OPPOSITION No B 3 024 398

Hilliges Gipswerk GmbH & Co. KG, Hüttenweg 1, 37520 Osterode am Harz, Germany (opponent), represented by Gramm, Lins & Partner Patent- und Rechtsanwälte partGmbB, Theodor-Heuss-Str. 1, 38122 Braunschweig, Germany (professional representative)

a g a i n s t

Collagen Scandinavia Klas Källström F:a, Valhallavägen 22 A i gränden, 114 22 Stockholm, Sweden (applicant).

On 17/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 024 398 is upheld for all the contested goods.

2. European Union trade mark application No 17 498 403 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 17 498 403 for the word mark ‘PrimoH2’. The opposition is based on, inter alia, international trade mark registration No 1 381 970 designating the European Union for the word mark ‘PrimoFutura’. 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 international trade mark registration No 1 381 970 designating the European Union.

1. The goods

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

Class 5: Dietary supplements and dietetic preparations.

The contested goods are the following:

Class 5: Dietary supplements and dietetic preparations.

Dietary supplements and dietetic preparations are identically contained in both lists of goods.

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 the public at large and at business customers with specific professional knowledge or expertise such as nutritionists.

Furthermore, the Court has confirmed that the degree of attention is higher than average for all goods in Class 5, including nutritional supplements (10/02/2015, T‑368/13, ANGIPAX, EU:T:2015:81, § 46).

3. The signs

PrimoFutura	PrimoH2
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 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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The common element ‘PRIMO’ is meaningful in certain territories, for example, for the Italian-speaking part of the relevant public it refers to, inter alia, ‘first’, ‘early’ or ‘main’. This meaning may be perceived as laudatory and non-distinctive by this part of the public. Consequently, for reasons of procedural economy, the Opposition Division finds it appropriate to focus the comparison of the signs on the German-speaking part of the public where the word ‘PRIMO’ is meaningless in relation to the relevant goods and, as such, distinctive.

Although the marks are composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58).

The word ‘FUTURA’ present in the earlier sign is similar to German words related to the meaning ‘future’, such as ‘Futur’ (noun) ‘futurish’ (adjective) ‘Futurologie’ (noun) and that moreover ‘FUTURA’ is similar to its English equivalent ‘future’ which is generally understood by the general German-speaking public as a simple English word. This word does not describe any characteristics of the goods in question and as such is distinctive.

The element ‘H2’ of the contested sign will be associated by part of the public (especially the professional one) with molecular hydrogen. Bearing in mind that the relevant goods are dietary supplements, this element is non-distinctive for these goods as it merely indicates that the goods include molecular hydrogen.

The remaining part of the public (mainly average consumers) will not associate any specific meaning with this element. It is therefore distinctive for this part of the public.

The part of the public that does not perceive the meaning of ‘H2’ will still recognise the number ‘2’ of the contested sign which will have a somewhat lower degree of distinctiveness in relation to the relevant goods, as it could indicate a second line of products or the number of products in the package.

Visually and aurally, the signs coincide in (the sound of) the letters ‘PRIMO’ which constitute the beginning in both signs. They differ in the ending ‘FUTURA’ of the earlier sign and ‘H2’ of the contested sign which, however, lacks distinctiveness, at least for part of the public. 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 similar to an average degree.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the word ‘FUTURA’ of the earlier sign and the number ‘2’ or abbreviation ‘H2’ of the contested sign will be associated with the abovementioned meanings. As the signs will be associated with dissimilar meanings (even though this difference lies in non-distinctive or weak elements of the contested sign), the signs are conceptually not similar.

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

The goods are identical and they target the public at large and professionals. The degree of attention is higher than average.

The signs are visually and aurally similar to an average degree and conceptually dissimilar. The distinctiveness of the earlier mark is normal.

The signs coincide in the element ‘PRIMO’ which constitutes the beginning of both signs and plays a distinctive role in the signs.

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. Indeed, 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 (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 German-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.

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 1 381 970 designating the European Union. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier international trade mark registration No 1 381 970 designating the European Union 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).

Likewise, there is no need to examine the opponent’s claim of the family of marks.

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

Anna ZIÓŁKOWSKA

Katarzyna ZANIECKA

Martin INGESSON

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.