OPPOSITION No B 3 037 309

Laboratorios Syva, S.A., Av. Parroco Pablo Diez, 49-57, 24010 Leon, Spain (opponent), represented by Juan Carlos Vicente Ochoa Blanco-Recio, Clara Campoamor, 10, 28232 Las Rozas (Madrid), Spain (professional representative)

a g a i n s t

Swiss Caviar House (Asia) Limited, Suite 1612, 16/F, Star House, 3 Salisbury Road Tsimshatsui, Kowloon, Hong Kong Special Administrative Region of the People’s Republic of China (applicant), represented by Ipside, 6 Impasse Michel Labrousse, 31100 Toulouse, France (professional representative).

On 26/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 037 309 is upheld for all the contested goods, namely

Class 5: all goods in this Class.

2. European Union trade mark application No 17 608 118 is rejected for all the contested goods. It may proceed for the remaining goods.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 608 118 for the figurative sign , namely against all the goods in Class 5. The opposition is based on Spanish trade mark registration No 2 667 453 for the figurative sign . 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, inter alia, the following:

Class 5: Dietetic substances for medical use.

The contested goods are the following:

Class 5: Food supplements; food supplements for non-medical purposes; healthcare supplements; dietary and nutritional supplements; herbal beverages for medicinal use; dietary supplement drinks; liquid herbal supplements; herbal extracts for medical purposes; plant and herb extracts for medicinal use; herbal detoxification agents; anti-oxidant supplements; anti-oxidants for dietary use; nutritional, dietary and health supplements for use as aids to improve various kind of diseases including cirrhosis, prostatitis, asthma, conjunctivitis, cataract, stroke, diabete, alphos, eczema, rheumatism and toxuria; nutritional, dietary and health supplements in tablet, powder or capsule form; nutritional, dietary and health supplements in the form of liquid concentrates comprising natural ingredients or herbal extracts.

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.

It is also noted that the term ‘including’, used in the applicant’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

The contested food supplements for non-medical purposes are similar to a high degree to the opponent’s dietetic substances for medical use as the latter includes food supplements for medical use, which means that these sets of goods have the same nature, purpose, method of use and relevant consumer. They are often distributed through the same distribution channels and are produced by the same companies. They may also be in competition with each other and complementary.

The remaining applicant’s goods are either explicitly categorised as supplements (e.g. food supplements; liquid herbal supplements) or are of a similar nature and can be used as dietary supplements as well (e.g. herbal extracts for medical purposes; anti-oxidants for dietary use). As stated above, the opponent’s dietetic substances for medical use include dietetic supplements for medical use. Therefore the remaining contested goods, which are supplements or may be used as such, are either identical to the opponent’s goods (due to an overlap) or, in case they are not for medical use, are highly similar.

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 highly similar target the public at large as well as professionals in the field of medicine and healthcare.

While the dietetic supplements might not have such importance to one’s health as the pharmaceutical preparations, they are nevertheless purchased with the aim to improve one’s health and may have important positive or negative consequences. Therefore, it is considered that, regardless whether the public is general or professional, the degree of attention is considered to be higher than average.

c) The signs

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).

Neither of the signs or their elements has a meaning for the public in the relevant territory, and therefore their distinctiveness is average.

As the signs have no concepts and a conceptual comparison is not possible, this aspect does not influence the assessment of the similarity of the signs.

Visually, the signs coincide in the number of letters their verbal elements are composed of, namely four, they also have the same first and last letters (‘s/S’ and ‘a/A’). However, they differ in their two middle letters (‘yv’ v ‘IB’), as well as their figurative aspects, namely the letter typeface, colours and the figurative element of the earlier mark. Although the latter is rather large and eye-catching, 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).

Overall, the signs are visually similar to a low degree.

As rightly argued by the opponent, the sounds of letters ‘y’ v ‘i’ and ‘v’ v ‘b’ in Spanish are identical. Therefore, aurally, the pronunciation of the signs in Spanish is identical. For the sake of completeness, it is noted that, due to the regional difference in the pronunciation of the letters ‘v’ v ‘b’, a part of the public might not pronounce them identically. However, even in this case, the sound of ‘v’ and ‘b’ are highly similar, making the overall aural similarity of the signs similar to a very high degree for this part of the public.

As the signs are similar at least to some extent, the analysis of the 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. 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.

e) Global assessment, other arguments and conclusion

The goods are identical or highly similar and target the general public as well as professionals, both with a higher than average degree of attention. The signs are visually similar to a low degree, aurally identical (and for some possibly highly similar), while conceptual comparison does not influence the assessment of likelihood of confusion. The earlier mark has an average degree of distinctiveness.

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).

The Opposition Division considers that the identity or high similarity of the goods in conjunction with the aural identity (and for some, possibly very high degree of aural similarity) of the signs and an average degree of distinctiveness of the earlier mark lead to the potential situation of confusion.

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). Indeed, in the present case, the degree of attention is higher than average, however, 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 public.

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 2 667 453. 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

Michal KRUK

Vita VORONECKAITE

Victoria DAFAUCE MENENDEZ

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.