OPPOSITION Nо B 3 105 290

Georgia Zafeiratou, Mastichari Kos, 85302 Kos, Greece (opponent), represented by Kalliopi Strantzou, Konstantinoupoleos 63 Chaidari, 12461 Athens, Greece (professional representative)

a g a i n s t

Jacob Michael Dill, Schererstr. 1a, 13347 Berlin, Germany (applicant), represented by Friedrich Graf von Westphalen & Partner mbB, Kaiser-Joseph-Str. 284, 79098 Freiburg i. Br., Germany (professional representative).

On 19/03/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 105 290 is partially upheld, namely for the following contested goods:

Class 5: Veterinary preparations for animals; dietetic substances adapted for veterinary use; medicated additives for animal foods; medicated additives to animal foods; dietetic substances for animals adapted for veterinary use; vitamin supplements for animals; dietetic food adapted for veterinary use; dietary supplements for animals.

2. European Union trade mark application No 18 092 211 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 18 092 211 ‘Hippokrates’ (word mark), namely against all the goods in Class 5. The opposition is based on European Union trade mark registration No 16 948 309, ‘HIPPOCRATES GARDEN’ (word mark). The opponent invoked Article 8(1)(a) and (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: Dietary supplements for humans; herbal dietary supplements for persons special dietary requirements; nutritional supplements; vitamin and mineral supplements; cod-liver oil drops; cod liver oil; dietary supplements consisting of vitamins; vitamin drinks; vitamin preparations in the nature of food supplements; bee pollen for use as a dietary food supplement; antioxidants; anti-oxidant food supplements; anti-oxidant supplements; anti-oxidants obtained from herbal sources; anti-oxidants derived from honey; asthmatic tea; diabetic bread adapted for medical use; vitamin enriched bread for therapeutic purposes; anti-oxidants for dietary use; anti-oxidants comprising enzymes; ground flaxseed fiber for use as a dietary supplement; food supplements consisting of amino acids; food supplements consisting of trace elements; wheat dietary supplements; dietary supplements for controlling cholesterol; cod-liver oil capsules; multi-vitamin preparations; protein dietary supplements; flaxseed dietary supplements; flaxseed oil dietary supplements; pollen dietary supplements; yeast dietary supplements; wheat germ dietary supplements; royal jelly dietary supplements; soy isoflavone dietary supplements; propolis dietary supplements; lecithin dietary supplements; mineral water salts.

The contested goods are the following:

Class 5: Veterinary and sanitary preparations for animals; hygienic preparations for veterinary use; dietetic substances adapted for veterinary use; medicated additives for animal foods; medicated additives to animal foods; dietetic substances for animals adapted for veterinary use; vitamin supplements for animals; dietetic food adapted for veterinary use; dietary supplements for animals.

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.

Although the contested dietetic substances adapted for veterinary use; dietetic substances for animals adapted for veterinary use; vitamin supplements for animals; dietary supplements for animals are all for animal use, they are included in, or overlap with, the broad category of the opponent’s nutritional supplements which include nutritional supplements for animal use. Therefore, they are identical.

The contested veterinary preparations for animals; medicated additives for animal foods; medicated additives to animal foods; dietetic food adapted for veterinary use and the opponent’s nutritional supplements can serve the same purpose, namely animal health restoration or preservation, target the same relevant public and can both be sold via veterinary clinics. Therefore, they are similar.

The contested sanitary preparations for animals; hygienic preparations for veterinary use belong to the broader category of sanitary preparations and articles. They are normally used to protect and promote health by providing a clean environment and stopping the spread of harmful agents, such as bacteria, by means of disinfectants sterile pads and the like. They also include bacteria-destroying preparations. The opponent’s goods, on the other hand, consist of various dietary supplements and dietetic preparations intended to provide nutrients that are beneficial to health as well as mineral water salts. The aforementioned contested goods and the opponent’s goods have different natures, purposes and methods of use. Furthermore, these goods are neither complementary nor in competition. Although they may conceivably be sold through the same distribution channels, such as veterinary clinics, and target the same relevant public, these goods are not normally produced by the same manufacturers and consumers will not expect them to come from the same undertaking. Therefore, they are dissimilar.

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 both at the public at large and at professionals in the veterinary sector.

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), as these goods affect their state of health. The same applies, mutatis mutandis, to nutritional and dietary substances, preparations and supplements, including those for animal use. Although these goods may be available without prescription, they are all usually intended for treating health problems and are, therefore, usually chosen with care, even by the general public. For this reason, the degree of attention of the public will be relatively high.

c) The signs

HIPPOCRATES GARDEN	Hippokrates
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).

Both signs are word marks. The protection offered by the registration of a word mark applies to the word(s) stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (22/05/2008, T‑254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is irrelevant whether the word marks in question are depicted in upper-case or title-case letters insofar as neither departs from the usual way of writing (31/01/2013, T‑66/11, Babilu, EU:T:2013:48, § 57).

Hippocrates was ‘a Greek physician, traditionally regarded as the father of medicine (c.460–377 BC). His name is associated with the medical profession’s Hippocratic oath because of his attachment to a body of ancient Greek medical writings, probably none of which was written by him’ (information extracted from Oxford Dictionaries on 01/03/2021 at https://www.lexico.com/en/definition/hippocrates). In some languages, such as Danish, Estonian, Finnish, German, Slovak and Swedish, it is written as Hippokrates. In other languages, it is written very similarly, namely Hippocrate in French and Romanian, Hipokrates in Polish, Hipócrates in Portuguese and Spanish, Hippokratés in Czech. In some other languages, the Greek physician’s name is written differently, such as Хипократ in Bulgarian, Ippocrate in Italian, Hipokrats in Latvian, Hipokratas in Lithuanian and Hipokrat in Slovenian. Although, a minor part of the general public in some territories such as Bulgaria, Italy, Latvia, Lithuania and Slovenia might not perceive the signs as referring to the Greek physician ‘Hippocrates’ due to the spelling differences, a significant part of the relevant public throughout the European Union will perceive both the earlier mark’s ‘Hippocrates’ and the contested sign’s ‘Hippokrates’ as referring to the Greek physician despite the spelling differences.

Consequently, and since it is not necessary to establish that there is a likelihood of confusion for the whole of the relevant public (20/07/2017, T‑521/15, D / D et al., EU:T:2017:536, § 69), the Opposition Division finds it appropriate to focus the comparison of the signs on the significant part of the relevant public that will perceive both ‘Hippocrates’ and ‘Hippokrates’ as referring to the ancient Greek physician as described above.

The earlier mark’s word ‘GARDEN’ is a basic English word that will be understood by the relevant public throughout the European Union as ‘a piece of ground, usually enclosed, where flowers, fruit, or vegetables are cultivated’ (16/09/2019, R 308/2019‑4, Piretro natura / Piretro garden et al., § 31). Therefore, it will be perceived by the relevant part of the public as an indication of a place where plants and herbs are grown, for example.

The applicant argues that the earlier trade mark will not be dissected into different words but will be perceived as the ‘Garden of Hippocrates’, in which the word ‘HIPPOCRATES’ will only be understood as a reference to the garden’s owner. It is true that when the mark is a meaningful expression (made up of two or more words), the expression’s meaning as a whole, rather than of each of the words in isolation, is significant. However, even if the earlier mark will be perceived as having this meaning as a whole, as the applicant argues, at least by a part of the relevant public, this will still not alter the conceptual meaning conveyed by the words themselves, namely that the word ‘HIPPOCRATES’ will be perceived as referring to the ancient Greek physician described above and the word ‘GARDEN’ as referring to the place where plants and herbs are grown, for example. Bearing in mind that the goods concerned (nutritional supplements) usually include plants and herbs which can be grown in a garden and that the name of the ancient Greek physician, traditionally regarded as the father of medicine, will be perceived as alluding to their medicinal purpose, the distinctiveness of these words, whether in isolation or taken as a whole, is below average.

Although the contested goods are specifically intended for animals, they still concern the treatment or improvement of health conditions and the contested sign’s word ‘Hippokrates’ will, therefore, also be perceived as alluding to these goods’ medicinal purpose. Therefore, the distinctiveness of the contested sign’s word ‘Hippokrates’ is also below average.

Visually, the signs coincide almost identically in the word ‘HIPPO*RATES’, only differing as regards the central letter ‘C’ as opposed to ‘k’. However, they also differ in the earlier mark’s second word ‘GARDEN’.

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. Therefore, when encountering the earlier mark, the word ‘HIPPOCRATES’ will catch consumers’ attention first, even with a below-average degree of distinctiveness, whilst the second word ‘GARDEN’, whose distinctiveness is also below average, will have less impact on them.

Therefore, the signs are visually similar to an above-average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory and bearing in mind that the part of the relevant public will perceive both the earlier mark’s ‘HIPPOCRATES’ and the contested sign’s ‘Hippokrates’ as referring to the same ancient Greek physician, these words will be pronounced identically. The pronunciation differs in the sound of the earlier mark’s second word ‛GARDEN’, which has no counterpart in the contested sign.

Therefore, the signs are also aurally similar to an above-average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks to the part of the relevant public.

As mentioned above, in its observations, the applicant argues that the earlier trade mark will not be dissected into different words but will be perceived as the ‘Garden of Hippocrates’, in which the word ‘Hippocrates’ will only be understood as a reference to the garden’s owner. The applicant referred to a decision by the General Court (20/09/2017, T‑350/13, BADTORO (fig.) / EL TORO et al., EU:T:2017:633) to support this argument about the different meanings of the conflicting signs. However, in the case referred to by the applicant, the Court found that the signs were conceptually similar to an average degree (20/09/2017, T‑350/13, BADTORO (fig.) / EL TORO et al., EU:T:2017:633, § 59-61), namely it stated that ‘taken together, the figurative element and the word element of the mark applied for convey a concept which differs from the classic concept of a bull as an animal. The conceptual similarity between the marks at issue must thus be relativised, and that similarity should be regarded, at the most, as average and not as significant, as the Board of Appeal incorrectly found’ (20/09/2017, T‑350/13, BADTORO (fig.) / EL TORO et al., EU:T:2017:633, § 59-61).

Furthermore, as explained above, irrespective of whether the earlier mark is perceived as a whole as meaning ‘Hippocrates’ garden’ or as conveying these two concepts in isolation, both the earlier mark and the contested sign will still be associated with the same concept of the ancient Greek physician’s name, traditionally regarded as the father of medicine. In addition, the distinctiveness of the additional concept conveyed by the word ‘GARDEN’ is below average and will thus not be perceived as constituting a significant conceptual difference between the signs.

Therefore, in the present case, the signs are conceptually similar to at least an above-average 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.

Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as below average for the goods in question, namely nutritional supplements in Class 5.

e) Global assessment, other arguments and conclusion

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically linked undertakings, constitutes a likelihood of confusion (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 16). In addition, evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The goods are partly identical, partly similar and partly dissimilar. As the similarity of goods is a necessary condition for the application of Article 8(1) EUTMR, the opposition, as based on this article and directed at the goods that have been found to be dissimilar to the opponent’s goods, cannot be successful.

The goods concerned that are identical or similar target both the public at large and professionals in the veterinary sector. The public’s degree of attentiveness will be relatively high. The signs are visually, aurally and conceptually similar to (at least) an above-average degree for the part of the relevant public.

The distinctiveness of the earlier mark is below average. However, even in a case involving an earlier mark with a less distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (16/03/2005, T‑112/03, Flexi Air, EU:T:2005:102, § 61).

Although the central letters ‘C’ versus ‘k’ of the verbal elements ‘HIPPOCRATES’ and ‘Hippokrates’, respectively, are not the same, this will not impact the consumer’s perception of these words much, since they will perceive it either as a misspelling or as a different way of writing the same name in another language. Furthermore, ‘Hippokrates’ is the contested sign’s only word and is almost identically contained as the earlier mark’s first verbal element.

Furthermore, it should also be borne in mind that 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, the slightly different spelling of the name Hippocrates may not even be recalled by consumers in their imperfect recollection of the respective signs.

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. It is a common practice on the market for undertakings to make variations of their trade marks in order to denote new product lines or to endow their trade mark with a new, fashionable image. Therefore, bearing this in mind, when encountering the conflicting signs in relation to identical or similar goods, the relevant public will mentally register that they share an element that they will associate with the name of the same ancient Greek physician and are likely to perceive the additional word ‘GARDEN’ in one of those signs as a variation of the same mark, configured in a different way according to the type of goods that it designates.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the significant part of the public in the relevant territory that will perceive both the earlier sign’s verbal element ‘HIPPOCRATES’ and the contested sign’s word ‘Hippokrates’ as referring to the same ancient Greek physician and, therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 16 948 309. 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 similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods because neither the signs nor the goods are identical.

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

Sam GYLLING

Birute SATAITE-GONZALEZ

María Clara IBÁÑEZ FIORILLO

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.