OPPOSITION No B 2 838 699

N.V. Nutricia, Eerste Stationsstraat 186, 2712 HM Zoetermeer, Netherlands (opponent), represented by NLO Shieldmark B.V., New Babylon City Offices, 2e étage, Anna van Buerenplein 21A, 2595DA Den Haag, Netherlands (professional representative)

a g a i n s t

Delta Pronatura Dr. Krauss & Dr. Beckmann KG, Kurt-Schumacher-Ring 15-17, 63329 Egelsbach, Germany (applicant), represented by Keil & Schaafhausen Patent- und Rechtsanwälte PartGmbB, Friedrichstraße 2-6, 60323 Frankfurt am Main, Germany (professional representative).

On 14/06/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 838 699 is rejected in its entirety.

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

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 16 196 801 ‘delta pronatura’ (word mark). The opposition is based on European Union trade mark registration No 10 521 771 ‘PRONUTRA’ (word mark). 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.

1. The goods

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

Class 5: Dietetic substances adapted for medical use; (fortifying) food for medical use including food for babies, infants and invalids; food for babies, namely breast milk substitutes in liquid and powder form.

The contested goods are the following:

Class 1: Chemicals used in industry, including washing and cleaning agent additives, cleaning agents for industrial purposes.

Class 3: Bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations; Soaps; Cleaning preparations, in particular stain removers, power cleaners, multi-purpose cleaners, preparations for removing scale, soap, rust, dirt, paint and other incrustations, rinsing preparations; Perfumery, essential oils, cosmetics, hair lotions, dentifrices; Sachets for perfuming linen, Air fresheners and laundry fresheners, Antiperspirants [toiletries].

Class 5: Disinfectants; Antiseptic cleansers; Pharmaceutical and veterinary drugs, preparations and substances, healing clay; 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.

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

The term ‘including’, used in both list of goods, indicates that the specific goods 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 (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from 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 1

The contested chemicals used in industry, including washing and cleaning agent additives, cleaning agents for industrial purposes are mainly chemical raw materials for the manufacture of products that will be used in industry. These goods clearly differ from the opponent’s goods dietetic substances adapted for medical use; (fortifying) food for medical use including food for babies, infants and invalids; food for babies, namely breast milk substitutes in liquid and powder form, which are food and other substances for nutrition purposes. Their nature, purpose and method of use are different. They do not coincide in their producers and do not share the same distribution channels or points of sale. Furthermore, these goods are neither complementary nor in competition and they target different end users. Therefore, they are dissimilar.

Contested goods in Class 3

The contested bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations; soaps; cleaning preparations, in particular stain removers, power cleaners, multi-purpose cleaners, preparations for removing scale, soap, rust, dirt, paint and other incrustations, rinsing preparations; perfumery, essential oils, cosmetics, hair lotions, dentifrices; sachets for perfuming linen, air fresheners and laundry fresheners, antiperspirants [toiletries] are products for household cleaning and maintenance purposes as well as personal care products, while the opponent’s goods are food and substances for nutrition purposes.

Despite the fact that they can target the same end users and can both be found in large stores or supermarkets, they will be displayed in different sections. These goods clearly differ in their nature, purpose and method of use. They are neither complementary nor in competition and they do not usually originate from the same undertakings. Therefore, they are dissimilar.

Contested goods in Class 5

Dietetic substances adapted for medical use are identically contained in both lists of goods.

The contested dietetic food adapted for medical or veterinary use, dietetic substances adapted for veterinary use; dietary supplements for humans and animals are included in or overlap with the broad category of the opponent’s dietetic substances adapted for medical use. Therefore, they are identical.

The contested food for babies includes, as a broader category, the opponent’s food for babies, namely breast milk substitutes in liquid and powder form. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested pharmaceutical and veterinary drugs, preparations and substances are used, in general, to improve humans’ or animals’ medical condition and the opponent’s dietetic substances adapted for medical use are substances prepared for special dietary requirements, have the purpose of treating or preventing disease in humans and animals. Therefore, their general purpose is similar, that is to say, they are both healthcare products. Moreover, they can target the same relevant public and the goods can be found in the same stores. Therefore, these goods are similar.

The contested disinfectants; antiseptic cleansers; healing clay; sanitary preparations for medical purposes; plasters, materials for dressings are dissimilar to all goods covered by the earlier right because their nature, purpose and methods of use are different. They do not coincide in their producer and they are neither complementary nor in competition. Therefore, they are dissimilar.

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 in question.

In the present case, the goods found to be identical and similar are directed at both the public at large and at business customers with specific professional knowledge or expertise. Moreover, 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 and cited case-law).

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. Therefore, the degree of attention of the relevant public may vary from average (i.e. for those products that are commonly bought without medical prescription, such as dietary supplements or food for babies) to high (e.g. in respect of pharmaceutical and veterinary drugs, preparations and substances).

3. The signs

PRONUTRA	delta pronatura
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 signs in conflict are word marks. In the case of word marks, the words themselves are protected, not their written form. Therefore, it is irrelevant whether a word mark is depicted in lower or upper case or in a combination of the two.

The element ‘PRONUTRA’ of the earlier mark does not exist as such for the public in the relevant territory. For the part of the public perceiving it as an invented meaningless term, it is distinctive, since it has no meaning in for the goods involved.

However, it can be noticed that when perceiving a verbal sign, consumers will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58). In the present case, as regards the earlier mark, part of the relevant public may recognise ‘PRO’ as the prefix used to refer to an advantage or support of something and ‘NUTRA’ as evoking the concept of ‘nutrition’, such as by the English‑ and the Spanish‑speaking parts of the public. For that part of the relevant public, the combination of these two elements will be perceived as ‘in favour of nutrition’ and, therefore, they are weak for all the goods in question, namely dietetic substances adapted for medical use and food for babies, namely breast milk substitutes in liquid and powder form, since these goods directly relate to nutrition purposes.

The element ‘DELTA’ of the contested sign will be understood by a part of the public, such as the English‑, French‑, Italian‑, Portuguese‑ and Spanish‑speaking parts, as ‘an area of flow, flat land shaped like a triangle, where a river splits and spreads out into several branches before entering the sea’ or as ‘the fourth letter in the Greek alphabet (Δ, δ), a consonant transliterated as d’ (information extracted from the Collins English Dictionary on 04/06/2018 in www.collinsdictionary.com). Therefore, as this element is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.

In its observations, the opponent argues that the element ‘DELTA’ of the contested sign lacks distinctive character given that there are many trade marks and company names that include this element. In support of its argument the opponent refers to a number of EU trade mark registrations.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the opponent’s argument does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element ‘DELTA’. Under these circumstances, the opponent’s claim must be set aside.

The element ‘PRONATURA’ does not exist as such for the public in the relevant territory. For the part of the public perceiving it as an invented meaningless term, it is distinctive, since it has no meaning in for the goods involved.

However, it cannot be disregarded that part of the relevant public may recognise the prefix ‘PRO’ (with the meaning explained above) and ‘NATURA’ as referring to the Latin term ‘nature’, meaning ‘all the animals, plants and other things in the world that are not made by people, and all the events and processes that are not caused by people’ (see Collins English Dictionary). The element ‘NATURA’ is meaningful in certain languages, for instance in Czech, Italian, Polish, Romanian and Spanish. Other languages such as German, Swedish and Danish have the word ‘NATUR’ for the same concept and the equivalent word ‘NATURE’ in English and ‘NATUUR’ in Dutch. Therefore, the element ‘PRONATURA’ used in relation to goods such as dietetic food and substances adapted for medical or veterinary use, food for babies will be perceived by part of the relevant public as ‘in favour of the nature, natural or environmentally friendly’ and, therefore, rather descriptive for those goods.

Following the aforesaid, part of the relevant public will perceive the conflicting elements ‘PRONUTRA’ and ‘PRONATURA’ as distinctive for the goods at issue whereas another part of the public will perceive the meanings explained above and thus, these elements as weak for the goods in question, the element ‘DELTA’ of the contested mark being distinctive in any case.

Contrary to the opponent’s opinion, word marks have no dominant elements because by definition they are written in standard typeface. The length of the words or the number of letters is not an issue of dominance but of overall impression. Consequently, the fact that a component of a mark may or may not be considered non-distinctive (or as having a low degree of distinctiveness) has no bearing on the assessment of dominant character.

Visually, the signs coincide in the sequence of letters ‘PRON*T*RA’, being part of the element forming the earlier mark and part of the second element of the contested sign. However, they differ in the letters they have in the middle, namely in their fifth letter, ‘U’ versus ‘A’, and the additional seventh letter of the contested sign, ‘U’. Furthermore, the signs differ in the first element of the contested sign, namely the distinctive element ‘DELTA’. It must be noticed that 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.

The opponent claims that the conflicting elements ‘PRONUTRA’ and ‘PRONATURA’ consists of the same letters with the only difference in one extra letter ‘A’. Indeed these elements are of similar lengths, namely eight and nine letters respectively. However, the General Court has held that the same number of letters in two marks is not, as such, of any particular significance for the relevant public, even for a specialised public. Since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar. In addition, the public is not, in general, aware of the exact number of letters in a word mark and, consequently, will not notice, in the majority of cases, that two conflicting marks have the same number of letters (25/03/2009, T‑402/07, ARCOL / CAPOL, EU:T:2009:85, § 81-82 confirmed by 04/03/2010, C‑193/09 P, ARCOL / CAPOL, EU:C:2010:121). Moreover, in the present case, these elements occupy a different position since the signs have different structures, namely one element of eight letters the earlier mark versus two elements of a total of fourteen letters the contested sign.

For all the aforesaid, the signs are visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the signs coincide in the sound of the letters /P/R/O/N/T/R/A/. However, the pronunciation of the signs differs in the additional vowels placed in different positions in the middle of the signs , namely ‘U’ in the earlier mark and ’U*A’ in the contested sign. Contrary to the opponent’s opinion, such different arrangement of the letters changes the number of syllables of these elements of the signs, ‘PRO‑NU‑TRA’ (three syllables) versus ‘PRO-NA-TU-RA’ (four syllables). Moreover, they differ in the pronunciation of the additional first element of the contested mark, ‘DELTA’ (pronounced in two syllables), which significantly contributes to distant the pronunciation of the signs.

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

Conceptually, neither of the signs has a meaning as a whole. However, the elements ‘PRONUTRA’ and ‘PRONATURA’ may be mentally dissected by part of the public, as explained above, which will have different semantic connotations in relation to the goods at issue, despite the coinciding concept of the prefix ‘PRO’. Therefore, for this part of the public, as the signs will be associated with a dissimilar meaning, the signs are not conceptually similar.

For the part of the public that only understands the word ‘DELTA’ of the contested sign, since the other sign will not be associated with any meaning, the signs are not conceptually similar.

For the relevant public that will only recognise fanciful words with no meanings, the conceptual comparison is not possible and 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 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. In fact, the Opposition Division notes that the opponent first raised the issue of a high degree of distinctiveness of its earlier mark on 22/02/2018, that is once the substantiation period had expired (31/10/2017) and thus, this claim cannot be considered in the present case (Guidelines of the Office, Part C Opposition, Section 1 Procedural Matters, C.4.2 Substantiation).

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 some weak elements in the mark for part of the relevant public, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The goods are partly identical, partly similar and partly dissimilar. The relevant public is the public at large and business customers with a degree of attention that varies from average to high. The earlier mark has a normal degree of distinctiveness.

The signs are visually and aurally similar to a low degree, since they have different structures and lengths. Most importantly, the signs differ in the first element of the contested sign, ‘DELTA’, which is distinctive for the whole relevant public. Conceptually, the signs are either not similar or the conceptual comparison is not possible, depending on the part of the public considered, as explained in detail above.

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).

It must be noticed that the degree of attention when purchasing the goods at issue can be high for some goods, and thus, the relevant public will be less prone to confusion in between the signs.

In sum, the similarities between the signs lie in some letters placed in different elements of the signs and are not sufficient to overcome the visual and aural distance between the signs. Therefore, the Opposition Division considers that the similarities are not sufficient to lead to a likelihood of confusion or association on the part of the public.

This absence of a likelihood of confusion equally applies to the part of the public for which the elements ‘PRONUTRA’ and ‘PRONATURA’ are weak for the goods at issue. This is because, as a result of the weak character of those elements and the different semantic content they evoke, that part of the public will perceive the signs as being even less similar.

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

María del Carmen SUCH SÁNCHEZ

Marta GARCÍA COLLADO

Alexandra APOSTOLAKIS

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.