OPPOSITION No B 3 094 507

Herbalife International, Inc., 800 W. Olympic Blvd., Suite 406, 90015 Los Angeles, United States (opponent), represented by Forresters, Skygarden Erika-Mann-Str. 11, 80636 Munich, Germany (professional representative)

a g a i n s t

Health Medica Sp z o.o., ul. Kościuszki 39, 90-418 Łódź, Poland (applicant), represented by Tomasz Wojdal, ul. Targowa 35, 90-043 Łódź, Poland (professional representative).

On 22/10/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 094 507 is partially upheld for all the contested goods with the exception of :

Class 5: Material for dental prostheses; dental materials for stopping the teeth; dental impression materials.

2. European Union trade mark application No 18 097 614 may proceed for all the above-mentioned goods in Class 5. It is rejected for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 18 097 614 for the figurative mark . The opposition is based on, inter alia, European Union trade mark registration No 4 927 919 for the figurative mark   . The opponent invoked Article 8(1) (b) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

The opposition is based on more than one earlier trade mark. For reasons of procedural economy, the Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 4 927 919.

a) The goods and services

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

Class 3: Soaps; perfumery, essential oils, cosmetics, hair lotions, hair care products; dentifrices; shampoos, conditioners, hair styling sprays, gels, and pomades; facial creams, lotions, gels, milks, masks, exfoliants, toners, and sprays; hand lotions, creams, gels, and scrubs; body creams, lotions, washes, gels, exfoliants, and sprays; shaving toiletries for men; fragrances; abrasive or exfoliant cloths; skin whitening products; skin care products.

Class 5: Dietetic substances; additives for foodstuffs; skin care products; nutritional foods and supplements; vitamin and mineral supplements in tablet, powder, or capsule form; dietary products.

Class 9: Audio and video tapes, discs, and recordings; personal identification and business account cards (which are coded or magnetic); electronic publications.

Class 10: Electronic devices for the purpose of assessing health and fitness of humans; massage apparatus.

Class 14: Goods in precious metals or coated therewith; jewellery; precious stones; tie tacks, pins, pendants, of base or precious metals; travel clocks; cuff links; clocks, watches; parts and fitting for the aforesaid goods.

Class 16: Printed matter; printed publications; pens; bags of paper or plastics; product catalogues, brochures, and informational flyers; books and periodicals about human health and fitness, weight management, dietary supplements and foods, business opportunities, marketing plans, and personal achievement

Class 21: Household or kitchen utensils, porcelain and earthenware; mugs, cups, glassware, tablet boxes, containers for powdered or loose food items, stirring instruments.

Class 29: Foods and snacks made from processed oils, fats, and nuts; snack foods, snacks containing cooked nuts, snacks containing dried nuts, snacks containing roasted soy nuts; snacks containing protein, powdered protein for human consumption; herbal preparations (not for medical use); but not including spreads.

Class 30: Coffee, chocolate and tea based beverages; teas, coffee, chocolate, cocoa; snacks; snack foods; powder for making beverages; herbal teas and herbal infusions.

Class 31: Fresh herb preparations (other than for medicinal purposes), marine botanicals, fungi, tree bark, natural plants and flowers, seeds, roots, and bulbs.

Class 32: Mineral and aerated waters and other non-alcoholic drinks, fruit drinks and fruit juices and other preparations for making beverages; ready-to drink, concentrated, or powdered non-alcoholic beverages; powdered beverage mixes; beverages and non-alcoholic drinks.

Class 35: Advertising; business management; business administration; office functions; services to assist others with direct marketing, advertising, lead generation, order processing, and payment processing; electronic data management services related to weight management, human health and fitness, multi-level marketing, and development of small business.

Class 41: Educational and training programs related to weight management and human health and fitness; educational and training programs related to multi-level marketing and development of small businesses.

Class 42: Providing and design of web spaces related to weight management, human health and fitness, multi-level marketing, and development of small businesses.

The contested goods are the following:

Class 3: Cosmetics; body cleaning and beauty care preparations; oral hygiene preparations; cosmetics and cosmetic preparations; natural cosmetics; ointments for cosmetic use; organic cosmetics; sanitary preparations being toiletries; cosmetic preparations for slimming purposes; cosmetic preparations for body care.

Class 5: Dental preparations and articles, and medicated dentifrices; dietary supplements and dietetic preparations; hygienic preparations and articles; infant formula; material for dental prostheses; dental materials for stopping the teeth; medicated dental rinses; medicated dentifrices; dental rinse; mouth cavity cleansers; dental impression materials; dietary supplements for animals; dietetic foods adapted for medical use; dietetic substances adapted for medical use; mineral dietary supplements for humans; vitamin and mineral supplements; dietetic and nutritional preparations; vitamin preparations in the nature of food supplements; dietary supplements for humans and animals; herbal supplements; pharmaceuticals and natural remedies; medical dressings, coverings and applicators; lotions for veterinary purposes; vitamin and mineral preparations; medicinal healthcare preparations; pharmaceutical preparations for animals; dermatological pharmaceutical products; pharmaceutical preparations; pharmaceutical sweets; food for medically restricted diets; dietetic foods adapted for medical use; dietetic foods adapted for medical use; nutritional supplement meal replacement bars for boosting energy; albumin dietary supplements; dietetic food preparations adapted for medical use; dietetic beverages adapted for medical purposes; powdered nutritional supplement drink mix; vitamin drinks; dietetic beverages for babies adapted for medical purposes; mineral nutritional supplements; dietary supplements for humans; dietary and nutritional supplements; biological preparations for medical purposes; mineral preparations for medical purposes; herbal preparations for medical use; mineral food preparations for medical purposes; probiotic preparations for medical use to help maintain a natural balance of flora in the digestive system; chemical preparations for medical purposes; biochemical preparations for medical use; biochemical preparations for veterinary use; chemical preparations for veterinary purposes; preparations for making medicated beverages; strengthening supplements containing parapharmaceutical preparations for prophylactic purposes and for convalescents; feed supplements for veterinary use; sanitary preparations for medical purposes.

Class 29: Fruit- and nut-based snack bars; Organic nut and seed-based snack bars.

Class 32: Beverages containing vitamins; Nutritionally fortified beverages; Smoothies containing grains and oats; Syrups for beverages; Soya-based beverages, other than milk substitutes; Functional water-based beverages; Nutritionally fortified water; Fruit nectars, non-alcoholic.

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 3

Cosmetics (listed twice) are identically contained in both lists of goods.

The contested body cleaning and beauty care preparations include, as a broader category, the opponent´s soaps. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested oral hygiene preparations include, as a broader category, the opponent´s dentifrices. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested cosmetic preparations; natural cosmetics; ointments for cosmetic use; organic cosmetics; cosmetic preparations for slimming purposes; cosmetic preparations for body care are all included in the opponent´s broader category of cosmetics. Therefore, they are identical.

The contested sanitary preparations being toiletries include, as a broader category, the opponent´s hair lotions. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Contested goods in Class 5

The contested dietary supplements and dietetic preparations; hygienic preparations and articles; infant formula; dietary supplements for animals; dietetic foods adapted for medical use; dietetic substances adapted for medical use; mineral dietary supplements for humans; vitamin and mineral supplements; dietetic and nutritional preparations; vitamin preparations in the nature of food supplements; dietary supplements for humans and animals; herbal supplements; vitamin and mineral preparations; dermatological pharmaceutical products; food for medically restricted diets; dietetic foods adapted for medical use; dietetic foods adapted for medical use; nutritional supplement meal replacement bars for boosting energy; albumin dietary supplements; dietetic food preparations adapted for medical use; dietetic beverages adapted for medical purposes; powdered nutritional supplement drink mix; vitamin drinks; dietetic beverages for babies adapted for medical purposes; mineral nutritional supplements; dietary supplements for humans; dietary and nutritional supplements; mineral preparations for medical purposes; mineral food preparations for medical purposes; probiotic preparations for medical use to help maintain a natural balance of flora in the digestive system; biochemical preparations for medical use; biochemical preparations for veterinary use; chemical preparations for veterinary purposes; preparations for making medicated beverages; strengthening supplements containing parapharmaceutical preparations for prophylactic purposes and for convalescents; feed supplements for veterinary use are included in, or overlap with, the opponent´s dietary products. Therefore, they are identical.

The contested lotions for veterinary purposes and dermatological pharmaceutical products overlap with the opponent´s skin care products. Therefore, they are considered identical to the opponent’s goods.

The contested dental preparations and articles, and medicated dentifrices; medicated dental rinses; medicated dentifrices; dental rinse; mouth cavity cleansers are similar to the opponent´s dentifrices in Class 3 as they share the same purpose, distribution channels, relevant public and producer.

The contested pharmaceuticals and natural remedies; medicinal healthcare preparations; pharmaceutical preparations for animals; pharmaceutical preparations; pharmaceutical sweets; biological preparations for medical purposes; herbal preparations for medical use; chemical preparations for medical purposes; biochemical preparations for medical use; biochemical preparations for veterinary use; chemical preparations for veterinary purposes are similar to the opponent´s vitamin and mineral supplements in tablet, powder, or capsule form as they share the same purpose, distribution channels and relevant public.

The contested sanitary preparations for medical purposes are similar to the opponent´s soaps in Class 3 as they have the same purpose. They usually coincide in producer, relevant public and distribution channels.

The contested medical dressings, coverings and applicators are similar to the opponent´s skin care products since they have the same general purpose (to cure diseases, disabilities or injuries), are distributed to the same relevant public and through the same distribution channels.

The contested material for dental prostheses; dental materials for stopping the teeth; dental impression materials are dissimilar to all the opponent´s goods and services. Broadly speaking, the opponent´s list include goods in Class 3 (cosmetics, dentifrices and toiletry), Class 5 (dietary supplements and vitamins preparations), Class 9 (audio-visual apparatus, cards and electronic publications), Class 10 (medical apparatus), Class 14 (mainly, precious metals and jewels), Class 16 (mainly printed matter), Class 29 (snacks and herbal preparations), Class 30 (beverages and snacks), Class 32 (non-alcoholic beverages), Class 35 (advertising, business management and related activities), Class 41 ( educational services) and Class 42 (provision and design of web spaces). All these goods and services have no relevant points in common with the contested goods as they do not share purpose, producer, distribution channels or relevant public. Moreover, they are neither complementary nor in competition.

Contested goods in Class 29

The contested fruit- and nut-based snack bars; organic nut and seed-based snack bars are contained in the opponent´s broader category of snack foods. Therefore, they are identical.

Contested goods in Class 32

The contested beverages containing vitamins; nutritionally fortified beverages; smoothies containing grains and oats; soya-based beverages, other than milk substitutes are all contained in the opponent´s broader category of beverages and non-alcoholic drinks. Therefore, they are identical.

The contested functional water-based beverages; nutritionally fortified water are contained in the opponent´s broader category of mineral and aerated waters. Therefore, they are identical.

The contested fruit nectars, non-alcoholic are contained in the opponent´s broader category of fruit drinks and fruit juices. Therefore, they are identical.

The contested syrups for beverages fall into the opponent’s broader category of preparations for making beverages. 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, some of the goods found to be identical or similar are directed at the public at large and some at both the public at large and at professionals with specific professional knowledge or expertise, for example in the medical sector.

The public’s degree of attentiveness may vary from average, for instance for goods in Class 32 (which are usually purchased daily and have no direct risk to the purchaser’s health), to high for other goods such as those in Class 5 that may have important consequences for the purchaser’s health.

Indeed, 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 and cited case-law). This is also the case for other goods in Class 5, such as nutritional supplements (10/02/2015, T-368/13, ANGIPAX, EU:T:2015:81,§ 42-46 and cited case-law) or veterinary preparations and dietary supplements for animals (13/05/2015, T-169/14, Kora (Koragel), EU:T:2015:280, § 38).

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.

Given that the general public is more prone to confusion, the examination will proceed on this basis.

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 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.

Due to the beginnings of the verbal elements of the signs, ‘HERBA’ in the earlier mark and ‘HERBI’ in the contested sign, part of the relevant general public (for example, the English-speaking public) might associate the signs with ‘herb’ or ‘herbal’, referring or relating to ‘any plant with leaves, seeds, or flowers used for flavouring, food, medicine, or perfume’ being therefore weak in relation to most of the relevant goods. However, another part of the relevant general public will not immediately associate the signs with this meaning as the word for ‘herbs’ or ‘herbal’ is completely different in the respective languages. This will ,for example, be the case for the Bulgarian and Hungarian-speaking public as their equivalent words are ‘Bilka’ and ‘Fú’ respectively .

For procedural economy, the Opposition Division finds it appropriate to focus the comparison of the signs hereunder on this part of the general public for which the beginnings of the signs will not evoke a particular concept and therefore enjoy an average degree of distinctive character for the goods protected.

The earlier mark is a figurative mark, consisting of the string of letters ‘HERBALIFE’ depicted in a fairly standard, black and bold typeface, accompanied by a figurative element that could be perceived as three leaves surrounded by a circle. This would indicate the plant-based origin or ingredients of the relevant goods and therefore, its distinctiveness will be low. In any case, for figurative elements, it is worth remembering that when signs consist of both verbal and figurative components, in principle, and as in the present case, 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).

Although the earlier mark is composed of one single verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). A significant part of the relevant public will mentally dissect the word component ‘LIFE’ of the contested sign given the fact that this element is a basic English word which is understood throughout the European Union (15/10/2018, T-444/17, life coins / LIFE et al EU:T:2018:681, § 52) meaning vitality, and energy. Bearing in mind, that the protected goods are body care and hygiene products, pharmaceuticals, nutritional supplements and food (including beverages), this element is weak for such goods that are used to maintain a healthy and vigour’s life. Another part of the relevant public will however not dissect this element and will perceive the entire verbal element ‘HERBALIFE’ as meaningless and therefore, distinctive to an average degree.

Although it cannot be excluded that part of the relevant public will perceive the green part of the contested sign as ‘BIO’, which is non-distinctive in relation to the relevant goods as it indicates that they are is usually used in commerce to refer to organic and/or natural and environmentally friendly products, another significant part of the relevant public will split the signs in the elements ‘HERBI’ and ’MED’ as they are separated by a figurative element (that has no real resemblance with the letter ‘O’). For reasons of procedural economy, the assessment of the likelihood of confusion will focus on this part of the relevant public.

While the element ‘HERBI’ will be perceived as meaningless, the component ‘MED’ will be perceived as alluding to the fact that the relevant goods are of a medical nature or have a medical purpose since it is the root of a variety of words that all refer to the medical field (12/07/2012, T‑470/09, Medi, EU:T:2012:369, § 20, 22-23, 39; 16/10/2013, C‑410/12 P, Medi, EU:C:2013:702), being therefore descriptive (for goods in Class 5) or weak (for the rest of the goods).

The figurative element comprises three leaves in a combination of black, green and white into a circle below and again in the middle of the verbal elements. Given that it is common to use such figurative elements (i.e. plants and/or leaves) in order to indicate the natural or organic origin of the relevant goods, said device possesses limited distinctive character. The stylisation of the sign will be perceived by the relevant public as being mainly decorative.

Neither of the signs have any element that could be perceived as more dominant (visually eye-catching) than others.

Visually and aurally irrespective of the different pronunciation in the different parts of the relevant territories, the signs coincide in the sequence of letters/sound ‘HERB’ and to a great extent in the depiction of a figurative device consisting of three leaves (represented twice in the contested sign). The signs differ in the remaining letters, ‘-A‘/’-I’, and ‘-LIFE/-MED’ which on account on their position (in the middle and at the end of the signs) and their descriptive or weak character (as regards the last verbal elements) will have less impact.

The fact that the signs coincide in their beginnings is particularly important since consumers generally tend to focus on the beginning of a sign when they encounter a trade mark, mainly 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, taking into account the distinctiveness issues of the different elements in the signs, for part of the relevant public (that will dissect the lowly distinctive element ‘LIFE’ in the earlier mark) the signs are considered visual and aurally similar to an average degree and for another part of the relevant public (that will perceive the verbal element of the earlier mark as meaningless) the signs are considered visually and aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the figurative elements in both signs will be perceived with the same concept by the relevant public, although these elements have a weak degree of distinctiveness, the signs are 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 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 average, despite the presence of some weak elements in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The contested goods are partially identical, partially similar and partially dissimilar to the opponent’s goods and services and the public assessed in this case is the general public, displaying a degree of attention ranging from average to high.

The signs are visually and aurally similar to an average degree for part of the relevant public and visually and aurally similar to a low degree for another part of the relevant public. Conceptually, the signs are similar to a low degree.

The distinctiveness of the earlier mark as a whole is average.

Taking into account the similarities at the beginnings of the signs, which are for part of the relevant public the most distinctive elements in the signs, a substantial part of the relevant public might be led to believe that the identical and similar goods come from the same or economically linked undertakings, this even with a high degree of attention.

Account is taken of the fact that consumers, professional or not, 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).

Considering all the above, the Opposition Division concludes that the differences between the signs are insufficient to counteract their similarity on account of the identical initial letters (H-E-R-B- *) and very similar figurative elements representing three leaves in a circular device.

Given all the foregoing, there is a likelihood of confusion on the part of the general public that will make no association with ‘herbal’. 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, and the opposition is partly well founded on the basis of the opponent’s earlier trade mark registration compared above.

It follows from the above that the contested sign must be rejected for the goods found to be identical or similar to those covered by 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.

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

- European Union trade mark registration No 16 447 633 for the figurative mark in Classes 3,5,29,30,32 and 35.

- European Union trade mark registration No 15 239 759 for the figurative mark in Classes 3,5,29,30,32 and 35.

These earlier marks have a narrower scope of protection than the one that has been chosen for the present comparison with the exception that they additionally include some goods in Class 29. These goods are clearly dissimilar to the contested goods in Class 5 that have been already found dissimilar as they have a different purpose and nature as well as different distribution channels. Moreover, they have different providers and target different publics. They are not in competition or complementary and therefore, no likelihood of confusion exists with respect to those goods and services.

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

Helen Louise MOSBACK

Claudia SCHLIE

Saida CRABBE

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.