OPPOSITION No B 2 982 034

US Pharmacia International, Inc., 966 Hungerford Dr Ste 3B, 20850 Rockville, United States (opponent), represented by Kondrat & Partners, Al. Niepodległości 223/1, 02-087, Warszawa, Poland (professional representative)

a g a i n s t

Edynea S.r.l., Viale dell’Industria 32, 36070 Trissino, Italy (applicant), represented by Studio Bonini S.r.l, Corso Fogazzaro, 8, 36100 Vicenza, Italy (professional representative).

On 31/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 982 034 is upheld for all the contested goods, namely

Class 5: Dietary and nutritional supplements, excluding pharmaceutical products.

2. European Union trade mark application No 16 933 202 is rejected for all the contested goods. It may proceed for the remaining goods.

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

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 16 933 202, for the word mark ‘EDYVIGOR’, namely against all the goods in Class 5. The opposition is based on, inter alia, Polish trade mark registration No R.219 533 . 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.

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 opponent’s Polish trade mark registration No R.219 533.

a) The goods

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

Class 5: Pharmaceutical preparations and medical devices included in this class, diet supplements included in this class, vitamin preparations and mineral.

Following the limitation requested by the applicant on 19/02/2018, the contested goods are the following:

Class 5: Dietary and nutritional supplements, excluding pharmaceutical products.

The contested dietary and nutritional supplements, excluding pharmaceutical products are included in the broad categories of, or overlap with, the opponent’s diet supplements included in this class, vitamin preparations and mineral. 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 and at business customers with specific professional knowledge or expertise in the healthcare field. The relevant public’s degree of attention will be higher than average considering their impact on human health.

Given that the general public is more prone to confusion, the examination will proceed on this basis.

c) The signs

	EDYVIGOR
Earlier trade mark	Contested sign

The relevant territory is Poland.

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 applicant points out that ‘the prefix EDY- is likely to be more impressed in the mind of the consumer than the last part of the word’, mainly 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, this consideration cannot prevail in all cases and cannot, in any event, undermine the principle that an examination of the similarity of the signs must take account of the overall impression produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details (27/06/2012, T-344/09, ‘Cosmobelleza’, EU:T:2013:40, § 52).

Although the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details, as explained above, the fact remains that the public is likely to break a word into word elements which for him have a specific meaning or which resemble words know to him (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). In the present case, the element ‘EDYVIGOR’ as a whole has no meaning in Polish, but the Polish-speaking public can split the sign into two elements, namely ‘EDY’ and ‘VIGOR’, because the latter is likely to be associated with the word ‘WIGOR’. Indeed, ‘VIGOR’ can be understood as a misspelling of the Polish word ‘WIGOR’, which refers to one’s energy, manifesting in speed and efficiency in action (extracted from Wielki Słownik Języka Polskiego https://sjp.pwn.pl/ on 30/01/2019). In relation to the element ‘VIGOR’, present in both signs, the Opposition Division considers that, although it may have a distinctiveness below average, it is ‘sufficiently distinctive’ for the Polish public, because the letter ‘V’ is an uncommon letter in the Polish language and consumers do not normally use the word ‘WIGOR’ but rather the word energy (‘energia’ in Polish) or force (‘siła’ in Polish) in relation to the relevant goods in Class 5.

The component ‘EDY’ of the contested sign has no meaning for the relevant public and is, therefore, distinctive.

As to the earlier trade mark, the typography is rather standard. The figurative elements are commonly used in relation to the products in question, therefore they are decorative. Furthermore, the verbal component of the sign usually has a stronger impact on the consumer because the public 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).

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs can be associated with the meaning ‘VIGOR’ Taking into account the additional concepts evoked by the figurative elements of the earlier right, the signs are conceptually similar to an average degree.

Visually, the signs coincide in ‘VIGOR’, which is the only verbal element in the earlier trade mark, although it has a below average distinctive character in relation to the relevant goods. However, they differ in the figurative elements of the earlier trade mark and in the verbal component ‘EDY’ of the contested sign.

Taking into account the above, the signs are visually similar to a below average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛*VIGOR’. The pronunciation differs in the sound of the letters ‛EDY*’ of the earlier mark, which has no counterpart in the contested sign.

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

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 claimed that the earlier trade mark enjoys enhanced distinctiveness. However, after the thorough examination of the evidence filed the Opposition Division is of the opinion that despite showing some use of the earlier trade mark the evidence does not provide any real information on the extent of the public recognition of the earlier mark in relation to which the opponent invoked enhanced degree of distinctiveness.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as below average for all the goods in question, namely diet supplements included in this class, vitamin preparations and mineral.

e) 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).

Contrary to the applicant’s observations, the contested goods are identical to the opponent’s goods. They are directed at the public at large and at professionals whose degree of attention may vary from average to high. The distinctiveness of the earlier mark is below average.

The applicant asserts that the signs are visually similar to a ‘reduced degree’ and aurally and conceptually different. However, the Opposition Division considers that the contested sign is visually and aurally similar to a below average degree and conceptually similar to an average degree to the earlier right. This is because the contested sign contains the earlier verbal element ‘VIGOR’ in its entirety, which will be immediately recognized by the relevant public as the only meaningful element within the contested sign. The signs differ in part in three letters/phonemes, which although are placed at the beginning of the contested trade mark, they will not detract the consumers ‘attention from the element ‘VIGOR’. Moreover, 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).

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 applicability of this principle is particularly important in the present case because the conflicting goods are identical.

Considering all the above, and particularly the consumer’s imperfect recollection and the interdependence principle, there is a likelihood of confusion on the part of the general public. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Polish trade mark registration No R.219 533. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right, Polish trade mark registration No R.219 533 , leads 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 rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268). Furthermore, for the same reasons, the Opposition Division does not need to go into the family of marks argument brought by the opponent.

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

Monika CISZEWSKA

Carlos MATEO PÉREZ

María Clara IBÁÑEZ FIORILLO

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.