OPPOSITION No B 3 084 849

Gustopharma Consumer Health, S.L., Velázquez, 10 - 2º izqda., 28001 Madrid, Spain (opponent), represented by Herrero & Asociados, Cedaceros, 1, 28014 Madrid, Spain (professional representative)

a g a i n s t

Nuuvera Deutschland, Wohlers Allee 54, 22767 Hamburg, Germany (applicant), represented by Wülfing Zeuner Rechel, Lehmweg 17, 20251 Hamburg, Germany (professional representative).

On 27/07/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 084 849 is partially upheld, namely for the following contested goods:

Class 3: Hydrating creams for cosmetic use; face creams for cosmetic use; skin conditioning creams for cosmetic purposes; cosmetics; cosmetics and cosmetic preparations; cosmetic preparations for baths; skin care creams [cosmetic]; moisturising skin creams [cosmetic]; cosmetic creams and lotions; cosmetic products for the shower; cosmetic moisturisers; facial moisturisers [cosmetic]; skin moisturisers; body and facial gels [cosmetics]; facial preparations; cosmetic hand creams; hand creams; skin cream; skin lotion; moisturising skin lotions [cosmetic]; skin care preparations; cosmetic preparations for skin care; skin care oils [cosmetic]; skin care lotions [cosmetic]; body and facial creams [cosmetics]; night creams [cosmetics]; conditioning creams; toiletries; body cleaning and beauty care preparations; cosmetic preparations for body care; cosmetic soaps; oils for cosmetic purposes; lotions for cosmetic purposes; beauty lotions; after-sun preparations for cosmetic use; cosmetics for personal use; cosmetics for use on the skin; non-medicated cosmetics; natural oils for cosmetic purposes; beauty care cosmetics; soap; oils for toilet purposes; functional cosmetics.

Class 5: Nutritional supplements; dietary supplemental drinks; food supplements; herbal supplements; food supplements for non-medical purposes; food supplements for sportsmen; protein dietary supplements; dietary supplements with a cosmetic effect; nutritional drink mix for use as a meal replacement; dietary food supplements used for modified fasting; health food supplements for persons with special dietary requirements; fitness and endurance supplements; dietary supplement drink mixes; vitamin supplement patches; nutritional supplement meal replacement bars for boosting energy; nutraceuticals for use as a dietary supplement.

2. European Union trade mark application No 18 024 813 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 all the goods of European Union trade mark application No 18 024 813 for the word mark ‘Cannafit’. The opposition is based on European Union trade mark registration No 18 009 623 for the word mark ‘CANNAPHYTOL’. 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.

1. The goods

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

Class 3: Cosmetic products.

Class 5: Health food supplements made principally of vitamins; nutritional supplements; food supplements; dietary supplements consisting of vitamins; nutritional supplements; nutritional supplements.

The contested goods are the following:

Class 3: Hydrating creams for cosmetic use; face creams for cosmetic use; skin conditioning creams for cosmetic purposes; cosmetics; cosmetics and cosmetic preparations; cosmetic preparations for baths; skin care creams [cosmetic]; moisturising skin creams [cosmetic]; cosmetic creams and lotions; cosmetic products for the shower; cosmetic moisturisers; facial moisturisers [cosmetic]; skin moisturisers; body and facial gels [cosmetics]; facial preparations; cosmetic hand creams; hand creams; skin cream; skin lotion; moisturising skin lotions [cosmetic]; skin care preparations; cosmetic preparations for skin care; skin care oils [cosmetic]; skin care lotions [cosmetic]; body and facial creams [cosmetics]; night creams [cosmetics]; conditioning creams; toiletries; body cleaning and beauty care preparations; cosmetic preparations for body care; cosmetic soaps; oils for cosmetic purposes; lotions for cosmetic purposes; beauty lotions; after-sun preparations for cosmetic use; cosmetics for personal use; cosmetics for use on the skin; non-medicated cosmetics; natural oils for cosmetic purposes; beauty care cosmetics; soap; oils for toilet purposes; functional cosmetics.

Class 5: Nutritional supplements; dietary supplemental drinks; food supplements; herbal supplements; food supplements for non-medical purposes; food supplements for sportsmen; protein dietary supplements; dietary supplements with a cosmetic effect; nutritional drink mix for use as a meal replacement; dietary food supplements used for modified fasting; health food supplements for persons with special dietary requirements; fitness and endurance supplements; dietary supplement drink mixes; muscle relaxants; medicated muscle soaks; capsules for medicines; plasters, materials for dressings; medicated plasters; vitamin supplement patches; transdermal patches for medical treatment; nicotine patches for use as aids to stop smoking; nutritional supplement meal replacement bars for boosting energy; nutraceuticals for use as a dietary supplement.

Class 30: High-protein cereal bars; cereal bars and energy bars; cereal based energy bars; powdered sugar for preparing isotonic beverages; granola bars; bars based on wheat; cereal based food bars; chocolate-coated bars; chocolate beverages with milk.

Class 32: Protein-enriched sports beverages; energy drinks; energy drinks containing caffeine; energy drinks [not for medical purposes]; isotonic beverages; isotonic beverages [not for medical purposes].

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 3

The contested hydrating creams for cosmetic use; face creams for cosmetic use; skin conditioning creams for cosmetic purposes; cosmetic preparations for baths; skin care creams [cosmetic]; moisturising skin creams [cosmetic]; cosmetic creams and lotions; cosmetic products for the shower; cosmetic moisturisers; facial moisturisers [cosmetic]; skin moisturisers; body and facial gels [cosmetics]; cosmetic hand creams; hand creams; skin cream; skin lotion; moisturising skin lotions [cosmetic]; skin care preparations; cosmetic preparations for skin care; skin care oils [cosmetic]; skin care lotions [cosmetic]; body and facial creams [cosmetics]; night creams [cosmetics]; conditioning creams; cosmetic soaps; lotions for cosmetic purposes; beauty lotions; after-sun preparations for cosmetic use; cosmetics for use on the skin; beauty care cosmetics; functional cosmetics; cosmetic preparations for body care; oils for cosmetic purposes; cosmetics for personal use; non-medicated cosmetics; natural oils for cosmetic purposes are included in the broad category of the earlier cosmetic products. Therefore, they are identical.

The contested facial preparations; toiletries; body cleaning and beauty care preparations; soap; oils for toilet purposes overlap with the earlier cosmetic products. Therefore, they are identical.

Cosmetics; cosmetics and cosmetic preparations are identically contained in both lists of goods (including synonyms).

Contested goods in Class 5

Nutritional supplements; food supplements are identically contained in both lists of goods (including synonyms).

The contested nutritional supplement meal replacement bars for boosting energy; health food supplements for persons with special dietary requirements; dietary supplemental drinks; protein dietary supplements; nutraceuticals for use as a dietary supplement; herbal supplements; food supplements for non-medical purposes; food supplements for sportsmen; dietary supplements with a cosmetic effect; nutritional drink mix for use as a meal replacement; dietary food supplements used for modified fasting; fitness and endurance supplements; dietary supplement drink mixes; vitamin supplement patches are identical to the earlier nutritional supplements, either because the earlier goods include or overlap with the contested goods.

The contested muscle relaxants; medicated muscle soaks; capsules for medicines; plasters, materials for dressings; medicated plasters; transdermal patches for medical treatment; nicotine patches for use as aids to stop smoking are dissimilar to all the goods covered by the earlier right because they have nothing in common. Their natures, purposes and methods of use are different. They do not coincide in their producer/provider and do not share the same distribution channels. Furthermore, these goods are neither complementary nor in competition and they target different end users.

Contested goods in Class 30

The contested high-protein cereal bars; cereal bars and energy bars; cereal based energy bars; powdered sugar for preparing isotonic beverages; bars based on wheat; cereal based food bars; chocolate-coated bars; chocolate beverages with milk; granola bars are dissimilar to the goods in Classes 3 and 5 covered by the earlier right. Their natures and purposes are different. They do not coincide in their producer/provider and do not share the same distribution channels. Furthermore, these goods are neither complementary nor in competition and they target different end users.

Contested goods in Class 32

The contested protein-enriched sports beverages; energy drinks; energy drinks containing caffeine; energy drinks [not for medical purposes]; isotonic beverages; isotonic beverages [not for medical purposes] are dissimilar to the goods covered by the earlier right. Their natures and purpose are different. They do not coincide in their producer/provider and do not share the same distribution channels. Furthermore, these goods are neither complementary nor in competition and they target different end users.

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 in Class 3 found to be identical are directed at the public at large, whose degree of attention will be average.

The goods in Class 5 found to be identical are directed at the public at large and at professionals with a certain amount of knowledge or expertise in the medical and health fields. The degree of attention of the relevant public is deemed to be high, as these goods relate to health, and even average consumers pay a higher than average degree of attention when such goods are involved.

It is apparent from the case-law that, insofar as pharmaceutical preparations and similar, 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.

Dietary and nutritional supplements for human beings are products which also have an impact on a person’s health, either for prevention or as a cure. Considering this, it is expected that consumers will also pay a higher than average degree of attention when purchasing these goods.

In the present case, the Opposition Division finds it appropriate to limit its examination to the part of the relevant public who are more prone to confusion, that is, usually the general public (i.e. non-professionals in the medical and health fields), who are assumed to have no specific medical knowledge or experience. If a significant part of the relevant public for the goods at issue may be confused about the origin of the goods, it will be sufficient to establish a likelihood of confusion. It is not necessary to establish that all actual or potential consumers of the relevant goods are likely to be confused.

3. The signs

CANNAPHYTOL	Cannafit
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 parts of the general public in the relevant territory for which neither of the signs as a whole nor their individual elements have any meaning, such as the Bulgarian-, Czech-, Polish- and Slovak-speaking parts.

The signs under comparison are both word marks.

It is established case-law 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, § 57). However, this condition is not fulfilled in the present case. Moreover, no evidence has been submitted by the applicant to support his argument.

The fact that ‘PHYTO’ and ‘FIT’ have a meaning, does not lead to the consequence that this meaning will be understood by the parts of the public taken into account, who do not understand English nor have the scientific knowledge to know the meaning of a word such as ‘PHYTO’.

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 perceive the earlier mark’s verbal element as consisting of two (or even one) separate meaningful elements. Therefore, this argument must be rejected as unfounded.

As already outlined above, the word ‘CANNAPHYTOL’ of the earlier mark and the word ‘Cannafit’ of the contested sign have no meanings for the public under analysis. Therefore, they are both distinctive to an average degree.

Visually, the signs coincide in the letters ‘CANNA-’, present identically in the same order in both signs. In contrast, the signs differ in their last letters, namely ‘-PHYTOL’ in the earlier mark and ‘-FIT’ in the contested sign.

It is important to note that the coinciding letters, namely ‘CANNA-’, are at the beginning of both signs. Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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.

As the signs have the same beginnings and they differ only in their last letters, the signs are visually similar to, at least, a low degree.

Aurally, the letters at the beginning of the earlier mark, ‘CANNAPHYT-‘ and of the contested sign, ‘CANNAFIT-’ will be pronounced in the same manner. The sign only differ in the pronunciation of the last two letters ‘-OL’ of the earlier mark. In view of the importance of the coincidences in the beginning of signs, it can therefore be concluded that the sign are aurally similar to a high degree.

Conceptually, neither of the signs has a meaning for the public under analysis. 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 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).

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).

The present assessment of likelihood of confusion considers the perception of the part of the public who are more prone to confusion, namely the general public, and more specifically its Bulgarian-, Czech-, Polish- and Slovak-speaking parts.

The goods covered by the trade marks in dispute have been found partly identical and partly dissimilar.

The degree of attention is average for the goods in Class 3 and higher than average for the goods in Class 5. The earlier mark enjoys a normal degree of inherent distinctiveness for the relevant goods.

The signs in dispute are aurally similar to a high degree and visually similar to at least a low degree. The conceptual aspect does not influence the assessment of their similarity. They coincide in their first five letters, namely ‘CANNA-’, but they also displays many coincidences as regards the remaining letters of the contested sign, namely ‘-FIT’, which are aurally identical to the letters ‘-PHYT-‘ of the earlier mark.

The signs essentially differ in the last two letters of the earlier mark. However, these differences are not sufficient to counteract the similarities between the signs which result in a similar visual and aural impressions. Even the relevant public with a high degree of attention may overlook this difference and may thus be confused as to the origin of the goods in question.

Based on an overall assessment, and taking into account the principle of imperfect recollection, the Opposition Division concludes that there is a likelihood of confusion on the part of the Bulgarian-, Czech-, Polish- and Slovak-speaking parts of the general public in the European Union. 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 sign must be rejected for the goods found to be identical 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

María Clara IBÁÑEZ FIORILLO

Andrea VALISA

Aurelia PEREZ BARBER

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.