OPPOSITION No B 3 044 412

Artesania Agricola, S.A., Ctra. Vilafranca, Km. 4, 08810 Sant Pere de Ribes (Barcelona), Spain (opponent), represented by Roeb y Cia, S.L., Plaza de Cataluña, 4 - 1º, 28002 Madrid, Spain (professional representative)

a g a i n s t

Topolski Jarosław Advanta-Service, Ul. Prof. Zdzisława Czeppe 19, 30 389 Kraków, Poland (applicant), represented by Law Art Science sp. z o. o., Ul. Kalwaryjska 35A/309, 30-504 Kraków, Poland (professional representative).

On 11/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 044 412 is partially upheld, namely for the following contested goods

Class 5: Scrubs [preparations] for medical use; dental rinse; plant and herb extracts for medicinal use; balms for pharmaceutical purposes; medical preparations; medicinal ointments; pharmaceuticals and natural remedies; body creams for pharmaceutical use; creams for dermatological use; medicated creams; creams (medicated -) for the lips; medicated lotions; face scrubs (medicated -); medicated hair care preparations; herbal medicine; skin care lotions [medicated]; pharmaceutical preparations; moisturising creams [pharmaceutical]; pharmaceutical preparations for skin care; herbal preparations for medical use; mineral preparations for medical purposes; medicinal sprays; medicated shampoos;tonics for medical use; extracts of medicinal herbs; body gels for pharmaceutical use; vitamins and vitamin preparations.

2. European Union trade mark application No 17 437 724 is rejected for all the above goods. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 437 724 for the figurative mark namely against all the goods in Class 5. The opposition is based on Spanish trade mark registration No 2 155 540 for the word mark ‘PLANTIS’. 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: Dietetic food and substances; vitamin preparations; dietetic substances and beverages adapted for medical use.

The contested goods are the following:

Class 5: Scrubs [preparations] for medical use; dental rinse; plant and herb extracts for medicinal use; balms for pharmaceutical purposes; medical preparations; medicinal ointments; pharmaceuticals and natural remedies; body creams for pharmaceutical use; creams for dermatological use; medicated creams; creams (medicated -) for the lips; medicated lotions; face scrubs (medicated -); medicated hair care preparations; herbal medicine; skin care lotions [medicated]; hand-sanitizing preparations; pharmaceutical preparations; moisturising creams [pharmaceutical]; pharmaceutical preparations for skin care; herbal preparations for medical use; mineral preparations for medical purposes; medicinal sprays; medicated shampoos; bacteria fighting cleanser; tonics for medical use; antibacterial gels; extracts of medicinal herbs; body gels for pharmaceutical use; vitamins and vitamin preparations.

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.

Vitamin preparations are identically contained in both lists of goods.

The contested medical preparations; pharmaceuticals and pharmaceutical preparations, medicinal sprays and vitamins include, or overlap with, the opponent’s vitamin preparations. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested plant and herb extracts for medicinal use; natural remedies; herbal medicine; herbal preparations for medical use; mineral preparations for medical purposes and extracts of medicinal herbs are included in the opponent´s broader category of dietetic substances and beverages adapted for medical use. Therefore, they are identical.

The contested scrubs [preparations] for medical use; balms for pharmaceutical purposes; medicinal ointments; body creams for pharmaceutical use; creams for dermatological use; medicated creams; creams (medicated -) for the lips; medicated lotions; face scrubs (medicated -); medicated hair care preparations; skin care lotions [medicated]; moisturising creams [pharmaceutical]; pharmaceutical preparations for skin care; medicated shampoos; body gels for pharmaceutical use are similar to the opponent´s dietetic substances and beverages adapted for medical use. The same purpose is inherent to the contested medicated cosmetics, in particular preparations in the form of creams, gels and lotions, all for the care of skin/hair. Although it is true that the goods covered by the marks in conflict differ in their method of administration – while the applicant’ s goods are only for external use, those of the opponent are ingested orally – they may nevertheless be similar in nature insofar as they are all chemical compounds used to treat or prevent diseases. As they are often used in combination as co-adjuvants, they can be purchased via the same specialised channels, i.e. pharmacies and para-pharmacies, and are likely to be produced by the same manufacturers. Finally, all these goods target the same public.

The contested dental rinse is a dental preparation that cleans the mouth and makes breath smell better and can contain vitamins.

The contested tonics for medical use are liquid medicine which has a general effect (i.e. improving and strengthening the functioning of the body) and does not treat a particular health problem.

These contested goods are at least similar to a low degree to the opponent´s vitamin preparations as they can target the same relevant public and share the same distribution channels.

The contested hand-sanitizing preparations; bacteria fighting cleanser and antibacterial gels are chemical substances used in medicine-related fields to prevent infection by bacteria. They are also used on medical instruments. The opponent’s goods in Class 5 are all vitamins, dietetic supplements and food supplements, most of them adapted for medical use. .Although it could be claimed that the purpose of aforementioned goods, very broadly speaking, is medical, the specific purpose of each of these items differs. None of the opponent’s goods in Classes 5 has the same purpose as these contested goods. The producers, target public and distribution channels of these contested goods are also different from those of the opponent’s goods. Therefore, these goods are dissimilar

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 various degrees are directed at the public at large and at business customers with specific professional knowledge or expertise in the fields of healthcare, medicine and pharmaceutical industry.

It is apparent from the case-law that, insofar as pharmaceutical preparations are concerned, the relevant public’s degree of attention is relatively high, whether or not issued on prescription (15/12/2010, T‑331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T‑288/08, Zydus, EU:T:2012:124, § 36 and cited case-law). In particular, medical professionals have a high degree of attentiveness when prescribing medicines. Non-professionals also show a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health.

All in all, the degree of attention will range from be above average to high due to the specialised nature of the goods and their impact on the consumer’s health.

c) The signs and distinctiveness of the earlier mark

PLANTIS
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).

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. The distinctiveness of the earlier mark must be seen as weak, for the following reasons.

Although the common element ‘PLANTIS’ does not exist as such in the relevant language, it will be associated by the relevant public with the word ‘PLANTA/PLANTAS’, meaning plant/s, which are living things that grow in the earth and have a stem, leaves, and roots. Bearing in mind that all the relevant goods are medical preparations that may potentially have plants as their main ingredient, the element ‘PLANTIS’ will be allusive and, contrary to the applicant´s assertion, its degree of distinctiveness is below average.

As the earlier mark is a word mark, it is the word as such that is protected and not its written form. Therefore, it is irrelevant for the comparison whether the earlier mark is depicted in upper or lower case characters.

In the contested sign, ‘Plantis’ is preceded by the verbal component ‘Vis’. Despite being integrated into several expressions of common use in Spain such as ‘Vis a vis’ or ‘vis cómica’, the term ‘Vis’ per se is rarely used on a daily basis, and the greater part of the relevant public will not identify it with its Latin-rooted meaning, namely ‘strength’. Be it perceived as it may, the component is distinctive to an average degree.

The figurative element accompanying the verbal element will be perceived as a plant or a flower, thus merely reinforcing the concept of a plant. In any event, 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; 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

The contested sign has no element that can be clearly considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the presence of the element ‘PLANTIS’, which constitutes the entirety of the earlier mark. They only differ in the initial part of the verbal element of the contested sign, ‘VIS’, and in its figurative element.

Therefore, the marks are visually similar to an average degree, notwithstanding the allusive character of the coinciding parts.

Aurally, the pronunciation of the signs coincides in the sound of the letters /PLANTIS/, present identically in both signs and which constitutes the earlier mark as a whole. The pronunciation differs in the sound of the letters /Vis/ of the contested sign which have no counterpart in the earlier mark.

As the figurative device will not be pronounced, and even taking into account the allusive character of the coinciding element /PLANTIS /, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs coincide in the element ‘PLANTIS’, which has a low degree of distinctiveness, and the additional distinctive verbal component of the contested sign, ‘VIS’, introduces an additional concept, if perceived, with no counterpart in the earlier mark. Taking into account that the figurative device contained in the contested sign merely reinforces the concept of ‘PLANTIS’, the signs are conceptually similar to an 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) Global assessment, other arguments and conclusion

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 29).

The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (see ‘Canon’, § 16). In addition, the global assessment of the risk of confusion entails certain interdependence between the factors taken into account and, in particular, between the similarity of the trademarks and the similarity of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (23/10/2002, T‑6/01, Matratzen, EU:T:2002:261, § 25).

In the present case, the goods at issue are partly identical, partly similar and partly dissimilar to those of the earlier mark and target both the general and specialised public with a professional knowledge or expertise in the pharmaceutical or medical field. The relevant public’s degree of attention will range from above average to high. The earlier mark has been found to possess a below average degree of distinctive character in relation to the relevant goods.

The Opposition Division considers that, despite the below average degree of distinctiveness of the earlier mark, the differences between the signs are not strong enough to safely exclude likelihood of confusion to occur.

The signs have been found to be similar to an average degree in the three levels of the comparison, due to their coincidence in the letter sequence ‘PLANTIS’ which forms the entire earlier mark and is completely incorporated into the contested sign. Admittedly, there are certain differences between the signs on account of the additional verbal component ‘Vis’ that, although being distinctive to an average degree, is not strong enough to counterbalance the obvious similarity mentioned above.

Therefore, in an overall assessment, and also taking into account that the consumer only occasionally has the opportunity to carry out a direct comparison of the various trade marks and must rely on his imperfect mental image of them, the similarities between the signs must be considered enough to counteract the differences. Even consumers with a high degree of attention need to rely on the their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

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 the present case, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates –specific line of products with herbal origin (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is partly well founded on the basis of the opponent’s Spanish trade mark registration No 2 155 540. It follows that the contested trade mark must be rejected for all the contested goods found to be identical or similar to those of the earlier trade mark. It may proceed for the rest of goods and services.

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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Alicia BLAYA ALGARRA	Alexandra APOSTOLAKIS	Vít MAHELKA

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.