OPPOSITION No B 2 898 693

Merck KGaA, Frankfurter Str. 250, 64293 Darmstadt, Germany, P&G Health Germany GmbH, Sulzbacher Str. 40, 65824 Schwalbach am Taunus, Germany, P&G Health France S.A.S, 163/165 Quai Aulagnier, 92600 Asnières-sur-Seine, France (opponents), represented by Best Rechtsanwälte Partmbb, Hostatostr. 26, 65929 Frankfurt am Main, Germany (professional representative)

a g a i n s t

Neilos, S.r.l., Via Bagnulo 95, 80063 Piano di Sorrento, Italy (applicant), represented by Società Italiana Brevetti S.P.A, Piazza di Pietra 39, 00186 Roma, Italy (professional representative).

On 16/02/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 898 693 is upheld for all the contested goods.

2. European Union trade mark application No 16 365 009 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 365 009 ‘MELAFLOR’, namely against all the goods in Class 5. The opposition is based on the following earlier marks:

- European Union trade mark registration No 2 485 530 ‘MEDIFLOR’

- European Union trade mark registration No 3 640 208

- European Union trade mark registration No 8 690 455

- French trade mark application No 4 226 975 ‘LABORATOIRE MEDIFLOR’.

The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK

The applicant states that the opposition should be rejected because the opponents did not prove that the marks on which they relied were in use.

A request for proof of use must be explicit, unambiguous and unconditional. This is because it has important procedural consequences: if the opponent does not file proof of use, the opposition must be rejected.

Since the applicant’s statement is not an explicit, unambiguous and unconditional request for proof of use, it has not been treated as such. Therefore, the opponents were not under any obligation to submit proof that their earlier trade marks had been put to genuine use. Furthermore, the applicant has not submitted the request for proof of use by way of a separate document as required by Article 10(1) EUTMDR.

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 opponents’ European Union trade mark (EUTM) registrations No 2 485 530, No 3 640 208 and No 8 690 455.

a) The goods

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

European Union trade mark registration No 2 485 530

Class 5: Pharmaceutical products; dietetic substances adapted for medical use; herbs and medicinal plants, and preparations based on herbs and medicinal plants; herbal and medicinal teas, plants for herbal teas for medical purposes.

European Union trade mark registration No 3 640 208

Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use; disinfectants.

European Union trade mark registration No 8 690 455

Class 5: Pharmaceutical preparations; dietetic substances adapted for medical use; medicinal herbs and plants; herbal preparations and medicinal plants; herbal tea; Medicinal teas; infusion plants for medical purposes; food supplements, including dietetic preparations based carbohydrates, not for medical use.

The contested goods are the following:

Class 5: Dietary supplements and dietetic preparations; Dental preparations and articles, and medicated dentifrices; Sanitary preparations and articles; Pest control preparations and articles; Diagnostic preparations and materials; Live organs and tissues for surgical purpose; Pharmaceuticals and natural remedies; Medical dressings, coverings and applicators; Sea water for medicinal bathing; Mineral waters for medical purposes; Thermal water; Medicated additives for animal foods; Fodder additives for medical purposes; Medical adhesives for binding internal tissue; Medical adhesives for binding wounds; Adhesives for affixing prostheses; Cardiovascular agents for medical purposes; Cellular function activating agents for medical purposes; Benzol detoxification agents for medical purposes; Chlorine detoxification agents for medical purposes; Arsenic detoxification agents for medical purposes; Drug delivery agents that facilitate the delivery of pharmaceutical preparations; Drug delivery agents in the form of coatings for tablets that facilitate the delivery of pharmaceutical preparations; Drug delivery agents in the form of edible wafers for wrapping powdered pharmaceuticals; Drug delivery agents in the form of dissolvable films that facilitate the delivery of pharmaceutical preparations; Radiation sickness treating agents; Rubbing alcohol; Alcohol for pharmaceutical purposes; Medicinal alcohol; Marine antifoulants; Antibiotics for fish; Portable first-aid kits; Attractants for pet animals; Oxygen baths; Animal dips [preparations]; Corn remedies; Teat dips for dairy cows; Ear candles for therapeutic purposes; Capsules for medicines; Capsules sold empty for pharmaceuticals; Oiled paper for medical purposes; First aid kits for domestic use; First-aid boxes, filled; Reconstituted cells for clinical treatments for skin care; Reconstituted cells for medical treatments for skin care; Stem cells for medical purposes; Stem cells for veterinary purposes; Living cells for veterinary use; Surgical cements; Bone cements for surgical purposes; Bone cements for orthopaedic purposes; Cement for animal hooves; Bone cement for surgical and orthopaedic purposes; Bone cement for medical purposes; Cellulose esters for pharmaceutical purposes; Yeast extracts for medical, veterinary or pharmaceutical purposes; Cellulose ethers for pharmaceutical purposes; Medicinal mud; Mud for baths; Pheromones; Injectable dermal filler; Intravenous fluids used for rehydration, nutrition and the delivery of pharmaceutical preparations; Blood protein fractions; Enzymes for veterinary purposes; Enzymes for medical purposes; Haemoglobin; Scrubs [preparations] for medical use; Radioactive elements for medical use; Dextrins for pharmaceutical use; Crystals for therapeutic purposes; Udder creams for agricultural use; Chemical contraceptives; Cachets for pharmaceutical purposes; Blood components; Biological tissue cultures for veterinary purposes; Biological tissue cultures for medical purposes; Collodion for pharmaceutical purposes; Surgical glues; Collagen for medical purposes; Isotopes for medical purposes; Yeast for medical, veterinary or pharmaceutical purposes; Medicated after-shave lotions; Dog lotions; Lotions for veterinary purposes; Lubricants for surgical purposes; Lubricants for medical use; Radio-isotope markers for therapeutic or diagnostic use; Materials for surgical casts; Feed supplements for veterinary use; Antibiotic food supplements for animals; Vascular grafts [living tissue]; Biological indicators for monitoring sterilization processes for medical or veterinary purposes; Milking grease; Greases for veterinary purposes; Greases for medical or veterinary purposes; Greases for medical purposes; Breath-freshening chewing gum for medicinal purposes; Eye drops; Gravel as a digestive aid for birds; Petroleum jelly for medical or veterinary purposes; Gelatine for medical purposes; Solidified gases for medical purposes; Gases and gas mixtures for medical imaging use; Gases for medical purposes; Methionine preparations; Mineral preparations for medical purposes; Trichomycin preparations; Tryptophane preparations; Mineral food preparations for medical purposes; Antipyretic preparations; Bacterial preparations for medical purposes; Bacterial preparations for veterinary purposes; Bacteriological preparations for medical purposes; Blood plasma; Pearl powder for medical purposes; Cooling patches for medical use; Hydrogen peroxide for medical purposes; Solid oxygen for medical use; Radiotherapeutic hormones; Sandalwood oil for medical, pharmaceutical and veterinary purposes; Medicated baby oils; Gas mixtures for medical use; Microbicides; Bone growth media consisting of biological materials for medical purposes; Pain relief medication for veterinary purposes; Haemostatic pencils; Medicines for veterinary purposes; Headache pencils; Caustic pencils; Douching preparations for medical purposes; Organotherapeutics; Preparations for use in naturopathy; Amino acid preparations for veterinary use; Bacterial preparations for medical and veterinary use; Diagnostic radiopharmaceutical preparations; Medicinal healthcare preparations; Medical preparations; Menthol vapor bath preparations for babies; Bath preparations for medical purposes; Medicated eye-washes; Medicated toiletry preparations; Pharmaceutical preparations for animals; Enzyme preparations for veterinary purposes; Enzyme preparations for medical purposes; Trace element preparations for human use; Veterinary preparations and substances; Trace element preparations for use by animals; Preparations of trace elements for human and animal use; Chemical preparations for veterinary purposes; Chemical preparations for medical purposes; Biological preparations for veterinary purposes; Biochemical preparations for veterinary use; Bacteriological preparations for veterinary purposes; Biochemical preparations for medical use; Enema preparations; Therapeutic preparations for the bath; Mixed biological preparations for medical purposes; Biological preparations for medical purposes; Amino acid preparations for medical purposes; Pharmaceutical preparations for veterinary use; Sanitary preparations for veterinary use; Radioactive substances for medical purposes; Oral vaccine preparations; Rehydration preparations; Veterinary preparations; Radium for medical purposes; Reagents for use in veterinary genetic testing; Reagents for use in medical genetic testing; Reagents for medical use; Repellents for dogs; Breath refreshers for medical purposes; Mineral water salts; Salts for mineral water baths; Bath salts for medical purposes; Oral rehydration salts; Impregnated medicated wipes; Cord blood for medical purposes; Cord blood; Blood for medical purposes; Contraceptive sponges; Chemical contraceptive sponges; Feeding stimulants for animals; Chromatographic supports for medical use; Trypsins for medical purposes; Herbal anti-itch ointments for pets; Herbal sore skin ointments for pets; Urease for medical purposes; Vaccines; Semen for artificial insemination; Cooling sprays for medical purposes; Animal semen for artificial insemination; Animal sperm; By-products of the processing of cereals for medical purposes; Blood substitutes; Sealed radioactive substances for medical use; Solvents for removing adhesive plasters; Pre-filled syringes for medical purposes; Tobacco-free cigarettes for medical purposes; Medicated dry shampoos; Medicated shampoos for pets; Nucleic acid sequences for medical and veterinary purposes; Medicated shampoos; Contraceptive foams; Leeches for medical purposes; Milk sugar for medical purposes [lactose]; Bacterial poisons; Vaccines for human use.

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.

For the purposes of this comparison, all of the contested goods can be grouped as follows:

 Dietary supplements and dietetic preparations, for example medicated additives for animal foods; fodder additives for medical purposes; feed supplements for veterinary use; mineral preparations for medical purposes; mineral food preparations for medical purposes. The contested goods forming, or belonging to, the group of dietary supplements and dietetic preparations are identical to the opponents’ dietetic substances adapted for medical use, in earlier EUTM No 2 485 530, EUTM No 3 640 208 and EUTM No 8 690 455, because the opponent’s goods include, are included in, or overlap with, the contested goods.

 Dental preparations and articles, and medicated dentifrices. These contested goods in this group are either identical or similar at least to a low degree to the opponents’ pharmaceutical products in earlier EUTM No 2 485 530, and pharmaceutical preparations in earlier EUTM No 3 640 208 and EUTM No 8 690 455. On the one hand, dental preparations and articles include pharmaceuticals used for dental treatments and dental surgery purposes. On the other hand, this category of goods include preparations such as dental impression materials which are intended for dentists who also use pharmaceuticals for dental purposes and look for these goods in the same channels of distribution. In addition, medicated dentifrices are sanitary preparations for medical purposes, primarily used to clean and free the teeth, gums and mouth from plaque and bacteria. Insofar as medicated toothpaste is an effective way to apply medicine to the teeth, gums and mouth for conditions such as bacterial and fungal infections, cavities, gingivitis, root exposure etc., it has the same purpose as pharmaceutical preparations which include medicines for treating certain diseases in the same area; these goods are sold in pharmacies, commonly originate from pharmaceutical companies and target the same public.

 Sanitary preparations and articles, for example rubbing alcohol; medicinal alcohol; douching preparations for medical purposes; sanitary preparations for veterinary use; solvents for removing adhesive plasters; medicated dry shampoos; medicated shampoos for pets; medicated shampoos. The goods in this group are identical to the opponents’ sanitary preparations for medical purposes; disinfectants in earlier EUTM No 3 640 208, either because they are identically contained in both lists (including synonyms), or because the opponent’s goods are included in, or overlap with, the contested goods. In addition, the contested goods in this class are similar to the opponents’ pharmaceutical products in earlier EUTM No 2 485 530, and pharmaceutical preparations in earlier EUTM No 8 690 455. Sanitary preparations serve medical purposes related to hygiene and are used in the healthcare sector, hospitals, dental clinics, consulting rooms, and at home. Pharmaceutical preparations have the same general purpose, namely to cure diseases and improve health. They are usually produced by the same undertakings and are distributed to the same relevant public through the same channels.

 Pest control preparations and articles, for example insecticides such as animal dips [preparations]; teat dips for dairy cows. The goods in this group are similar to the opponents’ sanitary preparations for medical purposes in earlier EUTM No 3 640 208. Insecticidal animal washes are used to eliminate for example parasitic insects. Sanitary preparations for medical purposes include goods such as medicated shampoos and detergents for pets and livestock. Veterinary clinics and pharmacies commonly offer such goods for sale to pet owners and breeders, and these goods can coincide in their producers. In addition, the contested goods in this group are similar to a low degree to the opponents’ pharmaceutical products in earlier EUTM No 2 485 530, and pharmaceutical preparations in earlier EUTM No 8 690 455. Bearing in mind that veterinary preparations cannot be filtered from the category of pharmaceutical preparations/products, the goods under comparison serve the same purpose and can be complementary to each other. Furthermore, they move through the same distribution channels.

 Medical and veterinary preparations and articles, including the following subgroups:

- Diagnostic preparations and materials, for example radio-isotope markers for therapeutic or diagnostic use; diagnostic radiopharmaceutical preparations;

- Live organs and tissues for surgical purpose, for example living cells for veterinary use; vascular grafts [living tissue]; biological tissue cultures for veterinary purposes; biological tissue cultures for medical purposes; reconstituted cells for medical treatments for skin care; stem cells for medical purposes;

- Pharmaceuticals and natural remedies, for example sea water for medicinal bathing; cardiovascular agents for medical purposes; drug delivery agents that facilitate the delivery of pharmaceutical preparations; capsules for medicines; capsules sold empty for pharmaceuticals; antibiotics for fish; portable first-aid kits; surgical cements; yeast extracts for medical, veterinary or pharmaceutical purposes; medicinal mud; blood components; vaccines for human use.

- Medical dressings, coverings and applicators.

The contested goods in this group are identical or at least similar to the opponents’ pharmaceutical products in earlier EUTM No 2 485 530, and pharmaceutical preparations in earlier EUTM No 3 640 208 and EUTM No 8 690 455. On the one hand, diagnostic preparations and materials, live organs and tissues for surgical purpose, pharmaceuticals and natural remedies cannot be clearly filtered from the broad categories of the opponents’ goods, either because they are identically contained in both lists (including synonyms) or because the opponents’ goods include, or overlap with, the contested goods. In particular, surgical implants (living tissues) are also used for the treatment of human diseases, for transplants but also for the production of medical preparations. Capsules for medicines must be considered to also include ‘filled’ capsules, resulting in the finding of identity with pharmaceutical preparations/products (30/09/2015, T‑720/13, KARIS / CARYX et al., EU:T:2015:735, § 70,75-76,80). The same considerations apply also to the other types of drug delivery agents at issue. Insofar as capsules sold empty for pharmaceuticals are concerned, a low degree of similarity can be found between these goods and pharmaceutical preparations/products, as they may be distributed through the same distribution channels, e.g. pharmacies, and target the same public. Finally, with respect to medical dressings, coverings and applicators, it is noted that these goods are used for the same purpose as the opponents’ goods, namely to treat or cure a medical condition. Furthermore, they are commonly sold in the same places and target the same public, leading to the conclusion of similarity between them.

It follows that all of the contested goods are either identical or similar at least to a low degree to some of the opponents’ goods, as explained hereinabove.

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 found identical or similar at least to a low degree are directed at the public at large and at 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 or dealing with medical products. Non-professionals also have a higher degree of attention, regardless of whether the pharmaceuticals and medical products are sold without prescription, as these goods affect their state of health.

The degree of attention ranges from average (Dog lotions) to higher than average (the latter for pharmaceutical- medical products).

c) The signs

a) EUTM No 2 485 530 ‘MEDIFLOR’ b) EUTM No 3 640 208 c) EUTM No 8 690 455	MELAFLOR
Earlier trade marks	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).

Earlier mark a) is a word mark, ‘MEDIFLOR’.

Earlier marks b) and c) are figurative marks. They contain words LABORATOIRE(S) in smaller letters and MEDIFLOR in large bold letters. The marks also contain a figurative element that seems to be depiction of a tree with leaves, which is furthermore surrounded by a semi-circle in earlier mark b).

The element LABORATOIRE(S) will be understood by French speaking public as referring to a laboratory or laboratories. The same is perceived also by the remaining public, since it is very close word to the equivalent word in the all the language in the relevant territory (such as laboratorio in Spanish, laboratoorium in Estonian, among others). Bearing in mind that the goods are pharmaceuticals and related goods (dietetic substances, sanitary preparations), this word is non distinctive in all marks, as it refers to the place of developing, manufacturing or use of such goods. Also the figurative element in marks b) and c) is deemed weak due to its connection to the ingredients of the goods involved. The frame around the mark c) is considered non-distinctive since it has no trade mark significance it itself.

As regards the element MEDIFLOR, although it is formed as one word, the relevant consumers will break it down into elements that suggest a concrete meaning, or that resemble words that they already know. In the present case, the consumers will break it down to elements MEDI and FLOR. The element MEDI is understood throughout the Union as referring to something medical, medicinal (12/07/2012, T-470/09, Medi, EU:T:2012:369) and considered non-distinctive therefore, while the element FLOR is perceived either as ‘flower’ by Spanish and Portuguese speaking consumers, or as meaningless by the remaining public. It will not be automatically confused with the word FLORA, which would refer to intestinal flora. The element FLOR is distinctive (17/09/2018, R 197/2018-2, fLORAMED (fig.) / MEDIFLOR et al.; § 30).

In earlier marks b) and c) the element MEDIFLOR and the figurative element are co-dominant, given the depiction of the element LABORATOIRES in very small letters.

The contested sign is a word mark MELAFLOR. This element as a whole is meaningless and distinctive in relation to the goods at hand. However, part of the relevant consumers, as already referred to above, will recognize the element ‘- FLOR’ in the mark. They will understand the element FLOR with the meaning already given previously and it remains distinctive.

The element MELA has no meaning for all the relevant public and is, therefore, distinctive.

Visually, the signs coincide in that they contain word elements which have letters ME in their beginnings and FLOR at their endings in the same place in all the marks. However, the letters ME in the earlier mark form part of a dissected letter sequence MEDI, which was found non-distinctive. The marks differ in their letters DI/ LA in the middle of the marks and in addition in the word LABORATOIRE(S) and in the figurative element(s) of the earlier marks b) and c).

Therefore, the signs are visually similar to below an average 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 ME_ _ FLOR, present identically in the signs, however, they differ in the sound of letters DI/ LA in the middle of the marks, and also in the non-distinctive element LABORATOIRE(S) of the earlier marks b) and c).

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

Conceptually, although for part of the public in the relevant territory the contested mark as a whole will lack any meaning, the public will still perceive the concepts conveyed by the earlier signs’ element ‘MEDI’ and where applicable, the concepts embedded in the elements LABORATORIE(S) and the figurative elements. Since to that extent one of the signs will not be associated with any meaning, the signs are not conceptually similar. For the remaining part of the public, although the signs as a whole do not have any clear meaning, the element FLOR, included in the words MEDIFLOR and MELAFLOR, will be associated with the meaning explained above rendering the marks conceptually similar, to that extent.

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 marks

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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no clear meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal, despite the presence of some non‑distinctive or weak elements in the marks, 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).

Account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323). Even consumers with a high level of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

In the present case, the goods are partially identical and partially similar at least to a low degree, whereas the signs visual, aural and conceptual similarities are established previously. The distinctive character of the earlier marks, as well as that of the elements composing the marks in conflict has been established.

All the signs are meaningless as a whole, and the common element FLOR is distinctive and it is placed in the same position in all marks. The differences between the marks are confined to the third and fourth letters DI/LA in the words MEDIFLOR and MELAFLOR notwithstanding the fact that initial part of the earlier marks, MEDI, is non-distinctive. The figurative elements are either non-distinctive or are perceived as an embellishment. The remaining word elements are non-distinctive. Even if the element MEDI is non-distinctive, it still forms part of the marks and contributes to the similarity, as the general set-up between the marks, or their co-dominant elements where applicable, are similar in length, MEDIFLOR vs. MELAFLOR.

It must be pointed out that what matters in the assessment of the visual similarity of two word marks is the presence, in each of them, of several letters in the same order (see, to that effect, 25/03/2009, Kaul v OHIM — Bayer (ARCOL), T‑402/07, EU:T:2009:85, § 83). It must also be pointed out that, although consumers generally pay greater attention to the beginning of a mark than to the end, this finding cannot apply in all cases and cannot call into question the principle that the examination as to whether the marks are similar must take account of the overall impression created by those marks, since the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (18/05/2018, T–67/17, tèespresso / TPRESSO et al., EU:T:2018:284, § 28).

It is thus considered that the similarities between the signs established above, taking also into account the principles of interdependence and the imperfect recollection of the public at issue, are sufficient to cause at least part of the relevant public to believe that the conflicting goods, which are identical or similar at least to a low degree come from the same undertaking or economically linked undertakings.

In its observations, the applicant also argues that it owns one registration with the word MELAFLOR in Italy, which coexists with the opponent’s earlier marks.

According to case-law, the possibility cannot be ruled out that the coexistence of two marks on a particular market might, together with other elements, contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public (03/09/2009, C-498/07 P, La Española, EU:C:2013:302, § 82). In certain cases, the coexistence of earlier marks in the market could reduce the likelihood of confusion that the Office finds between two conflicting marks (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86). However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds for refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard it should be noted that formal coexistence in national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) at national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis, and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

Therefore, in the absence of convincing arguments and evidence thereof, this argument of the applicant must be rejected as unfounded.

The applicant argues that its EUTM has a reputation due to a long standing use and filed some of evidence of registration to substantiate this claim.

The right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings.

Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

Considering all the above, the Opposition Division finds that 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 European Union trade mark registrations.

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 follows from the above that the contested trade mark must be rejected for all of the contested goods, including those found to be similar at least to a low degree. Taking into consideration the interdependence principle, the similarities between the signs are sufficient in the present case, to outweigh the low degree of similarity that exists between some of the goods and a likelihood of confusion exists also in relation to them.

As the opponents’ earlier European Union trade mark registrations No 2 485 530, No 3 640 208 and No 8 690 455 lead 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 right 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 opponents in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the opponents 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

Solveiga BIEZA

Erkki MÜNTER

Ferenc GAZDA

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.