OPPOSITION Nо B 3 086 372

Cristalfarma S.R.L., Via S. G. Cottolengo, 15, 20143 Milano, Italy (opponent), represented by Con Lor S.P.A., Avda Aguilera, 19 - 1ºB, 03007 Alicante, Spain (professional representative)

a g a i n s t

TNSG Health Co., Ltd., Flat 107, 25 Indescon Square, E14 9DG London, United Kingdom (applicant), represented by Sakellarides Law Offices, Adrianou Str. 70, 10556 Athens, Greece (professional representative).

On 09/12/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 086 372 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 18 034 222 ‘eLax’ (word mark). The opposition is based on Italian trade mark registration No 1 271 373 ‘ESTILAX’ (word mark). The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

Proof of use of the earlier mark was requested by the applicant. However, at this point, the Opposition Division does 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.

PRELIMINARY REMARK ON THE BASIS OF THE OPPOSITION

In the notice of opposition of 14/06/2019 the opponent accepted that the necessary information for the earlier trade mark be imported from the relevant online official database, accessible through TMview, and that this source be used for substantiation purposes, without prejudice to its right or obligation to provide any additional information that may be necessary to comply with the substantiation requirements of Article 7(2) and (4) EUTMDR.

According to the notice of opposition form of 14/06/2019, the goods used as a basis for the present opposition include all the goods for which the earlier Italian trade mark No 1 271 373 has been registered, and are, inter alia, the following:

Class 5: Pharmaceuticals, medical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for human beings and animals; plasters, materials for dressings; material for dental fillings and dental impressions; disinfectants; preparations for destroying noxious animals; fungicides, herbicides.

However, the Opposition Division became aware that, according to the TMview database and the official Italian database (an extract from which was submitted along with the notice of opposition), the earlier Italian trade mark, on which the present opposition is based, has actually been registered, inter alia, for the following goods:

Class 5: Prodotti farmaceutici e veterinari; prodotti igienici per scopi medici; sostanze dietetiche per uso medico, alimenti per bebè; impiastri, materiale per fasciature; materie per otturare i denti e per impronte dentarie; disinfettanti; preparati per distruggere gli animali nocivi; fungicidi, erbicidi.

The correct English version of the list of goods of the earlier trade mark was included in the extract of the official Italian database submitted together with the notice of opposition of 14/06/2019, and is as follows:

Class 32: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; 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.

Considering all the above, the Opposition Division will take into account the wording of the list of goods of earlier Italian trade mark No 1 271 373 as provided by the opponent on 14/06/2019 in the extract from the national database.

a) The goods

The goods on which the opposition is based are, inter alia, the following:

Class 5: Dietetic substances adapted for medical use.

The contested goods are the following:

Class 5: Vitamin preparations; preparations of trace elements for human and animal use; dietetic beverages adapted for medical purposes; dietetic substances adapted for medical use; mineral food supplements; nutritional supplements; enzyme dietary supplements; protein dietary 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.

The contested vitamin preparations; preparations of trace elements for human use; dietetic beverages adapted for medical purposes; dietetic substances adapted for medical use; mineral food supplements; nutritional supplements; enzyme dietary supplements; protein dietary supplements are all substances prepared for special nutritional and/or dietary requirements, with the purpose of treating or preventing disease. They are identical to the opponent’s dietetic substances adapted for medical use, either because they are identically included in the opponent’s list of goods (i.e. the contested dietetic substances adapted for medical use), or because the opponent’s goods include (i.e. the contested dietetic beverages adapted for medical purposes which are included in the broad category of the opponent’s goods), are included in (i.e. in the broad category of the contested nutritional supplements), or at least overlap with (i.e. the contested vitamin preparations; preparations of trace elements for human use; mineral food supplements; enzyme dietary supplements; protein dietary supplements), the contested goods.

The remaining contested preparations of trace elements for animal use are preparations intended specifically for animals. Therefore, they have the same purpose (of providing nutrition) as the opponent’s dietetic substances adapted for medical use. Furthermore, they have the same distribution channels and are usually manufactured by the same undertakings. Therefore, they are at least similar.

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 or at least similar are directed at the public at large and at professional consumers with specific professional knowledge or expertise in the nutritional or medical field.

Given that the relevant goods have an impact on a person’s/animal’s health, either as a preventive or 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

ESTILAX	eLax
Earlier trade mark	Contested sign

The relevant territory is Italy.

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 under comparison are word marks.

The verbal element ‘ESTILAX’ of the earlier mark, taken as a whole, has no meaning for the relevant public and is, therefore, distinctive.

The same is true for the verbal element ‘eLax’ of the contested sign.

The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23). However, for at least some of the relevant consumers in Italy, especially professionals in the medical or nutritional field, it is highly likely that the suffix ‘LAX’/‘Lax’ (the common element of the signs under comparison that is, furthermore, clearly perceivable in the contested sign due to use of the upper-case letter ‘L’) will be associated with the Italian word lassativo which is a term used in medicine referring to a ‘mild drug with purgative action’ (information extracted from Garzanti Linguistica on 08/12/2020 at https://www.garzantilinguistica.it/ricerca/?q=lassativo). Therefore, the aforementioned part of the relevant public will associate the element ‘LAX’/‘Lax’ with the function of drugs or other preparations for the treatment of constipation (i.e. laxatives). Given that the suffix ‘LAX’/‘Lax’ will be seen at least by this part of the relevant public as suggesting a reference to laxatives, it cannot, therefore, be regarded as the focal point of any comparison of the signs in conflict in this case (08/03/2017, R 720/2016‑5, MeliLAX (fig.) / MOVILAX, § 42 and § 43; 20/10/2006, R 434/2006‑2, IMOLAX / IDROLAX; 14/04/2005, R 632/2004‑1, COLAX / CODALAX).

To sum up, and bearing in mind that the relevant contested goods in Class 5, vitamin preparations; preparations of trace elements for human and animal use; dietetic beverages adapted for medical purposes; dietetic substances adapted for medical use; mineral food supplements; nutritional supplements; enzyme dietary supplements; protein dietary supplements and the opponent’s dietetic substances adapted for medical use, could have a laxative effect, it is considered that the element ‘LAX’/‘Lax’ is weak for these goods, as it alludes to their purpose. This finding considers, especially, the perception of the professional public. However, for another part of the relevant public such as part of the public at large (non-professionals without any specific knowledge or expertise in the medical field), the term ‘LAX’/‘Lax’ will be meaningless and, therefore, distinctive for the goods in question.

Neither of the signs has any element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the letters ‘E***LAX’ and differ in the string of three letters ‘STI’ in the second to fourth position in the earlier mark. Furthermore, the length of the verbal elements of the signs is different (seven letters in the earlier mark versus four letters in the contested sign). Irregular capitalisation in the contested sign cannot be completely disregarded either.

In light of the foregoing, and particularly taking into account the fact that the contested sign is a relatively short sign in which all the letters will attract the consumer’s attention with the same intensity, the signs are, at most, visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘E***LAX’ and differs in the sound of the three additional letters ‘STI’ of the earlier mark, placed from the second to fourth position therein.

Furthermore, given that the verbal elements of the signs have different lengths (seven letters versus four letters) and numbers of syllables (three syllables versus two syllables), their rhythms and intonations, contrary to the opponent’s view, also differ significantly.

Considering all the above, and in particular the length of the contested sign, the signs are, at most, aurally similar to a low degree.

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

As seen above, neither of the signs as a whole has a meaning for part of the public at large in the relevant territory. Since a conceptual comparison is not possible in this case, the conceptual aspect does not influence the assessment of the similarity of the signs.

However, although the signs taken as a whole do not have any meaning in the relevant territory, at least the professional public will associate the element ‘LAX’/‘Lax’, included in both signs, with the meaning explained above. To that extent, and taking into consideration that this element, if understood, is weak for the goods in question, the signs are, at most, conceptually similar to 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 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, despite the presence of a weak element in the mark at least for part of the relevant public, as stated above in section c) of this decision.

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 that can be made with the registered mark and 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).

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 are from the same or economically linked undertakings.

As concluded above, the contested goods are identical and at least similar to the opponent’s goods and they target the public at large and professionals who have a higher-than-average degree of attention. The earlier trade mark has a normal degree of inherent distinctiveness.

The signs in question are, at most, visually and aurally similar to a low degree and conceptually, at most, similar to a low degree for part of the relevant public (e.g. the professional public), whereas, for the remaining part of the public (e.g. part of the public at large) the conceptual aspect does not influence the assessment of the similarity of the signs, as explained above in section c) of this decision.

Contrary to what the opponent argues, although the signs start with the identical letter, ‘E’/‘e’, and end with the verbal element ‘LAX’/‘Lax’, this is not sufficient for the relevant public to be confused with regard to the origin of the goods concerned.

Admittedly, although the beginning of a sign may be more likely to catch the consumer’s attention than the elements that follow, it is only a general rule and such a rule must always be subordinated to the principle that it is necessary to take into account the overall impression given by the signs when examining their similarity, since the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details.

The fact that the contested sign consists of four letters and is relatively short when compared to the earlier mark has a particular impact on the overall impression created by the sign. Therefore, the principle referred to above by the opponent, according to which consumers generally pay more attention to the beginning of signs, is significantly weakened by the character of the contested sign which will be perceived in its entirety and with its full intrinsic features, including the second letter being in upper case. As a result, the presence of the combination of the letters ‘STI’ in the earlier mark, ‘ESTILAX’, contributes to producing a different visual and aural impression of the earlier mark in comparison with the contested sign. For the same reasons, it is rather unlikely that the relevant public will perceive the contested sign as short for ‘estiLax’. Considering all the above, despite the coincidence in the initial and last three letters, the relevant public will perceive the conflicting signs with different overall impressions.

Furthermore, part of the relevant public (especially professionals in the medical or nutritional field) will perceive the common suffix ‘LAX’/‘Lax’ as a weak element for the goods found to be identical or at least similar, since it will be associated with goods that have a laxative effect. Even if the remaining part of the public (e.g. part of non-professional consumers) does not associate the element ‘LAX’/‘Lax’ with ‘laxatives’, due to the enhanced attention in relation to the goods at issue, a highly attentive consumer will be in a position to safely distinguish the signs ‘ESTILAX’ and ‘eLax’.

Therefore, the differences between the signs, as indicated above, are sufficient to enable the relevant public, not only professionals but also general consumers, to safely distinguish between them. This is all the more true considering the higher-than-average degree of attention the public will display. As a consequence, a likelihood of confusion between the conflicting signs can safely be ruled out.

Consequently, it is concluded that the average consumer, who, for the purposes of the assessment of likelihood of confusion, is considered reasonably well informed and reasonably observant and circumspect, will neither directly confuse the conflicting signs nor perceive them as coming from the same undertaking or from economically linked undertakings.

In its submissions, the opponent refers to the principle of imperfect recollection of the signs, taking into account that average consumers rarely have the chance to make a direct comparison between different marks. When assessing the likelihood of confusion, the Opposition Division has taken this principle into consideration. However, bearing in mind all the relevant circumstances of the case, the Opposition Division finds that, contrary to the opponent’s view, the dissimilarities between the signs at issue are sufficient to exclude likelihood of confusion.

The opponent also refers to the principle of interdependence, which implies that a lesser degree of similarity between the goods and services may be offset by a greater degree of similarity between the signs, and vice versa. The Opposition Division has also taken this principle into account when assessing the likelihood of confusion. However, the identity between some of the goods in the present case cannot compensate for the differences identified between the signs since these are clearly perceptible and will not go unnoticed.

Considering all the above, there is no likelihood of confusion (including likelihood of association) on the part of the public in the relevant territory. Therefore, 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, it 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, 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

Lena FRANKENBERG GLANTZ

Martin MITURA

Christian STEUDTNER

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.