OPPOSITION No B 3 068 680

Société des Produits Nestlé S.A., 1800 Vevey, Switzerland (opponent), represented by Harte Bavendamm Rechtsanwälte Partnerschaftsgesellschaft mbB, Am Sandtorkai 77, 20457 Hamburg, Germany (professional representative)

a g a i n s t

Changting Xingengyuan E-Commerce Co. Ltd., (County E-commerce Center Incubator Area), Huangwu Village, Datong Town, Changting County, Longyan City, Fujian, China (applicant) represented by Isidro José García Egea, Calle Obispo Frutos, 1B, 2°A, 30003 Murcia, Spain (professional representative).

On 03/09/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 068 680 is partially upheld, namely for the following contested goods:

Class 5: Vitamin preparations; cod liver oil; tonics [medicines]; medicines for human purposes; medicinal drinks; dietary fiber; vitamin tablets; dietetic substances adapted for medical use; yeast dietary supplements; protein dietary supplements; lacteal flour for babies; food for babies; powdered milk for babies; dietetic foods adapted for medical purposes; nutritional supplements.

2. European Union trade mark application No 17 936 915 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the the goods of European Union trade mark application No 17 936 915 for the figurative mark , namely against some of the goods in Class 5. The opposition is based on earlier Polish trade mark registration No 284 378 for the word mark ‘GERBER’. 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 and services on which the opposition is based are the following:

Class 5: Nutritional supplements; dietetic foods and substances adapted for medical and clinical use; formulated milk, food, beverages and food substances for babies; formulated milk, food, beverages and food substances for children adapted for medical use; food, beverages and food substances for invalids adapted for medical use; foods, beverages and food substances for pregnant and nursing mothers adapted for medical use; nutritional and dietary supplements adapted for medical use; vitamin preparations, mineral food preparations; protein dietary supplements.

Class 29: Ready-made dishes made from vegetables, potatoes, fruits, meat, poultry, fish and/or seafood; milk, food preparations having a base of milk; milk substitutes; milk-based beverages; milk-based beverages containing cereals and/or chocolate; yoghurts; soya milk (milk substitute).

Class 30: Malt-based preparations; cocoa, cocoa-based preparations and beverages; chocolate, chocolate products, chocolate-based preparations and beverages; biscuits, cereals, breakfast cereals, cereal bars, ready-to-eat cereals; cereal-based snack food; cereal preparations; foodstuffs having a base of rice, of flour or of cereals, also in the form of ready-made dishes.

Class 32: Still water, effervescent water or carbonated water, processed water, spring water, mineral water, table water, flavoured water; fruit flavoured and fruit-based beverages, concentrated fruit juices and vegetable juices, nectars, fruit nectars (beverages), lemonades, sodas and other non-alcoholic beverages; syrups, extracts and essences and other preparations for making non-alcoholic beverages (except essential oils); lactic fermented beverages; soya-based beverages; malt-based beverages; isotonic beverages.

The contested goods are the following:

Class 5: Vitamin preparations; cod liver oil; tonics [medicines]; medicines for human purposes; medicinal drinks; dietary fiber; vitamin tablets; dietetic substances adapted for medical use; yeast dietary supplements; protein dietary supplements; lacteal flour for babies; food for babies; powdered milk for babies; babies' diapers; babies' diaperpants; dietetic foods adapted for medical purposes; nutritional supplements.

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

The contested vitamin preparations; nutritional supplements; food for babies; dietetic substances adapted for medical use; dietetic foods adapted for medical purposes; protein dietary supplements; are identically included in both lists of goods (including synonyms).

The contested vitamin tablets are included in the broad category of, or overlap with the opponent’s vitamin preparations; the contested dietary fiber; yeast dietary supplements are either included in the broad category of, or overlap with, the opponent’s dietetic foods and substances adapted for medical and clinical use, and the contested lacteal flour for babies; powdered milk for babies are included in the broad category of the opponent’s food for babies and the contested cod liver oil is included in the broad category of the opponent’s nutritional and dietary supplements adapted for medical use. Therefore, they are identical.

The contested tonics [medicines]; medicines for human purposes; medicinal drinks are similar to the opponent’s nutritional and dietary supplements adapted for medical use since they have the same general purpose, namely to preserve the health or to treat diseases, are directed at the same public and are sold in the same pharmacies or chemists. Furthermore, they usually coincide in producers.

The remaining contested babies' diapers; babies' diaper-pants are dissimilar to all of the opponent’s goods and services. The opponent argues that these goods are at least similar to its formulated milk, food, beverages and food substances for babies and claims that the goods share the same target group and purpose of use for babies and are generally sold via the same distribution channels and in the same sections of the drug stores and that the goods often derive from the same undertaking. To support its argument the opponent has submitted screenshots from various European online shops for baby supplies to show that the same trademark is often used both for “babies diapers” and “food for babies”.

However, in the view of the Opposition Division these goods are considered dissimilar to the opponent’s claimed goods in Class 5 since they clearly differ in nature (foodstuff vs diapers), purpose (feeding vs absorbing babies’ urine and solid waste) and method of use. Even though they can be found in the same points of sale, they usually do not coincide in producers. Furthermore, they are neither complementary and not in competition.

The goods are also dissimilar from the remaining goods covered by the earlier mark in Classes 5, 29, 30 and 32, since they do not share any relevant factors relating to the comparison of goods.

b) Relevant public — degree of attention

In the present case, the goods found to be identical and similar are directed at the public at large and at business customers with specific professional knowledge or expertise in the medical and pharmaceutical field.

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.

Dietetic food and substances adapted for medical use and food supplements are products which also have an impact on a person’s health, either as prevention or as cure. Food for babies is intended for special dietary use and it is approved by nutritionists and paediatricians. Considering this, it is expected that consumers will pay a higher than average degree of attention in purchasing these goods.

c) The signs

GERBER
Earlier trade mark	Contested sign

The relevant territory is Poland.

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 first element of the contested sign ‘Alice’ will be perceived as a first name since it is an internationally common first name and given also its closeness to the equivalent name in Polish (Alicja).

It is noted that the element ‘Gerber’, present in both signs, and the element ‘Alice, present in the contested sign, have no connection to the relevant goods and are considered distinctive.

Although the second element of the contested sign ‘Gerber’ is not commonly used as a name in the relevant territory, it is likely to be perceived as a surname in this sign because it is placed after the first name ‘Alice’. Indeed, surnames have, in principle, a higher intrinsic value as indicators of the origin of goods or services than first names. This is because general experience tells us that the same first name may belong to a great number of people who do not have anything in common, whereas the presence of the same surname could imply the existence of some link between those people (e.g. a family link). Consequently, consumers tend to pay more attention to family names than to first names. Therefore, as regards the contested sign, it is likely that the second verbal element ‘Gerber’ will focus more the consumers’ attention than the first name ‘Alice’ which may belong to a greater number of people. Thus, the surname ‘Gerber’ is the most distinctive element of the contested sign.

The contested sign is presented in a fairly standard stylised type face which will be perceived as merely a decorative depiction of the verbal elements and will therefore have less impact on the consumers.

In the case of word marks, the word as such is protected, not its written form. Therefore, it is irrelevant whether the word mark is depicted in lower or upper case letters, or in a combination thereof.

Visually, the signs coincide in the most distinctive element of the contested sign, ‘GERBER’, which forms the whole earlier mark. However, they differ in the first verbal element ‘Alice’ of the contested sign.

While it is clear that the consumer normally attaches more importance to the first part of words, that consideration cannot apply in every case (12/11/2008, T 281/07, Ecoblue, EU:T:2008:489, § 26 to 32). By analogy, in the present case, consumers will focus more of their attention on the coinciding second verbal element of the contested sign given that, as stated above, it is the more distinctive part thereof.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the word element ‘GERBER’ present identically in both signs. The pronunciation differs in the sound of the first verbal element of the contested sign which has been considered somewhat less distinctive than the second element ‘Gerber’.

Therefore, the signs are aurally similar to an average degree.

Conceptually, although the public in the relevant territory will perceive the meaning of the contested sign as consisting of a first name and a surname (given that the verbal element ‘Gerber’ follows directly after the verbal element ‘Alice’ so that ‘Gerber’ will be assumed by the relevant public to be a surname), as explained above, the other sign has no meaning for the vast majority of the relevant public. 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.

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 that have been found identical and similar to varying degrees target consumers whose degree of attention is high. The earlier mark has normal inherent distinctiveness per se in relation to the goods at issue.

The signs have been found to be visually and phonetically similar and conceptually not similar. Although the signs differ with respect to the verbal element ‘Alice’, the Opposition Division considers that the addition of this first name is not sufficient to safely distinguish the marks in the context of the coincidence in the identical verbal element ‘GERBER’, amounting to the entire earlier mark, and being the more distinctive part of the contested sign given that the element ‘GERBER’ will be perceived by the relevant public as a surname.

Therefore, consumers may legitimately believe that the contested mark, ‘Alice Gerber’, is a new version or a brand variation of the earlier mark, ‘GERBER’, and, consequently, that the identical and similar goods come from the same undertaking or from economically-linked undertakings, even considering the fact that the degree of attention of the relevant goods may be higher than average for some of the relevant goods.

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). 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, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Polish trade mark registration.

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

The rest of the contested goods 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 goods cannot be successful.

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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Begoña VALIENTE URIARTE

Martin INGESSON

Kieran HENEGHAN

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.