OPPOSITION No B

Dentinox Gesellschaft für pharmazeutische Präparate Lenk & Schuppan KG, Nunsdorfer Ring 19, 12277 Berlin, Germany (opponent), represented by Grünecker Patent und Rechtsanwälte PartG mbB, Leopoldstr. 4, 80802 München, Germany (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 27/05/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 086 416 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 German trade mark registration No 2 011 096 ‘Nene-Lax’ (word 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.

1. The goods

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

Class 5: Laxative suppositories for infants and children.

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 goods are substances prepared for special nutritional and/or dietary requirements, with the purpose of treating or preventing disease. Bearing this in mind, their purpose is similar to that of the opponent’s laxative suppositories for infants and children (i.e. substances used for the relief of occasional constipation and irregularity) insofar as they are used in order to restore or improve a human’s health condition. The relevant public coincides and the goods generally have the same distribution channels. Therefore, these goods are considered 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 at professional consumers with specific professional knowledge or expertise in the medical, nutritional or health field.

In relation to the opponent’s goods, which belong to the category of pharmaceutical preparations, 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.

With respect to the contested goods, it is to be noted that given that they are goods that have an impact on a person’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.

In the present case, the degree of attention is considered to be higher than average for all the goods concerned.

3. The signs

Nene-Lax	eLax
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 ‘Nene-Lax’ 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 Germany, especially professionals in the medical or nutritional field, it is highly likely that the suffix ‘Lax’ (the common element of the signs under comparison) will be associated with the German words ‘Laxativ’ or ‘Laxativum’ both of which are terms used in medicine and referring to a ‘mild laxative’ (information extracted from Duden on 25/05/2020 at https://www.duden.de/rechtschreibung/Laxativ and https://www.duden.de/rechtschreibung/Laxativum). Therefore, the aforementioned part of the relevant public will associate the element ‘Lax’ with the function of drugs or other preparations for the treatment of constipation (i.e. laxatives). Given that the suffix ‘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 goods, laxative suppositories for infants and children, could (and as follows from the wording of the opponent’s goods they in fact do) have a laxative effect, it is considered that the element ‘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, namely the public at large (non-professionals without any specific knowledge or expertise in the medical field), the term ‘Lax’ will be meaningless and, therefore, distinctive for the goods in question.

Neither the earlier mark nor the contested sign has any element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the letters ‘eLax’, although, in the earlier mark, the letters ‘e’ and ‘L’ are separated by a hyphen.

The signs differ in the string of three letters ‘Nen’ at the beginning of 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).

It is important to note that the additional differentiating letters of the earlier mark, ‘Nen’, form the beginning of the mark. It is established that 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.

In light of the foregoing, and particularly taking into account the fact that the coinciding letters ‘Lax’ form the weak element of both signs (at least from the perspective of part of the relevant public), the signs are, at most, visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘eLax’ and differs in the sound of the three letters ‘Nen’ at the beginning of the earlier mark.

Furthermore, given that the verbal elements of the signs have different lengths (seven letters versus four letters) and number of syllables (three syllables versus two syllables), their rhythms and intonations also differ significantly.

Considering all the above, and in particular the fact that the coinciding letters ‘Lax’ constitute weak elements in both signs, at least from the perspective of part of the relevant public, 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 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 is likely to associate the element ‘Lax’, included in both signs, with the meaning explained above. To that extent, and taking into consideration that this element 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.

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, 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.

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 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 similar to the opponent’s goods and they target the public at large and professionals who have 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 (especially the professional public), whereas, for the remaining part of the public (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.

In this regard, it is to be noted that the beginnings of the signs and their pronunciation are different. As mentioned above, consumers normally attach more importance to the beginnings of signs. Consequently, the similarities in the endings of the signs are less important. Furthermore, part of the relevant consumers (especially professionals in the medical or nutritional field) will perceive the common suffix ‘Lax’ as a weak element for the goods found to be similar, since it will be associated with goods that have a laxative effect. Even if the remaining part of the public (non-professional consumers) does not associate the abbreviation ‘Lax’ with ‘laxatives’, the result would still be the same given that the attention of the public is enhanced in relation to the goods at issue. A highly attentive consumer will be in a position to safely distinguish the signs ‘Nene-Lax’ 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 signs under comparison 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, as a matter of fact, the similarity between 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.

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

Martin MITURA

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.