OPPOSITION No B 2 264 813

Soho Flordis UK Limited, Douglas Bank House, Wigan Lane, Wigan, Lancashire, WN1 2TB, United Kingdom (opponent), represented by Rapisardi Intellectual Property Limited, 2A Collier House, 163/169 Brompton Road, London, SW3 1PY, United Kingdom (professional representative)

a g a i n s t

Laboratoire Carrare, 10 rue de Monceau, 75008 Paris, France (applicant), represented by Ipsilon, Le Centralis, 63 avenue du Général Leclerc, 92340 Bourg-la-Reine, France (professional representative).

On 11/08/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 264 813 is upheld for all the contested goods.

2. European Union trade mark application No 11 965 621 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 11 965 621. The opposition is based on European Union trade mark registration No 3 928 439. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

The opponent also based the opposition on earlier non-registered signs used in the course of trade but later indicated that it did not wish to pursue the opposition under Article 8(4) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, 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 opponent cites as justification for its opposition, 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.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely, European Union trade mark No 3 928 439.

The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The contested application was published on 26/08/2013. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 26/08/2008 to 25/08/2013 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 5: Dietetic substances adapted for medical use.

According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 29/07/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 04/10/2016 and, after an extension, until 04/12/2016 to submit evidence of use of the earlier trade mark. On 28/11/2016, 31/11/2016, 01/12/2016 and 02/12/2016, within the time limit, the opponent submitted evidence of use.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

At the outset, the Opposition Division notes that the opponent makes references to pieces of evidence, part of which was, however, not submitted in the present proceedings, for example, the product’s packaging used in Spain.

The opponent also refers to evidence submitted during other proceedings before the EUIPO. In particular, it states the following: ‘Preliminary, we would like to point out that the evidence of use has already been filed in the cancellation proceedings No. 9519C […]. However, we submit once again the proof of use of the trademark ‘MUMOMEGA’ which was first used in the year 2004 and commercialised through the European Union’.

According to the Office’s practice, a general reference to documents or evidence submitted in other proceedings cannot be accepted. In the present case, as apparent from the above, the opponent’s reference does not mention to which documents it exactly refers, the number of pages of the document(s), the date this/these document(s) was/were sent to the Office and stated that it would in any event ‘submit once again the proof of use’.

Therefore, the evidence to be taken into account is the following:

• Web page extract: Extract of the website www.equazen.co.uk dated 28/04/2017 where the product ‘Mumomega’ is described in English as a blend of essential fatty acids aimed at supporting the dietary intake of particular fatty acids occurring during pregnancy.

• Samples of packaging: Samples of ‘Mumomega’ packaging used for ‘Mumomega’ products in Poland and Denmark dated November and December 2013 respectively.

• Invoices: Numerous invoices issued by the opponent dated between January 2009 and May 2013 and addressed to different recipients established in the European Union (Denmark, Malta, Netherlands, Poland, Spain, Sweden, United Kingdom and Lithuania).

The applicant argues that the opponent did not submit translations of some of the evidence of use and that therefore this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Rule 22(6) EUTMIR). Taking into account the nature of the documents which have not been translated and are considered relevant for the present proceedings, namely, (invoices and packaging), and their self-explanatory character, the Opposition Division considers that there is no need to request a translation.

The applicant also argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods for which the earlier mark is registered. In particular, it argues that as the invoices submitted do not include the earlier mark ‘MUMOMEGA’ and are not accompanied either with a catalogue where the reference of the product would appear, they are not suitable to establish genuine use of the earlier mark.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

Along with the packaging samples and the extract from the opponent’s website, the word ‘MUM.’ appearing on the invoices, is suitable as proof of use of the earlier mark since it is under all probability the abbreviation of the word element ‘MUMOMEGA’ of which the earlier mark consists as apparent from the packaging samples. This is moreover consistent with the words used in the invoices to designate other products that the opponent commercialises which also apparently correspond to abbreviations.

Assessment of the evidence

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, and 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

As regards the place of use, it is noted that the evidence filed in the present case shows that the earlier mark has been used in several countries within the European Union including, inter alia, the United Kingdom, Denmark and Poland. This can be inferred from the language of the website and the packaging samples (English, Danish and Polish), the currency mentioned on the website and the invoices (Euros and Pounds) and also the addresses appearing on the invoices (some of which are in the United Kingdom, Denmark and Poland).

Taking account of the fact that these countries constitute a significant part of the European Union, it has to be considered that the use of the earlier mark in these countries is use in the European Union (see, 15/07/2015, T-398/13, TVR ITALIA, EU:T:2015:503, § 57; 30/01/2015, T-278/13, now, EU:T:2015:57, by analogy).

Therefore, the evidence relates to the relevant territory and the place of use is proven.

As regards the time of use, the Opposition Division points out that evidence referring to use made outside the relevant timeframe is disregarded unless it contains conclusive indirect proof that the mark 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 EUTM proprietor at that time (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50).

In the case at hand, the invoices and the extract of the opponent’s website dated outside the relevant period confirm use of the earlier trade mark within the relevant period. Since they bear dates which are subsequent to the relevant period, they are suitable to confirm the use during four out of the five years of use of the relevant period that the other invoices demonstrate. Therefore, the time of use has been proven.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

Taken in combination, the invoices, the packaging samples and the extract of the opponent’s website provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

The invoices are numerous and refer to significant quantities. Moreover, they are regularly dated within four of the five-year relevant period. Finally, said invoices show use of the EUTM in several member states, inter alia, in the United Kingdom, Denmark and Poland. Therefore, they show use of the earlier mark which has to be qualified as effective, and consistent over time (frequent), in addition of being significant both quantitatively (in light of the figures contained therein) and territorially (in light of the addresses appearing in the invoice).

Along with the packaging sample and the extract from the opponent’s website, they show outward, regular, constant and sufficiently significant use of the mark ‘MUMOMEGA’ across a substantial part of the European Union (United Kingdom, Denmark and Poland, at least) during four of the five years period. Therefore, the extent of use is proven.

As regards the nature of use, it has to be borne in mind that in the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

In the present case, the earlier mark is a word mark which is distinctive in the perception of the public in the European Union. In that connection, the fact that the earlier mark is always followed by the registration symbol (®) and is sometimes written in a standard coloured typeface does not affect its distinctive character.

Indeed, said colours merely have a decorative purpose and both the banal typeface and the registration symbol lack any distinctive character (see by analogy, 12/12/2014, T-105/13, TrinkFix, EU:T:2014:1070, § 49 to 52 and 23/01/2014, T-551/12, Rebella, EU:T:2014:30, § 43). Therefore, the earlier mark was used as registered or in a form that does not alter its distinctive character.

On the other hand, since the evidence shows use of the earlier mark for ‘a blend of essential fatty acids’, it is considered that it shows genuine use for the broad category of goods for which it is registered, namely, dietetic substances adapted for medical use. The nature of use is thus proven.

In light of the above, the Opposition Division concludes that although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.

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: Dietetic substances adapted for medical use.

The contested goods are, after a limitation, the following:

Class 5: Dietetic substances adapted for medical use, dietary supplements for medical purposes, pharmaceutical preparations, dietary supplements not for medical purposes, all the aforesaid goods solely for peri-menopausal women.

Class 29: Dietetic substances not adapted for medical use, all the aforesaid goods solely for peri-menopausal women.

Class 30: Dietetic substances not adapted for medical use, all the aforesaid goods solely for peri-menopausal women.

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

The expression ‘all the aforesaid goods solely for peri-menopausal women’, used in the applicant’s list of goods to show the relationship of individual goods with a broader category, is intended to restrict the scope of protection to specifically listed goods but it only restricts it to a specific public.

In that regard, the Opposition Division observes that, since in spite of the applicant’s restriction the substances for which registration is sought could be used not only by peri-menopausal women but also by other groups of consumers, such exclusion is not sufficient, in itself, to exclude any similarity between the contested goods and the opponent’s goods (see, to that effect, 11/06/2009, T-33/08, OPDREX, § 27; 24/05/2011, T-161/10, E-PLEX, EU:T:2011:244, § 22). Therefore, it does not have any influence on the comparison of the goods.

Contested goods in Class 5

Dietetic substances adapted for medical use are identically included in both lists of goods.

In addition, as the contested dietary supplements for medical purposes are, like the opponent’s dietetic substances adapted for medical use, substances prepared for special dietary requirements, with the purpose of treating or preventing disease or more generally, enhancing health, they are essentially the same and have to be considered identical.

In light of the above, it has also to be considered that the only difference between the contested dietetic substances not for medical use and the opponent’s dietetic substances adapted for medical use lies in the fact that the former are not for medical use or purpose while the latter are. Since these goods nevertheless have the same nature, usual producer, target public, distribution channels and are, moreover, in competition, they are considered highly similar.

On the other hand, the contested pharmaceutical preparations are similar to the opponent’s dietetic substances adapted for medical use insofar as both are used to improve a patient’s medical condition. Moreover, the relevant public coincides and the goods generally have the same distribution channels.

Contested goods in Class 29

In light of their classification in Class 29, it has to be considered on the one hand that the contested dietetic substances not adapted for medical use differ from the opponent’s dietetic substances adapted for medical use in Class 5 to the extent that the latter are suitable for a medical use while the former are not. On the other hand, while it can be reasonably expected that the opponent’s dietetic substances in Class 5 take the form of pills, the applicant’s dietetic substances in Class 29 most probably take the form of foodstuff(s). Therefore, these goods have different natures and also, most probably, different methods of use. However, they coincide in all other relevant factors, namely, purpose, target consumer, usual providers and distribution channels. Finally, they are in competition. Therefore, these goods are highly similar.

Contested goods in Class 30

The same reasoning applies to the contested dietetic substances not adapted for medical use in Class 30 as for the same in Class 29. These goods are therefore considered highly similar to the opponent’s dietetic substances adapted for medical use.

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 varying degrees 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 and cited case-law).

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

Moreover and for the same reasons, the same holds true as regards the dietetic substances and dietary supplements also in question in the present case (10/12/2014, T-605/11, BIOCERT, EU:T:2014:1050, § 20-21; 08/07/2009, T-230/07, ESTER-E, EU:T:2009:252, § 36 and the case-law cited).

By contrast, according to the case law, the relevant public will generally not pay a high level of attentiveness for the purchase of goods in Classes 29 and 30 (26/04/2016, T‑21/15, Dino, EU:T:2016:241, § 20).

As a result, the level of attention of the public may vary between average and high depending on the nature of the product concerned.

3. The signs

MUMOMEGA	MENOMEGA
Earlier trade mark	Contested sign

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 given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

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

In the present case, the marks in question are both word marks made of a single element. The earlier mark consists of the word ‘MUMOMEGA’ while the contested sign consists of the word ‘MENOMEGA’.

Neither of the marks, as a whole, has any meaning in the relevant territory and, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a 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).

In that connection, the opponent claims that consumers in the EU would break down the marks in question in the present case as ‘MUM-OMEGA’ and ‘MEN-OMEGA’. As to the applicant, it considers that, assuming the public would dissect the signs - which in its opinion, is doubtful - it would be as follows: ‘MUMO-MEGA’ and ‘MENO-MEGA’.

Insofar as the contested sign is concerned, it cannot be disregarded that, due to the fact that both the prefix ‘MUM-’, ‘and the suffix ‘OMEGA’ have a concrete meaning for the English-speaking public, part of it might dissect the earlier mark.

However, the Opposition Division does not concur with the opponent that the same reasoning may apply to the contested sign. On the one hand, the prefix ‘MEN’ is not a word commonly used in the course of trade as an abbreviation of the word ‘menopause’ and, on the other hand, the goods in question are obviously not directed to male but female beings. As the prefix ‘MEN’ has no relevant meaning nor is it in any way allusive in relation to the goods in question it is not reasonable to assume that even the English-speaking part of the relevant public would dissect the contested sign.

Similarly, as none of the prefixes ‘MUMO’ or ‘MENO’ has a meaning in any language in the relevant territory nor do they resemble any word having a clear meaning in the perception of the relevant public, it cannot be reasonably considered that the signs would be dissected as indicated by the applicant.

In the light of all the aforesaid, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the relevant public.

Since for this part of the public, none of the prefixes ‘MUM’ or ‘MEN’ has a meaning or resembles a word that has a meaning, it is unlikely to dissect the signs irrespective of the fact that ‘OMEGA’ has a meaning or not for this public.

It follows from the above that the marks have no element that could be considered as clearly more distinctive than others.

Visually, the signs coincide in ‘M**OMEGA’. However, they differ in the two letters following the initial ‘M’ that the marks have in common, namely, ‘UM’ of the earlier mark versus ‘EN’ of the contested sign.

Considering that the signs share the same initial letter ‘M’ and the same ending ‘OMEGA’, the signs will be perceived as visually similar to a high degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘M**OMEGA’, present identically in both signs. The pronunciation differs in the sound of the letters ‛UM’ of the earlier mark versus ‘EN’ of the contested sign.

However, the opponent rightly points out in that regard that the sound of the third consonant (N/M) is similar in both marks as the spoken sound of these letters are nasal sounds and therefore, the pronunciation of the differing letters ‘UM’ and ‘EN’ only slightly differ to one another in the end of the sound.

Moreover, since they have the same number of letters and the differing letters are placed in the same position, in the middle of the signs, the marks have the same rhythm and sound.

Therefore, overall, the signs produce a highly similar impression from the aural point of view.

Conceptually, since as explained above, the vast majority of the non-English speaking part of the public will perceive the signs as a whole and will not attribute any meaning to them, the conceptual aspect does not have any influence on the comparison of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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, contrary to the applicant’s claim, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

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 distinctiveness of the earlier mark is also one of the factors to be taken into account in the global assessment of likelihood of confusion.

In the present case, the goods in question were found to be identical and similar (for some of them to an average degree and for some others to a high degree). Moreover, the signs were found similar to a high degree from the visual and aural points of view and the conceptual aspect has no bearing on the comparison of the signs.

Lastly, the distinctive character of the earlier mark was considered to be normal.

Considering all of the above and taking into account that even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54), the Opposition Division considers that a likelihood of confusion on the part of the non-English-speaking part of the public within the meaning of Article 8(1)(b) EUTMR cannot be safely excluded.

Given that as stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 3 928 439. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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

Marianna KONDAS

Marine DARTEYRE

Julie GOUTARD

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.