OPPOSITION No B 2 989 492

Peter Reithmayer, Gebsattelstr. 13, 81541, München, Germany (opponent), represented by Schmitt-Nilson Schraud Waibel Wohlfrom Patentanwälte Partnerschaft MBB, Destouchesstraße 68, 80796, München, Germany (professional representative).

a g a i n s t

Wojciech Pawłowski PPH Cerkamed, Kwiatkowskiego 1, 37-450, Stalowa Wola, Poland (applicant), represented by Kancelaria Prawa Patentowego Tadeusz Ostrzychowski, Sympatyczna 11, 35-312, Rzeszów, Poland (professional representative).

On 14/12/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 989 492 is upheld for all the contested goods.

2. European Union trade mark application No 16 861 511 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 16 861 511 for the figurative mark . The opposition is based on European Union trade mark registration No 16 183 881 for the word mark ‘greendent’. The opponent invoked Article 8(1)(a) and (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.

In the present case, the date of filing of the contested trade mark is 14/06/2017. Earlier European Union trade mark No 16 183 881 was registered on 24/04/2017. The earlier mark had not been registered for at least five years and is not thus subject to proof of use requirement; therefore the request for proof of use is inadmissible.

In addition, the applicant has not submitted the request for proof of use by way of a separate document as required by Article 10(1) EUTMDR. Therefore, the request for proof of use is inadmissible also pursuant to 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.

a) The goods and services

The goods and services on which the opposition is based are, inter alia, the following:

Class 5: Dental preparations and articles, in particular dental rinses, dental abrasives, pharmaceutical preparations for dental purposes, medicated mouth care gels for application with a toothbrush, preparations for dental prophylaxis, preparations to facilitate teething; medicines and natural remedies, in particular medicines for dental purposes, antibiotics for dental purposes, preparations for dental prophylaxis; nutritional supplements, in particular medical dietary supplements; nutritional supplements, in particular non-medical dietary supplements, mineral food supplements, soy protein dietary supplements, dietary supplements for humans, nutritional supplements, dietary supplements for humans not for medical purposes; dietetic foodstuffs and substances adapted for medical use; medicinal tea.

The contested goods are the following:

Class 5: Herbal rinses for oral treatment.

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

The term ‘in particular’, used in the opponent’s 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).

The contested herbal rinses for oral treatment are included in the broad category of the opponent’s dental preparations. Therefore, they are identical.

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 to be identical are directed at the public at large as well as at dental professionals with specific professional knowledge or expertise. The degree of attention is considered higher than average since these goods have an impact on persons’ health.

c) The signs

greendent
Earlier trade mark	Contested sign

The relevant territory is 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 elements ‘green’, ‘dent’ and ‘therapy’ are meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The verbal element of the earlier mark ‘greendent’ as such is meaningless for the relevant public. The Court has held that, although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, the fact remains that, when perceiving a word 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). Bearing in mind that the relevant goods are dental preparations the relevant public will perceive the ending ‘-dent’ of the verbal element as referring to teeth due to the fact that English words such as dental, dentist, dentifrice start with these letters due to their common Latin origin (from dens, dente). The component ‘-dent’ is therefore weak for the relevant goods, since it suggests their intended purpose or field of application. As regards the beginning of the verbal element, it cannot be excluded that part of the relevant public will perceive the component ‘green-’ in both signs as referring to not only a colour but also to environmentally friendly products. As that term is not clearly related to the relevant goods it is considered distinctive.

The verbal element ‘therapy’ of the contested sign will be associated with treatment or healing. Since the relevant goods are related to dental care, this element is considered weak for those goods.

The contested sign is also composed of a figurative element consisting of five circular lines framing the word elements and three leaves positioned at the upper right and left side of the lines. It is also composed of a depiction of a tooth behind the verbal element ‘green’. The latter is allusive of the goods at issue; therefore, it is considered weak, whereas the remaining elements have a normal distinctiveness.

However, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

The contested sign has no elements that could be considered more dominant or eye-catching than other elements.

Visually, the signs coincide in the distinctive element ‘green’ and the weak element ‘dent’. They differ in the structure of the marks as the earlier mark is composed of a single conjoined element whereas these verbal elements in the contested sign are depicted as separate elements over two lines. They also differ in the verbal element ‘therapy’, which is considered weak in relation with the goods in question and in the figurative elements of the contested sign.

Therefore, the signs are visually similar to a below average degree.

Aurally, the pronunciation of the signs coincides in the sound of the verbal elements ‘green’ and ‘dent’, present identically in both signs. Regardless of the limited distinctiveness of ‘dent’, this element is likely to be pronounced when referring to the marks aurally because it is conjoined with the first word ‘green’ in the earlier mark and is depicted in big bold letters in a central position in the contested sign. The pronunciation differs in the sound of the weak element ‘therapy’.

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs coincide in the meaning of the word elements ‘green’ and ‘dent’ which make up the entire earlier sign, and differ in the term ‘therapy’. Although the common element ‘dent’ is of limited distinctiveness, the conceptual commonalities between the marks are not limited to that element but encompass also the preceding word ‘green’, whereas the additional differentiating word ‘therapy’ of the contested sign is also weak and its conceptual impact is limited. The depiction of the leaves in the contested sign reinforces the meaning of ‘green’.

Therefore, the signs are conceptually highly similar.

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).

The goods have been found to be identical. The degree of attention is higher than average and the earlier mark enjoys a normal degree of distinctiveness as a whole.

The signs are visually similar to a below average degree, and aurally and conceptually highly similar; this finding is especially based on the fact that the earlier sign’s elements ‘green’ and ‘dent’ are entirely incorporated at the beginning of the contested sign. The conceptual impact of the coinciding letters ‘dent’ is limited due to the weak distinctive character of that element. However, the similarities between the marks are not limited to the element ‘DENT’ but also encompass the preceding word ‘green’, which is present identically in both marks. Furthermore, the additional verbal element in the contested sign, ‘therapy’, is weak in relation to the goods in question, and the figurative elements of the contested sign play a less important role within the sign as explained above.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the English-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 registration No 16 183 881. It follows that the contested trade mark must be rejected for the contested goods.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) EUTMR.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, 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

Boyana NAYDENOVA

Begoña URIARTE VALIENTE

Helen Louise MOSBACK

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.