CANCELLATION No 41 041 C (INVALIDITY)

Herbalife International, Inc., 800 W. Olympic Blvd., Suite 406, 90015 Los Angeles, United States (applicant), 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 (EUTM proprietor), represented by Tomasz Wojdal, ul. Targowa 35, 90‑043 Łódź, Poland (professional representative).

On 02/02/2021, the Cancellation Division takes the following

DECISION

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

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

REASONS

The applicant filed an application for a declaration of invalidity against all the goods of European Union trade mark registration No 18 097 616 for the figurative mark . The application is based on, inter alia, European Union trade mark registration No 4 927 919 for the figurative mark . The applicant invoked Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the signs are similar as they both begin with the more dominant and distinctive element ‘HERB*’ and even have very similar figurative elements that depict a leaf - the ends of the verbal elements, ‘*MED’ of the contested sign and ‘*LIFE’ of the earlier mark, being less relevant. All of these will give rise to visual, aural and conceptual similarities. As the goods are either identical or highly similar, there will be a risk of confusion among the relevant consumers, who are the general public with an average or below-average degree of attention.

The EUTM proprietor denies the applicability of Article 8(1)(b) EUTMR, as the contested mark comprises ‘HER*’, ‘*BIO*’ and ‘*MED’, as opposed to the earlier marks, where the dissection of ‘HERB*’ and ‘*LIFE’ will be immediate for the public.

LIKELIHOOD OF CONFUSION — ARTICLE 60(1)(a) EUTMR IN CONJUNCTION WITH ARTICLE 8(1)(b) EUTMR

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

The application is based on more than one earlier trade mark. The Cancellation Division finds it appropriate to first examine the application in relation to the applicant’s European Union trade mark registration No 4 927 919 for the figurative mark.

a) The goods and services

The goods and services on which the application 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.

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.

Some of the contested goods (for example cosmetics) are identical to the goods and services on which the application is based. For reasons of procedural economy, the Cancellation Division will not undertake a full comparison of the goods and services listed above. The examination of the application will proceed as if all the contested goods and services were identical to those of the earlier mark.

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 assumed to be identical target the public at large, while others target both the public at large and professionals with specific professional knowledge or expertise, for example, in the medical sector.

The applicant argues that the level of attention is low in relation to some of the goods, because consumers do not take a long time to choose products in the cosmetic, health and beauty sectors, in particular the healthy-eating, well-being and skincare industries. However, the mere fact that the relevant public makes an impulse purchase of some goods does not mean that the level of that public’s attention is lower than average (09/04/2014, T‑623/11, Milanówek cream fudge, EU:T:2014:199, § 34).

Therefore, the public’s degree of attentiveness may vary from average, for example, for goods in Class 32 (that are usually purchased daily and have no direct risk to the consumer’s health), to high, for other goods, such as those in Class 5 (that may have important consequences for the consumer’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). 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 the case-law cited therein) or veterinary preparations and dietary supplements for animals (13/05/2015, T‑169/14, Koragel / CHORAGON, EU:T:2015:280, § 38). Medical professionals in particular 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 on 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 trade mark

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 applicant argues that the verbal element ‘HERBIOMED’ is more dominant than the figurative element in the contested mark. It argues the same for the verbal element ‘HERB*’ in the earlier mark. However, even though ‘HERBIOMED’ appears above the figurative element, it is the same size, and therefore, neither this element nor ‘HERB*’ in the earlier mark (which is the same size as the figurative element and ‘*LIFE’) are more dominant than the rest of the elements. In addition, contrary to the depiction above, the contested mark was not registered in colour, but rather in black and white.

The applicant relies heavily on the fact that the signs contain the same prefix, namely ‘HERB*’, to explain their similarity. However, it is worth remembering that 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). Taking this into account, the Cancellation Division shares the EUTM proprietor’s view that the contested mark will be broken down into the three elements ‘HER*’, ‘*BIO*’ and ‘*MED’, even if these elements do not appear in colour, whereas the earlier mark will be clearly perceived as ‘HERBA*’ and ‘*LIFE’, for the reasons explained below.

The verbal element ‘BIO’ is widely used and well known as a component of compound words that are associated with products containing natural components or ingredients (10/09/2015, T‑610/14, BIO organic, EU:T:2015:613, § 17-18; 21/02/2013, T‑427/11, Bioderma, EU:T:2013:92, § 45-46, 53; 29/04/2010, T‑586/08, BioPietra, EU:T:2010:171, § 25; 19/01/2005, T‑387/03, Bioknowledge, EU:T:2005:14, § 30). As for ‘MED’, the Court has confirmed that it is widely understood as an abbreviation of ‘medical’ or ‘medicine’ (29/09/2008, T‑166/06, Powdermed, EU:T:2008:408, § 24, 27; 19/12/2013, R 1247/2013‑5, IMED / IMEX (fig.) et al., § 19; 17/02/2015, R 2050/2014‑5, MedSurg, § 15). Both ‘*BIO*’ and ‘*MED’ will be either directly descriptive of the goods at issue, or at least weak in relation to the all the relevant public, due to the fact that the goods might contain natural products or originate from biological agriculture, be biologically developed, and/or relate to ‘medicines’ or be for ‘medical’ use.

Although the EUTM proprietor argued that the verbal element ‘HER*’, present in the contested mark, will be understood, the Cancellation Division considers that this will only be the case for the English-speaking public, who will see either a pronoun or a possessive determiner in the word denoting ‘a female person or animal previously mentioned or easily identified’ or ‘belonging to or associated with a female person or animal previously mentioned or easily identified’ (information extracted from Lexico Dictionary on 19/01/2021 at https://www.lexico.com/en/definition/her). For this part of the public this word will be weak, because it suggests the goods specifically target women. For the remaining consumers, the degree of distinctiveness of the word is average, as it has no meaning.

The public will dissect the earlier trade mark into ‘HERBA*’ and ‘*LIFE’, as the latter is a basic English word understood throughout the European Union (15/10/2018, T‑444/17, life coins / LIFE et al., EU:T:2018:681, § 52). As ‘*LIFE’ is understood to mean vitality and energy, and bearing in mind the protected goods are body care and hygiene products, pharmaceuticals, nutritional supplements and food (including beverages), this element is weak for these goods, which are used to maintain a healthy and vigorous life. As for ‘HERBA*’, a part of the relevant general public (for example, the English and Spanish-speaking public) might associate it with ‘herb’ and/or ‘herbal’ (‘herbal’ also in Spanish), referring or relating to ‘any plant with leaves, seeds, or flowers used for flavouring, food, medicine, or perfume’ (information extracted from Lexico Dictionary on 19/01/2021 at https://www.lexico.com/en/definition/herb). This element is, therefore, weak for this part of the public in relation to some goods in Classes 29 and 30, such as herbal preparations and teas. However, another part of the relevant general public will not immediately associate ‘HERBA’ with this meaning, as the word for ‘herbs’ or ‘herbal’ is completely different in their respective languages. This will be the case, for example, for the Bulgarian- and Hungarian-speaking public, as their equivalent words are bilka and fú respectively.

The figurative element in both marks comprises three leaves. It is directly descriptive or at least weak in relation to all the goods and it is linked to the verbal elements seen in the marks. For example, part of the public will perceive that the goods can consist of herbs, or some plants can be present in their composition (‘HERBA*’), and another part of the public will perceive that the goods provide vitality (‘*LIFE’) and/or are biological (‘*BIO*’) and/or are used in the medical field (‘*MED’).

Visually, for the reasons mentioned above, even Bulgarian and Hungarian consumers will dissect the earlier mark into ‘HERBA*’ and ‘*LIFE’ and the contested sign into the elements ‘HER*’, ‘*BIO*’ and ‘*MED’. Consequently, even taking account of the descriptiveness/weakness of ‘*LIFE’, ‘*BIO*’ and ‘*MED’ the marks are visually similar to a low degree for the whole public, given that their beginnings are different (‘HERBA*’ versus ‘HER*’) and so are the rest of the elements (‘*LIFE’ versus ‘*BIO*’ and ‘*MED’).

Aurally, even though the marks have a number of letters in common, and irrespective of the languages spoken by the consumers and the weakness of some verbal elements for some consumers (or all of them for the English-speaking public), the marks are also aurally similar only to a low degree, due to the very different pronunciation of ‘LIFE*’, ‘*BIO*’ and ‘*MED’, and the fact that ‘HERBA*’ will be pronounced as two syllables, while ‘HER*’ pronounced as only one.

Conceptually, the marks are not similar for part of the public, for example, Bulgarian and Hungarian consumers who, as mentioned above, will not understand either ‘HERB*’ or ‘HER*’ but will grasp the semantic concepts of ‘*LIFE’, ‘*BIO*’ and ‘*MED’.

For English-speakers, the marks are conceptually not similar because they will understand all the verbal elements that comprise the signs with their different meanings. Furthermore, other consumers, such as Spanish-speaking ones, will understand ‘HERBA*’ but not ‘HER*’. Even in relation to this kind of consumer, the marks will be conceptually not similar since all the elements that they understand have different meanings.

As the signs have been found similar (though only to a low degree), the examination of likelihood of confusion will proceed.

d) Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The applicant did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. 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 for some consumers, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (eighth recital of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

As the applicant argues, the signs share four letters at their beginnings, and the figurative element is very similar. However, the consumers will not perceive the element ‘HERB*’ in both marks but rather, as mentioned above, ‘HERBA*’ in the earlier mark and ‘HER*’ in the contested sign. This issue, together with the presence of the completely different verbal elements ‘*LIFE’, ‘*BIO*’ and ‘*MED’, make the signs visually and aurally similar to a low degree and conceptually not similar; and this in spite of the weakness of the terms ‘*LIFE’, ‘*BIO*’ and ‘*MED’. This will preclude the possibility of confusion for any part of the public, either directly or indirectly, even in the presence of identical goods and even taking into account an average degree of attention, the fact that the public concerned is the general public, the average degree of distinctiveness of the earlier mark and the imperfect recollection of the marks that the applicant relies on. It follows that the application filed under Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR must be rejected.

The applicant also based its application 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 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. Moreover, they are even less similar to the contested mark due to the presence of the verbal element ‘NUTRITION’. Consequently, a fortiori, no likelihood of confusion exists with respect to those earlier rights.

COSTS

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

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

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

The Cancellation Division

Richard BIANCHI

María Belén IBARRA DE DIEGO

Ana MUÑIZ RODRÍGUEZ

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.