OPPOSITION No B 3 049 059

König Lab, Calle Vallvidrera, 82. Sant Cugat del Vallès, 08198 Barcelona, Spain (opponent), represented by Jose Ignacio Palomar Gavin, Ganduxer, 59-61. 6-1, 08021 Barcelona, Spain (professional representative)

a g a i n s t

Provita Nutrition, 5th Fährweg St., 31737 Rinteln, Germany (applicant).

On 28/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 049 059 is partially upheld, namely for all the contested goods, except for the following:

Class 3: Tailors’ and cobblers’ wax.

2. European Union trade mark application No 17 154 519 is rejected for all the contested goods, except for the specific goods referred above, in relation to which it may proceed.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 154 519 for the figurative mark . The opposition is based on European Union trade mark registration No 11 967 651 for the word mark ‘KÖNIG LAB’. 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 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 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

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

Class 1: Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry.

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

The contested goods are the following:

Class 3: Abrasives; tailors’ and cobblers’ wax; cleaning and fragrancing preparations; animal grooming preparations; toiletries; essential oils and aromatic extracts.

Class 5: Dental preparations and articles, and medicated dentifrices; sanitary preparations and articles; pest control preparations and articles; dietary supplements and dietetic preparations; dental preparations and articles; hygienic preparations and articles; live organs and tissues for surgical purpose; medical dressings, coverings and applicators; diagnostic preparations and materials; pharmaceuticals and natural remedies; surgical glues; medical adhesives for binding wounds; medical adhesives for binding internal tissue; adhesives for affixing prostheses; medicated additives for animal foods; fodder additives for medical purposes; cardiovascular agents for medical purposes; cellular function activating agents for medical purposes; drug delivery agents 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; drug delivery agents in the form of coatings for tablets that facilitate the delivery of pharmaceutical preparations; arsenic detoxification agents for medical purposes; benzol detoxification agents for medical purposes; chlorine detoxification agents for medical purposes; radiation sickness treating agents; alcohol for pharmaceutical purposes; rubbing alcohol; herbal anti-itch ointments for pets; herbal sore skin ointments for pets; gas mixtures for medical use; antibiotics for fish; chemical contraceptives; salts for mineral water baths; mineral waters for medical purposes; thermal water; sea water for medicinal bathing; hydrogen peroxide for medical purposes; bacterial poisons; bacterial preparations for medical and veterinary use; mud for baths; cooling patches for medical use; biological indicators for monitoring sterilization processes for medical or veterinary purposes; biological preparations for medical purposes; biological preparations for veterinary purposes; contraceptive sponges; chemical contraceptive sponges; animal dips [preparations]; oxygen baths; capsules for medicines; capsules sold empty for pharmaceuticals; cachets for pharmaceutical purposes; cachets for medicinal purposes; reconstituted cells for clinical treatments for skin care; reconstituted cells for medical treatments for skin care; dog lotions for veterinary purposes; stem cells for medical purposes; stem cells for veterinary purposes; living cells for veterinary use; cellulose esters for pharmaceutical purposes; cellulose ethers for pharmaceutical purposes; chemical preparations for medical purposes; chemical preparations for veterinary purposes; bone cement for medical purposes; bone cement for surgical and orthopaedic purposes; bone cements for orthopaedic purposes; bone cements for surgical purposes; cement for animal hooves; surgical cements; collagen for medical purposes; collodion for pharmaceutical purposes; blood components; caustic pencils; haemostatic pencils; udder creams for agricultural use; crystals for therapeutic purposes; biological tissue cultures for veterinary purposes; dextrins for pharmaceutical use; yeast for medical, veterinary or pharmaceutical purposes; radioactive elements for medical use; enzyme preparations for medical purposes; enzyme preparations for veterinary purposes; enzymes for medical purposes; enzymes for veterinary purposes; scrubs [preparations] for medical use; bark extract for medical use; bark extract for veterinary use; yeast extracts for medical, veterinary or pharmaceutical purposes; pheromones; attractants for pet animals; injectable dermal filler; blood protein fractions; gases for medical purposes; solidified gases for medical purposes; gases and gas mixtures for medical imaging use; gelatine for medical purposes; vascular grafts [living tissue]; greases for medical purposes; greases for medical or veterinary purposes; greases for veterinary purposes; breath-freshening chewing gum for medicinal purposes; haemoglobin; radiotherapeutic hormones; oiled paper for medical purposes; isotopes for medical purposes; blood substitutes; milk sugar for medical purposes [lactose]; intravenous fluids used for rehydration, nutrition and the delivery of pharmaceutical preparations; leeches for medical purposes; lotions for veterinary purposes; medicated after-shave lotions; lubricants for surgical purposes; lubricants for medical use; ear candles for therapeutic purposes; radio-isotope markers for therapeutic or diagnostic use; materials for surgical casts; medicines for veterinary purposes; pain relief medication for veterinary purposes; bone growth media consisting of biological materials for medical purposes; microbicides; gravel as a digestive aid for birds; medicinal mud; preparations of trace elements for human and animal use; solid oxygen for medical use; eye drops; medicated eye-washes; blood plasma; bacterial preparations for medical purposes; bacterial preparations for veterinary purposes; bacteriological preparations for medical purposes; bacteriological preparations for veterinary purposes; biochemical preparations for medical use; biochemical preparations for veterinary use; mixed biological preparations for medical purposes; amino acid preparations for medical purposes; amino acid preparations for veterinary use; methionine preparations; trace element preparations for human use; paracetamol modified release preparations; paracetamol preparations for intravenous administration; paracetamol preparations for oral administration; trichomycin preparations; tryptophane preparations; diagnostic radiopharmaceutical preparations; medicated toiletry preparations; douching preparations for medical purposes; medicinal clay preparations; cantharides preparations for medical use; pharmaceutical preparations for veterinary use; pharmaceutical preparations for animals; medical preparations; medicinal healthcare preparations; mineral preparations for medical purposes; cantharides preparations for veterinary use; trace element preparations for use by animals; panthenol preparations for medical use; bath preparations for medical purposes; enema preparations; preparations for use in naturopathy; veterinary preparations and substances; mineral food preparations for medical purposes; antipyretic preparations; organotherapeutics; oral vaccine preparations; breath refreshers for medical purposes; rehydration preparations; repellents for dogs; pearl powder for medical purposes; bark powder for medical use; bark powder for veterinary use; radium for medical purposes; reagents for medical use; reagents for use in medical genetic testing; reagents for use in veterinary genetic testing; cord blood for medical purposes; cord blood; blood for medical purposes; mineral water salts; medicated shampoos; medicated shampoos for pets; medicated dry shampoos; nucleic acid sequences for medical and veterinary purposes; pre-filled syringes for medical purposes; corn remedies; solvents for removing adhesive plasters; animal sperm; animal semen for artificial insemination; semen for artificial insemination; cooling sprays for medical purposes; contraceptive foams; feeding stimulants for animals; by-products of the processing of cereals for medical purposes; marine antifoulants; teat dips for dairy cows; radioactive substances for medical purposes; sealed radioactive substances for medical use; antibiotic food supplements for animals; nutritional supplements for veterinary use; feed supplements for veterinary use; chromatographic supports for medical use; bath salts for medical purposes; oral rehydration salts; therapeutic preparations for the bath; trypsins for medical purposes; impregnated medicated wipes; tobacco-free cigarettes for medical purposes; portable first-aid kits; first aid kits for domestic use; first-aid boxes, filled; castor oil as a coating for pharmaceuticals; sandalwood oil for medical, pharmaceutical and veterinary purposes; medicated baby oils; menthol vapor bath preparations for babies; milking grease; urease for medical purposes; vaccines; vaccines for human use; petroleum jelly for medical or veterinary purposes; veterinary preparations.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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 3

The contested tailors’ and cobblers’ wax are specific goods used for the manufacture and repair of clothing and shoes. The opponent’s goods in Class 1 are mainly chemical goods for use in industry, science and agriculture, including those used to make other goods belonging to other classes. The opponent’s goods in Class 3 are mainly non-medicated toiletry preparations, as well as cleaning preparations for use in the home and other environments. The opponent’s goods in Class 5 are mainly pharmaceuticals and other preparations for medical or veterinary purposes, and related goods. Therefore, the contested tailors’ and cobblers’ wax are dissimilar to all of the opponent’s goods, since they differ in nature, purpose, methods of use, distribution channels and points of sale. They are neither complementary nor in competition, do not target the same consumers and are not likely to come from the same undertakings.

The rest of the contested goods in Class 3 are identical to at least one of the opponent’s goods in Class 3, either because they are identically contained in both lists including synonyms (e.g. the contested abrasives and the opponent’s abrasive preparations) or because the opponent’s goods include, are included in, or overlap with, the contested goods (e.g. the contested cleaning preparations include the opponent’s soaps).

Contested goods in Class 5

The contested goods consist of a long list of preparations and articles for medical, sanitary and/or veterinary-related purposes. It also covers certain goods used for dietary purposes and some goods that are explained to be for therapeutic purposes. Finally, it covers certain goods that are used in relation to medical-related goods, such as the boxes used to contain/transport these goods.

All medicines have the same nature (pharmaceutical products), purpose (treatment of human health problems), consumers (medical professionals and patients) and distribution channels (typically pharmacies).

“As the factors above cannot be used to distinguish different sub-categories of medicines, it is necessary to take into account other factors, in particular, whether these medicines are in competition with each other or complementary, as well as their purpose and their specific intended use (treatment of specific health problems). Taking these factors into account, a medicine’s therapeutic indication is of decisive importance”

(15/12/2010, T‑331/09, Tolposan, EU:T:2010:520, § 36).

Besides, since consumers do employ the criterion of the purpose or intended use before making any purchase, it is of fundamental importance in the definition of a sub-category of goods or services. The purpose and intended use of a therapeutic product are expressed in its therapeutic indication (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 29 and 30).

The vast majority of the contested goods are identical to at least one of the opponent’s goods listed in Class 5, either because they are identically contained in both lists including synonyms (e.g. sanitary preparations) or because the opponent’s goods include, are included in (e.g. the contested biological preparations for veterinary purposes are covered by the opponent’s broad category of veterinary preparations), or overlap with, the contested goods (e.g. the contested nutritional supplements for veterinary use overlap with the opponent’s dietary supplements for animals and the contested radio therapeutic hormones overlap with the opponent’s pharmaceutical preparations).

The rest of the contested goods (i.e. those not considered identical based on the reasoning above) are considered similar to varying degrees to at least one of the opponent’s goods listed in Class 5for the reasons outlined below.

This is the case of the contested portable first-aid kits; first aid kits for domestic use; first-aid boxes, filled that are complementary to at least part of the opponent’s goods in Class 5 (e.g. pharmaceutical preparations), since they are usually sold containing the opponent’s goods, coincide in distribution channels/points of sale, target the same consumers and can come from the same undertakings. Therefore, they are considered similar to, at least, a low degree.

The hygiene-related contested goods (e.g. hygienic preparations and articles) and the rest of contested goods are closely connected to health. They can coincide in distribution channels/points of sale, can target the same consumers and can coincide in purpose (e.g. the treatment or care of a specific area of human beings or animals). In addition, they can sometimes originate from the same undertakings. Therefore, they are considered similar to, at least, a low degree.

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 to varying degrees are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, taking into account that, for example, the relevant goods for medical use may affect health.

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.

According to the above, the attention paid by consumers will vary from average (i.e. in relation to some goods in Class 3) to high (i.e. in relation to some goods in Class 5).

c) The signs

KÖNIG LAB
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The unitary character of the European Union trade mark means that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57).

The word ‘LABORATORIUM’ exists as such in Dutch and German, with a meaning ‘laboratory’. The word ‘LAB’ exists as such in Dutch, being the abbreviation of ‘laboratory’, and it is also understood by the German speakers as having that same concept.

The word ‘KÖNIG’ in both marks is the German term for ‘King’. Even if this term does not exist as such in Dutch, one part of the public will perceive it as having the concept of ‘King’ due to the similarity with the Dutch equivalent ‘KONING’. However, it cannot be disregarded that the remaining part of the public will perceive it as meaningless.

The Opposition Division finds it appropriate to focus the comparison of the signs on the Dutch- and German-speaking consumers of the relevant public, since from their perspective the signs bear conceptual coincidences that may not exist for the rest of consumers in the relevant territory, and constitute the best-case-scenario for likelihood of confusion to arise.

Both ‘LAB’ and ‘LABORATORIUM’ are references to the characteristics of the goods involved (e.g. of the place where they are produced and/or of the kind of company producing them). Therefore, they have, at most, a low degree of distinctiveness.

The common element ‘KÖNIG’, being attributed a concept or not, it is of average distinctive character in relation to the goods involved.

‘KÖNIG’ is a visually co-dominant (eye-catching) verbal element in the contested sign, depicted in blue together with the figurative element.

The standard typography of the contested sign is considered merely decorative. The blue figurative element on the left side of the sign will be perceived by part of the public as a stylised letter ‘K’, and associated with the first letter of the verbal element ‘KÖNIG’. For the rest of the public, this element will be perceived as an abstract figurative element. From all perspectives, it has an average degree of distinctiveness.

Contrary to the applicant’s opinion, 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). Therefore, the figurative element referred to in the previous paragraph will be of reduced impact, regardless of its degree of distinctiveness.

Finally, consumers generally tend to focus on the beginning of the sign because the public reads from left to right/from top to bottom, which makes the part placed at the left/top of the sign (the initial part) the one that first catches the attention of the reader. The figurative element of the contested sign, independently of being perceived as a letter ‘K’ or not, is not likely to be pronounced. Therefore, both signs coincide in the pronunciation of the verbal element ‘KÖNIG’, and the weight of this coinciding word within the signs is increased.

Visually and aurally, the signs coincide in the sight and sound of the distinctive word ‘KÖNIG’, which is the element with greater weight within the marks on account of its position, size and impact on the consumers (see detailed explanation above). The marks also coincide in the fact that the word ‘LAB’ of the earlier mark is entirely reproduced at the beginning of the word ‘LABORATORIUM’ of the contested sign.

The signs differ in the sequence of letters ‘O-R-A-T-O-R-I-U-M’ (and their sounds) and also differ visually in the graphic and figurative elements of the contested sign. However, these differences are of reduced impact for the reasons indicated above.

The marks are considered visually and aurally similar to, at least, an average degree.

Conceptually, if the blue figurative element is perceived as a letter ‘K’, the signs differ as regards its concept. The words ‘LAB’ and ‘LABORATORIUM’ have the meanings described above and even if they have a lower-than-average degree of distinctiveness, they cannot be ignored.

If ‘KÖNIG’ is perceived as meaningless (i.e. by part of the Dutch-speaking consumers), the marks are considered conceptually similar to, at least, a low degree to the extent that they coincide in the concept of the elements ‘LAB’ and ‘LABORATORIUM’, which have a low degree of distinctiveness

For consumers perceiving ‘KÖNIG’ as ‘King’, the signs also share this concept, and are considered conceptually similar to a high degree.

d) Distinctiveness of the earlier mark

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 low degree of distinctiveness element in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The goods are partly identical, partly similar to varying degrees, and partly dissimilar. They are directed at both the public at large and business customers with specific professional knowledge or expertise, whose degree of attention may vary from average to high.

The signs are visually and aurally similar to, at least, an average degree and conceptually similar to at least a low degree for one part of the public, and conceptually similar to a high degree for another part of the public. The distinctiveness of the earlier mark is normal.

The signs coincidence in the more distinctive verbal elements ‘KÖNIG’. They differ in elements that are considered of reduced impact.

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).

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.

In this case, even if consumers perceive certain differences between the marks (e.g. colour, typeface, figurative elements), it is highly conceivable that the relevant consumer will perceive the contested sign as a sub-brand, or a variation of the other, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

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

It follows from the above that the contested sign must be rejected for the goods found to be identical or similar, to varying degrees, including the ones considered similar to a low degree, since the coincidences between the marks are enough to counteract the low degree of similarity of those goods.

The rest of the contested goods are dissimilar. As their similarity 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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

María Clara IBAÑEZ FIORILLO

María del Carmen SUCH SÁNCHEZ

Martina GALLE

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.