OPPOSITION No B 3 012 674

Bionatural International Biotechnology Inc., 6Fl., No. 125, Sungjiang Rd., Taipei, China (opponent), represented by Potthast & Spengler, Patentanwälte Partnerschaftsgesellschaft mbB, Am Olligsmaar 18, 52399 Merzenich, Germany (professional representative)

a g a i n s t

Bionutral, Meiveldlaan 4650 bus 3, 3800 Sint-Truiden, Belgium (applicant)

On 30/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 012 674 is upheld for all the contested goods.

2. European Union trade mark application No 17 397 712 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 17 397 712 for the figurative mark . The opposition is based on European Union trade mark registration No 889 501 for the word mark ‘BIONATURAL’. The opponent invoked Article 8(1)(a) and (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: Natural dietary food supplement in capsule, powder or in liquid form containing mineral water, natural amino acids, nucleic acids and traces of minerals, namely calcium, zinc and selenium.

The contested goods are the following:

Class 5: Food supplements.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods. The term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

The contested food supplements include, as a broader category the opponent’s natural dietary food supplement in capsule, powder or in liquid form containing mineral water, natural amino acids, nucleic acids and traces of minerals, namely calcium, zinc and selenium. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

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 business customers with specific professional knowledge or expertise.

It is apparent from the case law that, insofar as products related to consumer’s health 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, healthcare professionals have a high degree of attention but also the public at large shows a higher than average degree of attention, as these goods affect their state of health. Therefore, the relevant public’s degree of attention will be above average.

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

c) The signs

BIONATURAL
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).

The earlier sign is a word mark and the contested sign is a figurative mark.

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 coinciding element ‘Bio’ as well as the ‘Natural’ are likely to be understood in the entire territory of the EU within the meanings explained below. The element ‘Nutral’ of the contested sign, on the other hand, will not be understood in certain languages e.g. Polish. This, in the opinion of the Opposition Division, contributes to the likelihood of confusion, as will be elaborated further. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Polish-speaking part of the public.

‘Although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (…), the fact remains that, when perceiving a verbal sign, he will break it down into elements which, for him, suggest a concrete meaning or which resemble words known to him’ (13/02/2007, T-256/04,  RESPICUR,  ECLI:EU:T:2007:46 , § 57).

The earlier sign consists of the word ‘BIONATURAL’ that is composed of the elements ‘BIO’ and ‘NATURAL’. The common element of both marks ‘BIO-’ refers to ‘biological’, which is ‘biologiczny’ in Polish, and it is commonly used as ‘BIO-‘ on food products, including food supplements, to refer them being derived from biological sources and the relevant public will understand such term as mentioned above. Therefore, it is considered non-distinctive for the goods in question. As to ‘Natural’, as such it does not exist in the Polish language but will be similar to some words like ‘naturalny’ (meaning natural in Polish) or ‘natura’ (meaning nature in Polish). Therefore, the public may grasp some meaning of such verbal element and for that reason it is weak in connection to the goods as it will allude to the products having natural origins.

The contested sign consists of the words ‘BIONUTRAL’, ‘Nutraceuticals’ and ‘TM’. The verbal element ‘TM’ stands for ‘trademark’, and since it is only referring to the possible status of the sign, it is descriptive and it is also very small in size; therefore, it will not be taken into consideration when analyzing the signs.

The element ‘BIO-‘ in the contested sign is non-distinctive as explained above, but, ‘NUTRAL’ does not have a meaning in Polish and will not be understood by the relevant public, as explained above, and therefore it is distinctive. The element ‘Nutraceuticals’ does not have any meaning in Polish, so it must be considered distinctive, but it is of secondary nature due to its position below the main element, diminutive size and faded colour. The colours used in the contested sign are of a rather decorative nature. Additionally, the green colour alludes to the nature and being natural so it is non-distinctive for the goods in question, also on this account. The verbal element BioNutral has to be considered as the dominant (visually eye-catching) element of the contested sign due to its size and central position within the sign.

Visually, the signs coincide in the letters B, I, O and N at the beginning as well as R, A, L at the end present identically in both signs. They constitute the major parts of the signs. They also both have the letters T, U in common in the middle, albeit in slightly inverted positions, ‘-T-U-’ in the middle of the earlier sign whereas it is ‘-U-T-’ in the middle of the contested sign. They also differ in the additional letter ‘A’ present in the middle of the earlier sign which is not present in the contested and in the word element ‘Nutraceuticals’ of the contested sign which plays a secondary role. They also differ in the figurative elements of the contested sign, which are of a decorative nature though.

Considering the above, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘BIO-’ present identically in both signs as the initial element, followed by the sound of the letter ‘N’, and the sound of the letters ‘-RAL’ at the end. The pronunciation slightly differs in the sound of the letters that are in the middle of the signs as ‘-A-T-U’ of the earlier mark, and ‘-U-T-’ of the contested sign, albeit in both cases the letters TU/UT are present, what contributes to the aural similarity. It should be borne in mind that the sound of short few letters in the middle of relatively long words does not have a great impact on the consumers. However, the pronunciation also differs in the secondary verbal element ‘Nutraceuticals’ at the end of the contested sign, which has no counterpart in the earlier sign, if it is pronounced.

Therefore, the signs are aurally similar to at least an average degree.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the element ‘Bio-‘, included in both signs, will be associated with the meaning explained above. To that extent, the signs are conceptually similar to a low 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 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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all the goods in question and lies mostly in the combination of the words BIO and NATURAL.

e) Global assessment, other arguments and conclusion

The contested goods are identical to the goods covered by earlier European Union trade mark No 889 501.

The earlier mark is distinctive to a low degree.

The signs under comparison have been found to be visually similar to an average degree and aurally similar to at least an average degree, as they coincide in most of their letters placed at the beginning and at the end of the signs. Conceptually, the signs have been found similar to a low degree, as explained above. The differences are in the middle and result mostly from a different arrangement of the same letters and an additional letter ‘A’ in NATURAL/NUTRAL. Moreover, the differences lie in the secondary and weak elements. The verbal combination which contributes to the distinctiveness of the earlier mark is reproduced to a great extent in the dominant verbal element in the contested sign BIONATURAL/BIONUTRAL.

The visual and aural similarities resulting from the coinciding elements are of particular relevance when assessing the likelihood of confusion between the marks at issue. In spite of the differences in the word elements, there is a likelihood of confusion because the visual and aural coincidences are overwhelming. Moreover, the differences between the signs are confined to a secondary element and slight differences in the middle of the signs that do not attract consumers, as explained above.

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). In the present case, due to the visual and aural coincidences explained above, the consumers may think the marks are of the same enterprise, since the image in their mind may be incomplete and vague. In particular, consumers who must trust in their imperfect recollection of the signs may overlook the fact that some letters in the middle of the words ‘NATURAL’ and ‘NUTRAL’ are either inverted (TU/UT) or missing (the second letter, ‘A’), as these elements look and sound similarly.

Moreover, 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 covered are from the same or economically linked undertakings. Indeed considering the similarities between the signs, as well as the fact that the differentiating element can be easily overlooked the likelihood of confusion cannot be excluded. This is especially true considering that the goods are identical.

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). Therefore, in the present case the goods in question being identical will create likelihood of confusion by offsetting the lesser degree of similarity between the signs in question. This holds true even is the earlier sign has a low degree of distinctiveness because the structure of the earlier sign which contributes to its distinctiveness is reproduced to a great extent in the contested sign.

Considering all the above, there is a likelihood of confusion on the part of the Polish-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. Likewise, as there likelihood of confusion exists for the public at large, there is no need to analyse the perception of business customers. Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 889 501. It follows that the contested trade mark must be rejected for all 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, 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

Jakub MROZOWSKI Ewelina ŚLIWIŃSKA Marzena MACIAK

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.