OPPOSITION No B 2 755 422

A. Nattermann & Cie. Gmbh, 1, Nattermannallee, 50 829 Köln-Bocklemünd, Germany (opponent), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative)

a g a i n s t

Next Trade Group Sp. z o.o., ul. Mokotowska 26, 00-561 Warszawa, Poland (applicant), represented by Sobajda & Orlińska Kancelaria Patentowa SP. J., ul. Dworkowa 2/67, 00-784 Warsaw, Poland (professional representative).

On 27/05/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 755 422 is upheld for all the contested goods, namely

Class 5: Pharmaceutical products; medications; medical articles; esters for pharmaceutical purposes; omega acid esters for pharmaceutical purposes; omega 3 and 6 acid esters for pharmaceutical purposes; herbal preparations for medicinal purposes; herbal medicine; adjuvants for medical purposes; dietary supplements and dietetic preparations; nutritional additives for medical purposes; dietetic products and substances adapted for medical use; nutritional dietetic preparations for medical purposes; infant formula; nutritional preparations for medical purposes; sanitary preparations for medical purposes.

2. European Union trade mark application No 14 994 016 is rejected for all the contested goods. It may proceed for the remaining goods.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 994 016 for the figurative mark , namely against some of the goods in Class 5. The opposition is based on, inter alia, Slovak trade mark registration No 224 811 for the word mark ‘ESSENTIALE’. The opponent invoked Article 8(1)(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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Slovak trade mark registration No 224 811, as it covers the broadest scope of goods.

1. The goods

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

Class 5: Pharmaceutical, veterinary and sanitary preparations adapted for medical use; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

The contested goods are, after a limitation by the opponent on 01/02/2018, the following:

Class 5: Pharmaceutical products; medications; medical articles; esters for pharmaceutical purposes; omega acid esters for pharmaceutical purposes; omega 3 and 6 acid esters for pharmaceutical purposes; herbal preparations for medicinal purposes; herbal medicine; adjuvants for medical purposes; dietary supplements and dietetic preparations; nutritional additives for medical purposes; dietetic products and substances adapted for medical use; nutritional dietetic preparations for medical purposes; infant formula; nutritional preparations for medical purposes; sanitary preparations for medical purposes.

The contested pharmaceutical products; medications are synonymous to the opponent’s pharmaceutical preparations adapted for medical use. Therefore, they are identical.

The contested medical articles; esters for pharmaceutical purposes; omega acid esters for pharmaceutical purposes; omega 3 and 6 acid esters for pharmaceutical purposes; herbal preparations for medicinal purposes; herbal medicine; adjuvants for medical purposes are included in the broad category of, or overlap with, the opponent’s pharmaceutical preparations adapted for medical use. Therefore, they are identical.

The contested dietary supplements and dietetic preparations; nutritional additives for medical purposes; dietetic products and substances adapted for medical use; nutritional dietetic preparations for medical purposes; nutritional preparations for medical purposes are all synonymous or included in the opponent’s broad category of dietetic substances adapted for medical use. Therefore, they are identical.

The contested infant formula is included in the broad category of the opponent’s food for babies. Therefore, they are identical.

Sanitary preparations for medical purposes are identically contained in both lists of goods (including synonyms).

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 are directed at the public at large and at the professional public with specific professional knowledge or expertise.

The degree of attention will vary from average to high.

It is apparent from the case-law that, insofar as pharmaceutical preparations, whether or not issued on prescription, are concerned, the relevant public’s degree of attention is relatively high (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 have a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health.

3. The signs

ESSENTIALE
Earlier trade mark	Contested sign

The relevant territory is Slovakia.

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 ‘ESSENTIALE’ alludes to the Slovak word essenciálne meaning ‘essential’, used mainly to refer to ‘essential oils’ or, less frequently, used to say something is necessary. To the extent that this concept is laudatory or can refer to one of the ingredients of the goods, the distinctiveness of this word is below average.

The same applies to the verbal element ‘essentiALA’ in the contested sign, which will be perceived in the same way, despite the fact that the last three letters are capitalised and in a different colour. Its distinctiveness is also below average, for the reasons set out above. The stylisation, use of upper- and lower-case letters and colours will have a limited impact, as they will be perceived as merely decorative and will not take the attention away from the word ‘essentiala’.

Consequently, both signs are composed of one verbal element that has the same degree of distinctiveness, namely below average, and have no elements that are more distinctive than others.

Furthermore, the signs have no elements that are more dominant (visually eye-catching) than others.

Visually, the signs coincide in the first nine of their ten letters in ‘ESSENTIAL’. However, they differ in their last letters, ‘E’ in the earlier mark and ‘A’ in the contested sign. The similarities at the beginning of the signs, and the difference in only one letter at their endings is particularly relevant, since consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Moreover, the length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words, small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs. Taking into account that the signs are rather long in this case, the relevant public will be less aware of their differing last letter. Furthermore, the signs differ in the particular stylisation of the contested sign, its colours and use of upper- and lower-case letters, which have, however, a more decorative character and therefore limited impact. As the earlier mark is a word mark, the protection concerns the word as such. Therefore, it is irrelevant whether it is written in lower-case letters.

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

Aurally, the pronunciation of the signs coincides in the sound of their first nine letters out of ten ‘ESSENTIAL’. However, they differ in the sound of their last letters, ‘E’ in the earlier mark and ‘A’ in the contested sign.

Therefore, taking into account the position of the similarities and differences, as well as the length of the signs, the signs are aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning, which has, however, a distinctiveness below average, the signs are conceptually similar to a low degree.

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as below average for all the goods.

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. 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).

The relevant public is the public at large and a professional public, with the degree of attention varying from average to high.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). 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 goods are identical.

The signs are visually similar to an average degree, aurally similar to a high degree and conceptually similar to a low degree.

The distinctiveness of the earlier mark is below average. The Court has emphasised on several occasions that a finding of a low distinctive character for the earlier trade mark does not prevent a finding of a likelihood of confusion. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Therefore, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a high degree of similarity between the signs and between the goods or services covered (13/12/2007, T‑134/06, Pagesjaunes.com, EU:T:2007:387, § 70).

In the present case, the signs coincide in nine out of their ten letters, and differ in the final letter at their endings where it will get less attention. Furthermore, although the distinctiveness of their sole verbal elements is below average, there are no more distinctive elements in the signs, nor elements that are more dominant. Therefore, in their overall impression, the signs show striking coincidences which, in combination with the identity between the goods, will lead to a likelihood of confusion, even with a higher degree of attention from the relevant public. Therefore, the identity between the goods and the striking similarities between the signs, especially the high aural similarity, counterbalances the earlier mark’s below average degree of distinctiveness. Indeed, the differences between the signs, namely their final letter out of ten and the specific stylisation of the contested sign, are insufficient to distinguish between them.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Slovak trade mark registration No 224 811. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier Slovak trade mark registration leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Marzena MACIAK

Saida CRABBE

Chantal VAN RIEL

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.