OPPOSITION No B 3 072 865

Max Zeller Söhne AG, Seeblickstr. 4, 8590 Romanshorn, Switzerland (opponent), represented by Nihlmark & Zacharoff Advokatbyrå AB, Regeringsgatan 67 4 TR, 111 56 Stockholm, Sweden (professional representative)

a g a i n s t

Nordic Rebalance A/S, Krakasvej 17, 3400 Hillerød, Denmark (applicant), represented by Zacco Sweden AB, Valhallavägen 117, 114 85 Stockholm, Sweden (professional representative).

On 23/01/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 072 865 is partially upheld, namely for the following contested goods:

Class 5: Oat-based dietetic foods adapted for medical purposes; oat-based dietetic foods adapted for medical purposes for improving intestinal flora.

2. European Union trade mark application No 17 949 320 is rejected for all the above goods. It may proceed for the remaining goods and 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 17 949 320 for the word mark ‘REFERMIN’. The opposition is based on, inter alia, international trade mark registration No 701 861 for the word mark ‘PREFEMIN’ designating Sweden. 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 international trade mark registration No 701 861 for the word mark ‘PREFEMIN’ designating Sweden.

1. The goods and services

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

Class 5: Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth and dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

The contested goods and services, as limited by the applicant and confirmed by the Office on 26/04/2019, are the following:

Class 5: Oat-based dietetic foods adapted for medical purposes; oat-based dietetic foods adapted for medical purposes for improving intestinal flora.

Class 30: Cereal products, cereal products prepared as foods, fermented cereal preparations prepared as foods.

Class 44: Nutritional advice and communications, dietetic consultancy and information via an online portal, nutritional consultancy and information relating to dietetic and probiotic preparations and beverages; nutritional advice and information about dietetic and probiotic preparations and beverages via an online portal.

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 comparison of the goods and services must be based on the wording indicated in the respective lists of goods and services covered by the marks. The actual or intended use of the marks for certain goods and services is not relevant for the examination of the applicability of Article 8(1)(b) EUTMR (16/06/2010, T‑487/08, Kremezin, EU:T:2010:237, § 71). Therefore, only the wording indicated in the list of goods and services is relevant in the comparison between the goods and services. Consequently, the applicant’s argument on the different intended or actual use of the goods of the conflicting signs does not succeed.

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 oat-based dietetic foods adapted for medical purposes and oat-based dietetic foods adapted for medical purposes for improving intestinal flora are included in the broad category of the opponent’s dietetic substances adapted for medical use. Therefore, they are identical.

Contested goods in Class 30

The contested cereal products; cereal products prepared as foods; fermented cereal preparations prepared as foods are dissimilar to all of the opponent’s goods, as these are foodstuffs of plant origin and have no relation to the opponent’s pharmaceuticals and dietary preparations and supplements. In particular, there is no coincidence between the latter goods and the contested foodstuff, since dietary preparations do not serve alimentation purposes but are intended to prevent diseases, to serve special dietary needs and/or improve people’s state of health. Therefore, the nature, method of use, producers, distribution channels, and relevant consumers are different and they are neither complementary nor in competition.

Contested services in Class 44

The contested nutritional advice and communications, dietetic consultancy and information via an online portal, nutritional consultancy and information relating to dietetic and probiotic preparations and beverages; nutritional advice and information about dietetic and probiotic preparations and beverages via an online portal are dissimilar to the opponent’s goods. Even though a certain link cannot be denied, due to the common purpose of preventing or treating diseases, the differences in nature and especially in the usual origin clearly outweigh any similarities. The relevant public does not expect a doctor to develop and market a drug.

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 found to be identical are directed at the public at large. 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).

Non-professionals 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 is applicable to dietetic preparations, as these also affect people’s health and the relevant consumer will pay more attention.

3. The signs

PREFEMIN	REFERMIN
Earlier trade mark	Contested sign

The relevant territory is Sweden.

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).

Both signs are word marks that have a normal degree of distinctiveness and no meaning.

The applicant argues that the relevant public will dissect the contested mark into ‘PRE’ and ‘FEMIN’, alluding to the concept of ‘prior to’ and ‘feminine’. However, the average consumer will only break a word down in those cases where it suggests a specific meaning or it resembles words known to them. The Opposition Division does not concur with the applicant that the average consumer will dissect the word sign into two elements, which are not in their own language, change the word from ‘FEMIN’ to ‘FEMININE’ and then translate it. This requires a multistep thought process, which an average consumer will not undertake when buying goods.

Visually and aurally, the signs coincide in the sequence of letters ‘*REFE*MIN’, differing in the first letter of the earlier sign, ‘P’, and in the middle letter of the contested sign, ‘R’. The aural difference of the letter ‘P’ is less noticeable as the second letter is aurally a much stronger sound, ‘R’, and identical in the contested sign. In the overall visual and aural comparison, the similarities are much more striking and, therefore, the signs are visually and aurally similar to at least an average degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The goods are partly identical and partly dissimilar and the services are dissimilar. The level of attention of the relevant public is relatively high, as the goods may affect their health. Furthermore, the earlier right has a normal degree of distinctiveness.

The signs are visually and aurally similar to at least an average degree, and the conceptual comparison does not affect the assessment as the signs are meaningless. The difference in two letters, although one is at the beginning, does not detract from the similarity which is based on the highly similar sequence of letters, which makes them similar overall, contrary to the applicant’s arguments.

Although consumers generally pay greater attention to the beginning of a word sign than to the end (25/03/2009, T‑109/07, Spa Therapy, EU:T:2009:81, § 30), the Board noted that this general rule, as regards the beginning of a mark, does not prevail in all cases and cannot, in any event, undermine the principle that an examination of the similarity of the marks must take into account the overall impression produced by those marks, since the average consumer normally perceives a mark as a whole and does not examine its individual details (27/06/2012, T‑344/09, Cosmobelleza, EU:T:2012:324, § 52; see, by analogy, 15/07/2015, R 3080/2014‑2, KOPPARBRIGHT / ParBright, § 54).

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust 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). Therefore, a difference of two letters within a highly similar sequence of letters is not enough to avoid a likelihood of confusion between the marks, even if the level of attention is high.

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).

It follows from the above that the contested trade mark must be rejected for the goods found to be identical.

The rest of the contested goods in Class 30 and the services 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 and services cannot be successful.

The opponent has also based its opposition on the following earlier trade marks, namely international trade mark registration No 701 861 designating Estonia, Latvia and Lithuania, which is the same word mark and protects the same goods and services.

Since these marks are identical to the mark which has been compared and cover the same scope of goods, the outcome cannot be different with respect to the goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.

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

Konstantinos MITROU

Astrid Victoria WÄBER

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.