OPPOSITION No B 2 395 369

Tisso Naturprodukte GmbH, Eisenstraße 1, 57482 Wenden, Germany (opponent), represented by König Szynka Tilmann Von Renesse Patentanwälte Partnerschaft Mbb, Mönchenwerther Straße 11, 40545 Düsseldorf, Germany (professional representative)

a g a i n s t

Procell, Avenue Jean Burgers, 2, 7850 Enghien, Belgium (applicant), represented by Pronovem Marks Société Anonyme, Avenue Josse Goffin, 158, 1082 Bruxelles, Belgium (professional representative).

On 16/06/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 395 369 is upheld for all the contested goods and services.

2. European Union trade mark application No 12 719 911 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 and services of European Union trade mark application No 12 719 911. The opposition is based on European Union trade mark registration No 12 612 801. The opponent invoked Article 8(1)(a) and (b) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods and services

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

Class 3: Bleaching preparations and other substances for laundry use; Cleaning, polishing, scouring and abrasive preparations; Soaps, perfumeries, essential oils, cosmetics, hair lotions, dentifrices.

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; Material for stopping teeth, dental wax; Disinfectants; Preparations for destroying vermin; Fungicides, herbicides; Mitochondria beverages for pharmaceutical/medical purposes.

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life saving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Compact discs, DVDs and other digital recording media; Mechanisms for coin-operated apparatus; Cash registers, calculating machines, data processing equipment, computers; Computer software; Fire-extinguishing apparatus.

Class 10: Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; Orthopedic articles; Suture materials; Medical apparatus and instruments; Apparatus and fittings for bio-resonance therapy and magnetic field therapy; Apparatus for irradiating injured body parts, namely radiation apparatus for pain relief and the reduction of inflammation and for wound healing; Medical aids for reducing body weight, namely medical devices and apparatus for physiotherapy and physical exercise, massage apparatus, medical belts, medical bandages; Blankets, electric, for medical purposes.

Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

Class 16: Paper, cardboard and goods made from these materials, not included in other classes, namely books and guides (in printed or bound form) relating to healthcare topics, packaging materials made of paper or cardboard; Printed matter; Bookbinding material; Photographs; Stationery; Adhesives for stationery or household purposes; Artists' materials; Paint brushes; Typewriters and office requisites (except furniture); Instructional and teaching material (except apparatus); Plastic materials for packaging (not included in other classes); Printers' type; Printing blocks.

Class 21: Household or kitchen utensils and containers; Combs and sponges; Brushes (except paintbrushes); Brush-making materials; Articles for cleaning purposes; Steelwool; Unworked or semi-worked glass (except glass used in building); Glassware, porcelain and earthenwear not included in other classes.

Class 29: Meat, fish, poultry and game; Meat extracts; Preserved, frozen, dried and cooked fruits and vegetables; Jellies, jams, compotes; Eggs; Milk and milk products; Edible oils and fats; Prepared hempseeds for human consumption.

Class 30: Coffee, tea, cocoa and artificial coffee; Rice; Tapioca and sago; Flour and preparations made from cereals, Bread, Bread mixes, pastry and confectionery; Edible ices; Sugar, honey, treacle; Yeast, baking-powder; Salt; Mustard; Vinegar, sauces (condiments); Spices; Ice.

Class 31: Grains and agricultural, horticultural and forestry products not included in other classes; Live animals; Fresh fruits and vegetables; Seeds, natural plants and flowers; Foodstuffs for animals, malt.

Class 32: Beers; Mineral and aerated waters and other non-alcoholic beverages, In particular energy drinks and Mitochondria beverages, not for pharmaceutical/medical purposes; Fruit beverages and fruit juices; Syrups and other preparations for making beverages.

Class 33: Alcoholic beverages (except beers).

Class 35: Advertising; Business management; Business administration; Office functions; Services to assist others with direct marketing, advertising, lead generation, order processing, and payment processing; Management of electronic data relating to multi-level marketing and recommendation marketing; Wholesaling and retailing and catalogue and internet mail order, all in respect of bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, 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, material for stopping teeth, dental wax, disinfectants, preparations for destroying vermin, fungicides, herbicides, mitochondria beverages, scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, compact discs, DVDs and other digital recording media, mechanisms for coin-operated apparatus, cash registers, calculating machines, data processing equipment, computers, computer software, fire-extinguishing apparatus, surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth, orthopaedic articles, suture materials, medical apparatus and instruments; Apparatus and fittings for bioresonance therapy and magnetic field therapy, radiation apparatus for pain relief and the reduction of inflammation and for wound healing; Medical aids for reducing body weight, namely physical exercise apparatus, for medical purposes, massage apparatus, medical belts, medical bandages, apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, paper, cardboard, books and guides (in printed or bound form) relating to healthcare topics, packaging materials made of paper or cardboard, printed matter, bookbinding material, photographs, stationery, adhesives for stationery or household purposes, artists' materials, paint brushes, typewriters and office requisites (except furniture), instructional and teaching material (except apparatus), plastic materials for packaging, printers' type, printing blocks, household or kitchen utensils and containers, combs and sponges, brushes (except paint brushes), brush-making materials, articles for cleaning purposes, steelwool, unworked or semi-worked glass (except glass used in building), glassware, porcelain and earthenware, meat, fish, poultry and game, meat extracts, preserved, frozen, dried and cooked fruits and vegetables, jellies, jams, compotes, eggs, milk and milk products, edible oils and fats, prepared hempseeds for human consumption, coffee, tea, cocoa and artificial coffee, rice, tapioca and sago, flour and preparations made from cereals, bread, bread mixes, pastry and confectionery, ices, sugar, honey, treacle, yeast, baking-powder, salt, mustard, vinegar, sauces (condiments), spices, ice, grains and agricultural, horticultural and forestry products, live animals, fresh fruits and vegetables, seeds, natural plants and flowers, foodstuffs for animals, malt, beers, mineral and aerated waters, energy drinks, mitochondria beverages, non-alcoholic beverages, fruit beverages and fruit juices, syrups and other preparations for making beverages, alcoholic beverages (except beers).

Class 41: Providing of training, arranging and conducting of seminars, further training events and educational and training programmes, all in particular relating to business management, commercial know-how, marketing strategies (in particular multi-level marketing and recommendation marketing), physiology, nutritional physiology, cosmetics, bioresonance therapy, magnetic field therapy, acupuncture, light therapy and human health and fitness.

Class 42: Research in the field of cosmetics, nutritional science and physiology, in particular nutritional physiology, bioresonance therapy, magnetic field therapy, acupuncture and light therapy.

Class 44: Medical services, Namely physiotherapy or alternative medicine; Hygienic and beauty care and advice; Care services, in particular consultancy and treatment of overweight patients, conducting light therapy, namely light frequency applications, healthcare, in particular acupuncture by means of lighting technology (LEDs).

The contested goods and services are the following:

Class 5: Nutritional additives for pharmaceutical and medical purposes; Protein bars enriched with nutrients for medical and pharmaceutical purposes; Aromatherapy, phytotherapy and nutritherapy substances for medical and pharmaceutical purposes; Dietetic substances adapted for medical or pharmaceutical use; Dietetic foodstuffs adapted for medical and pharmaceutical purposes; Dietetic beverages adapted for medical and pharmaceutical purposes; Vitamins; Tonics and fortifying agents for medical and pharmaceutical purposes.

Class 35: Publicity and sales promotion services; Business management; Retailing, wholesaling and sale via mail order of food supplements for medical and pharmaceutical purposes; Presentation of goods on communication media for retail purposes in the field of food supplements for medical and pharmaceutical purposes; Business administration of licences of goods and services in the field of food supplements for medical and pharmaceutical purposes; Organisation of exhibitions and events for commercial, promotional and advertising purposes in the field of food supplements for medical and pharmaceutical purposes; Dissemination of advertising and promotional matter (prospectuses, catalogues, printed matter, samples) in the field of food supplements for medical and pharmaceutical purposes; Public relations services.

Class 42: Scientific and technological services and research and design relating thereto, in the field of food supplements for medical and pharmaceutical purposes; Industrial analysis and research services in the field of food supplements for medical and pharmaceutical purposes; Design and development of computer software in the field of food supplements for medical and pharmaceutical purposes.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘in particular’, used in the opponent’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’, used in the opponent’s list of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and services.

Furthermore, 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.

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.

Contested goods in Class 5

The contested nutritional additives for pharmaceutical and medical purposes; aromatherapy, phytotherapy and nutritherapy substances for medical and pharmaceutical purposes and tonics and fortifying agents for medical and pharmaceutical purposes are included in the broad category of the opponent’s pharmaceutical and veterinary preparations. Therefore, they are considered identical.

The contested protein bars enriched with nutrients for medical and pharmaceutical purposes; dietetic beverages adapted for medical and pharmaceutical purposes are included in the broad category of the opponent’s dietetic food and substances adapted for medical or veterinary use. Therefore, they are considered identical.

The contested dietetic substances adapted for medical or pharmaceutical use; dietetic foodstuffs adapted for medical and pharmaceutical purposes are identically contained in both lists of goods and services.

The contested vitamins are included in the broad category of the opponent’s dietary supplements for humans and animals. Therefore, they are considered identical.

Contested services in Class 35

The contested publicity and sales promotion services; presentation of goods on communication media for retail purposes in the field of food supplements for medical and pharmaceutical purposes; organisation of exhibitions and events for commercial, promotional and advertising purposes in the field of food supplements for medical and pharmaceutical purposes; dissemination of advertising and promotional matter (prospectuses, catalogues, printed matter, samples) in the field of food supplements for medical and pharmaceutical purposes; public relations services are included in the broad category of the opponent’s advertising. Therefore, they are considered identical.

The contested business management is identically contained in both lists of goods and services.

The contested retailing, wholesaling and sale via mail order of food supplements for medical and pharmaceutical purposes overlaps with the opponent’s wholesaling and retailing and catalogue and internet mail order, all in respect of pharmaceutical and veterinary preparations, sanitary preparations for medical purposes, dietetic food and substances adapted for medical or veterinary use, dietary supplements for humans and animals, to the extent that both concern internet mail orders of food supplements for medical and pharmaceutical purposes and therefore, they are identical.

The contested business administration of licences of goods and services in the field of food supplements for medical and pharmaceutical purposes are included in the broad category of the opponent’s business administration. Therefore, they are considered identical.

Contested services in Class 42

The contested scientific and technological services and research and design relating thereto, in the field of food supplements for medical and pharmaceutical purposes; Industrial analysis and research services in the field of food supplements for medical and pharmaceutical purposes include, as broader categories, the opponent’s research in the field of cosmetics, nutritional science and physiology, in particular nutritional physiology, bioresonance therapy, magnetic field therapy, acupuncture and light therapy. It is impossible for the Opposition Division to filter these services from the abovementioned category. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s services, they are considered identical to the opponent’s services.

The contested design and development of computer software in the field of food supplements for medical and pharmaceutical purposes are closely linked to the opponent’s computers and computer software (in Class 9) because manufacturers of computers and/or software will also commonly render computer and/or software-related services (as a means of keeping the system updated, for example). Although the nature of the goods and services is not the same, both the relevant public and the usual producers/providers of the goods and services coincide. Furthermore, these goods and services are complementary. Therefore, they are considered similar.

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 and services found to be identical and similar are partly directed at the public at large including professionals (e.g. the goods in Class 5) and partly at business customers with specific professional knowledge or expertise only (e.g. the services in Class 42). Given the nature and purpose of the goods and services concerned, the level of attention will be relatively high.

3. The signs

PROVICELL
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

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 single word mark consisting of the word ‘PROVICELL’. Therefore, it has no dominant elements.

The contested sign is a figurative mark consisting of the word ‘PROCELL’ depicted in standard typeface. Its figurative aspect resides in the different colours of the letters ‘PRO’ and ‘CELL’, the former being depicted in grey and the latter in blue of a slightly bolder font. Moreover, the letters ‘O’ and ‘C’ are interlocked and the word ‘PROCELL’ is placed above four circles, two in grey, one in white and one in blue and a repetition of the interlocked ‘O’ and ‘C’ of the same size as the circles. Due to the location of these circles underneath the much bigger verbal element, the word ‘PROCELL’ must be considered to dominate the mark.

In terms of distinctiveness, the applicant claims that the words ‘PRO’ and ‘CELL’, present in both marks, should be considered weak, since they are both well-known and commonly used in all languages in connection with any kind of goods and services. This is, however, not true for the non-English speaking part of the public, professional or not, since the equivalent word for the English word ‘CELL’ is very different (e.g. ‘komórka’ in Polsih, ‘клетка’ in Bulgarian and ‘rakk’ in Estonian) in those territories where English is not widely understood.

Nevertheless, due to the visual distinction between the elements ‘PRO’ and ‘CELL’ in the contested sign, a significant part of this public may recognize its first word ‘PRO’ as a short word for ‘professional’ and thus associate it with the high quality of the goods and services at hand. This is not true for the earlier mark where no such distinction between the letter combinations ‘PRO’, ‘VI’ and ‘CELL’ is made, since this word mark is written as one word (see by analogy decision of 09/12/2010, R 554/2010-2, ‘PROXEL (FIG. MARK) / PROCELL’, § 29).

This means that the earlier mark will be perceived as a meaningless and, therefore, distinctive word and the contested sign as consisting of the laudatory weak element ‘PRO’ and the meaningless distinctive word ‘CELL’, or as a one meaningless and, therefore, distinctive word.

Visually, the signs are similar to the extent that all the letters of the contested sign are represented in the earlier mark, albeit that the earlier mark contains two additional letters, ‘VI’, between the shared initial, ‘PRO’, and last letters, ‘CELL’ and the contested sign contains figurative aspects which are not shared by the other mark. However, the additional two letters ‘VI’ are not sufficiently outstanding to counterbalance the more striking visual similarities caused by the signs’ shared beginnings and endings, which are more striking than the additional two letters in the middle and, therefore, least noticeable part of this element. Also the figurative aspects of the contested sign will not enable the consumers to distinguish the signs. The circles are dominated by the verbal element ‘PROCELL’, which in spite of the different colours of its constituent elements ‘PRO’ and ‘CELL’, is written as one word with the letters ‘O’ and ‘C’ interlocked. Therefore, also taking into account that the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (11/11/1997, C‑251/95, ‘Sabel’, EU:C:1997:528, § 23), there is no reason to assume that the public would not perceive or remember the mark as a whole. Therefore, the stylisation of the contested sign will not detract the consumers’ attention away from the word it seems merely to embellish. Consequently, the marks are visually similar to an average degree.

Aurally, the earlier mark will be pronounced in three syllables as PRO-VI-CELL and the contested sign in two syllables as PRO-CELL. They, therefore, coincide in their first and last syllables and differ in the additional sound of the second syllable of the earlier mark. However, the fact that the number of syllables is different is not sufficient to conclude that there is no phonetic similarity (17/04/2008, C‑108/07, ‘FERRERO/FERRO’, EU:C:2008:234, § 48 and 19/05/2011, T‑580/08, ‘Pepequillo’, EU:T:2011:227, § 79). In terms of the global impression, these differences cannot dispel the similarity arising out of the identity in sound of the two syllables ‘PRO’ and ‘CELL’. Not only are the similarities more numerous, they are also located at the more memorable beginnings and endings of the signs and, therefore, have a significant influence on the overall impression made by the mark. Consequently, the marks are aurally similar to a high degree.

Conceptually, although part of the public on which the comparison is focussed may associate the contested sign with something or someone professional, the marks as a whole have no meaning. Also, taking into account that this element is allusive of the quality of the goods or services and, therefore, of little impact conceptually for those that make this connection, in either case the conceptual aspect does not influence the assessment of the similarity 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.

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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The appreciation of 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).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).

As has been concluded above, the signs are visually similar to an average degree and aurally similar to a high degree, while the concept conveyed by the contested sign will not enable the relevant consumers to distinguish between the marks. Indeed, although part of the public on which the comparison is focussed may associate the contested sign with something or someone professional, this element is allusive of the quality of the goods or services and, therefore, of little impact conceptually for those consumers that make this connection.

The goods and services were found identical or similar and must be assessed from the point of view of public whose degree of attention is relatively high. Furthermore, the earlier mark enjoys a normal degree of distinctiveness.

In light of all the foregoing considerations, also taking into account the notion of imperfect recollection, it must be held that, even if the relevant consumers display a higher degree of attention when purchasing the goods or services, the differences in the middle and therefore least noticeable part of the signs, are not sufficient to rule out a likelihood of confusion in the sense that at least a substantial part of the relevant public could reasonably believe that the contested goods and services come from the same undertaking or from economically-lined undertakings.

Considering all the above, there is a likelihood of confusion on the part of the non-English-speaking part of the public. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 12 612 801. It follows that the contested trade mark must be rejected for all the contested goods and services.

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(1)(a) 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

Dorothée SCHLIEPHAKE

Adriana VAN ROODEN

Swetlana BRAUN

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 shall be filed in writing at the Office within two months of the date of notification of this decision. It shall 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 shall 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.