CANCELLATION No C 39 180 (INVALIDITY)

Postbiotica S.R.L., Piazza Pio XI n. 1, 20123 Milano, Italy (applicant), represented by Cuccia & Simino S.R.L., Corso di Porta Romana, 23, 20122 Milano, Italy (professional representative)

a g a i n s t

Productos Específicos Nutrición y Técnicas Alimentarias, S.A., Polígono Noain-Esquiroz, Calle S, Nº 4, 31191 Esparza de Galar, Navarra, Spain (EUTM proprietor), represented by Jesús María Zugarrondo Temiño, Miguel Astráin 18‑1ºC, 31006 Pamplona, Spain (professional representative).

On 11/11/2020, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is rejected in its entirety.

2. The applicant bears the costs, fixed at EUR 450.

REASONS

The applicant filed a request for a declaration of invalidity against European Union trade mark No 18 036 522 (figurative mark) (the EUTM). The request is directed against some of the goods covered by the EUTM, namely against all the goods in Class 5. The application is based on European Union trade mark registration No 15 152 846 . The applicant invoked Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant claims that there is likelihood of confusion between the marks since the goods are identical or similar and the signs are similar.

The EUTM proprietor argues that the word ‘POSTBIOTICA’, which forms the earlier EUTM, refers clearly and directly to the products belonging to the group of postbiotics. Therefore, this is a descriptive indication of the characteristics of the goods in Class 5. The only distinctive elements in the earlier mark are its graphic features. The contested mark is composed of the terms ‘POSTBIO’, which is extremely weak like the word ‘POSTBIOTICA’, and ‘TEK’, which is the most distinctive element of the contested sign. Due to the weakness of the element in common and the different endings of the signs as well as the graphic elements, there is no likelihood of confusion between the signs in conflict.

In support of its observations, the EUTM proprietor submitted the following evidence:

Annex 1: a printout from https://en.wikipedia.org/wiki/Postbiotic with information on postbiotics.

Annex 2: a printout from https://www.elprobiotico.com/etiqueta/posbioticos, dated 03/01/2020, written in Spanish and partially translated into English with information on postbiotics.

Annex 3: a printout from https://www.foodinaction.com/nl/na-probiotica-nu-postbiotica, dated 07/01/2020, written in Dutch with a partial translation into English with information on postbiotics.

The applicant explains that the signs coincide in their first eight letters, the sound of the final letters ‘C’ and ‘K’, the green colour of the final letters, and in the form of the letter ‘O’ that they have in common. Moreover, it claims that the word ‘POSTBIOTICA’ has an average degree of distinctiveness as the entry cannot be found in the dictionaries of the main languages spoken in the EU.

The EUTM proprietor reiterates that the word ‘POSTBIOTICA’ is weak since it refers to the products belonging to the group of postbiotics. The fact that a word is not found in official dictionaries does not mean it is not generic. It further refers to the decision of 23/09/2008, R 1445/2007‑2, PROBIÓTICA (fig.) / PROBIOTICAL (fig.) where the Boards of Appeal, in relation to the element in common, ‘PROBIOTIC’, stated that ‘as this element is of very limited distinctiveness, it should therefore not be taken into account on the same basis as the other elements in the comparative analysis of the marks in dispute and less protection should be given to marks consisting of or including the element “PROBIOTIC”’.

LIKELIHOOD OF CONFUSION — ARTICLE 60(1)(a) EUTMR IN CONNECTION WITH 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.

a) The goods

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

Class 5: Cultures for medical use; biological tissue cultures for medical purposes; collyrium; eye lotions for medical use; pharmaceutical preparations; ocular pharmaceuticals; pharmaceutical products for ophthalmological use; pharmaceutical preparations for the prevention of ocular diseases; dietary and nutritional supplements; vitamin supplements; probiotic supplements; anti-oxidant food supplements; colostrum supplements; casein dietary supplements; mineral food supplements; mineral dietary supplements for humans; nutraceuticals for use as a dietary supplement; herbal dietary supplements for persons special dietary requirements; probiotic bacterial formulations for medical use; pharmaceutical compositions; antibacterial pharmaceuticals; chemico-pharmaceutical preparations.

The contested goods are the following:

Class 5: Dietary supplements for animals; preparations of trace elements for animal use; dietetic food adapted for veterinary use; dietetic substances adapted for veterinary use; preparations of micro-organisms for veterinary use; cultures of microorganisms for veterinary use; probiotic, prebiotic and postbiotic bacterial formulae for veterinary purposes; medicated supplements for foodstuffs for animals; vitamins for animals.

Contested goods in Class 5

The contested dietary supplements for animals; preparations of trace elements for animal use; dietetic food adapted for veterinary use; dietetic substances adapted for veterinary use; preparations of micro-organisms for veterinary use; cultures of microorganisms for veterinary use; probiotic, prebiotic and postbiotic bacterial formulae for veterinary purposes; medicated supplements for foodstuffs for animals; vitamins for animals are included in the applicant’s broader category dietary and nutritional supplements. Therefore, they are identical.

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 are directed both at the public at large and at business customers with specific professional knowledge or expertise. The level of attention is relatively high, as these goods affect the animals’ state of health.

c) The signs

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, bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark is the word ‘POSTBIOTICA’, written in stylised capital letters, the letters ‘POST’ being in blue, the letters ‘BI*TICA’ in green, and the second letter ‘O’ in both colours.

The contested mark is the word ‘POSTBIOTEK’, written in stylised capital letters, the letters ‘POSTBIO’ being in orange and the letters ‘TEK’, of much bigger size, in green.

According to the EUTM proprietor, the word ‘POSTBIOTICA’ that forms the earlier EUTM refers clearly and directly to the products belonging to the group of postbiotics. Therefore, this is a descriptive indication of the characteristics of the goods in Class 5. The same finding is applicable to the word ‘POSTBIO’ in the contested sign. In support of its arguments, the proprietor sent various printouts with information on postbiotics as listed above.

The applicant rejects the proprietor’s arguments and argues that since there is no entry in the dictionaries of the main languages of the EU for the word postbiotics, the word ‘POSTBIOTICA’ has an average degree of distinctiveness.

As the proprietor claims, the meaning of the word postbiotics can be found on various internet sites where they are defined as functional bioactive compounds, generated in a matrix during fermentation, which may be used to promote health in a similar manner to probiotics. Postbiotics can be regarded as an umbrella term for all synonyms and related terms of these microbial fermentation components. The fact that the word postbiotics is still not included in the dictionaries indicates that it is a rather new term in the ‘-biotics’ field. However, internet searches show the use of this term in the EU in relation to a type of dietary supplements.

It is true that neither the word ‘POSTBIOTICA’ in the earlier mark nor the word ‘POSTBIOTEK’ in the contested sign exist as such. However, it cannot be denied that for the relevant public, the word ‘POSTBIOTIC’ in the earlier mark alludes to postbiotics and the contested sign will be perceived as composed of the elements ‘POSTBIO’ and ‘TEK’ (due to the different typeface and colours). 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). Consequently, while the rule is that marks are perceived as a whole, the exception to the rule is that, under certain circumstances, consumers could break them down into smaller parts.

The relevant professional public will perceive the earlier mark as containing the descriptive term ‘POSTBIOTIC’, which indicates the nature of the goods. Moreover, the relevant public at large will grasp the meaning of this word included in the earlier mark as related to a type of probiotics, due to their familiarity with other similar commonly used terms in the field of dietary supplements such as probiotics, micro-biotics or biotics. Therefore, the term ‘POSTBIOTIC’ in the earlier mark is, at most, weak for the relevant public.

As regards the word ‘POSTBIO’ in the contested sign, it will be perceived, at least by a part of the public, as alluding to postbiotics and in this sense, is weak. Nevertheless, it cannot be excluded that part of the public does not perceive this term as a conceptual unity but rather as composed of the suffixes ‘POST’ and ‘BIO’. In this case, the prefix ‘POST’ will be understood as referring to time or order, namely with the sense ‘afterwards, after, subsequently’ (information extracted from the Oxford English Dictionary on 04/01/2020 at www.oed.com), and ‘BIO’ as ‘biological’, ‘concerning organic substances, life, or life processes’, ‘concerning biotechnology or sustainability of the environment’ (information extracted from the Oxford English Dictionary on 04/01/2020 at www.oed.com). Bearing in mind the above and the type of relevant products, the prefix ‘POST’ has an average degree of distinctiveness whereas the suffix ‘BIO’ is weak since it alludes to characteristics of the goods, in particular, their nature.

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The Cancellation Division will first examine the application of invalidity in relation to the part of the public for which ‘POSTBIO’ in the contested mark alludes to probiotics and it is therefore weak since it is the most advantageous scenario for the applicant.

The suffix ‘TEX’ is likely to be understood, at least by part of the public, as an abbreviation of technology or technical. In this case, it could be seen as allusive of the characteristics of the relevant goods, for example as indicating that the goods use a particular technology. Therefore, for this part of the public, this element has a lower than average distinctive character. For those consumers that do not associate the suffix ‘TEX’ with any meaning, it has an average degree of distinctiveness.

None of the signs have elements that could be considered clearly more dominant (visually eye-catching) than others. Contrary to the proprietor’s arguments, the element ‘TEK’, despite its bigger size, cannot be considered more dominant than the word ‘POSTBIO’ since the latter is still visible and occupies a relevant position at the beginning of the sign.

Visually, the signs coincide in the sequence of letters ‘POSTBIOT’, and differ in the last letters ‘ICA’ of the earlier mark versus ‘EK’ in the contested mark as well as in the graphic aspects of the signs.

In relation to the graphic differences, account must be taken to the fact that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37; 19/12/2011, R 233/2011‑4, Best Tone (fig.) / BETSTONE, § 24; 13/12/2011, R 53/2011‑5, Jumbo (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Therefore, due to the low degree of distinctiveness of the element in common, the signs are at most visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘POSTBIOT’ as well as, at least for part of the consumers, in the sound of the letter ‘C’ in the earlier mark and ‘K’ in the contested sign and only differs in the sound of the letters ‘I*A’ in the earlier sign versus ‘E’ in the contested mark. Therefore, due to the low distinctive character of the element in common, 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. As the signs will be associated with the same meaning due to the presence in both signs of the weak elements ‘POSTBIOTIC’/ ‘POSTBIO’, 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 applicant 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.

Due to the presence of a weak element (and for part of the public even non-distinctive) in the mark as stated above in section c) of this decision, the mark as a whole alludes to the concept described above, and thus the distinctiveness of the earlier mark must be seen as below average.

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. 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 identical and are directed at both the professional public and the public at large with a relatively high degree of attention. The earlier mark enjoys a below average degree of inherent distinctiveness.

The signs are visually, aurally and conceptually similar to a low degree due to their coinciding string of letters ‘POSTBIO(T)’. As explained above, this element in common will be perceived as referring to functional bioactive compounds or at least associated with the concept of probiotics and in this sense it has a low degree of distinctiveness at most.

In principle, coincidences at the beginning of signs increase their similarity more than in the middle or at the end of signs. Therefore, consumers attach less importance to the end of the mark and coincidences located at the end of signs would lead to a finding of a lower degree of visual similarity than common elements at the beginning of signs. Likewise, the position of the coinciding phonemes or syllables at the beginning of the conflicting signs would increase the degree of aural similarity. However, this is not a fixed rule and the outcome depends on the circumstances of the case. Moreover, the degree of similarity will usually be lower, despite identical beginnings, if those are the non-distinctive or weak elements in the signs as in this case.

Considering all the above, especially the fact that the elements in common are weak and the existence of different endings and the graphic features in the signs in conflict, the similarities are not sufficient to lead to a likelihood of confusion on the part of the public who moreover has a high degree of attention.

Indeed, although a company is certainly free to choose a trade mark with a low degree of distinctiveness and use it on the market, it must accept, however, in so doing, that competitors are equally entitled to use trade marks with similar or identical descriptive components (23/05/2012, R 1790/2011‑5, 4REFUEL (fig.) / REFUEL, § 15; 18/09/2013, R 1462/2012‑G, ULTIMATE GREENS / ULTIMATE NUTRITION (fig.) et al., § 59; 13/05/2015, T‑608/13, easyAir-tours (fig.) / international airtours (fig.) et al., EU:T:2015:282, § 38 and 63).

This absence of a likelihood of confusion equally applies to the part of the public for which the element ‘POST’ is distinctive. This is because, as a result of the distinctive character of that element, that part of the public will perceive the signs as being even less similar.

Therefore, the application must be rejected.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the costs incurred by the EUTM proprietor in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the EUTM proprietor are the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Frédérique SULPICE

Ana MUÑIZ RODRIGUEZ

Carmen SÁNCHEZ PALOMARES

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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.