OPPOSITION No B 2 953 506

Sensation Pharma, wetterenstenweg 11, 9230 Wetteren, Belgium (opponent), represented by Hoyng Rokh Monegier LLP, Avenue des Nerviens, 9-31, 1040 Brussels, Belgium (professional representative)

a g a i n s t

Murat Dogru, Steingasse 16, 63538 Großkrotzenburg, Germany (applicant), represented by Goldcliff Stark, Wächtersbacher Straße 90, 60386 Frankfurt am Main, Germany (professional representative).

On 05/12/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 953 506 is partially upheld, namely for the following contested goods:

Class 5: All the goods applied for in this class except for Medicated shampoos; Medicated soap; Capsules for medicines.

2. European Union trade mark application No 16 885 816 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 885 816 . The opposition is based on European Union trade mark registration No 16 737 538 .

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.

a) The goods

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

Class 5: Food supplements; Protein dietary supplements; Dietary supplemental drinks; Probiotic supplements; Protein supplements for animals; Dietary supplements for humans; Vitamin preparations in the nature of food supplements.

The contested goods are the following:

Class 5: Medicinal drinks; Tisanes [medicated beverages]; Medicated isotonic drinks; Medicinal tea; Candy, medicated; Slimming pills; Dietetic beverages adapted for medical purposes; Dietetic foods adapted for medical purposes; Capsules for medicines; Aloe vera preparations for pharmaceutical purposes; Asthmatic tea; Dietary fibre; Medicated shampoos; Medicated soap; Tissues impregnated with pharmaceutical lotions; Nutritional supplements; Pharmaceutical preparations for skin care; Medicinal ointments; Therapeutic preparations for the bath; Vitamins and vitamin preparations; Dietetic infusions for medical use; Diet capsules; Medical preparations for slimming purposes; Slimming tea for medical purposes.

Class 30: Coffee, teas and cocoa and substitutes therefor; Iced tea; Earl grey tea; Darjeeling tea; Spices; Tea-based beverages; Ginger tea; Ginseng tea [insamcha]; Chai tea; Black tea; Tea bags; Tea leaves; Aromatic preparations for making non-medicated infusions; Cocoa mixes; Mate [tea].

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 5

The contested vitamin preparations; vitamins are identical to the opponent’s vitamin preparations in the nature of food supplements, either because they are identically included in both lists or they are included in or overlap with the broad category of the earlier goods.

Vitamins are identically contained in both lists of goods (including synonyms).

The contested dietetic foods adapted for medical purposes; dietary fibre; nutritional supplements; diet capsules; are included in the broad category of the earlier food supplements. Therefore, they are identical.

The contested dietetic beverages adapted for medical purposes; medicated isotonic drinks; dietetic infusions for medical use are included in the broad category of the earlier dietary supplemental drinks. Therefore, they are identical.

The contested medicinal drinks; tisanes [medicated beverages]; medicinal tea; asthmatic tea; candy, medicated; slimming pills; aloe vera preparations for pharmaceutical purposes; tissues impregnated with pharmaceutical lotions; pharmaceutical preparations for skin care; medicinal ointments; therapeutic preparations for the bath; medical preparations for slimming purposes; slimming tea for medical purposes are similar to the earlier dietary supplements for humans because they have the same purpose, coincide in distribution channels and end user.

The contested capsules for medicines are only designed to hold a certain dosage of medicines. Even if it could be claimed that the purpose, very broadly speaking, is a medical one, the concrete purpose of each of these items differs. The purpose of pharmaceuticals is to heal or prevent the illness, whereas the purpose of capsules, cachets is only to hold a certain dosage of medicines (in the form of powder or liquid), allowing them to be taken orally. On the other hand, the same medicine can be offered to consumers in the form of tablets. Producers, targeted public and distribution channels are different. These goods are thus dissimilar.

The contested medicated shampoos; medicated soap are dissimilar to all the goods and services covered by the earlier right because they have nothing in common. They are of a different nature and purpose. They do not follow the same method of use, are not complementary, nor are they in competition. They do not share the same distribution channels and are produced by different companies.

Contested goods in Class 30

The contested goods are dissimilar to all goods covered by the earlier right because they have nothing in common. They are of a different nature and purpose. They do not follow the same method of use, are not complementary, nor are they in competition. They do not share the same distribution channels and are produced by different companies.

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 or similar are directed at the public at large.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

For example, 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. 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. This also applies to nutritional supplements and related goods in Class 5 as they are of a medical nature.

c) The signs

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).

Some of the components of the signs are weak (such as the leaves or the term ‘Globe’), or even non-distinctive (such as the term ‘NATUR’) because they can be seen to refer to the composition or the global nature of the goods. The rest of the verbal and figurative elements have no relation to the goods in conflict and are thus distinctive. The signs’ colours are merely decorative with no impact on their distinctiveness.

In any event, since both signs depict the same verbal and figurative elements, they are on equal footing as regards their distinctiveness.

Visually, the representation of the signs coincides in nearly all aspects. All the verbal elements and even their typefaces coincide, and so do all figurative elements, notably the female silhouette above leaves in a circle, aside from very minor differences in hair style or the fonts of ‘BB’. All in all the only real notable difference between the signs is their colour, as the earlier sign is black and white and the contested mark is green, blue and white.

The signs are therefore visually highly similar.

Aurally irrespective of the different pronunciation rules in different parts of the relevant territory, the signs coincide in all their sounds and are identical.

Conceptually, irrespective of the different perceptions of some of the verbal elements in different parts of the relevant territory, the signs coincide in all verbal and figurative elements. The only conceptual difference which may be detected concerns the flower in the female silhouette’s hair in the earlier sign which has not counterpart in the contested sign.

Therefore, the signs are conceptually highly similar, if not identical.

As the sign have been found similar in at least one aspect the examination 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 some non‑distinctive or weak elements in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The signs in question are aurally identical, and have nearly the same visual representation. Apart from the signs differing in their colour, which has no impact on their distinctiveness, only careful side-by-side examination could lead to the detection of further differences, which is not something consumers are usually aided by.

Therefor, in relation to identical or similar goods even consumers with high level or attentiveness would readily assume that they come from the same or linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Victoria DAFAUCE MENENDEZ

Marianna KONDAS

Matthias KLOPFER

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.