OPPOSITION No B 3 047 308

Laboratorios Ern, S.A., C. Perú, 228, 08020 Barcelona, Spain (opponent), represented by Ponti & Partners, S.L.P, C. Consell de Cent, 322, 08007 Barcelona, Spain (professional representative)

a g a i n s t

Takeda Consumer Healthcare Company Limited, 8-2 Marunouchi 1-chome Chiyoda-ku, 100-0005 Tokyo, Japan (applicant), represented by Cabinet Laurent & Charras, Le Contemporain 50, Chemin de la Bruyère, 69574 Dardilly Cedex, France (professional representative).

On 04/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 047 308 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 552 613, ‘ALINAMIN’, namely against all the goods in Classes 5 and 32. The opposition is based on Spanish trade mark registration No 20 631 for the word mark ‘DYNAMIN’ and Spanish trade mark registration No 3 654 201 for the word mark ‘DYNAMÍN SPORT’. 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

For earlier trade mark registration No 20 631

Class 1: Chemical specifics and preparations.

Class 5: Pharmaceutical specifics and preparations.

As preliminary remark, it is noted that the opponent in the Notice of Opposition, for the earlier trade mark registration No 20 631, mentioned that the opposition is based on all goods and services but only explicitly listed chemical specifics and preparations in Class 1 and pharmaceutical specifics and preparations in Class 5. However, in accordance with Article 7(3) EUTMDR, the opponent made a formal declaration in which it asked the Office to access the necessary information for the earlier trade mark from the relevant online official sources. Furthermore, the opponent attached to the notice of opposition extracts from the database of the Spanish competent authority (accompanied with a translation into the language of the proceedings) from which it is evident that the earlier mark also covers dietetic foods adapted for medical use in any shape or form. Consequently, these goods will also be taken into account as basis of the opposition.

For earlier trade mark registration No 3 654 201

Class 5: Dietetic foods and substances for medical use, foods for babies; nutritional supplements for human beings.

Class 32: Isotonic beverages; mineral and carbonated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages.

The contested goods are the following:

Class 5: Pharmaceutical preparations; vitamin preparations; nutritional additives for medical purposes; dietetic beverages adapted for medical purposes; nutritional drinks for medical purposes.

Class 32: Non-alcoholic energy drinks.

It is noted that in its submissions, which were filed after the three-month opposition period, the opponent mentions, for the first time, another Spanish trade mark registration, namely No 2 108 926, for the word mark ‘FIXODENT’ claiming that the goods of this mark are identical to the contested goods. As the scope of opposition cannot be expanded after the three month opposition period (which expired on 13/03/2018) by basing it on additional trade mark registrations, the Opposition Division cannot take into consideration the aforementioned claim of the opponent.

Contested goods in Class 5

Pharmaceutical preparations are identically contained in the lists of goods of the contested and earlier trade mark No 20 631.

The contested vitamin preparations are dietary or nutritional supplements which may be used together with pharmaceutical preparations in the treatment or prevention of illnesses. Therefore, they are included in the opponent’s broad category of nutritional supplements for human beings in the earlier trade mark registration No 3 654 201. These goods are identical.

The contested nutritional additives for medical purposes; nutritional drinks for medical purposes; dietetic beverages adapted for medical purposes are included in, or overlap with, the broad category of the opponent’s nutritional supplements for human beings in the in the earlier trade mark registration No 3 654 201. Therefore, they are identical.

Contested goods in Class 32

The contested non-alcoholic energy drinks overlap with the opponent’s isotonic beverages in earlier trade mark registration No 3 654 201. 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 in Class 5 found to be identical are directed both at the public at large and at professionals in the field of medicine and healthcare and pharmacology, with specific professional knowledge or expertise (T-412/08, Trubion, EU:T:2009:507, § 28). In terms of the relevant goods in Class 32, they are mass consumption goods sold even in supermarkets and are directed at the public at large.

The degree of attention is higher than average for the goods in Class 5. It is apparent from the case-law that, insofar as substances for medical use, 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 and cited case-law).

In particular, medical professionals have a high degree of attentiveness when prescribing dietetic foods and substances adapted for medical use. Non-professionals also have a higher degree of attention, regardless of whether the dietetic foods and substances adapted for medical use are sold without prescription, as these goods affect their state of health (10/02/2015, T‑368/13, ANGIPAX, EU:T:2015:81, § 43; 15/12/2009, T‑412/08, Trubion, EU:T:2009:507, § 28).

For the goods in Class 32; the degree of attention is average as they are beverages intended to quench thirst and replenish energy.

3. The signs

DYNAMIN DYNAMÍN SPORT	ALINAMIN
Earlier trade marks	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 element ‘DYNAMIN’ of the earlier marks may be evocative of the term ‘dinámico’ (dynamic) and may be perceived by the relevant public, for the goods at issue, as a play on the words ‘dynamics’ and ‘vitamin’ (13/12/2017, T–700/16, Slim Dynamics (fig.) / DYNAMIN, EU:T:2017:896, § 59) but as a whole it has no meaning and it is therefore distinctive in relation to the goods at issue.

Moreover, following the applicant´s arguments and evidence, it may not be entirely excluded that the professionals in the field of medicine, biology and pharmacology may see it as referring to a protein that promotes peripheral vasodilation and reduces preload and afterload, decreasing myocardial oxygen consumption and increasing cardiac output. Also this protein dilates coronary arteries, increasing blood flow and improving collateral circulation (Source: http://medical-dictionary.thefreedictionary.com/Dynamin). This type of protein is produced naturally by the human body and does not exist as a chemical compound, food supplement, vitamin, or additive which can be used in foods and beverages. However, the professionals in the aforementioned field might perceive that the goods at issue contain ingredients that boost the protein-making mechanism of the body. Therefore, for the professional public, the sign ‘DYNAMIN’ is weak in relation to the goods at issue.

The element ‘SPORT’ contained in the earlier mark ‘DYNAMÍN SPORT’ is a basic English word that will be understood by the Spanish public - both professionals in the aforementioned fields and non-professionals - as ‘deporte’ or ‘deportivo’ (Source: https://dle.rae.es/?id=YTwPQqS). Therefore, this element would be of limited distinctiveness in relation to the opponent’s goods in Classes 5 and 32, as it would be perceived as an indication that they are, inter alia, food supplements and isotonic drinks to be used for people doing sports.

The contested mark ‘ALINAMIN’ would be perceived by the relevant public as meaningless and, therefore, distinctive to an average degree in relation to the relevant goods.

Αs all signs are word marks, they have no elements that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the string of letters ‘*NAMIN’ at the end of the contested sign and of the element ‘DYNAMIN’ of the earlier marks. However, they differ in their beginnings: ‘ALI’ of the contested mark and ‘DY’ of the earlier marks. Moreover, the earlier mark ‘DYNAMÍN SPORT’ has an accent on the letter ‘Í’ and contains the word ‘SPORT’ which has no counterpart in the contested but which is of limited distinctiveness.

Account must also be taken that 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. In the present case, the coincidences are at the end of the signs.

Therefore, the conflicting signs , even from the perspective of the part of the public for which DYNAMÍN would not be of limited distinctiveness, are visually similar to a lower than average degree.

Aurally, given the fact that the letter ‘y’ is phonetically equivalent to the sound of the letter ‘i’, the last six letters of the contested sign and of the element DYNAMIN would be pronounced identically. The pronunciation differs in the beginnings of the marks, the letters ‘A-L’ of the contested mark and the letter ‘D’ of the earlier marks. The signs due to the additional syllable of the contested sign do not have the same rhythm or intonation, contrary to the opponent’s claim that the differences between the marks cannot avoid the effect of consonant rhyme that can be immediately captured by the average listener. Moreover, in the earlier mark ‘DYNAMÍN SPORT’, due to the accent Í, the accent is pronounced in the last syllable of the word ‘DYNAMÍN while in the contested mark the accent is pronounced in the penultimate: They also differ in the sound of the letters ‘SPORT’ of the earlier mark ‘DYNAMÍN SPORT’ which has no counterpart in the contested mark.

Therefore, and taking into account also the higher impact of the beginning of the signs, even from the perspective of the part of the public for which DYNAMÍN would not be of limited distinctiveness, the signs are aurally similar to a lower than average degree.

Conceptually, although the public in the relevant territory will perceive the meanings of the earlier marks as explained above, the contested sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually 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 marks

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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, from the perspective of the part of the professionals that would see DYNAMIN/DYNAMÍN as referring to a protein, the distinctiveness of the earlier marks is lower than average. From the perspective of the remaining part of the public, the earlier trade marks as a whole have no meaning for any of the goods in question. Therefore, the distinctiveness of the earlier marks must be seen as normal for this part of the public, despite the presence of the element ‘SPORT’ in the mark No 3 654 201, which is of limited distinctiveness, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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 likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

In the present case, the goods are identical. The degree of attention of the relevant public varies from average to higher than average. The signs are visually and aurally similar to a lower than average degree. The signs are conceptually not similar.

Although the signs coincide visually in the string of letters ‘NAMIN’, placed at the end of the words ‘DYNAMIN’ and ‘ALINAMIN’ respectively and aurally in the sound of the letters ‘Y/INAMIN’ (albeit the difference in intonation caused by the accent in the earlier mark ‘DYNAMÍN SPORT’), there is no likelihood of confusion as the coincidences are limited only to a part within the marks. The signs, due to the additional syllable of the contested sign, do not have the same rhythm or intonation for the average listener contrary to the opponent’s claim. The fact that the marks coincide aurally in the sound of letters ‘INAMIN’ (albeit the difference in intonation caused by the accent in the earlier mark ‘DYNAMÍN SPORT’) does not suffice on its own for establishing a likelihood of confusion since the alphabet is made up of a limited number of letters and therefore it is inevitable that many words will have the same number of letters and even share some of them.

In the present case the beginnings of the marks, where consumers generally tend to focus as analysed above, are completely dissimilar. In addition, the marks have no concept in common that would lead the public to associate one with the other.

All these differences are clearly perceivable and sufficient to exclude any likelihood of confusion between the marks, even from the perspective of the general public displaying only an average degree of attention, contrary to the opponent’s claim that consumers tend more to retain similarities than dissimilarities and that, due to the principle of imperfect recollection, the above mentioned differences between the words could be easily overlooked. While it is true 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), this does not automatically mean that they tend to retain more the similarities of the marks. It cannot be generally assumed that the elements of difference between the marks would tend to become less marked in the consumer’s memory in favour of the elements of similarity. In accordance with settled case-law, the extent of the similarity or difference between the signs at issue may depend, in particular, on the inherent qualities of the signs (13/05/2015, T-169/14, Koragel / CHORAGON, EU:T:2015:280, § 84).

The opponent refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T 281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous case referred to by the opponent, namely the Decision 1 935 801 ‘SHEQ vs.SHI Q’O s’ of the Opposition Division, is not relevant to the present proceedings as it refers to short signs which also share the same beginning.

Consequently, it should be noted, that the average consumer will perceive the trade marks as a whole, and the differences between them will prevent the public from mistakenly believing that the goods bearing these marks are of the same origin. Therefore, the Opposition Division considers that the dissimilarities are sufficient to offset even the identity between the goods, and hence to exclude any likelihood of confusion between the marks.

Therefore, the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Denitza STOYANOVA- VALCHANOVA

Aliki SPANDAGOU

Martin EBERL

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.