OPPOSITION No B 2 856 428

Bioline Pharmaceutical AG, Blegistrasse 5, Baar, Switzerland (opponent), represented by Klára Labalestra, Na Poříčí 12, 11000 Praha 1, Czech Republic (professional representative)

a g a i n s t

Egor Egorov, Westorstrasse 2, 10711 Berlin, Germany and Larissa Gladskikh, Ul. Voronezhskaja 1/37, App. 243, Moskau 115583, Russian Federation (applicant), represented by Dr. Geisler Dr. Franke Rechtsanwälte Partnerschaft mbB, Am Zwinger 2-4, 33602 Bielefeld, Germany (professional representative).

On 22/06/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 856 428 is upheld for all the contested goods.

2. European Union trade mark application No 16 073 801 is rejected in its entirety.

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

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 073 801 for the word mark ‘ENTEROCELL’. The opposition is based on international trade mark registration No 896 788 for the word mark ‘Enterosgel’ designating the European Union, the Czech Republic, Austria, the United Kingdom, Bulgaria, Poland, Italy, Benelux and Germany. The opponent invoked Article 8(1)(b) and Article 8(5) 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 international trade mark registration No 896 788, designating the European Union, various Member States and Benelux. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s international trade mark registration No 896 788 designating Benelux.

1. The goods

The goods on which the opposition is based, according to the official WIPO database extract, submitted by the opponent in its communication dated 25/07/2017 and received by the Office on 26/07/2017, are the following:

Class 1: Silicon organic compounds; siloxanes.

Class 3: Cosmetic preparations for skin care; beauty masks; cosmetic preparations for hair care; dentifrices.

Class 5: Medicines for humans, namely, preparations used for treatment of intestinal disorders; medicines for animals; nutritional additives for medical purposes; dietetic foods adapted for medical purposes; teas for medical purposes; medicinal herbs.

The contested goods are the following:

Class 5: Dietetic substances adapted for medical use; nutritional supplements; dietary supplemental drinks; food supplements; mineral food supplements; medicated food supplements; soy protein dietary supplements; protein dietary supplements; anti-oxidant food supplements; casein dietary supplements; yeast dietary supplements; wheat germ dietary supplements; propolis dietary supplements; linseed dietary supplements; linseed oil dietary supplements; glucose dietary supplements; albumin dietary supplements; enzyme dietary supplements; pollen dietary supplements; alginate dietary supplements; lecithin dietary supplements; nutritional supplement meal replacement bars for boosting energy; powdered fruit-flavored dietary supplement drink mix; health food supplements made principally of vitamins; health food supplements made principally of minerals; dietary supplements consisting primarily of iron; nutritional supplements consisting of fungal extracts; nutritional supplements consisting primarily of iron; nutritional supplements consisting primarily of zinc; nutraceuticals for use as a dietary supplement; nutritional supplements made of starch adapted for medical use; dietary supplements for humans not for medical purposes; glucose for use as an additive to foods for medical purposes; health food supplements for persons with special dietary requirements.

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 Class 5

The contested dietetic substances adapted for medical use; nutritional supplements; food supplements are synonymous with the opponent’s nutritional additives for medical purposes. Therefore, they are identical.

The contested mineral food supplements; medicated food supplements; soy protein dietary supplements; protein dietary supplements; anti-oxidant food supplements; casein dietary supplements; yeast dietary supplements; wheat germ dietary supplements; propolis dietary supplements; linseed dietary supplements; linseed oil dietary supplements; glucose dietary supplements; albumin dietary supplements; enzyme dietary supplements; pollen dietary supplements; alginate dietary supplements; lecithin dietary supplements; health food supplements made principally of vitamins; health food supplements made principally of minerals; dietary supplements consisting primarily of iron; nutritional supplements consisting of fungal extracts; nutritional supplements consisting primarily of iron; nutritional supplements consisting primarily of zinc; nutraceuticals for use as a dietary supplement; nutritional supplements made of starch adapted for medical use; dietary supplements for humans not for medical purposes; glucose for use as an additive to foods for medical purposes; health food supplements for persons with special dietary requirements are included in, or overlap with, the opponent’s nutritional additives for medical purposes. Therefore, they are identical.

The contested dietary supplemental drinks; nutritional supplement meal replacement bars for boosting energy; powdered fruit-flavored dietary supplement drink mix are highly similar to the opponent’s nutritional additives for medical purposes, as they have the same purpose. Moreover, they usually have the same producers, relevant public and distribution channels.

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 highly similar are directed at the public at large and at professionals in the field of medicine and healthcare, with specific professional knowledge or expertise.

Given that the general public is more prone to confusion, the examination will proceed on this basis.

The degree of attention of the relevant public is relatively high, as these goods affect the state of health of their consumers (10/02/2015, T‑368/13, ANGIPAX, EU:T:2015:81, § 43; 15/12/2009, T‑412/08, Trubion, EU:T:2009:507, § 28).

3. The signs

Enterosgel	ENTEROCELL
Earlier trade mark	Contested sign

The relevant territory is Benelux.

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 Benelux trade mark means that an earlier Benelux trade mark has identical protection in the relevant territories. Earlier Benelux trade marks may therefore be relied upon to challenge any subsequent application for a trade mark that would prejudice their protection, even if this is only in relation to the perception of consumers in part of the Benelux (see, by analogy, 07/09/2006, C‑108/05, Europolis, EU:C:2006:530).

Due to the specific pronunciation rules in French, the pronunciation of the signs is particularly similar for the French-speaking public. In addition, this part of the public will not associate the contested sign with any meaning, unlike at least part of the Dutch- and German-speaking parts of the general public in Benelux, which may perceive the concept of a cell, due to the resemblance of ‘CELL’ to the equivalent words, ‘cel’ and ‘Zelle’ respectively. Consequently, for reasons of procedural economy, the Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the general public.

The earlier mark and the contested sign are both word marks consisting of one verbal element, ‘Enterosgel’ and ‘ENTEROCELL’ respectively.

In the case of a word mark, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether it is in upper or lower case letters, or a combination thereof. Moreover, as both signs are word marks, they have no elements that could be considered more dominant (visually eye-catching) than other elements.

The applicant claims that the coinciding part of the marks, namely ‘entero’ or ‘enteros’, is based on the Greek word ‘enteron’ meaning intestine. This meaning may be known by the specialised public, professionals working in the field of medicine; however, it is not commonly used in everyday language and not known by the French-speaking part of the general public. The examples of words quoted by the applicant and their French equivalents are all scientific words not used in everyday language. The most common word in French including the letters in question is ‘gastro-entérologue’ (a doctor specialising in the digestive system), which is always used as a whole. Therefore, the Opposition Division is of the opinion that the meaning ‘intestine’ or ‘something related to intestines’ will not be clearly understood by the French-speaking part of the general public.

The verbal element ‘gel’ in the earlier mark will be understood by the relevant public as meaning a semi-rigid jelly-like colloid in which a liquid is dispersed in a solid. As this element could be used to describe the form of the relevant goods, it is non-distinctive.

However, as a whole, the verbal element of the earlier mark, ‘Enterosgel’, will be perceived by the relevant public as a fanciful term that has an average degree of distinctiveness.

The verbal element of the contested sign, ‘ENTEROCELL’, would be perceived in its entirety, since it does not include any meaningful elements. As it has no meaning for the relevant public, it is of average distinctiveness.

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.

Visually, the signs coincide in the letters ‘ENTERO’ and ‘EL’, present identically in both signs. Moreover, they are the same length, nine letters, with identical beginnings. They differ in their intermediate letters, ‘SG’ versus ‘C’, and in the repetition of the last letter, ‘L’, in the contested sign. As explained above, differences in middle letters in quite long verbal elements are less noticeable.

Therefore, the signs are visually highly similar.

Aurally, in French the letter ‘C’ followed by ‘E’ is pronounced like the letter ‘S’, and there is no difference between the sounds of the final ‘L’ and ‘LL’. Therefore, despite the fact that the sound of letter ‘S’ in the earlier mark may not be particularly strong, the pronunciation of the signs coincides in the sound of the letters ‘ENTEROS*EL’ of the earlier mark and ‘ENTEROCELL’ of the contested sign, present identically in both signs. The pronunciation differs only in the sound of the letter ‛G’ of the earlier mark, which has no counterpart in the contested sign.

Therefore, the signs are aurally highly similar.

Conceptually, although the relevant public will perceive the meaning of the element ‘gel’ in the earlier mark as explained above, the other sign has no meaning for that part of the public. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar. However, because the meaningful element is non-distinctive in connection with the goods at issue, its contribution to the semantic impact of the earlier mark is small.

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, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a non-distinctive element in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The goods are partly identical and partly highly similar. The degree of attention of the relevant public is relatively high. The signs are visually and aurally highly similar and conceptually not similar. The earlier mark, as a whole, is assumed to have a normal degree of inherent distinctiveness.

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). Taking into account the identity or high degree of similarity between the relevant goods, this principle is clearly applicable to the present case.

Moreover, 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 Opposition Division is of the opinion that the high degree of aural and visual similarity counteracts the conceptual difference, which, moreover, results from the non-distinctive element ‘gel’ in the earlier mark.

Considering all the above, there is a likelihood of confusion on the part of the French-speaking part of the general public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of Benelux is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 896 788 designating Benelux. 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 reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As earlier international trade mark registration No 896 788 designating Benelux 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 remaining designations of the international registration invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 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, they 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

Catherine MEDINA

Anna ZIOLKOWSKA

Begoña URIARTE VALIENTE

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.