containing vitamins and minerals; Food supplements for dietetic use; Nutritional supplements; Preparations of trace elements for human and animal consumption; Diet pills; Medical preparations for slimming purposes; Dietetic food preparations with a lowered fat content (altered).

Class 35: Commercial information and advice for consumers (consumer advice shop); Procurement services for others (purchasing goods and services for other businesses); Demonstration of goods; And direct mail advertising; Distribution of samples; Commercial administration of the licensing of the goods and services of others; Import-export agencies; Business management consultancy; Presentation of goods on communication means of all kinds, for retail purposes; Advertising; On-line advertising on a computer network; Radio advertising; Television advertising; Presentation of goods on communication media, for retail purposes; Sales promotion for third parties; Administrative processing of purchase orders, business marketing, organisation of events for commercial and promotional purposes, franchising, relating to the providing of consultancy and assistance in business management, organisation and promotion, promotion of the goods and services of others by means of the arranging of sponsors to support their goods and services via a prize scheme, sporting competition and sporting activities, promotion of goods and services for others, marketing of goods, advertising relating to pharmaceutical preparations and in-vivo imaging goods, online promotion via a computer network and website.

Class 44: Pharmacy advice; Medical assistance; Services of stylists; Beauty salons; Plastic surgery; Medical clinics; Pharmacists’ services to make up prescriptions; Healthcare; Teledoctor services; Physiotherapy, Compilation of information relating to the use of pharmaceutical preparations, consultancy relating to pharmacology, providing of information relating to pharmaceutical preparations, pharmaceutical consultancy, professional consultancy in the field of nutrition, Providing information relating to nutrition, Services rendered by a dietician, Consultancy and advice relating to dietary nutrition, consultancy associated with nutrition, Dietician services, Consultancy in the dietetic field, Preparation and dispensing of medications, Telemedicine, guidance relating to social relief for medical complaints, Paramedic services.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

Furthermore, it must also be recalled that the comparison must relate to the goods and services as worded in the respective specification (22/03/2007, T‑364/05, Pam Pluvial, EU:T:2007:96, § 85), irrespective of features which do not appear from such specifications such as their distribution channels, specific purposes, composition, etc.

Contested goods in Class 5

The contested pharmaceutical preparations cover, as a broader category, the applicant’s preparations for medical use based on carbohydrates, proteins, triglycerides and/or fibres, also with supplements of flavours, spices, plant extracts, amino acids, lecithin, minerals and/or other agents. The contested dietetic substances adapted for medical use; medicinal dietary supplements for nutritional purposes; dietary food supplements; food additives for medical purposes; medicinal food additives for pharmaceutical purposes; food supplements for dietetic use; nutritional supplements cover, as broader categories, the applicant’s nutritional supplements for medical use based on carbohydrates, proteins, triglycerides and/or fibres, also with supplements of flavours, spices, plant extracts, amino acids, lecithin, minerals and/or other agents. Since the Cancellation Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the applicant’s goods.

The earlier mark is registered for nutritional supplements for medical use based on carbohydrates, proteins, triglycerides and/or fibres, also with supplements of flavours, spices, plant extracts, amino acids, lecithin, minerals and/or other agents. Nutritional supplements are products intended for ingestion, used to boost the nutritional content of a diet. They may take the form of capsules, tablets, liquids, powders or ‘meal replacement’ preparations. Furthermore, the earlier preparations for medical use are also based on carbohydrates, proteins, triglycerides and/or fibres, and are supplemented with flavourings, spices, plant extracts, amino acids, lecithin, minerals and/or other agents, from which it can be inferred that they are also intended for ingestion.

The contested medical preparations for slimming purposes; mineral additives, mineral additives to foodstuffs for human consumption; low-calorie foodstuffs for persons with special dietary needs due to a medical condition; foodstuffs adapted for medical purposes which aid slimming; dietetic food adapted for medical use; dietetic food adapted for medical use, in the form of prepared meals; medicinal foodstuffs for athletes; protein foodstuffs for dietetic purposes (adapted for medical use); dietetic food and beverages adapted for medical use; slimming aids for medical use; dietetic shakes adapted for medical use, dietary supplemental drinks; vitamin drinks; nutritionally-fortified beverages; combinations of vitamins and minerals; prepared meals for use in a controlled diet for persons requiring a special diet due to a dietary condition; mineral food supplements; dietary supplements containing vitamins and minerals; preparations of trace elements for human and animal consumption; diet pills; medical preparations for slimming purposes; dietetic food preparations with a lowered fat content (altered) are identical to the applicant’s preparations for medical use and nutritional supplements for medical use based on carbohydrates, proteins, triglycerides and/or fibres, also with supplements of flavours, spices, plant extracts, amino acids, lecithin, minerals and/or other agents, because the applicant’s goods include, are included in, or overlap with, the contested goods.

The contested food for babies and the applicant’s nutritional supplements for medical use based on carbohydrates, proteins, triglycerides and/or fibres, also with supplements of flavours, spices, plant extracts, amino acids, lecithin, minerals and/or other agents are similar to the applicant’s goods. The applicant’s goods are added to the diet to boost overall health and energy, reinforce the immune system and reduce the risks of illness and age-related conditions, improve performance in athletic and mental activities, and support the healing process during illness and disease. They can take the form of nutrient-dense food products. Food for babies refers to food eaten by babies not only because they are physically incapable of eating certain other types of food, but also because they medically require this type of food. The goods at issue have the same purpose of providing nutrition, are usually provided by the same companies and are sold in the same outlets. The target public is also the same.

The contested sanitary preparations for medical purposes serve hygiene-related functions in the healthcare sector. As such, they have little in common with the applicant’s preparations for medical use and nutritional supplements for medical use based on carbohydrates, proteins, triglycerides and/or fibres, also with supplements of flavours, spices, plant extracts, amino acids, lecithin, minerals and/or other agents. While the applicant’s goods are based on nutrients, the contested goods are items such as soaps and disinfectants and are used to protect and promote health by providing a clean environment and preventing the spread of harmful agents, such as bacteria. The producers, natures and intended purposes of the goods are different, as are their methods of use. They are usually not produced by the same or related undertakings and they are neither complementary to nor in competition with each other. The same line of reasoning applies when comparing the abovementioned contested goods with the applicant’s non-medical nutritional supplements in Classes 29 and 30. Therefore, the contested sanitary preparations for medical purposes are dissimilar to the applicant’s goods.

The contested plasters, materials for dressings are used for curing wounds. The contested material for stopping teeth are used by dentists to fill teeth and the contested dental wax is used to protect the gums from the pain caused by orthodontic appliances. These goods and the applicant’s preparations for medical use and nutritional supplements for medical use based on carbohydrates, proteins, triglycerides and/or fibres, also with supplements of flavours, spices, plant extracts, amino acids, lecithin, minerals and/or other agent differ in natures, purposes, usual producers and methods of use. They are neither complementary nor in competition. The fact that the goods at issue can be found in pharmacies and are intended for the same public is not enough to counterbalance the differences. The differences are even more pronounced between the contested goods and the applicant’s goods in Classes 29 and 30. Therefore, these contested goods are dissimilar to the applicant’s goods.

Contested services in Class 35

Most of the contested services are aimed at supporting or helping other businesses to do or improve their business.

The contested procurement services for others (purchasing goods and services for other businesses); commercial administration of the licensing of the goods and services of others; import-export agencies; administrative processing of purchase orders; franchising, relating to the providing of consultancy and assistance in business management, organisation and promotion, business management consultancy are intended to help companies with the performance of business operations or with the management of their business by setting out the strategy and/or direction of the company.

The contested demonstration of goods; and direct mail advertising; distribution of samples; presentation of goods on communication means of all kinds, for retail purposes; advertising; on-line advertising on a computer network; radio advertising; television advertising; presentation of goods on communication media, for retail purposes; sales promotion for third parties; business marketing, organisation of events for commercial and promotional purposes, promotion of the goods and services of others by means of the arranging of sponsors to support their goods and services via a prize scheme, sporting competition and sporting activities, promotion of goods and services for others, marketing of goods, advertising relating to pharmaceutical preparations and in-vivo imaging goods, online promotion via a computer network and website are advertising services which consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and acquiring competitive advantage through publicity.

The abovementioned services differ from the applicant’s goods in Classes 5, 29 and 30 in all of the Canon criteria and are, therefore, dissimilar.

The contested commercial information and advice for consumers (consumer advice shop) consist of providing consumers with advice relating to general aspects of consumers’ societies and are not specifically related to any goods or services. Apart from being intended for the same public, these services and the applicant’s goods in Classes 5, 29 and 30 do not have any of the other Canon criteria in common and are, therefore, dissimilar.

Contested services in Class 44

The contested pharmacy advice; pharmacists’ services to make up prescriptions; preparation and dispensing of medications, compilation of information relating to the use of pharmaceutical preparations, consultancy relating to pharmacology, providing of information relating to pharmaceutical preparations, pharmaceutical consultancy are services provided in pharmacies, as are the applicant’s goods in Class 5, namely preparations for medical use and nutritional supplements for medical use based on carbohydrates, proteins, triglycerides and/or fibres, also with supplements of flavours, spices, plant extracts, amino acids, lecithin, minerals and/or other agents. Furthermore, the goods and services under comparison target the same public and they may be complementary. They are similar to a low degree.

The contested consultancy and advice relating to dietary nutrition, consultancy associated with nutrition, consultancy in the dietetic field, professional consultancy in the field of nutrition, providing information relating to nutrition can be provided by pharmacists; therefore, the above reasoning applies and these services and applicant’s goods are also similar to a low degree.

The contested medical assistance; plastic surgery; medical clinics; healthcare; teledoctor services; physiotherapy, services rendered by a dietician, dietician services; telemedicine; paramedic services are dissimilar to the applicant’s preparations for medical use and nutritional supplements for medical use based on carbohydrates, proteins, triglycerides and/or fibres, also with supplements of flavours, spices, plant extracts, amino acids, lecithin, minerals and/or other agents in Class 5. Even though a certain link cannot be denied between preparations for medical use and medical services, due to their common purpose of treating diseases, the differences in natures and methods of use, as well as in producers/providers and distribution channels, clearly outweigh the link as regards their purpose. The relevant public does not expect a doctor to develop and market a drug or a dietitian to develop a nutritional supplement. These services do not have any connection with the applicant’s goods in Classes 29 or 30 either.

The contested services of stylists; beauty salons; guidance relating to social relief for medical complaints differ from the applicant’s goods in Classes 5, 29 and 30 in all of the Canon criteria and are, therefore, also dissimilar.

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 various degrees are directed at the public at large and at professionals in the medical sector. The services are directed at the public at large.

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).

In particular, medical professionals have a high degree of attentiveness when prescribing medicines. Non-professionals also show a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health.

The Court confirmed that the degree of attention is also higher than average for all goods in Class 5, including food for babies and nutritional supplements (10/02/2015, T‑368/15, EU:T:2015:81, § 46).

The relevant services are also related to health. The degree of attention may vary between average and higher than average depending on the type of specific services, for instance whether they are of a general nature or relate to a consumer’s individual condition.

Given that the general public is more prone to confusion, the examination will proceed on this basis.

3. The signs

LIPO 100
Earlier trade mark	Contested trade mark

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, bearing in mind 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 proceedings for a declaration of invalidity against any 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, by analogy). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to declare the contested trade mark invalid.

The EUTM proprietor claims that the word ‘LIPO’ will be understood as ‘fat’ throughout the European Union. It suggests that this element is weak and that its presence in both trade marks does not lead to a likelihood of confusion. It submits a Wikipedia extract (in English) relating to the word ‘liposuction’ to demonstrate that the prefix ‘lipo’ is used in common words to mean ‘fat’. While this is true for English and some other languages, such as French and Spanish, it is not the case for others, such as Danish, Estonian, Hungarian and Latvian. In those languages, the words commonly used for ‘fat’ and ‘liposuction’ are ‘fed’/‘fedtsugning’ (Danish), ‘rasv’/‘rasvaimu’ (Estonian), ‘zsír’/‘zsírleszívás’ (Hungarian) and ‘tauki’/‘tauku atsūkšana’ (Latvian), and the majority of the general public from these territories will not associate ‘lipo’ with ‘fat’.

Therefore, the Cancellation Division finds it appropriate to focus the comparison of the signs on the Danish-speaking part of the relevant public.

The earlier mark is a word mark consisting of the verbal element ‘LIPO’ followed by the number ‘100’. The verbal element ‘LIPO’ is meaningless and hence of average distinctiveness.

In contrast, the number ‘100’ may be perceived as either descriptive with regard to the relevant goods, such as the number of tablets or doses contained in the package, or as a weak element connoting the high efficiency/power of the goods.

The contested mark is a figurative mark consisting of the verbal element ‘LipoCrom’, depicted in stylised white letters, and underneath this element is the number ‘100’ in much smaller characters. These elements are placed in a red rectangle.

The element ‘LipoCrom’ has no meaning as a whole in Danish. Because of the upper case ‘C’ in the middle of the word, the public will perceive it as being formed by the verbal elements ‘Lipo’ and ‘Crom’, which have no meanings.

The number ‘100’ will be perceived as either descriptive or allusive, for the reasons previously explained, in relation to the relevant goods in Class 5, but has no obvious meaning in relation to the relevant services in Class 44, in relation to which it is distinctive. It is much smaller and less eye-catching than ‘LipoCrom’, which is the dominant element.

The red rectangle fulfils a clearly decorative purpose and is also clearly less distinctive than the verbal element ‘LipoCrom’.

Visually, bearing in mind that the earlier mark is a word mark and, therefore, it is the word itself that is protected and not the case-specific lettering, the signs coincide in the verbal element/letters ‘LIPO’/‘Lipo’ and the number ‘100’, namely both of the elements of the earlier mark. They differ in ‘Crom’ and in the graphic elements of the contested trade mark, namely the red rectangular background and the stylisation/graphic depiction of the verbal elements.

The coinciding element ‘LIPO’ is the first element in the earlier mark and forms the beginning of the verbal element of the contested mark. Consumers generally tend to focus on the beginning of signs/words. 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.

The differences in the figurative elements of the contested trade mark do not significantly differentiate the signs because when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

The EUTM proprietor argues, in reference to the contested mark’s verbal element ‘LipoCrom’, that the public is not prone to dissecting trade marks artificially and hence the component ‘Lipo’ will not be singled out. According to the Cancellation Division, while this principle is true in general, the fact remains that consumers may break words down into elements under certain circumstances, for instance when the word in question includes some visual feature that may prompt splitting it into different parts. This is the case here owing to the upper case ‘C’ in the middle of the word, which makes it clear that the sign is made up of the two elements ‘Lipo’ and ‘Crom’.

In view of the foregoing, and also bearing in mind that ‘LipoCrom’ as a whole is the dominant element of the contested trade mark, the coinciding element ‘LIPO’ is immediately perceptible in the contested mark.

Notwithstanding the limited role of the number ‘100’ in both trade marks (owing to its non-distinctive/allusive character in the earlier mark and its minor visual impact (and non-distinctive/allusive character for the goods) in the contested sign), its presence in both signs slightly reinforces their overall visual similarity.

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

Aurally, it must be taken into account that the number ‘100’ will, in all likelihood, not be pronounced in the contested mark because of its very small size. It may not be pronounced in the earlier mark either, specifically by the part of the public that perceives it as a non-distinctive element.

For the part of the public that does not pronounce this number in either sign, the pronunciations are /li/po/ for the earlier mark and /li/po/crom/ for the contested trade mark. The signs coincide in their first two syllables, which form the entire earlier mark, and they differ in the final, additional syllable of the contested mark. Due to the latter, the rhythms and intonations of the signs differ, but this is counterbalanced by the position and relevance of the coinciding syllables. The degree of aural similarity is, therefore, average.

Furthermore, although ‘Crom’, with this spelling, has no meaning in Danish, it is pronounced identically to the word for ‘chromium’ in this language (‘Krom’). Since chromium is an essential trace element that is used as a nutritional supplement, this word is of limited distinctiveness for at least part of the public in relation to the relevant goods in Class 5, and, therefore, the ensuing aural difference has limited impact. Therefore, for the part of the public that perceives ‘Crom’ to mean ‘chromium’ when the marks are referred to aurally, the aural similarity is high in relation to the goods in Class 5 that may include chromium.

For the part of the public that pronounces ‘100’ in only the earlier mark, the pronunciations are /li/po/hun/dre/de/ versus /li/po/crom/. As compared with the scenario in the previous paragraph, there is an added difference because of the additional syllables of the earlier mark. However, since these syllables correspond to a non-distinctive or weak element, placed after the coinciding, distinctive element, the aural similarity is not drastically affected and is considered average.

Conceptually, the relevant public will perceive the concept of the numeral ‘100’ in both signs, but owing to its non-distinctive/allusive character for all of the applicant’s goods and for some of the contested goods and services, together with its very limited visual impact in the contested sign, this element leads to only a minimum degree of conceptual similarity between the signs.

Indeed, for the part of the public that perceives the trade marks only aurally, no conceptual similarity exists because the number is not likely to be pronounced in the contested trade mark and, therefore, either the signs evoke no concepts, and hence a conceptual comparison is not possible, or only the contested mark evokes the concept of chromium, which is weak; therefore, the signs are not conceptually similar (although the resulting difference is not significant).

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 applicant did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, 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 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 non‑distinctive or weak element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

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).

The signs are visually similar to an average degree and aurally similar to at least an average degree. There is no relevant conceptual difference or relevant conceptual similarity between them. The contested goods and services are partly identical and similar to various degrees and partly dissimilar. The earlier mark has an average degree of distinctiveness.

In view of the foregoing, the Cancellation Division is of the opinion that it is highly conceivable that the relevant consumer, while noticing the differences between the signs, will perceive the contested mark as a variation of the earlier mark, denoting the same commercial origin. This is all the more probable for the part of the public that perceives ‘Crom’ in the contested trade mark as a weak element evoking the meaning of ‘chromium’ in relation to the relevant goods. The fact that the public displays a relatively high, or at least a higher than average, degree of attention in relation to most of the goods and services at issue does not preclude such a finding.

The EUTM proprietor refers to the reputation and the intensive use that it has made of the contested trade mark and submits evidence to substantiate this claim. However, the reputation of the contested trade mark is of no avail in proceedings based on relative grounds because it cannot counteract the applicant’s right deriving from the fact that it owns an earlier trade mark within the meaning of Article 8(2) EUTMR.

The EUTM proprietor also contends that the two trade marks at issue coexist on the market without any confusion on the part of consumers. However, this assertion is not corroborated by any evidence or convincing argument and is, therefore, set aside.

Considering all the above, the Cancellation Division finds that there is a likelihood of confusion, including a likelihood of association, on the part of Danish-speaking consumers. In view of the similarity between the signs, this conclusion is reached even for services that are similar to a low degree. Therefore, the application is partly well founded on the basis of the applicant’s international registration designating the EU.

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 declare the contested trade mark invalid.

Pursuant to the above, the contested trade mark must be declared invalid for the goods and services found to be identical or similar, including to a low degree, to those of the earlier trade mark.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the application based on this article and directed at these goods and services cannot be successful.

The applicant has also based its cancellation application on German trade mark No 30 2009 010 779 ‘LIPO 100’. Since this mark covers the same goods as the earlier international registration designating the EU, the outcome cannot be different with regard to the remaining goods and services for which the cancellation application has already been rejected because they are dissimilar. Therefore, there is no need to assess the application as far as it based on the German trade mark. Neither is it necessary to examine the related evidence of use.

COSTS

According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Cancellation Division will decide a different apportionment of costs.

Since the cancellation is successful only for part of the contested goods and services both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Cancellation Division

Frédérique SULPICE

Catherine MEDINA

Boyana NAYDENOVA

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.