OPPOSITION No B 3 020 453

Acta Farma, S.L., Calle Cercedilla nº 11 (Nave 1) P.I. Ventorro del Cano, 28925, Alcorcon (Madrid), Spain (opponent), represented by Herrero & Asociados, Cedaceros, 1, 28014, Madrid, Spain (professional representative).

a g a i n s t

UAB "Valentis", Molėtų pl. 11, 08409, Vilnius, Lithuania (applicant), represented by Law Firm IP Forma, Užupio g. 30, 01203, Vilnius, Lithuania (professional representative).

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

DECISION:

1. Opposition No B 3 020 453 is upheld for all the contested goods.

2. European Union trade mark application No 17 196 411 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 17 196 411 for the word mark ‘SARCOMIL’. The opposition is based on Spanish trade mark registration No 3 513 954 for the word mark ‘SARCODYN’. 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.

1. The goods

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

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 5: Nutritional supplements; vitamin preparations.

The contested nutritional supplements are identically contained in both lists of goods (including synonyms).

The contested vitamin preparations are included in the broad category of, or overlap with, the opponent’s dietary supplements for humans and animals. 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 professionals and at the public at large.

The degree of attention is considered higher than average since the goods are related to health.

If the relevant goods or services of both marks target both the general public and specialists, the likelihood of confusion will be assessed against the perception of the part of the public that is more prone to being confused. If this part of the public is not likely to be confused, it is even more unlikely that the specialists will be. Given that the general public is more prone to confusion, the examination will proceed on this basis.

3. The signs

SARCODYN	SARCOMIL
Earlier trade mark	Contested sign

The relevant territory is Spain.

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).

Contrary to the applicant’s arguments, the elements ‘SARCODYN’ and ‘SARCOMIL’ have no meaning for the relevant general public taken into account that will certainly be unaware of the meaning of the Greek term ‘SARCO’. Therefore they are considered distinctive to an average degree for the relevant goods.

Visually and aurally, the signs coincide in the two initial syllables/sounds ‘SAR-CO’ and also in the sound of the letters ‘Y/I’ placed in sixth position in both marks which are identically pronounced. They differ visually in the remaining letters ‘DYN’ and ‘MIL’ and aurally in the sounds ‘D*N’ and ‘M*L’.

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.

Therefore, the signs are visually and aurally at least 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

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).

In the present case, the goods at issue are identical and target the public at large and also professionals with a higher than average degree of attention. The signs are visually and aurally similar to at least an average degree on account of the sequence of letters ‘SARCO***’ and aurally also in the sounds of the letters ‘Y’ and ‘I’ respectively. None of the signs have a meaning that could help to differentiate them.

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).

Considering all the above, there is a likelihood of confusion on the part of the relevant public (at least the general public who will not be aware of the meaning of the element ‘SARCO’). Likelihood of confusion in only part of the public is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 3 513 954. 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

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.