OPPOSITION Nо B 3 011 551

 

Biologische Heilmittel Heel GmbH, Dr.-Reckeweg-Str. 2-4, 76532 Baden-Baden, Germany (opponent), represented by Habbel und Habbel Patentanwälte Partg MbB, Am Kanonengraben 11, 48151 Münster, Germany (professional representative) 

 

a g a i n s t

 

Esi S.R.L., Corso Ferrari 74/6, 17011 Albisola Superiore (savona), Italy (applicant), represented by Cantaluppi & Partners S.R.L., Piazzetta Cappellato Pedrocchi, 18, 35122 Padova, Italy (professional representative).

On 06/04/2021, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 3 011 551 is rejected in its entirety.

 

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

 

REASONS

 

The opponent filed an opposition against all the goods of European Union trade mark application No 16 289 712 (figurative mark), namely against all the goods in Classes 3 and 5. The opposition is based on EUTM registration No 1 454 420, ‘Traumeel’. The opponent invoked  Article 8(1)(b) EUTMR.

PROOF OF USE

Proof of use of the earlier mark was requested by the applicant. However, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T 296/02, Lindenhof, EU:T:2005:49, § 41, 72). The examination of the opposition will proceed as if genuine use of the earlier mark(s) had been proven for all the goods invoked, which is the best light in which the opponent’s case can be considered.

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: Pharmaceutical, veterinary and sanitary substances; infants' and invalids' foods; plasters, material for bandaging; material for stopping teeth, dental wax; disinfectants; preparations for killing weeds and destroying vermin.

 

The contested goods are the following:

 

Class 3: Moisturising gels [cosmetic]; body gels; hand gels; gels for cosmetic use; face gels; cosmetics in the form of gels; massage gels, other than for medical purposes; aloe vera gel for cosmetic purposes; massage gels, other than for medical purposes; non-medicated creams; dermatological creams [other than medicated]; skin moisturisers; skin emollients; skin conditioners.

Class 5: Dietary supplements and dietetic preparations.

Some of the contested goods are similar to goods on which the opposition is based, for example, the contested goods in Class 5. 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 similar 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 similar are directed at the public at large and health professionals. The degree of attention may vary from average to high, depending on the specialised nature of the goods in Class 3, the frequency of purchase and their price. However, it is apparent from the case-law that, insofar as pharmaceutical preparations, whether or not issued on prescription and dietary supplements and dietetic preparations, 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.

 

c) The signs

 

Traumeel
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 earlier mark is a word mark consisting of a single element ‘Traumeel’ which as a whole has no meaning and therefore, is distinctive. The contested sign is a figurative mark made of the element ‘TRAUM’ written in italics and ‘GEL’, both in a standard white typeface.

It is reasonable to consider that the element ‘Traum-’ in the two trade marks evokes the therapeutic sector (the traumatology) to which the goods may belong and therefore, it has a limited distinctiveness (06/11/2019, R 245/2019-1, Traumase/Traummets, § 33).

The element ‘GEL’ in the contested sign is commonly used in trade to designate ‘a thick, clear, liquid substance, especially one used on the hair or body’ (definition extracted from Cambridge dictionary at https://dictionary.cambridge.org/dictionary/english/gel on 22/02/2021). Considering that all the goods in question could take the form of a gel, this element will be perceived as a descriptive and non-distinctive element.

Owing to both its graphic representation, where ‘TRAUM’ and ‘GEL’ are written differently and to the meaning of these elements, it casts no doubt that at least the contested sign will be dissected. Indeed, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).

In the contested sign, the remaining letters ‘eel’ will be perceived as meaningless and hence distinctive; however, bearing in mind the above said regarding the prefix ‘Traum’, the earlier mark as a whole will evoke the therapeutic sector (the traumatology) to which the goods belong or could belong. Further elements, such as the black background device, which serve rather decorative purposes, will barely be attributed any trade mark significance.

Visually, the signs coincide in ‘TRAUM*EL’. However, they differ in the letter ‘E’ of the earlier mark versus ‘G’ of the contested sign. They further differ in the graphic representation of the contested sign, that is, the white typeface in which the verbal elements ‘TRAUM’ and ‘GEL’ are written with the difference that the latter is in italics, and the black rectangle background on which these are depicted. Moreover, the figurative element of the contested sign plays a purely decorative role.

As explained above, the element ‘GEL’ of the contested sign will be readily identified within the contested sign as a meaningful element owing both to its common use in the pharmaceutical and cosmetics sector and its depiction, which is differentiated from that of the preceding element ‘TRAUM’, considered allusive. On the other hand, if the earlier mark’s beginning ‘Traum’ may evoke the therapeutic sector in question here, the fact remains that it will be perceived as a meaningless and distinctive whole.

Therefore, despite its position in the middle of the signs, to which consumers generally do not pay too much attention, the difference lying in the sixth letter of the signs is quite striking in the present case and is hence unlikely to be overlooked.

All in all, considering that the signs coincide in their weak beginnings ‘TRAUM’ which are followed by sequences of letters which differ in their first letter, that is, ‘EEL’ versus ‘GEL’, the former forming a distinctive and meaningless element and the latter forming a non-distinctive element, the signs will be perceived as visually similar to a rather 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 letters /TRAUM/ present identically in the beginning of both signs, as well as in the ending of the following element of both signs ‘EL’ ‘or ‘L’ depending on the pronunciation of the common letter ‘E’.

The pronunciation differs in the sound of the letter ‘G’ of the contested sign and could further differ in the pronunciation of the following letter ‘E’ that the signs have in common in some languages, for example in English where the combination of letters ‘GE’ and ‘EE’ form a rather different sound. Indeed, while in this language, the element ‘EEL’ of the earlier mark will be pronounced as /iːl/, the element ‘GEL of the contested sign will be pronounced as /dʒel/.

Bearing in mind the weak distinctive character of the common element ‘TRAUM’, the degree of aural similarity will hence vary between low and average.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as evoking the traumatology sector due to the commonality in the element ‘TRAUM’, which however is weak, the signs will be perceived as similar to a low degree only.

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. 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 weak element in the mark, as stated above in section c) of this decision.

 

e) Global assessment, other arguments and conclusion

 

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).

In the present case, the goods in conflict have been assumed similar. The earlier mark has an average degree of distinctiveness because it has no meaning as a whole. However, as already stated, its beginning ‘TRAUM’ reproduced in the same position in the contested sign will be perceived as an allusion to the therapeutic indication of the goods and therefore, such commonality has a limited relevance.

Since the manner in which the relevant public perceives the shared element ‘Traum-’ plays a decisive role in determining whether the trade marks are sufficiently similar to give rise to confusion, it is necessary to take into account the distinctiveness of that element in the assessment of a likelihood between the signs. In fact, as the Court of Justice stated in the cited Sabel’s judgment, the overall impression given by the trade marks is likely to be influenced by the presence or absence of distinctive and dominant elements.

The sector in question in the present case is the pharmaceutical and cosmetics sector, and, it has been recognised by case-law that the use of so-called evocative trade marks, that is to say, trade marks which evoke, in a more or less explicit manner, the (therapeutic) application of the pharmaceutical in question or the active principle they contain, is common (14/07/2011, T-160/09, OFTAL CUSI,EU:T:2011:379, § 80). Furthermore, this equally holds true for the cosmetics also in question in the present case.

In addition the difference lying in the first letter of the second element of each sign ‘eel’ and ‘GEL’ is clearly perceptible and somehow dilutes the similarity that could be provided by the coincidence in the last letters.

Given that the common element of the trade marks is an element that evokes the (traumatology) sector to which the goods (potentially) belong, and considering that the additional element of each sign is clearly perceivable, it is considered sufficient to exclude any likelihood of confusion between the marks, it can reasonably be ruled out that the coexistence of the trade marks under examination will give rise to a likelihood of confusion or even association within the meaning of Article 8(1)(b) EUTMR, contrary to the opponent’s claims.

Considering all the above, even assuming that the goods are similar, there is no likelihood of confusion on the part of the public.

Given that the opposition is not well founded under Article 8(1) EUTMR, it is unnecessary to examine the evidence of use filed by the opponent.

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, 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

 

 

Gonzalo BILBAO TEJADA

Marine DARTEYRE

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.