OPPOSITION No B 3 067 511

N. V. Nutricia, Eerste Stationsstraat 186, 2712 HM, Zoetermeer, Netherlands (opponent), represented by NLO Shieldmark B.V., New Babylon City Offices. 2e étage, Anna van Buerenplein 21A, 2595DA Den Haag, Netherlands (professional representative)

a g a i n s t

Diagnosis S.A., ul. Generała Andersa 38A, 15-113, Białystok, Poland (applicant), represented by Kancelaria Prawno-Patentowa Rzecznicy Patentowi Dobkowska Iwaniuk Sp. Partnerska, ul. Rycerska 79, 15-157 Białystok, Poland (professional representative).

On 18/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 067 511 is partially upheld, namely for the following contested goods and services:

Class 5: Pharmaceuticals; sanitary preparations for medical purposes; dietary supplements and dietetic preparations; infant formula; dressings, medical; disinfectants.

Class 40: Custom manufacture of pharmaceuticals.

Class 42: Medical and pharmacological research services; research and development for the pharmaceutical industry; consultancy relating to pharmaceutical research and development; research relating to technology.

2. European Union trade mark application No 17 928 418 is rejected for all the above goods and services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 928 418 for the figurative mark . The opposition is based on European Union trade mark registration No 7 198 914 for the word mark ‘NUTRICIA’, European Union trade mark registration No 16 324 329 for the figurative mark , European Union trade mark registration No 12 302 493 for the figurative mark and European Union trade mark registration No 6 849 038 for the figurative mark . 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 0economically 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 European Union trade mark registration No 12 302 493 for the figurative mark .

1. The goods and services

The goods and services of earlier EUTM No 12 302 493 on which the opposition is based are the following:

Class 5: Pharmaceutical products; dietetic substances adapted for medical use; dietetic beverages adapted for medical purposes; foodstuffs (fortifying) for medical purposes, including food for babies, small children and the sick; nutritional dietary supplements for medical use; food supplements (either for medical and non-medical use).

Class 10: Surgical and medical apparatus and instruments; feed pumps, sensors (nasal), measuring sensors, cannulae, tubes and other medical apparatus for administering food; parts and fittings included in this class for all of the aforesaid goods.

Class 41: Provision of tuition; providing of training; arranging seminars in the field of nutrition; arranging and conducting of meetings, conferences or congresses; arranging and conducting of training workshops; the provision of training courses; education information and education in the field of risk assessment of health and nutrition.

Class 42: Scientific analysis, research, studies and development in the field of health, food and nutrition.

Class 44: Medical services; consultancy in the field of medical and pharmaceutical substances; consultancy and advice in the field of nutrition; consultancy and care in the field of hygiene and health; personal consultancy relating to the risk assessment of health and nutrition, including dietary consultancy.

The contested goods and services are the following:

Class 5: Pharmaceuticals; sanitary preparations for medical purposes; dietary supplements and dietetic preparations; infant formula; dressings, medical; disinfectants.

Class 40: Custom manufacture of pharmaceuticals.

Class 42: Medical and pharmacological research services; research and development for the pharmaceutical industry; consultancy relating to pharmaceutical research and development; research relating to technology; packaging design.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘including’, used in the opponent’s list of goods and services, indicates that the specific goods and services 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).

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 goods in Class 5

Pharmaceuticals are identically contained in both lists of goods (including synonyms).

The contested dietary supplements and dietetic preparations; infant formula are included in the broad category of, or overlap with, the opponent’s dietetic substances adapted for medical use. Therefore, they are identical.

The contested sanitary preparations for medical purposes and disinfectants serve purposes related to hygiene and are used in the healthcare sector, hospitals, dental clinics, consulting rooms, etc. These contested goods and the opponent’s pharmaceutical products have the same general purpose, namely to cure diseases and improve health. They are usually produced by the same undertakings and are distributed to the same relevant public through the same channels. Therefore, they are highly similar.

The contested dressings, medical and the opponent’s pharmaceutical products have the same general purpose, namely to cure diseases and improve health. They usually coincide in their distribution channels and relevant public. Therefore, they are similar.

Contested services in Class 40

The contested custom manufacture of pharmaceuticals include compounding of pharmaceutical products provided by specialised licensed pharmacies to patients, which consists in combining, mixing or altering ingredients of a drug to create a custom medication tailored to the needs of an individual patient. These services coincide with the opponent’s pharmaceutical products in Class 5 in their distribution channels and relevant public. Moreover, they are in competition. Therefore, they are similar.

Contested services in Class 42

The contested medical and pharmacological research services; research and development for the pharmaceutical industry are included in the broad category of, or overlap with the opponent’s scientific analysis, research, studies and development in the field of health. Therefore, they are identical.

Moreover, the contested consultancy relating to pharmaceutical research and development are at least similar to these services of the opponent (scientific analysis, research, studies and development in the field of health), as they have the same purpose and coincide in the relevant public. Furthermore, they are complementary.

The contested research relating to technology and the opponent’s scientific analysis, research, studies and development in the field of health, food and nutrition promote the research and development of technologies and resources in the scientific, technological and industrial fields. All these activities are aimed at the acquisition of new knowledge with the objective of using it for developing new products, processes or services or for bringing about a significant improvement in existing products, processes or services. Therefore, they have some relevant links as these services have similar nature, can be offered by the same kinds of specialised companies and can target the same relevant public. Therefore, the services under comparison are similar.

However, the contested packaging design is not sufficiently related to the opponent’s services in Class 42. The contested services are specific design services the main task of which is to combine product information with marketing aspects and to give the consumer orientation and an incentive to buy. This is not the purpose of the opponent’s services in Class 42 which are scientific services and research provided by scientific experts in the fields of health, food and nutrition. The contested services have no relevant points of contact with any of the remaining goods and services of the opponent in Classes 5, 10, 41 and 44 either. These contested services, packaging design, and the opponent’s goods and services are of a different nature, and have different producers/providers and distribution channels. None of the goods and services under comparison fulfils a similar function from the consumers’ point of view. They are neither complementary nor in competition with one another. Therefore, they must be considered dissimilar.

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 and services found to be identical or similar (to different degrees) are directed at the public at large and at a professional public or only at professionals.

In particular, the goods in Class 5 and the services in Class 40 may target both the public at large and professionals in the health care sector, whereas the services in Class 42 concern only professionals in the technological, pharmaceutical or medical fields.

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). 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 degree of attention is higher than average also for the other relevant goods in Class 5 and the services in Class 40 since they have implications for the human health.

Given that the general public is more prone to confusion, the examination in relation to the goods and services in Classes 5 and 40 will proceed on this basis.

With regard to the relevant services in Class 42, which concern only professional consumers, the degree of attention of those consumers will also be high on account of the highly specialised nature of the services at issue.

3. The signs

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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The verbal elements ‘NUTRICIA’ of the earlier mark and ‘NUTRINICA’ of the contested sign are, depending on the different pronunciation rules in different parts of the relevant territory, aurally significantly more similar for some parts of the public, such as the Polish-speaking consumers, as will be explained below, than for other parts of the public, such as the French-speaking consumers.

In addition, as will be seen below, for the Polish-speaking general public, the coinciding part of the signs is distinctive to a normal degree (whereas it is not for other parts of the public in the relevant territory) hence the coincidence is of more relevance when assessing the likelihood of confusion for the goods and services intended for the general public.

Therefore, the Opposition Division finds it appropriate to focus the comparison of the signs on the Polish-speaking part of the public.

As regards the relevant general public for the goods and services in Classes 5 and 40, the relevant public will perceive the elements ‘NUTRICIA’ of the earlier marks and ‘NUTRINICA’ of the contested sign as a whole as meaningless verbal elements with average distinctiveness, as none of their constituent parts convey a meaning for that public (see, for example, 31/05/2017, R 374/2017-1, NUTRI BLITZER / NUTRI BULLET et al., § 23-24).

However, this is not the case for the relevant professional public in relation to the services in Class 42 intended for pharmaceutical companies/laboratories or in the technological field). These professionals are, in general, more familiar with the use of technical and basic English words than the general public. Therefore, the letters ‘NUTRI’ at the beginning of the marks are likely to be understood by the relevant professional consumers in the part of the territory taken into account as alluding to ‘nutrition’. Nevertheless, even though the distinctiveness of the coinciding part ‘NUTRI’ is limited for the professional public because it indicates that the services are rendered in the field of nutrition, the verbal elements ‘NUTRICIA’ and ‘NUTRINICA’ are invented words and, therefore, of normal distinctiveness as a whole.

As regards the verbal element ‘Oncology’ in the earlier mark, it will be perceived by the relevant public as ‘the branch of medicine concerned with the study, classification, and treatment of tumours’, also due to its similarity with equivalent words in other languages, such as ‘onkologia’ in Polish. Bearing in mind that the relevant goods and services are related to the health-care field, it is considered that this element is non-distinctive for these goods and services as it indicates their field of application. Given its position below the element ‘NUTRICIA’ and its smaller size, the element ‘Oncology’ is of clearly less visual impact than the other elements of the mark.

To the left of the verbal elements of the earlier mark there is an abstract figurative device. As such it is of normal distinctiveness in relation to the goods and services at issue. Nevertheless, it should be noted that 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).

Visually, the signs coincide in the sequence of letters ‘NUTRI(*)A’, present in the same order in both marks, as well as in the letters ‘C’ and ‘I’ towards the ends of the verbal elements, although in swapped positions. The first five coinciding letters of the marks, ‘NUTRI’, are at the beginnings of the signs, which is the part that consumers generally tend to focus on when being confronted with a trade mark. This is justified by the fact that 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. Moreover, the visual commonalities between the marks are not limited to ‘NUTRI’ but are also found in the final parts of the signs, as the letters ‘C’ and ‘I’ (although in inverted positions) and the last letter ‘A’ (in the same position at the end of the marks) are also identically contained in the marks.

The signs differ in that the letters ‘C’ and ‘I’ are swapped in the marks (thus the earlier mark ends in ‘CIA’ and the contested sign in ‘ICA’), as well as in the additional letter ‘N’ in the sixth position in the contested sign, which has no counterpart in the earlier mark.

They also differ in the stylisation of the marks, which does not obscure or camouflage their verbal elements, and in the abstract figurative element and the smaller non-distinctive word ‘Oncology’ of the earlier mark.

Therefore, in view of all the above, it is considered that the marks under comparison are visually similar to a below average degree in the perception of the professional public for the services in Class 42, and to an average degree in the perception of the general public for the goods in Class 5 and the services in Class 40.

Aurally, the pronunciation of the signs coincides in the sounds of the letters ‘NUTRI(*)A’ and in the sounds of the letters ‘C’ (which will be pronounced the same way in both signs, as ‘ts’) and ‘I’, although not in the same position, and differs in the sound of the letter ‘N’ in the contested sign. Consequently, the partition of the syllables in the marks will be ‘NU-TRI-CI-A’ vs ‘NU-TRI-NI-CA’, resulting in them having the same number of syllables and the same vocalic sequence, therefore, having the same rhythm.

The additional second word of the earlier mark, ‘Oncology’, is not likely to be pronounced when referring to the mark aurally due to its size and position and its non-distinctive character. Indeed, consumers tend to shorten marks containing several words. This is especially the case when descriptive or less distinctive words can be easily separated from the other terms.

Therefore, the marks are aurally similar to at least an average degree in the perception of the professional public for the services in Class 42, and to a high degree in the perception of the general public for the goods in Class 5 and the services in Class 40.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

The signs’ verbal elements ‘NUTRICIA’ and ‘NUTRINICA’ are not likely to be associated with any meaning by the relevant general public for the goods and services in Classes 5 and 40. Although the earlier mark contains an additional meaningful element, the non-distinctive character of the concept underlying the element ‘ONCOLOGY’ must be weighed in the comparison. The public will not pay much attention to this element, and its attention will be focused on the distinctive elements in the signs which are conceptually neutral.

Even though the signs’ verbal elements ‘NUTRICIA’ and ‘NUTRINICA’ may allude to the concept of ‘nutrition’ for the relevant professional public for the services in Class 42, the distinctiveness of this concept is weak and may lead to only a low degree of conceptual similarity for those consumers.

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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of the non-distinctive element ‘oncology’ as well as, for the professional public in relation to the services in Class 42, the weakness of the concept of the sequence of letters ‘NUTRI-’ in it.

5. Global assessment, other arguments and conclusion

In the present case the goods and services were found to be partly identical or similar (to different degrees) and partly dissimilar. The identical or similar goods and services target either both the public at large and professionals or only a professional public whose degree of attention will be higher than average/high. The earlier mark enjoys an average degree of distinctiveness per se in relation to the relevant goods and services.

For the public under analysis, the signs are visually, aurally and conceptually similar to the degrees specified above (visually similar to a below average degree, aurally similar to at least an average degree and conceptual similarity to only a low degree for the professional public for the services in Class 42, and visually similar to an average degree, aurally highly similar and conceptually neutral for the general public for the goods and services in Classes 5 and 40), on account of the coinciding letters ‘NUTRI*A’ and the swapped letters ‘C’ and ‘I’ which encompass the majority of the letters of the marks’ distinctive verbal elements. They differ in the positioning of the letters ‘C’ and ‘I’ and in the additional letter, ‘N’, in the contested sign, as well as in their graphical features and in the additional non-distinctive verbal element of the earlier mark. The latter elements will not be paid more attention than the verbal elements ‘NUTRICIA’ and ‘NUTRINICA’, as explained above.

It should be noted that consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them.

Therefore, even if the visual and aural similarity is more reduced for professional consumers as regards the services in Class 42 and even though the degree of attention that the relevant public will display for all the goods and services at issue will be higher than average, the differences between the signs are not sufficient to offset the similar overall impressions created by the marks in the minds of consumers in relation to identical or similar (at least to an average degree) goods and services. Even consumers with 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).

Consequently, it is considered that the similarities between the signs are sufficient to lead to a likelihood of confusion between them for all the contested goods and services found identical or similar, including the services intended solely for the professional public.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Polish-speaking public in the relevant territory and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 12 302 493. 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.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to those of the earlier trade mark.

The rest of the contested services, namely packaging design in Class 42, 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 services cannot be successful.

The opponent has also based its opposition on the following earlier trade marks:

• European Union trade mark registration No 7 198 914 for the word mark ‘NUTRICIA’, registered for the following goods:

Class 5: Pharmaceutical products; dietetic substances adapted for medical use, fortifying foodstuffs adapted for medical use, including food for babies, namely soup, fruit purees, vegetable purees, fruit juices and vegetable juices, including for infants with specific dietary needs and invalids; dietary nutritional supplements for medical use; a combination of active nutrients for medical use; ingredients, in particular a combination of ingredients, for the use of or for pharmaceutical preparations and food products, preparations and substances for medical purposes, yeast, and trace additives for medical use; vitamin preparations.

Class 10: Surgical and medical apparatus and instruments; feed pumps, (nasal) probes, hoses and other medical apparatus for supplying food, and parts for the aforesaid goods.

Class 29: Milk, milk powder, milk products, dairy yoghurt, drinking yoghurts, fermented milk and milk products, milk-based desserts, milk-based pudding, flavoured milk-based drinks, and milk products.

Class 30: Flour and preparations made from cereals, preparations made from cereals for young children.

Class 32: Carbonated or non-carbonated water (mineral or otherwise), fruit or vegetable juices, fruit or vegetable drinks, preparations for making beverages, syrups for making beverages and fruit or vegetable extracts including drinks based on dairy products included in this class; fermented preparations and other preparations for making beverages.

• European Union trade mark registration No 16 324 329 for the figurative mark registered for the following goods:

Class 5: Food for special medical purposes; dietetic substances adapted for medical use; food for babies, infants and invalids; food for babies with special nutritional needs; milks for babies and infants; nutritional dietary supplements for medical use; nutritional products for medical usage; cereals for infants; vitamin preparations.

Class 29: Milk, milk powder, milk products, dairy yoghurt, drinking yoghurts, fermented milk and milk products, milk-based desserts, milk-based pudding, flavoured milk-based drinks, and milk products; meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; edible oils and fats; prepared meals made principally of dairy; soup stock, chicken stock, fish stock; fruit and vegetable based snacks, nut snacks, dairy snacks and desserts, fish and meat based snacks, soya yoghurt, soya milk, soya [prepared]; prepared meals containing the aforementioned.

Class 30: Cereals and preparations made from cereals; breakfast cereals; cereal bars; muesli; snack food, cereal-based; snack food, rice-based; biscuits.

• European Union trade mark registration No 6 849 038 for the figurative mark registered for the following goods and services:

Class 5: Pharmaceutical preparations; dietetic substances adapted for medical use, (fortifying) food for medical use including food for babies, infants and invalids; nutritional dietary supplements for medical use; food supplements (either for medical and non-medical use).

Class 10: Surgical and medical apparatus and instruments; feed-pumps, (nasal)sondes, tubes and medical apparatus, all for administering food, parts in this class for all the aforesaid goods.

Class 29: Meat, fish, poultry and game; meat extracts; preserved frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats; foodstuffs, not for medical use, not included in other classes.

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice; foodstuffs, not for medical use, not included in other classes.

Class 41: Education; providing of training; arranging seminars in the field of nutrition.

Class 44: Medical assistance; consultations in the field of medical and pharmaceutical substances; consultation and advising in the field of nutrition; consultation and care in subject of hygiene and health.

The goods and services of these earlier marks are also clearly dissimilar to the remaining contested services, as they differ in all the relevant factors.

Indeed, the goods and services of the opponent encompass various goods and services in other fields than those of the remaining contested services in Class 42. They have different natures, purposes and methods of use and are not usually produced/provided by the same companies or offered through the same channels. They are neither strictly complementary nor in competition.

Therefore, the abovementioned contested services in Class 42 are dissimilar to all of the opponent’s goods and services.

Therefore, the outcome cannot be different with respect to the services for which the opposition has already been rejected. No likelihood of confusion exists with regard to those dissimilar services for any of the earlier 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. 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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Catherine MEDINA

Boyana NAYDENOVA

Begoña URIARTE VALIENTE

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.