OPPOSITION Nо B 3 059 337

 

Biosa Danmark Aps, Sonnerupvej 41, Dragebjerggård, 3300 Frederksværk, Denmark (opponent), represented by Patrade A/S, Ceresbyen 75, 8000 Aarhus C, Denmark (professional representative) 

 

a g a i n s t

 

Heinz Reinwald, Akathiotis Kiti Beach Gardens 1, Villa 1, 7000 Meneou, Cyprus and HK Evolution Ltd, Lord Byron Street 61-63, 5th Fl., 6023 Larnaka, Cyprus (applicants), represented by Gerstenberg Rechtsanwälte, Uhlandstrasse 2, 80336 Munich, Germany (professional representative).

On 02/06/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 059 337 is upheld for all the contested goods.

 

2.	European Union trade mark application No 17 881 117 is rejected in its entirety.

 

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

 

REASONS

 

On 19/07/2018, the opponent filed an opposition against all the goods of European Union trade mark application No 17 881 117 for the word mark ‘MyBIOSA by dr.reinwald’. The opposition is based on international trade mark registration designating the EU No 1 280 989 for the word mark ‘BIOSA’. 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: Nutritional supplements; dietary supplements for animals; yeast dietary supplements; air purifying preparations; cultures of microorganisms for medical and veterinary use; pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic preparations for medical use; infant formula; preparations for destroying noxious animals; antifungal preparations and herbicides.

Class 32: Beers, mineral and aerated waters and other non-alcoholic beverages; fruit juice beverages; syrups and other preparations for making beverages; non-alcoholic drinks in the form of fermented beverages containing herbs and microorganisms; non-alcoholic drinks in the form of beverages with added herbs and microorganisms.

The contested goods are the following:

 

Class 5: Probiotic bacterial formulations for medical use; probiotic bacterial formulations for veterinary use; colostrum supplements; yeast dietary supplements; probiotic supplements; germicides; dietary supplements and dietetic preparations; dietary supplements consisting of vitamins; vitamins and vitamin preparations; vitamin D preparations; chondroitin preparations.

Class 29: Yoghurt; preparations for making yoghurt; kephir [milk beverage].

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

 

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.

 

Contested good in Class 5

 

The contested goods probiotic bacterial formulations for medical use; probiotic bacterial formulations for veterinary use; colostrum supplements; yeast dietary supplements; probiotic supplements; germicides; dietary supplements and dietetic preparations; dietary supplements consisting of vitamins; vitamins and vitamin preparations; vitamin D preparations; chondroitin preparations are all at least similar to a low degree to the opponent’s broad category of pharmaceutical and veterinary preparations, because they have at least the same purpose and usually coincide in their relevant public and distribution channels (e.g. the contested dietary supplements are identical to the opponent’s nutritional supplements and as regards the contested germicides, they are similar to a low degree since they can have a medical or therapeutic purpose as they can be used inter alia as a medication to treat vaginal yeast infections; although 'germicides' generally target different plant aggressors (fungus), the term generally refers to any active ingredient used to kill parasitic fungi and harmful microorganisms without restriction to a specific sector).

Contested goods in Class 29

The contested goods in Class 29, yoghurt; preparations for making yoghurt; kephir [milk beverage] are at least similar to the opponent’s non-alcoholic drinks in the form of beverages with added herbs and microorganisms in Class 32 as they have at least the same purpose and they usually coincide in relevant public and distribution channels. Furthermore, they are in competition.

 

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 at least similar to a low degree identical are directed at the public at large and, as regards the goods in Class 5, as well at health professionals.

It is apparent from the case-law that, insofar as pharmaceutical preparations, 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 medicines. Non-professionals also have a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health. The same holds true for the remaining goods in Class 5 that affect the consumers’ health.

Therefore, in the present case, the degree of attention may vary from average to high, depending on the specific nature of the goods. 

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

 

c) The signs

 

BIOSA	MyBIOSA by dr.reinwald
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.

Both signs are word marks. The earlier mark consists of the string of letters ‘BIOSA’; the contested sign consists of the expression ‘MyBIOSA by dr.reinwald’.

The common element ‘BIOSA’ as a whole is meaningless for at least a substantial part of the relevant public throughout the relevant territory.

The remaining verbal components of the contested sign ‘My***** by dr.reinwald’ are meaningful for inter alia the English-speaking part of the public in the relevant territory. As regards the contested sign’s first verbal component, ‘MyBIOSA’, although it is composed of one verbal element, it must indeed be noted that 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). In the present case, this is further enhanced by the fact that the letters of the identical letter string ‘BIOSA’ as well as the first letter of the additional string of letters ‘My’, in the contested sign, is depicted in upper case. Consequently, amongst others the English-speaking part of the relevant public will perceive the English term ‘My’ in the contested sign as the first person singular possessive determiner (indicating that something belongs or relates to himself or herself) - being thus of weaker distinctiveness on account of its specificity and consequent correlation with the common term ‘BIOSA’ - , followed by the meaningless letter string ‘Biosa’.

As regards the remaining components of the contested sign, ‘by dr.reinwald’, firstly, the term ‘by’ is a basic English word that is understood in all the languages in the relevant territory as designating the person who is the proprietor / creator of the object marked accordingly (15/09/2016, T-358/15, ROMEO HAS A GUN BY ROMANO RICCI (fig.) / NINA RICCI et al., EU:T:2016:490, § 46; 09/04/2014, T-386/12, Elite by Mondariz, EU:T:2014:198, § 95). Therefore, it is of weaker distinctiveness. The verbal elements ‘dr. reinwald’ placed after ‘by’ will be understood as referring to a doctor with surname ‘Reinwald’ being the manufacturer or creator/developer of the goods. These verbal elements are distinctive in relation to the goods concerned.

To take into account the semantic content of this meaningful element in the conceptual comparison of the signs, the Opposition Division finds it appropriate to focus the comparison on the English-speaking part of the public, such as consumers in Ireland and Malta, as well as consumers who have sufficient knowledge of English as a foreign language.

As seen above, the earlier mark is meaningless as a whole and thus of normal distinctiveness; the same goes for the initial component ‘Biosa’ in the contested sign. The remaining elements of the contested sign (‘My’, and ‘by dr.reinwald’) will be perceived as detailed above and thus be associated with the described meanings.

Also, account must be taken of the fact 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.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the public under analysis in the relevant territory will perceive the concepts of the contested sign as explained above (namely the verbal elements ‘My’, ‘by’ and ‘dr.reinwald’), the earlier mark, ‘BIOSA’ (which also forms the coinciding fanciful and normally distinctive verbal element in the contested sign, placed also at its beginning where it is only preceded by the weaker term ‘My’), has no meaning. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

Visually and aurally, both marks are word marks. They are similar to the extent that they coincide in the letters ‘BIOSA’, present in both signs and which forms the entire earlier mark and the fanciful and normally distinctive element placed at the beginning (only preceded by the weaker ‘My’) of the contested sign. On the other hand, they differ in the contested sign’s weaker term ‘My’ and in the additional expression ‘by dr.reinwald’ at the end of the contested sign.

Furthermore, consumers naturally tend to shorten long marks in order to reduce them to the elements that they find easiest to refer to and remember (see, to that effect, 07/02/2013, T-50/12, Metro Kids Company, EU:T:2013:68, § 41; 30/11/2011, T-477/10, SEⓒSports Equipment, EU:T:2011:707, § 55; 09/04/2013, T-337/11, Giuseppe by Giuseppe Zanotti, EU:T:2013:157, § 36; 28/09/2016, T-539/15, SILICIUM ORGANIQUE G5 LLR-G5, EU:T:2016:571, § 56). Therefore, it is very likely that a significant proportion of the relevant consumers will omit the additional components ‘by dr.reinwald’ when referring to the contested sign.

Therefore, the signs are visually and aurally similar to at least 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) 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

 

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 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 goods are found similar to at least a low degree. The signs are visually and aurally similar to at least an average degree and conceptually they are not similar.

It is highly conceivable that the relevant consumer will perceive the contested sign as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods held similar that it designates, even where the degree of attention is higher than average. In particular, it is likely that the contested application would be perceived as a sub-brand of the earlier mark designating a specific product line created by, or made in collaboration with, an individual, called Doctor Reinwald.

Account must also be 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).

As a rule, when the earlier trade mark, or the only distinctive element, is wholly incorporated in the contested sign and performs an independent and distinctive role therein, this is an indication that the two signs are similar (13/06/2012, T‑519/10, SG Seikoh Giken, EU:T:2012:291, § 27; 24/01/2012, T‑260/08, Visual Map, EU:T:2012:23, § 32; 22/05/2012, T‑179/11, Seven Summits, EU:T:2012:254, § 26).

The consumers also naturally tend to shorten long marks in order to reduce them to the elements that they find easiest to refer to and remember, as detailed above. According to the case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (26/06/2018, T-556/17, STAROPILSEN; STAROPLZEN, 29/01/2020, R 499/2019-2, COFFEA CLUB (fig.) / Cofféa torréfacteurs passionnés (fig.) et al- EU:T:2018:382, § 34; 23/10/2002, MATRATZEN, T-6/01, EU:T:2002:261, § 30; 10/12/2008, T-290/07, METRONIA, EU:T:2008:562, § 41).

Therefore, taking into account the principle of interdependence, despite the lower similarity between at least part of the goods and despite the differences between the signs, which are, however, incapable of maintaining a sufficient distance between the overall impressions given by the signs, a likelihood of association between the signs cannot be excluded, even where the attention of consumers will be higher.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking general public and therefore the opposition is well founded on the basis of the opponent’s earlier international registration designating the European Union No 1 280 989. 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, and there is no need to analyse the remaining part of the public. 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, 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

 

 

Félix ORTUÑO LÓPEZ

Edith Elisabeth VAN DEN EEDE

Gonzalo BILBAO TEJADA

 

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.