OPPOSITION No B 3 068 948

Y Farma. Unipessoal, LDA, Avenida Manuel Júlio Carvalho E Costa, Nº 33, Bloco A4, 3º Direito, 2750-424 Cascais, Portugal (opponent), represented by J. Pereira Da Cruz, S.A., Rua Victor Cordon 14, 1249-103 Lisboa, Portugal (professional representative)

a g a i n s t

Gencor Pacific Limited, 21-E Elegance Court, Hillgrove Village, Discovery Bay, Hong Kong, Special Administrative Region of the People's Republic of China (applicant), represented by The Trade Marks Bureau, 3rd Floor, 14 Hanover Street, Hanover Square, W1S 1YH London, United Kingdom (professional representative).

On 17/12/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 068 948 is upheld for all the contested goods.

2. European Union trade mark application No 17 939 912 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 939 912 ‘LIBIFEN’ (word mark). The opposition is based on European Union trade mark registration No 11 723 681 (figurative mark) and on Portuguese trade mark registration No 501 586 (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 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.

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 11 723 681.

a) The goods

The goods on which the opposition is based are the following:

Class 5: Pharmaceutical preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical use, dietary supplements for humans.

The contested goods are the following:

Class 5: Food supplements; nutritional supplements; supplements; vitamins and minerals.

The contested food supplements; nutritional supplements; supplements; vitamins and minerals include, are included in, or overlap with, the broad categories of the opponent’s dietetic food and substances adapted for medical use, dietary supplements for humans. Therefore, the goods are identical.

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 are directed at the public at large and healthcare professionals.

Given that dietetic food and substances adapted for medical use and nutritional supplements are products that have an impact on a person’s health, either as a preventive or a cure, it is expected that the degree of attention of the relevant public when purchasing these goods will be higher than average.

c) The signs

	LIBIFEN
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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the relevant public where the words ‘LIBIFEME’ and ‘LIBIFEN’ will not be understood and where the last letter ‘E’ of the earlier mark’s verbal element is a silent letter and will not be pronounced.

The contested sign is a word mark ‘LIBIFEN’. The earlier mark is figurative and consists of the verbal element ‘LIBIFEME’, portrayed in a standard upper case typeface under a figurative element which resembles a simple flower with eight petals in dark grey.

As seen above, the signs’ verbal elements have no meaning for the public under analysis and are, therefore, distinctive to a normal degree for the relevant goods.

The applicant argues that parts of both signs, ‘FEME’ and ‘FEN’, would be perceived as having a specific meaning. The Opposition Division does not agree with this statement, as it is not true for the French-speaking part of the relevant public. In addition, it must be noted that the average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, unless its elements have or suggest a specific meaning known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 58). To conclude on this, the Opposition Division is of the opinion that there is no valid reason to believe that the public under analysis will split the signs’ verbal elements into two parts.

Although the figurative element of the earlier mark is slightly bigger, it does not, contrary to the applicant’s argument, visually overshadow its verbal element. However, the fact remains that when signs consist of both verbal and figurative components (as the earlier mark does in the present case), 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 letters ‘LIBIFE*’. However, they differ in their last letters, namely ‘ME’ of the earlier trade mark vs ‘N’ of the contested sign. They also differ in the figurative element of the earlier mark.

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

Aurally, the earlier mark’s verbal element, which consists of eight letters, will be pronounced as /LI/BI/FEM/ and the contested sign, which consists of seven letters, will be pronounced as /LI/BI/FEN/. The letter ‘E’ at the end of the earlier mark’s verbal element will not be pronounced in French. Therefore, the difference caused by this additional letter disappears in the aural comparison of the signs.

As a result, the signs have 6 letters in common pronounced in the same way and they differ aurally only in the sounds of the letters ‘M’ and ‘N’ which are moreover very similar.

Contrary to the applicant’s argument, the signs’ verbal elements have a very similar phonetic structure and the same number of syllables, rhythm and intonation, insofar as French-speaking part of the relevant public is concerned.

Therefore, the signs are aurally similar to a high degree.

Conceptually, although the public in the relevant territory will perceive the meaning of the figurative element of the earlier mark as explained above, the other 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.

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 under analysis. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The present assessment of likelihood of confusion considers the perception of the French-speaking part of the public in the relevant territory.

The goods at issue are identical and the distinctiveness of the earlier mark is normal. The degree of attention of the relevant public, which consists of the public at large as well as professionals, is higher than average.

The signs are visually similar to an average degree, aurally highly similar and conceptually not similar. The fact that the figurative element in the earlier mark creates a concept not present in the contested sign has only a limited impact. The relevant public will more likely focus on the verbal elements of the signs, as they will be used to refer to them. Even if the relevant public consists also of the qualified professionals with the degree of attention higher than average, the fact that the aural similarity between the signs is very high, together with their average visual similarity, may result in even a professional public confusing them.

The Opposition Division considers that the differences in the final letters/sounds of the signs’ verbal elements and the presence of the figurative element in the earlier mark do not dispel the similarity embedded in the sequence of letters/sounds that the signs have in common.

In addition to all the above, it should be recalled that likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered come from the same or economically linked undertakings. Furthermore, it is common practice in the relevant market for manufacturers/providers to make variations of their trade marks, for example by altering the typeface or colour or by adding verbal or figurative elements, in order to denote a new product and/or service line or to endow a trade mark with a new, fashionable image.

In the present case, although the relevant public might detect certain differences between the conflicting signs, the likelihood that it might associate the signs with each other is very real. It is highly likely 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 that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). It is therefore conceivable that the relevant public, even professionals with the degree of attention higher than average, will regard the goods designated by the conflicting signs as belonging to two ranges of goods coming from the same undertaking.

Considering all the above, there is a likelihood of confusion (including a likelihood of association) on the part of the French-speaking part of the relevant public. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 11 723 681 . It follows that the contested sign must be rejected for all the contested goods.

As the opponent’s European Union trade mark registration No 11 723 681 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Begoña URIARTE VALIENTE

Martin MITURA

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.