OPPOSITION No B 3 068 160

Mariano José Bueno Cortés, Residencial Paraiso, Local 7-9, Casa 9, 50008 Zaragoza, Spain (opponent), represented by Doñaque & Asociados, S.L., Conde de Xiquena, 9, piso 1, pta. D, 28004 Madrid, Spain (professional representative)

a g a i n s t

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

On 25/06/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 068 160 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 951 801 for the word mark ‘CANDISTAT’. The opposition is based on Spanish trade mark registration No 2 859 210 for the word mark ‘CANDISTOP’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

Proof of use of the earlier mark was requested by the applicant. However, at this point, the Opposition Division did not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T‑296/02, Lindenhof, EU:T:2005:49, § 41, 72). The examination of the opposition will proceed as if genuine use of the earlier mark had been proven for all the goods invoked, which is the best light in which the opponent’s case can be considered.

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.

1. The goods

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

Class 5: Pharmaceutical products.

The contested goods are the following:

Class 5: Dietary and nutritional supplements; food supplements.

The contested dietary and nutritional supplements; food supplements are substances, whether medicated or not, that may be used together with the opponent’s pharmaceutical products in the treatment or prevention of illness. They have the same purpose (the restoration or preservation of health), target the same relevant public and are sold in pharmacies/chemists. Therefore, they are similar.

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 similar are directed at the public at large and professionals in the healthcare and 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 higher-than-average degree of attention also applies to the nutritional supplements (all of the opponent’s goods), since these too are related to consumers’ health.

3. The signs

CANDISTOP	CANDISTAT
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 earlier mark is a one-word mark consisting of a single verbal element ‘CANDISTOP’. The contested sign is a one-word mark consisting of a single verbal element ‘CANDISTAT’. Owing to the nature of word marks, neither the earlier nor the contested sign has any elements that could be considered more eye-catching or dominant than other elements.

Although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57).

Therefore, contrary to the opponent’s argument, the relevant Spanish consumer will easily perceive the initial component ‘CANDI’, in relation to pharmaceutical products; dietary and nutritional supplements and food supplements (present in both signs), as a reference to the Spanish word ‘candidiasis’, which is an ‘infection of the skin and mucous membranes caused by fungi of the Candida genus’ (information extracted from Real Academia Española on 08/06/2020 at https://dle.rae.es/candidiasis?m=form).

In the context of these goods, consumers will link the element as identifying that the goods offered under the signs in question are intended to treat the disease ‘candidiasis’ or are against the growth of the fungi Candida in the body.

Therefore, the element ‘CANDI’ does not have a capacity to distinguish the relevant goods as originating from a particular undertaking. Consequently, the impact of the element ‘CANDI’ is strongly reduced and the element is non-distinctive.

The remaining element of the earlier mark is ‘STOP’. The relevant public will understand this element as cause to ‘come to an end’ (information extracted from Lexico on 09/06/2020 at https://www.lexico.com/definition/stop). It is a basic English word and also has almost the same meaning in Spanish (information extracted from Real Academia Española on 09/06/2020 at https://dle.rae.es/stop?m=form). Therefore, the public will perceive it as ‘an indication that the relevant goods are intended to stop something’. Considering all the above, this element is non-distinctive as it clearly indicates the purpose of the goods.

The distinctiveness of the combination of the elements ‘CANDI’ and ‘STOP’ of the earlier mark does not reveal any additional meaning than the mere sum of the meanings of the elements, namely to stop the ‘candidiasis’ disease or the growth of the fungi Candida in the body that may cause the disease.

As the earlier word mark is a registered mark, the presumption of its validity applies and therefore the sign ‘CANDISTOP’ has at least the minimum degree of distinctiveness (24/05/2012, C‑196/11 P, F1-Live, EU:C:2012:314, § 40-41).

The second element of the contested sign is ‘STAT’. This element does not have any specific meaning and therefore is distinctive.

The General Court has held that the same number of letters in two marks is not, as such, of any particular significance for the relevant public, even for a specialised public. Since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar. In addition, the public is not, in general, aware of the exact number of letters in a word mark and, consequently, will not notice, in the majority of cases, that two conflicting marks have the same number of letters (25/03/2009, T‑402/07, ARCOL / CAPOL, EU:T:2009:85, § 81-82; 04/03/2010, C‑193/09 P, ARCOL / CAPOL, EU:C:2010:121).

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

The signs overlap in the element ‘CANDI’, which is non-distinctive and therefore this element is not a reason for conceptual similarity to be found. However, the presence of the element ‘STOP’ in the earlier mark will present some conceptual differences despite its also non-distinctive character. Therefore, the signs are not conceptually similar.

Visually and aurally, both signs have the first seven letters in common, ‘CANDIST’. They differ in the last two letters ‘OP’ of the earlier mark and in the last two letters ‘AT’ of the contested sign. However, the coincidence in the letters ‘ST’ will not catch the consumer’s attention as they are in the middle of the signs. Moreover, the letters ‘ST’ are part of the meaningful word ‘STOP’ of the earlier mark, while they form the syllable ‘STAT’ in the contested sign.

As to the opponent’s argument that the signs coincide in their beginnings, it has to be pointed out that while, in principle, the initial part of word marks is more likely to capture the attention, this argument cannot hold in all cases and does not cast doubt on the principle that an examination of the similarity of trade marks must take into account the overall impression produced by them (16/05/2007, T‑158/05, Alltrek, EU:T:2007:143, § 70; 09/09/2008, T‑363/06, Magic seat, EU:T:2008:319, § 38). In the present case, the coincidence in the beginning ‘CANDIST’ is attenuated by the fact that the element ‘CANDI’ cannot identify the commercial origin of the goods and the letters ‘ST’ are part of the meaningful word ‘STOP’ of the earlier mark, whilst the element ‘STAT’ of the contested sign is meaningless. Moreover, the differences in the vowels ‘A’ and ‘O’ are clearly noticeable, bearing in mind the non-distinctive character of the first part of the words, and considering that the second part has more weight.

Therefore, the visual and aural similarities between the signs are of a low 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 claimed that the earlier trade mark enjoys inherent high degree of distinctiveness as it will be perceived as one word without clear meaning by the public at large in Spain. However, the opponent did not file any evidence in order to prove such a claim. Moreover, a mark will not necessarily have a higher degree of distinctive character just because there is no conceptual link to the relevant goods and services (16/05/2013, C‑379/12 P, H/Eich, EU:C:2013:317, § 71).

Consequently, considering what was explained above in section c) about the recognition and the distinctiveness of the elements ‘CANDI’ and ‘STOP’ of the earlier mark and the perception of the entire composition, the Opposition Division concludes that the distinctiveness of the earlier mark must be seen as low for all the relevant earlier goods, namely pharmaceutical products in Class 5.

e) Global assessment, other arguments and conclusion

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, from economically linked undertakings, constitutes a likelihood of confusion (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 29).

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 that can be made with the registered mark and the degree of similarity between the marks and between the goods or services identified. 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 goods are similar. The signs are visually and aurally similar to a low degree and conceptually not similar. The degree of attention of the public at large and the professional public is higher than average.

In the present case the distinctiveness of the earlier mark is low, as explained above in section d) of this decision. Furthermore, the applicant has shown, throughout internet excerpts from online shops that are available from the territory of Spain, that the prefix ‘CANDI’ is commonly used in trade marks for the same or similar goods as in the present case. Therefore, the signs coincide in an element that is clearly indicative for characteristics of the relevant goods and hence non-distinctive.

According to settled case-law, if trade marks have identical parts that are weak or devoid of distinctive character, the existing differences between the signs are to be given more importance in the overall assessment of the signs (18/03/2002, R 814/2001‑3, ALL-DAY AQUA / Krüger All Day (FIG. MARK), § 50; 14/05/2001, R 257/2000‑4, FIG./COLOUR MARK (e plus) / PLUS, § 22). Such differences reduce the likelihood of confusion between conflicting trade marks.

Therefore, although the beginnings of the signs, ‘CANDI’, are identical and consumers tend to focus on the beginning rather than the end of the signs, as explained previously, owing to the descriptive character of this element, the public will not perceive it as an indication of the commercial origin of the goods, but rather as a reference to the purpose or characteristics of the relevant goods (treating the disease Candidiasis and/or its causative agent). Consequently, the public will pay at least as much attention to the clearly perceivable remaining elements of the signs, ‘STOP’ and ‘STAT’, which are sufficiently different aurally, visually and conceptually, despite the coincidence in the letters ‘ST’ to safely exclude any likelihood of confusion between the signs to arise.

Considering all the above, and also taking into account the higher-than-average degree of attention of the public, the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR, it is unnecessary to examine the evidence of use filed by the opponent.

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 opponent is the losing party, he must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

María Clara IBÁÑEZ FIORILLO

Maria SLAVOVA

Andrea VALISA

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.