OPPOSITION No B 2 840 455

Salengei S.L., Via Augusta 48, 08006, Barcelona, Spain (opponent), represented by Ponti & Partners S.L.P, C. Consell de Cent 322, 08007 Barcelona, Spain (professional representative)

a g a i n s t

CDS (Superstores International) Limited, Tamar House, Thornbury Road, Plymouth Devon PL6 7PP, United Kingdom (applicant), represented by Jensen & Son, 366-368 Old Street, London EC1V 9LT, United Kingdom (professional representative).

On 14/02/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 840 455 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 916 621 , namely against all the goods in Classes 5 and 32. The opposition is based on European Union trade mark registration No 11 869 872 . 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.

a) The goods

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

Class 5: Foods and dietetic substances adapted for medical use, food supplements for human beings; extracts of medicinal plants and herbs.

Class 29: Meat, fish, poultry and game; deat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats; vegetable juice concentrates for food; vegetable extracts for food; prepared vegetable products; vegetable extracts for cooking (juices); vegetable juices for cooking; vegetable soups; vegetable extracts for cooking.

Class 30: Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice; vegetable concentrates used for seasoning; vegetal preparations for use as coffee substitutes; vegetable thickeners.

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

Class 5: Pharmaceutical preparations; dietetic food adapted for medical use; dietetic substances adapted for medical use; dietary supplements for humans; dietary supplements and dietetic preparations; vitamin and mineral supplements; dietary and nutritional supplements; vitamin preparations in the nature of food supplements; health food supplements for persons with special dietary requirements; dietetic beverages adapted for medical purposes; powdered fruit-flavored dietary supplement drink mix; dietetic confectionery adapted for medical purposes; preparations of vitamins; effervescent vitamin tablets; gummy vitamins; nutritional supplement meal replacement bars for boosting energy; glucose dietary supplements; glucose for medical purposes; electrolyte solutions for medical use; nutraceuticals for use as a dietary supplement; meal replacement powders.

Class 32: Mineral waters; aerated waters; non-alcoholic beverages; preparations for making beverages; aerated juices; beverages containing vitamins; bottled water; carbonated non-alcoholic drinks; cola drinks; concentrates for use in the preparation of soft drinks; cordials; pastilles for effervescing beverages; energy drinks; energy drinks containing caffeine; essences for making beverages; flavoured waters; fruit based beverages; fruit flavoured beverages; fruit juices; fruit squashes; isotonic beverages; isotonic drinks; juices; lemonade; lemon squash; low calorie soft drinks; orange juice; orange squash; smoothies; soft drinks; sports drinks; sports drinks containing electrolytes; squashes [non-alcoholic beverages]; syrups for making beverages; vegetable drinks, all afore-mentioned goods excluding non-alcoholic and alcohol reduced beers, especially wheat beers.

Some of the contested goods are identical or similar to the goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

b) 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 assumed to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise.

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.

Taking into account the nature of all the goods listed above, the degree of attention may vary between average and high.

c) The signs

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 coinciding English word ‘ACTIVE’, present in both signs, will be understood by the English-speaking public as referring to the following meanings: (1) ‘producing or involving action or movement’, (2) ‘marked by vigorous activity’, (3) ‘requiring vigorous action or exertion (active sports)’ (information extracted from Merriam-Webster Dictionary on 04/02/2020 at www.merriam-webster.com/dictionary/active). It will be associated with the above-mentioned meanings also by the remaining public throughout the European Union due to the fact that it is a basic English word and also due to visual and/or aural similarity to the equivalent words in other respective languages, for example Bulgarian (‘aktiven’), Croatian (‘aktivan’), Czech (‘aktivní’), Danish (‘aktiv’), Dutch (‘actief’), Estonian (‘aktiivne’), Finnish (‘aktiivinen’), French (‘actif’), German (‘aktiv’), Hungarian (‘aktív’), Italian (‘attivo’), Latvian (‘aktīvs’), Lithuanian (‘aktyvus’), Maltese (‘attiva’), Polish (‘aktywny’), Portuguese (‘ativo’), Romanian (‘activ’), Slovak (‘aktívny’), Slovenian (‘aktivna’), Spanish (‘activo’) and Swedish (‘aktiv’).

In connection with the goods at issue, the word ‘ACTIVE’ conveys the message that the consumption of the goods may be suitable to increase energy of a person to become more active (food supplements; vitamins; (energy) drinks). The word ‘ACTIVE’ is accordingly descriptive of the goods concerned as there is a sufficiently direct and specific connection for the relevant public to be able to immediately discern a description of one of the essential characteristics of the goods in question without the need for further reflection.

The earlier sign is a figurative mark containing the verbal elements ‘ACTIVE’ and ‘FOODS’ separated by a figurative element representing a type of plant. This element may evoke the plant origin of some goods and is considered weaker albeit distinctive to some degree considering its specific depiction. The element ‘FOODS’ refers to the plural form of ‘food’, meaning ‘any substance containing nutrients, such as carbohydrates, proteins, and fats, that can be ingested by a living organism and metabolized into energy and body tissue’ (information extracted from Collins English Dictionary on 04/02/2020 at https://www.collinsdictionary.com/es/diccionario/ingles/food).

Therefore, the relevant public will understand the element ‘FOODS’ as describing the goods of the earlier mark and it is thus non-distinctive in relation to these goods. The expression ‘ACTIVE FOODS’ as a whole will have an obvious and direct meaning for the relevant public. In this combination, the role of the word ‘ACTIVE’ is subordinate to the word ‘FOODS’ as it will be understood as an adjective qualifying the noun. This applies to the whole territory of the European Union.

The contested trade mark is a figurative mark containing the verbal elements ‘Active’ and ‘sport’, set on two lines. The first element, ‘Active’ is depicted in a stylised black handwritten typeface with one upper case letter ‘A’. The left arm of the letter ‘A’ is repeated two times, each time smaller.

As explained above, the word ‘Active’ itself is descriptive of the characteristics of the goods in Class 5, but also in relation to the goods in Class 32. Together with its stylised depiction it is not more than weakly distinctive for the contested goods. The second word ‘sport’, which is a basic English term understood throughout the European Union, is descriptive of the field of application of the contested goods (for use in sport) and, in addition, it is depicted in a standard black typeface in lower case. Consequently, the word ‘sport’ with its stylisation is non-distinctive for the goods. Just like the earlier mark, the expression ‘Active sport’ of the contested sign as a whole will have an obvious and direct meaning for the relevant public. In this combination, the role of the word ‘ACTIVE’ is subordinate to the word ‘sport’, as it will be understood as an adjective qualifying the noun. The above findings apply also to the whole territory of the European Union.

Neither of the signs, contrary to the opponent’s arguments, has any element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the word ‘ACTIVE’, which is the first element of both signs. Although located at the beginning of the signs, this element is not more than weakly distinctive for the goods. The public will perceive this element in the signs under comparison, however, its impact on the visual assessment cannot be overestimated.

It should also be noted that the coinciding word ‘ACTIVE’ is represented in a very different way, in white upper case characters with a dark outline in the earlier mark versus black handwritten upper and in lower case characters with a left arm of the letter ‘A’ repeated two times in the contested sign. Consequently, the signs differ in the stylisations of the coinciding verbal element ‘ACTIVE’.

In addition, the earlier sign also differs in the, albeit weak, figurative element of a type of plant. Furthermore, the signs differ in the words ‘FOODS’ and ‘sport’ which, although non-distinctive and represented in standard non-distinctive typefaces, will be perceived by the relevant public, especially considering their grammatical function within the signs – being a noun which is qualified by an adjective.

Therefore, the signs are visually similar to a very low 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 word ‘ACTIVE’ which, although located at the beginning of the signs, is not more than weakly distinctive for the goods and therefore cannot be given too much credit in aural assessment. Importantly, the pronunciation differs in the sound of the non-distinctive word ‘FOODS’ in the earlier mark and ‘sport’ in the contested sign, even if the impact of these elements is limited. The purely figurative elements of the signs are not subject to an aural assessment.

Therefore, the signs are aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs have a similar meaning as a whole throughout the relevant territory, the signs are conceptually similar to a low degree. The impact of the common word ‘ACTIVE’ cannot be overestimated bearing in mind that it is not more than weakly distinctive for the goods.

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

d) 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 low for the relevant goods.

e) 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 (recital 8 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 likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Accordingly, a greater degree of similarity between the goods and services may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

In the present case the goods are assumed to be all identical. The signs are visually similar to a very low degree, and aurally as well as conceptually similar to a low degree. The earlier trade mark has a low degree of distinctiveness.

The relevant public is the public at large and professionals displaying an average to high degree of attention.

The Opposition Division is of the opinion that the signs under comparison are not sufficiently similar to lead to a likelihood of confusion. While it is true that the contested sign reproduces the element ‘ACTIVE’ of the earlier sign, it has to be recalled that this coinciding element is not more than weakly distinctive for the goods. As already explained in section c) of this decision, the word ‘ACTIVE’ is depicted in a very different way in the signs under comparison, namely in white upper case characters with a dark grey outline in the earlier marks and in black handwritten upper and lower case characters with a left arm of the letter ‘A’ repeated two times in the contested sign. Moreover, the earlier mark depicts a type of plant, which has no counterpart in the contested sign.

The contested sign differs in the word ‘sport’ which, in the combination ‘Active sport’, is superior to the word ‘Active’, being a noun which is qualified by an adjective. Therefore, although non-distinctive and depicted in a standard typeface, the word ‘sport’ will also be perceived by the relevant public. In addition, it is depicted in lower case, while the corresponding elements of the earlier mark is depicted in upper case characters preceded by a figurative element, which further contributes slightly to distinguishing the marks.

It must be noted, moreover, that when these goods are found in the same specialized shops, pharmacies or same sections of supermarkets they are arranged on shelves and consumers are guided by the visual impact of the product they are looking for. Furthermore, the high attentiveness on the part of the relevant public involving goods that affect their state of health, dispels confusion.

According to the principle of interdependence mentioned above and relied on by the opponent, a lesser degree of similarity between the signs may be offset by a greater degree of similarity between the goods and services, and vice versa. The Opposition Division has taken this principle into account when assessing the likelihood of confusion in the present case, even assuming that all the goods are identical cannot, in this case, compensate for the differences between the signs.

Based on the overall assessment of the earlier mark and the contested sign, the Opposition Division takes the view that the mere fact that the marks coincide in the word ‘ACTIVE’, represented in a different way, is insufficient to trigger a likelihood of confusion, including a likelihood of association, on the part of the relevant public. The differing elements will enable consumers, even those displaying an average degree of attention, to safely differentiate between the signs. In view of the above differences and as a result of a lack of any other similarities between the signs under comparison, consumers are not likely to make assumptions as regards the commercial origin of the goods or indeed economic links between commercial undertakings merely on the basis of the word ‘ACTIVE’ which is not more than weakly distinctive for the goods at issue.

The opponent refers to a previous decision (B 1 935 801) of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous case referred to by the opponent is not relevant to the present proceedings, taken the fact that the signs in that case were both distinctive to an average degree and did not have only a weak element in common.

Considering all the above, there is no likelihood of confusion on part of the relevant public.

Therefore, the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Loreto URRACA LUQUE

Cynthia DEN DEKKER

Christophe DU JARDIN

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.