DECISION

of the Fourth Board of Appeal

of 11 July 2016

In Case R 2464/2015-4

Ozac Suplevitaliment, S.L.
Rambla Catalunya 121, 6º 9º E-08008 Barcelona Spain	Applicant / Appellant

represented by Pons Patentes y Marcas International, S.L., Glorieta de Rubén Darío 4, E-28010 Madrid, Spain

v

ACM
Rue de Neuilly 17 - Impasse Passoir F-92110 Clichy France	Opponent / Respondent

represented by Novagraaf France, Bâtiment O2 - 2, rue Sarah Bernhardt, CS 90017, F–92665 Asnières-sur-Seine, France

APPEAL relating to Opposition Proceedings No B 2 434 895 (European Union trade mark application No 13 054 821)

The Fourth Board of Appeal

composed of D. Schennen (Chairperson), L. Marijnissen (Rapporteur) and F. López de Rego (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 4 July 2014, Ozac Suplevitaliment, S.L. (‘the applicant’) sought to register the figurative as amended in brown, beige, red and white

as a European Union trade mark for the following goods:

Class 5 – Protein dietary supplements.

2. On 6 November 2014, ACM (‘the opponent’) filed an opposition against the application based on the earlier Spanish trade mark No 3 032 736 for the word mark

NOVOPHANE

registered on 19 September 2012 for goods in Classes 3 and 5 including the following:

Class 5 – Nutritional supplements (dietary supplements); dietetic food and substances adapted for medical use.

3. The grounds for opposition were those laid down in Article 8(1)(b) EUTMR. The opposition was based on part of the goods of the earlier trade mark, namely those specified in the previous paragraph.

4. By decision of 14 October 2015, the Opposition Division upheld the opposition, rejected the application and ordered the applicant to bear the costs. It reasoned as follows:

• The conflicting goods are identical.

• The signs are visually and aurally similar. They coincide visually in seven out of seven and nine letters, respectively. The first two syllables of the signs are identically pronounced and the following part is aurally similar. Since the earlier sign is not meaningful in Spanish, the signs are not conceptually similar.

• The signs have no elements which are more dominant than others.

• The inherent distinctive character of the earlier trade mark is normal.

• The goods in question are directed to the public at large and to healthcare professionals. The degree of attention is average.

• The word element of the contested sign has a stronger impact on the consumers than the figurative device. The differences between the signs are not sufficient to counterbalance the overall degree of similarity between them, particularly from the aural perspective. A likelihood of confusion exists.

Submissions and arguments of the parties

5. On 11 December 2015, the applicant filed a notice of appeal, followed by a statement of grounds on 15 February 2016. It requests that the Board annul the contested decision and reject the contested application.

6. With its statement of grounds the applicant amended the list of goods and services of the contested mark to read as follows:

Class 5 – Protein dietary supplements for persons with special dietary requirements.

The applicant argues that these goods are dissimilar as they seek protection for specific purposes only.

7. It further argues that the contested mark contains a figurative element that takes up more than two thirds of the whole mark. The signs are visually dissimilar. Also, the words ‘NOVOPAN’ and ‘NOVOPHANE’ have a different number of syllables, a different length and rhythm. Moreover, the conceptual content of the contested sign’s word element ‘NOVOPAN’ permits the Spanish public to distinguish the signs. It is composed of ‘NOVO’ (Portuguese for ‘new’) and ‘PAN’ (meaning ‘bread’ in Spanish). The consumer’s level of attention would be higher than average. It argues that the inherent distinctive character of the part ‘NOVO’ of the earlier sign is weak which has been already admitted by the Office in previous decisions. In addition, there are more than 650 European Union trade marks with this prefix on the register, including some of them covering goods in Class 5. It concludes that the opposition should fail as the partial phonetic similarity between the signs is in itself not enough for a finding of a likelihood of confusion.

8. In reply, the opponent requests that the Board dismiss the appeal and order the applicant to bear the costs. It endorses the findings of the Opposition Division and argues further that the amended list of goods and services does not change the identity of the goods. The contested goods as amended are part of a larger category of goods covered by the earlier trade mark. Moreover, it emphasizes that the goods at issue are simply sold over the counter. Thus, the public’s attention will be average.

Reasons

9. The appeal is admissible but not well founded. A likelihood of confusion within the meaning of Article 8(1)(b) EUTMR exists for the contested goods also after the amendment of the list of goods and services.

Article 8(1)(b) EUTMR

10. Pursuant to Article 8(1)(b) EUTMR, upon opposition of the proprietor of an earlier trade mark, the trade mark applied for shall not be registered if, because of its identity with, or similarity to, the earlier mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected.

11. Since the earlier trade mark is a Spanish national trade mark, the relevant territory for analysing the likelihood of confusion is Spain. The relevant public consists of the public at large and health professionals.

Comparison of the goods

12. The conflicting goods are identical, also after amendment. The earlier ‘nutritional supplements (dietary supplements)’ constitute a broad category including supplements which are used by persons with special dietary requirements and those who do not have any. This broad category includes the contested goods which are, thus, identical. The earlier goods ‘dietetic food and substances adapted for medical use’ include, and are thus identical to, the contested goods which, after amendment, serve special dietary requirements and are thus adapted for medical use as well. The Board clarifies that actual marketing strategies implemented by the parties are irrelevant for the comparison of the goods, which has to be carried out taking into account only the wording of the register.

Comparison of the signs

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

14. The following marks are to be compared:

    Contested application	Earlier Spanish mark
    	NOVOPHANE

15. The contested sign consists of the word ‘NOVOPAN’ written in red capital letters accompanied by a number of figurative elements, i.e. a brown-shaded oval containing an abstract design in white, above, and in brown, beneath, a representation of a deer in movement against a background showing some stars. Four additional deer are depicted in beige against a brown background in the lower part of the sign.

16. The figurative elements take up the major part of the contested sign. However, the word ‘NOVOPAN’ appears to be clearly visible in the upper part of the mark in a contrasting red colour. It follows that the word element ‘NOVAPAN’ is co-dominant.

17. Both the word element ‘NOVOPAN’ and the graphic device of the contested mark are as such distinctive, having no meaning in relation to the goods at issue. As regards the applicant’s argument that the public will perceive the words ‘NOVO’ and ‘PAN’ in the contested mark, the Board notes that the public has no reason and in particular no habit to dissect a term into words of two different languages (Portuguese and Spanish). It is even unlikely in the light of the goods at issue that the Spanish public will recognise the Spanish word ‘PAN’ (bread) in the sign applied for. Where a trade mark is composed of verbal and figurative elements, the former should, in principle, be considered more distinctive than the latter, because the average consumer will more easily refer to the goods or services in question by quoting their name than by describing the figurative element of the trade mark (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

18. The earlier sign consists of the word ‘NOVOPHANE’, which is fanciful for the relevant Spanish consumer.

19. Visually, the earlier mark and the distinctive and co-dominant word element ‘NOVOPAN’ of the contested mark coincide in seven out of seven and nine letters, respectively. Four of coinciding letters are at the beginning of the signs, to which the consumer tends to focus, placed in exactly the same sequence. The signs differ as to the additional letters ‘H’ and ‘E’ in the earlier mark and as to the figurative elements of the contested sign. The Board assesses the signs as being visually similar to an average degree.

20. From a phonetic perspective, the contested sign will be referred to only with its verbal element as the figurative elements will not be pronounced. Thus, the relevant Spanish consumers will pronounce the respective signs as [‘NO/VO/’PAN] and [‘NO/VO/’PA/NE]. The signs are identical in the first two syllables to which the consumer tend to focus. The differentiating letter ‘H’ in the earlier sign has no impact on the pronunciation. Thus, the ending parts of the signs are aurally similar. The Board assesses the aural similarity of the signs as being above average.

21. In the absence of any meaning of the words ‘NOVOPAN’ and ‘NOVOPHANE’, the signs are conceptually not similar.

Global assessment of likelihood of confusion

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

23. A likelihood of confusion on the part of the public must be assessed globally. That global assessment implies some interdependence between the factors taken into account and in particular similarity between the marks and between the goods or services covered. Accordingly, a lesser degree of similarity between these goods or services may be offset by a greater degree of similarity between the marks, and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17; 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19). The more distinctive the earlier mark, the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

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

25. The target public of the conflicting goods includes the public at large and health professionals. The public at large is more attentive when purchasing dietary and nutritional supplements since these products directly affect the consumer’s health (26/11/2013, T-262/14, BIONECS, EU:T:2015:886, § 17ff.). The degree of attention of the relevant public is higher than average.

26. The level of inherent distinctiveness of the earlier trade mark is normal as the word ‘NOVOPHANE’ has no meaning for the relevant Spanish consumer.

27. The distinctiveness of the earlier mark is not weakened by the fact that there are other marks registered by the Office with the prefix ‘NOVO’ as argued by the applicant. First of all, the earlier mark is ‘NOVOPHANE’ and not ‘NOVO’. Moreover, the mere fact that other marks are registered does not prove use of these marks and is therefore not conclusive for the possible weakness of the earlier mark.

28. As regards the applicant’s argument that the Office in previous decisions has considered that the element ‘NOVO’ is weak, as it will be associated with ‘new’, the Board recalls that the earlier mark is not ‘NOVO’ but ‘NOVOPHANE’. Moreover, the Spanish public will not artificially dissect ‘NOVO’ from this term, as it is not a Spanish, but a Portuguese word. Also, it must be noted that each case must be decided on its own merits and that the lawfulness of decisions of the Board of Appeal must be assessed solely on the basis of the EUTMR, as interpreted by the European Union judicature, and not on the basis of the previous decision-making practice (see, for example: 25/04/2013, T-284/11, Metroinvest, EU:T:2013:218, §§ 74, 77).

29. Taking into account the average visual and above average aural similarity between the signs, the identity of the goods and the normal distinctiveness of the earlier trade mark, there is a likelihood of confusion on the relevant public, even taking into account a higher level of attention.

30. The opposition is successful and the appeal shall be dismissed.

Costs

31. Since the applicant (appellant) is the losing party of this appeal within the meaning of Article 85(1) EUTMR, it must bear the costs incurred by the opponent (respondent) in the appeal proceedings. The Opposition Division correctly decided that the appellant shall bear the cost of the respondent in the opposition proceedings.

Fixing of costs

32. In accordance with Article 85(6) EUTMR and Rules 94(3), (6) and 94(7)(d)(i) and (vi) CTMIR, the Board fixes the amount of representation costs to be paid by the appellant to the respondent for the appeal proceedings at EUR 550 and for the opposition proceedings at EUR 300. In addition the appellant shall reimburse to the respondent the opposition fee of EUR 350. The total amount is EUR 1 200.

Order

On these grounds,

THE BOARD

Hereby:

1. Dismisses the appeal;

2. Orders the appellant to bear the costs of the appeal proceedings;

3. Fixes the amount of costs and fees to be paid by the appellant to the respondent with respect to the opposition and appeal proceedings at EUR 1 200.

Signed D. Schennen

Signed L. Marijnissen

Signed F. López de Rego

Registrar: Signed H.Dijkema