OPPOSITION No B 3 092 370

BASF AS, Lilleakerveien 2C, 0283 Oslo, Norway (opponent), represented by Hogan Lovells, Avenida Maisonnave 22, 03003 Alicante, Spain (professional representative)

a g a i n s t

U.G.A. Nutraceuticals Srl, Via L. Pavoni, 1, 20900 Monza, Italy (applicant), represented by Legance Avvocati Associati, Via Broletto, 20, 20121 Milano, Italy (professional representative).

On 29/06/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 092 370 is partially upheld, namely for the following contested goods:

Class 5: All the goods in this class.

2. European Union trade mark application No 18 082 021 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

On 19/08/2019, the opponent filed an opposition against all the goods of European Union trade mark application No 18 082 021 ‘OMEGOR VITALITY’ (word mark). The opposition is based on European Union trade mark registration No 1 414 531 (figurative mark), international trade mark registration designating the European Union No 934 400 ‘OMACOR’ (word mark), United Kingdom trade mark registration No 001 537 600 ‘OMACOR’ (word mark) and German trade mark registration No 2 105 074 ‘OMACOR’ (word mark). The opponent invoked Article 8(1)(b) EUTMR.

EARLIER UK RIGHT

On 01/02/2020, the United Kingdom (UK) withdrew from the EU subject to a transition period until 31/12/2020. During this transition period EU law remained applicable in the UK. As from 01/01/2021, UK rights ceased ex-lege to be earlier rights protected ‘in a Member State’ for the purposes of proceedings based on relative grounds. The conditions for applying Article 8(1) EUTMR, worded in the present tense, must also be fulfilled at the time of decision taking. It follows that United Kingdom mark registration No 001 537 600 no longer constitutes a valid basis of the opposition.

The opposition must therefore be rejected as far as it is based on this earlier right.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based:

 European Union trade mark registration No 1 414 531 ,

 international trade mark registration designating the European Union No 934 400 ‘OMACOR’,

 German trade mark registration No 2 105 074 ‘OMACOR’.

The request was submitted in due time and is admissible given that the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

The date of filing of the contested application is 14/06/2019. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in the European Union and Germany from 14/06/2014 to 13/06/2019 inclusive.

Furthermore, the evidence must show use of the trade marks for the goods on which the opposition is based, namely the following:

European Union trade mark registration No 1 414 531

Class 5: Pharmaceutical products in the form of Omega-3 fatty acids.

International trade mark registration designating the European Union No 934 400 ‘OMACOR’

Class 5: Pharmaceutical preparations; dietetic substances adapted for medical use; food supplements; vitamins.

German trade mark registration No 2 105 074 ‘OMACOR’

Class 5: Pharmaceutical products in the form of OMEGA-3 fatty acids for the treatment of cardiovascular complaints, diabetes, IgA nephropathy, hyperlipidemia and pancreatitis.

According to Article 10(3) EUTMDR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 16/04/2020, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 21/06/2020 to submit evidence of use of the earlier trade marks. The time limit was extended until 21/08/2020. On 17/08/2020, within the time limit, the opponent submitted evidence of use.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

The evidence to be taken into account is the following:

 Annex 1: affidavit by Mr M.K., the Global Key Account Manager at BASF responsible for Omega3 EE 90 sold under different trade marks, including ‘Omacor’. He explains that BASF acquired Pronova Biopharms in 2013 and the company is now called BASF AS. It is claimed that Omacor is one of BASF’s key brands for Omega-3 fatty acids which was launched in Norway in 1996.

Mr M.K. provides information on the turnover (ex-factory sales) for Omacor goods in Germany, Greece, the Netherlands and the United Kingdom from 2016 to 2019. He also provides information about the quantities sold in these countries during the same period.

The Global Key Account Manager at BASF explains the company’s distribution system as follows:

BASF AS sells bulk capsules to Mylan N.V. (Mylan). These capsules are dispatched to GMPack in Denmark which is a contract manufacturer taking care of the final packaging. It also distributes country specific Omacor boxes to Mylan’s warehouse for further distribution per country. Mylan then sells the product with BASF’s consent throughout all European countries.

The following documents were attached to the affidavit.

o Enclosure 1: turnover figures. Mylan provides four tables containing the turnover of Omacor products for 2016, 2017, 2018 and 2019. The data referring to 2017 is signed by the Supply chain and PO Finance Director of BGP (a subsidiary of Mylan N.V.). The 2018 data is signed by the Global Key Account Manager at BASF and the signature of the 2016 data is illegible. The figures refer to 19 European Union Member States (e.g. Germany, Greece, Austria, Romania), and the UK, as well as to some countries outside the relevant territory (Australia). The net sales are for significant amounts in US dollars.

o Enclosure 2: pharmaceutical packages for 2014, 2017, 2018 and 2019 for Greece showing the mark . These are draft drawings of the cardboard boxes with information about the product (Omega-3 acid ethyl esters 90), its nature, quantity, size, marketing authorisation number, storage, distributor, etc. The drafts are dated between 2014 and 2016. The enclosure also contains a document in Greek, supposedly a product leaflet. As an example, the draft for 2016 (effective date 08/08/2015) is the following:

o Enclosure 3: pharmaceutical packages for 2014, 2015, 2018 and 2019 for the United Kingdom showing the mark . These are draft drawings of the cardboard boxes for the capsules with information of the product (Omega-3 acid ethyl esters 90), its nature, quantity, size, marketing authorisation number, storage, distributor, etc. The drafts are dated between 2014 and 2018. The enclosure also contains a copy of a product leaflet.

o Enclosure 4: pharmaceutical packages for 2014, 2015, 2018 and 2019 for the Netherlands showing the mark . These are draft drawings of the cardboard boxes for the capsules with information of the product (Omega-3 acid ethyl esters 90), its nature, quantity, size, marketing authorisation number, storage, distributor, etc. The drafts are dated between 2015 and 2017. The enclosure also contains three documents in Dutch, supposedly product leaflets.

o Enclosure 5: five invoices dated 2015. They are issued by Mylan to buyers in the Netherlands. They contain a reference to the sign ‘Omacor’ but not to the specific pharmaceutical product.

o Enclosure 6: 19 invoices dated 2016. Five invoices are issued by Mylan to a buyer in Switzerland with delivery to addresses in Denmark, nine invoices are issued by Mylan to buyers in the Netherlands and five invoices are issued by BGP to buyers in Greece. They contain a reference to the sign ‘Omacor’ but not to the specific pharmaceutical product.

o Enclosure 7: 22 invoices dated 2017, issued by Mylan to buyers in Denmark and Greece. They contain a reference to the sign ‘Omacor’ but not to the specific pharmaceutical product.

o Enclosure 8: 20 invoices dated 2018, issued to buyers in the European Union including Germany. They contain a reference to the sign ‘Omacor’ but not to the specific pharmaceutical product.

o Enclosure 9: three invoices dated 2019, issued to buyers in the European Union including Germany, one of which was within the relevant period. They contain a reference to the sign ‘Omacor’ but not to the specific pharmaceutical product.

o Enclosure 10: five invoices dated 2020, issued to buyers in the European Union including Germany, but outside the relevant period. They contain a reference to the sign ‘Omacor’ but not to the specific pharmaceutical product.

o Enclosure 11: excerpts from the Greek National Organisation for Medicines, in Greek and in English. One of the documents is dated November 2018.

o Enclosure 12: excerpts from the UK Medicines and Healthcare Products Regulatory Agency, in English.

o Enclosure 13: excerpts from the Dutch College ter Beoordeling van Geneesmiddelen, in English, dated 2018. It shows that the marketing authorisation of Omecor dates from 2003.

o Enclosure 14: excerpt from the German Gelbe Liste showing Omacor information in German and the date of approval – 11/09/1996, renewed 20/07/2006.

o Enclosure 15: a promotional video in Greek, dated 2016. The video contains an image of the package (as per the draft provided in enclosure 2 above) and a reference to Omega-3 ( ).

 Annex 2: an information booklet in Greek, advertising material (dated 2018) and pharma leaflets (undated), all relating to Greece. Although the document is in Greek, it is clear that it refers to Omega-3 fatty acids as it contains numerous references to . It also contains the marks ‘Omacor’ and , and an identical image of the package as in the video in enclosure 15.

 Annex 3: a picture of a sales stand for Omacor products in Greece. The information on the stand is in Greek but it contains references to , the mark and further images identical to those in Annex 2.

Part of the evidence of use filed by the opponent, in particular invoices, does not originate from the opponent itself but from other companies.

According to Article 18(2) EUTMR, use of the EUTM with the consent of the proprietor is deemed to constitute use by the proprietor. Although this provision covers EUTMs, it can be applied by analogy to earlier marks registered in Member States.

The fact that the opponent submitted evidence of use of its marks by a third party implicitly shows that it consented to this use (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225).

To this extent, and in accordance with Article 18(2) EUTMR, the Opposition Division considers that the use made by those other companies was made with the opponent’s consent and thus is equivalent to use made by the opponent.

The applicant argues that the opponent did not submit translations of some of the evidence of use (enclosures 11, 13, 14 and 15 and Annexes 2 and 3) and that therefore this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Article 10(6) EUTMDR). Taking into account the nature of the documents that have not been translated and are considered relevant for the present proceedings, namely excerpts from national medicines agencies and pharmacological information and promotional material containing clear references to ‘omega-3’ and as well as the mark ‘Omecor’, and their self-explanatory character, the Opposition Division considers that there is no need to request a translation.

As far as the affidavit and enclosure 1 of Annex 1 are concerned, Article 10(4) EUTMDR expressly mentions written statements referred to in Article 97(1)(f) EUTMR as admissible means of proof of use. Article 97(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.

However, this does not mean that such statements do not have any probative value at all.

The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources.

Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.

The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods for which the earlier marks are registered.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

The opponent has submitted, inter alia, evidence relating to the United Kingdom (UK) with a view to demonstrating use of the earlier EUTM and the international registration designating the EU. That evidence relates to a period prior to 01/01/2021.

On 01/02/2020, the UK withdrew from the EU subject to a transition period until 31/12/2020. During this transition period EU law remained applicable in the UK. Therefore, use in the UK prior to the end of the transition period constituted use ‘in the EU’. Consequently, the evidence relating to the UK and to a period prior to 01/01/2021 is relevant with a view to maintaining rights in the EU and will be taken into account.

The documents submitted show that the place of use is at least Denmark, Germany, Greece, the Netherlands and the United Kingdom. This can be inferred from the languages of the documents (Greek, German, Dutch, English) and some addresses in Denmark, Germany, Greece, the Netherlands and the UK. As stated above, the territorial scope of the use is only one of several factors to be assessed in the determination of whether the use is genuine or not. However, some pieces of evidence, such as the affidavit and the turnover figures in enclosure 1, refer to the presence of the earlier marks in other Member States of the European Union (19 Member States, including the UK). Therefore, the evidence relates to the relevant territory.

Some of the evidence is dated within the relevant period.

Evidence referring to use made outside the relevant timeframe is disregarded unless it contains conclusive indirect proof that the mark must have been put to genuine use during the relevant period of time as well. Events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50).

In the present case, the evidence referring to use outside the relevant period confirms use of the opponent’s marks within the relevant period. This is because the use it refers to is partly very close in time to the relevant period, namely the invoices issued in 2019 and the 2019 turnover figures in enclosure 1.

The documents submitted, namely the turnover figures supported by the invoices, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. Invoices are important financial documents mandatory for any business that provides goods/services and has either received a payment or is expecting such. Furthermore, as these documents contain sensitive financial information, it is not necessary to submit a detailed financial report, a random selection covering the whole relevant period will suffice.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, and its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The documents submitted, namely Annex 1, and enclosures 1 to 9, 11, 13 and 15, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. The turnover figures corroborated by the invoices and the promotional materials demonstrate extensive use which started before and continued during and after the relevant period (enclosure 10 and in particular the market authorisations and the first draft of the patient information in enclosure 14).

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of use of the earlier marks.

In the context of Article 10(3) EUTMDR, the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 18(1), second subparagraph, point (a), EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements that do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 47(2) and (3) EUTMR, Article 18 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, part of the evidence submitted shows use of the figurative signs and . However, the sign as used does not alter the distinctive character of the marks in the form in which they were registered, in particular that of European Union trade mark registration No 1 414 531, . The differences are in the colours, which have a very low impact, if any, on the distinctive character of the sign.

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 18(1), second subparagraph, point (a), EUTMR.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade marks during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade marks for all the goods covered by the earlier trade marks.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

In the present case, the evidence shows genuine use of the trade marks for the following goods:

Class 5: Pharmaceutical products in the form of Omega-3 fatty acids.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 1 414 531.

a) The goods

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

Class 5: Pharmaceutical products in the form of Omega-3 fatty acids.

The contested goods, after a limitation requested by the applicant, are the following:

Class 5: Dietary supplements and dietetic preparations; pharmaceuticals and natural remedies.

Class 29: Edible oils and fats, excluding seeds based oils other than chia seeds based oils; dairy products and dairy substitutes; fish, seafood and molluscs, not live; meats; birds eggs and egg products.

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 5

The contested pharmaceuticals and natural remedies include, as a broader category, the opponent’s pharmaceutical products in the form of Omega-3 fatty acids. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested dietary supplements and dietetic preparations are various dietetic substances and supplements prepared for special dietary requirements with the purpose of treating or preventing disease in human beings or animals. The opponent’s pharmaceutical products in the form of Omega-3 fatty acids are substances for improving the medical condition of animals and humans. Bearing in mind that the purposes of these goods are similar, they have the same relevant public and generally have the same distribution channels. Therefore, they are similar.

The applicant refers to a decision of the Board of Appeal (05/10/2020, R 649/2020‑4, Peyona et al.) to prove the dissimilarity of the goods. However, in this decision the comparison is between different pharmaceuticals and food supplements and the conclusions are not relevant in the present case.

Contested goods in Class 29

The contested fish, seafood and molluscs, not live; meats; edible oils and fats, excluding seeds based oils other than chia seeds based oils; dairy products and dairy substitutes; birds eggs and egg products are dissimilar to the opponent’s goods because they have nothing in common. Even if some of the contested foodstuffs contain natural sources of Omega-3 fatty acids, the goods have different natures (pharmaceuticals versus foodstuffs) and methods of use. The goods also have different purposes: the opponent’s pharmaceuticals are used to treat/prevent a disease or improve the health of humans and/or animals, while the contested goods are nourishing and thirst-quenching preparations. The relevant public for the opponent’s goods are both the general public and the professional public (such as doctors and pharmacists) whereas the relevant public for the contested goods is only the general public. Furthermore, the opponent’s goods are normally sold in pharmacies and drug stores or, in part of the relevant territories, in specialised sections of hypermarkets. The contested goods, however, are sold in different outlets or in different specialised sections of hypermarkets. The goods under comparison have different origins and require different technologies and production capacities: the opponent’s goods are produced by undertakings in the pharmaceutical industry and the contested goods are manufactured by entities operating in the food industry. Goods are in competition with each other when one can substitute for the other. That means that they serve the same or a similar purpose and are offered to the same actual and potential customers. In such a case, the goods/services are also defined as ‘interchangeable’ (04/02/2013, T‑504/11, Dignitude, EU:T:2013:57, § 42). However, this is not the case here: although Omega-3 fatty acids can be used as an additional source of health-promoting substances, they cannot substitute for foodstuffs and a well-balanced diet. Finally, the goods under comparison are not complementary.

The opponent claims that there is similarity between goods in Classes 5 and 29. In support of this statement it refers to a judgment of the General Court (20/11/2019, T‑695/18, fLORAMED (fig.) / MEDIFLOR et al., EU:T:2019:794) and a decision of the Office (22/05/2015, B 2 304 619). However, these decisions are not relevant as they compare different goods: goods in Class 5 and dietetic foodstuffs and beverages, including enriched with vitamins, in Classes 29, 30 and 32, while in the present case the contested goods are not limited exclusively to dietetic foodstuffs.

The opponent also refers to a decision of the Office (10/06/2016, B 2 528 183), where low similarity was found between milk and milk products and pharmaceutical products.

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Furthermore, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision. Finally, the decision in question was taken in 2016 and the Office’s practice has changed since then.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

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 customers with specific professional knowledge or expertise such as medical doctors, pharmacists and 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 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.

The same reasoning applies to dietary and nutritional supplements because they also have an impact on the consumer’s health.

Therefore, the degree of attention of the relevant public in relation to the goods concerned may vary from above average to high.

c) The signs

	OMEGOR VITALITY
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.

The verbal element ‘VITALITY’ of the contested sign is meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The verbal element ‘VITALITY’ of the contested sign means ‘the state of being strong and active; energy; the power giving continuance of life, present in all living thing’ (information extracted from Oxford English Dictionary on 28/06/2021 at https://www.lexico.com/definition/vitality). Bearing in mind that the relevant goods are pharmaceuticals, dietary supplements and dietetic preparations, this verbal element is considered non-distinctive as it contains obvious and direct information on the kind and intended purpose of the goods.

The verbal elements ‘OMACOR’ of the earlier mark and ‘OMEGOR’ of the contested sign have no meaning for the relevant public and are, therefore, distinctive. Even if ‘omeg-’ might allude to the Greek letter Omega, as claimed by the applicant, there is no reason to assume that the relevant public will dissect ‘OMEGOR’ to perceive this concept. Moreover, according to settled case-law, word marks should not be artificially dissected. Dissection is not appropriate unless the relevant public will clearly perceive the components in question as separate elements, which is not the case here.

The stylisation of the verbal element of the earlier mark is rather standard and the figurative device has a merely ancillary role. Consequently, the figurative elements and aspects of the mark have a lower impact on the consumers. Furthermore, it is placed at the end of the mark. 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).

The earlier mark has no element that could be considered clearly more dominant than other elements.

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.

Visually and aurally, the signs coincide in the letters/sounds and their pronunciation ‘OM(*)(*)OR’. They differ in the letters/sounds ‘(**)AC(**)’ of the earlier mark and ‘(**)EG(**)’ and the non-distinctive ‘VITALITY’ of the contested sign as well as in the figurative device and stylisation of the earlier mark. However, the letters ‘C’ and ‘G’ are very similar visually. Furthermore, the structure of the distinctive verbal elements in both signs is vowel-consonant-vowel-consonant-vowel-consonant which results in very similar intonation and rhythm.

Therefore, taking into account the distinctive character of the elements of the signs, they are visually and aurally similar to an average degree.

Conceptually, although the public in the relevant territory will perceive the meaning of the second verbal element of the contested sign as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar. However, taking into account that the word ‘VITALITY’ is non-distinctive, its impact on the conceptual perception of the contested sign will be limited.

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.

e) Global assessment, other arguments and conclusion

In determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

The goods are partly identical, partly similar and partly dissimilar. They target the public at large and customers with specific professional knowledge or expertise whose degree of attentiveness may vary from above average to high.

The earlier mark is inherently distinctive to a normal degree.

The signs are visually and aurally similar to an average degree and conceptually not similar. In particular, the signs have identical beginnings and endings of the distinctive verbal elements.

The differences between the signs lie in the differing letters ‘AC’ of the earlier mark and ‘EG’ in the contested sign, which, due to their position in the middle of the signs do not significantly affect the visual and aural similarities. The additional verbal element ‘VITALITY’ of the contested sign is non-distinctive and, consequently, has lower impact. The figurative device of the earlier mark has an ancillary role and a low impact on the perception of the users. Therefore, these differences cannot outweigh the similarities between the signs, and they are not sufficient to exclude a likelihood of confusion.

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). Therefore, it cannot be ruled out that even consumers with a high degree of attentiveness may overlook or mispronounce the middle letters of the distinctive verbal elements and confuse the signs.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 1 414 531. 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 trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As the identity or similarity of goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

The opponent has also based its opposition on the following earlier trade marks:

 international trade mark registration designating the European Union No 934 400 ‘OMACOR’ (word mark);

 German trade mark registration No 2 105 074 ‘OMACOR’ (word mark).

Since the use for these marks has been proven for the same goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those 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. 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

Francesca DRAGOSTIN

Tzvetelina IANTCHEVA

Loreto URRACA LUQUE

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.