OPPOSITION No B 2 942 343

Alter Farmacia, S.A., Avda. de Burgos, 121, 28050 Madrid, Spain (opponent), represented by Elzaburu, S.L.P., Miguel Ángel, 21, 28010 Madrid, Spain (professional representative)

a g a i n s t

Mederer GmbH, Oststraße 94, 90763 Fürth, Germany (applicant), represented by Rau Schneck & Hübner Patentanwälte Rechtsanwälte Partgmbb, Königstraße 2, 90402 Nürnberg, Germany (professional representative).

On 17/05/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 942 343 is upheld for all the contested goods.

2. European Union trade mark application No 16 742 405 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 16 742 405 for the word mark ‘NUTRIMED’. The opposition is based on European Union trade mark No 3 823 333 for the word mark ‘NUTRIBEN’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely European Union trade mark No 3 823 333 for the word mark ‘NUTRIBEN’.

The date of priority of the contested application is 21/02/2017. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 21/02/2012 to 20/02/2017 inclusive.

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 5: Dietetic food products for medical purposes; dietetic substances adapted for medical use; food for babies; vitaminized products.

According to Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 19/03/2018, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 24/05/2018 to submit evidence of use of the earlier trade mark. On 21/05/2018, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Annexes 1-4: various invoices (2011-2015) addressed to clients in Spain, Portugal, France and Italy. In some of the invoices the earlier mark is referred to as, for example, ‘NUTRIBEN CONTINUACIÓN 800g’, ‘LECHE NUTRIBEN CONTINUACIÓN 800g’, ‘LECHE NUTRIBEN NATAL 800g’, ‘NUTRIBEN NATAL 900 GR’, ‘NUTRIBEN 1 800G’, ‘NUTRIBEN AR 2 900gr.’, ‘NUTRIBEN 8 CEREALI 300 gr’ or ‘LECHE NUTRIBEN SIN LACTOSA 1 400g’. In some of the invoices the specification reads for example ‘NUTR. HIDROLIZADA 400’, ‘NUTRI. CRECIMIENTO 900’ or ‘NUTRI CONTINUACIÓN 900’. In other invoices only a description of the goods is given without mentioning any trade mark. The amounts invoiced for the products on the invoices that refer to the mark ‘NUTRIBEN’, or its abbreviation ‘NUTR.’, are up to various hundreds of euros per invoice.

• Annexes 5-6: information on sales of goods under the mark ‘NUTRIBEN’, in particular, information on sales provided by ‘eurodep’ for Portugal and France (2015).

• Annexes 7-12: information related to the ‘Nutriben awards’ in Spain; a competition regularly organised by the ‘Spanish Paediatrics Association’ (AEP) together with the opponent which aims to promote research in the field of paediatrics (2010-2012).

• Annexes 13-14: nutritional information about the goods under the mark ‘NUTRIBEN’, namely a brochure containing nutritional information from France and two vademecums, in Spanish, published by the opponent. Both relate to Spain. In its observations, the opponent states that the goods mentioned in these publications are milk, special formulas, porridges, cereals, liquid porridges, food for babies, infusions and fruit juices. From the photographs in this document it is clear that the goods are various baby foods.

• Annex 15: document created by the opponent, in French, providing a description of different products covered by the trade mark ‘NUTRIBEN’. Although the document is in French, it is clear that the relevant goods are baby foods.

• Annexes 16-20: information on courses in the paediatric field in which the opponent participated or intervened as a sponsor (2010-2012).

• Annex 21: printouts (2016) from the opponent’s country-specific websites (inter alia www.nutriben.es, www.nutriben.fr and www.nutriben.pt) showing various baby food products with the mark ‘NUTRIBEN’ printed on their packaging.

• Annexes 22-25: advertising material, calendars (Spain, 2010-2011), promotional flyers (France, 2014).

• Annexes 26-28: ‘NUTRIBEN’ website printout (2016) from Spain listing, inter alia, the countries where the goods are sold and reflecting the goods promoted by famous people in Spain (Alejandra Prat, a journalist, Gemma Mengual, a professional swimmer and Arantxa del Sol, a model, actress and TV presenter).

• Annex 29: two printouts providing details on the ‘NUTRIBEN’ app that may be downloaded from the Spanish website. This app is known as ‘Nutriben fun food’ and is available on the ‘NUTRIBEN’ website and on ‘Itunes’.

• Annex 30: a 2013 printout from an Italian blog in which the users share their experience on products under the ‘NUTRIBEN’ mark.

• Annex 31: copy of pages of a French nutritional magazine in which ‘NUTRIBEN’ products are analysed, taking into account their properties (2011).

• Annex 32: press articles from different Spanish websites, in Spanish, of which the relevant parts are translated by the opponent in its observations. For example, an extract from Murciaeconomía, from 2012 where it is stated that the ‘NUTRIBEN’ products, made by the pharmaceutical company ‘Alter’, appear in third place with sales of 7 961 units worth EUR 76 million; information stating that the ‘NUTRIBEN’ products from the pharmaceutical company Alter appear in third place with a volume of sales representing 12.8% of the market (13% in 2012) and a value accounting for 13.9% of the total for the sector (14.4% in 2011) as reported in lainformación.com, ABC.es, and PMFARMA, all from 2013; a printout from ABC.es reporting an event in which the winners of ‘Master Chef Junior’, Mario Palacios and Manuel Estévez, show how to cook using ‘NUTRIBEN’ products alone (2015).

• Annex 33: printout from the ‘Matres Mundi’ Spanish website in which the trade mark appears in the list of cooperating entities. ‘Matres Mundi’ is a non-governmental organisation whose aim is to improve maternal and infant health care in developing countries.

• Annexes 34-35: statistical reports that reflect market shares and the presence of the trade mark in advertising (2011/2014) in Spain. The first one states on page 42 that ‘There is an oligopoly in the infant feeding market, controlled by large multinational companies … In third place is NUTRIBEN, followed by Puleva’.

• Annex 36: copy of ‘the baby’s book’ edited in France in which the trade mark ‘NUTRIBEN’ appears and the specific goods sold under the mark are referred to.

• Annex 37: different commercial offers made in France in 2015.

The applicant argues that the opponent did not submit translations of some of the evidence of use and that, therefore, this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Article 10(6) EUTMDR, former Rule 22(6) EUTMIR in force before 01/10/2017). Taking into account the entirety of the evidence, and especially the invoices which are self-explanatory and the pictures of the goods under the mark in different documents, the Opposition Division considers that there is no need to request a translation.

The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods for which the earlier mark is registered.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

The invoices show that the place of use is Spain, Portugal, France and Italy. This can be inferred from the language of the documents (Spanish, Portuguese, French and Italian) and some addresses in those countries. Therefore, the evidence relates to the relevant territory.

Although some documents are dated before the relevant period, there is sufficient evidence dated within the relevant period.

The documents filed, namely the invoices (Annexes 1-4), corroborated by the sales information provided (Annexes 5-6) and the press articles (Annex 32) provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

The evidence shows that the mark has been used in accordance with its function and as registered.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

In the present case, the evidence shows genuine use of the trade mark for the following goods:

Class 5: Food for babies.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

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: Food for babies.

The contested goods are the following:

Class 5: Dietetic foodstuffs on fruit gum basis, not for sale via food retail, for medical purposes, namely for patients with malnutrition due to illness.

The contested dietetic foodstuffs on fruit gum basis, not for sale via food retail, for medical purposes, namely for patients with malnutrition due to illness overlap with the opponent’s food for babies as the opponent’s food for babies are dietetic foodstuffs which may be made on fruit gum basis for babies with malnutrition. Therefore, they are identical.

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 are directed at both the public at large and at a professional public 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 will vary from average to high, due to the fact that some of the goods might have an important impact on health.

3. The signs

NUTRIBEN	NUTRIMED
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The common element ‘NUTRI’ will be understood by part of the relevant public in the European Union as allusive to ‘nutrition’, and is therefore at least weak for this part of the relevant public in relation to the relevant goods in Class 5. This will be the case, in particular, for those consumers who speak English or French (‘nutrition’), Italian (‘nutrizione’) or Spanish (‘nutrición’). However, there is a significant part of the relevant public in the European Union who would not link the word element ‘NUTRI’ to the concept of ‘nutrition’. This concerns, in particular, consumers who do not speak English or a Roman language, including consumers, for example, from Czechia, Germany, Croatia, Hungary and Poland (31/05/2017, R 374/2017‑1,NUTRI BLITZER / NUTRI BULLET et al., § 23-24).

Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public who will not attribute any meaning to the element ‘NUTRI’, such as the Polish-speaking public.

As the element ‘NUTRI’ will not be associated with any meaning by the Polish-speaking part of the relevant public, no artificial dissection of the signs will be made, so that the public will see the verbal elements of both signs in their entirety as meaningless and distinctive.

Visually and aurally, the signs coincide in the letters ‘NUTRI*E*’. The fact that their first five letters are identical is very relevant, since 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. However, they differ in the letters ‘*****B*N’/’*****M*D’.

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

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect 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 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.

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.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The earlier mark has a normal degree of distinctiveness. The relevant public is the public at large and a professional public, the level of attention varies from average to high.

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 goods under comparison are identical.

The signs are visually and aurally similar to an average degree. As the signs do not evoke any meaning, the conceptual aspect does not influence the assessment of the similarity of the signs.

Taking into account the average degree of similarity between the signs and the identity between the goods, a likelihood of confusion exists, even with a high degree of attention.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that many trade marks include the element ‘NUTRI’. In support of its argument the applicant refers to several European Union 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 evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element ‘NUTRI’. Under these circumstances, the applicant’s claims must be set aside.

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

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark No 3 823 333 for the word mark ‘NUTRIBEN’. It follows that the contested trade mark must be rejected for all the contested goods.

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 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

Chantal VAN RIEL

Saida CRABBE

Marzena MACIAK

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.