OPPOSITION No B 3 097 451

Bayer Intellectual Property GmbH, Alfred-Nobel-Str. 10, 40789 Monheim am Rhein, Germany (opponent), represented by Susanne Besson, Alfred-Nobel-Straße 10, 40789 Monheim am Rhein, Germany (employee representative)

a g a i n s t

Bio-On S.p.A., Via Dante Alighieri 7/B, 40016 San Giorgio di Piano (BO), Italy (applicant), represented by Barzano’ & Zanardo Milano S.P.A., Via Borgonuovo 10, 20121 Milano, Italy (professional representative).

On 08/09/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 097 451 is upheld for all the contested goods, namely:

Class 5: Dietary supplements with a cosmetic effect; cooling sprays for medical purposes; antiseptic sprays in aerosol form for use on the skin; medicinal sprays; collagen for medical purposes; medicated shampoos; pain relieving creams; pharmaceutical creams; medicated creams; reagents for medical use; veterinary diagnostic reagents; diagnostic reagents for medical use; reagents for use in veterinary genetic testing; reagents for use in medical genetic testing; immunoassay reagents for medical use; diagnostic biomarker reagents for medical purposes; chemical reagents for medical or veterinary purposes.

2. European Union trade mark application No 18 077 524 is rejected for all the contested goods. It may proceed for the remaining goods and services.

3. The applicant bears the costs, fixed at EUR 320.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 077 524 for the word mark ‘MINERV’, namely against all the goods in Class 5. The opposition is based on French trade mark registration No 96 623 766 for the word mark ‘MINERVA’. 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.

a) The goods

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

Class 5: Pharmaceuticals as well as chemicals for care and health.

The contested goods are the following:

Class 5: Dietary supplements with a cosmetic effect; cooling sprays for medical purposes; antiseptic sprays in aerosol form for use on the skin; medicinal sprays; collagen for medical purposes; medicated shampoos; pain relieving creams; pharmaceutical creams; medicated creams; reagents for medical use; veterinary diagnostic reagents; diagnostic reagents for medical use; reagents for use in veterinary genetic testing; reagents for use in medical genetic testing; immunoassay reagents for medical use; diagnostic biomarker reagents for medical purposes; chemical reagents for medical or veterinary purposes.

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 cooling sprays for medical purposes; antiseptic sprays in aerosol form for use on the skin; medicinal sprays; medicated shampoos; pain relieving creams; pharmaceutical creams; medicated creams are all included in the broad category of the opponent’s pharmaceuticals and are therefore considered identical.

Dietetic supplements are substances prepared for special dietary requirements, with the purpose of treating or preventing disease. Bearing this in mind, their purpose is similar to that of pharmaceutical products (substances used to treat disease) insofar as they are used to improve a patient’s medical condition.

Therefore, the contested dietary supplements with a cosmetic effect and the contested collagen for medical purposes, which can also be a dietetic supplement, are considered similar to the opponent’s pharmaceuticals. They have the same or a similar purpose, as seen above, they further coincide in relevant public and the goods generally have the same distribution channels.

Reagents in the field of human or veterinarian healthcare are chemical substances that are used in testing and diagnostic processes. The contested reagents for medical use; veterinary diagnostic reagents; diagnostic reagents for medical use; reagents for use in veterinary genetic testing; reagents for use in medical genetic testing; immunoassay reagents for medical use; diagnostic biomarker reagents for medical purposes; chemical reagents for medical or veterinary purposes have the same nature as the opponent’s chemicals for care and health. They are usually manufactured by the same companies, are sold through the same distribution channels and target the same relevant public. Therefore, these goods are considered 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 similar are directed at the public at large and at professionals of the human and animal healthcare sector with specific knowledge or expertise, such as doctors, veterinarians or nutritionists.

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 and veterinarian 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 or their pet’s state of health. This is also true for dietary supplements as they also affect one’s state of health.

c) The signs and the distinctiveness of the earlier mark

MINERVA	MINERV
Earlier trade mark	Contested sign

The relevant territory is France.

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 ‘MINERVA’ as well as the contested sign ‘MINERV’ will be perceived as ‘MINERVE’, which is ‘a village in the Occitanie region in the South of France’. It may also be perceived as ‘a Roman goddess’ or as ‘a neck brace’. The relevant public will most likely perceive the same concept in both signs.

Both verbal elements are not related to the relevant goods and since no arguments to the contrary were submitted by the parties, both verbal elements enjoy a normal degree of distinctiveness.

The same finding applies to the distinctiveness of the earlier mark since no claim for enhanced distinctiveness through use was submitted by the opponent. Consequently, the distinctiveness of the earlier mark must be seen as normal.

Visually and aurally, the signs coincide in the string of letters ‘MINERV’ and its sound. They differ in the additional ending ‘A’ and its sound in the earlier mark.

Therefore, the signs are visually and aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as having the same concept, the signs are conceptually identical.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) Global assessment, other arguments and conclusion

The goods are partly identical and partly similar and target the public at large as well as professionals in the healthcare and veterinarian fields. The degree of attention is high.

The signs are visually and aurally similar to a high degree and conceptually identical. The distinctiveness of the earlier mark is normal.

The contested sign is completely contained in the earlier mark and forms its first six letters.

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) and will most likely not be aware of the difference of one additional ending letter in the signs.

Based on the overwhelming visual and aural similarities and the identical concepts conveyed by the signs, the Opposition Division considers that there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s French trade mark registration No 96 623 766. It follows that the contested trade mark must be rejected for all the contested goods.

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein. In the present case, the opponent did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Sandra IBAÑEZ

Sylvie ALBRECHT

Sofia SACRISTAN MARTINEZ

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.