OPPOSITION No B 3 108 009

Large Life Limited, 6 Bexley Square, M3 6BZ, Salford, United Kingdom (opponent), represented by David Müller and Václav Müller, Filipova 2016/6, 14800, Praha 4, Czech Republic (professional representatives)

a g a i n s t

Laboratoires Grand Fontaine S.L., Valencia, 287 2º 1ª, 08009, Barcelona, Spain (applicant), represented by Garreta i Associats Agència de la Propietat Industrial S.L., Pau Clarís, 108 1º 1ª, 08009, Barcelona, Spain (professional representative).

On 14/04/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 108 009 is upheld for all the contested goods, namely:

Class 5: Pharmaceuticals; dietetic substances adapted for medical use; baby food.

Class 29: Jellies; milk; milk products; edible oils and fats.

2. European Union trade mark application No 18 115 216 is rejected for all the contested goods. It may proceed for the remaining goods and services.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 18 115 216, namely against some of the goods in Classes 5 and 29. The opposition is based on, inter alia, Czech trade mark registration No 356 592  . 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. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Czech trade mark registration No 356 592.

a) The goods

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

Class 5: Dietetic beverages adapted for medical use, dietary supplements for infants, mineral food supplements, dietary supplements and nutritional supplements, capsules for pharmaceutical purposes, nervous system (tonics), tonic (medicines), milk sugar for medical purposes (lactose), medicinal teas, vitamin preparations, gelatin for medical purposes, amino acid preparations for medical purposes, vitamin drinks, protein food supplements, dietary supplement drinks, energy bars replacing food as food supplements.

Class 29: Protein milk, whey, kumys (milk drink), milk, dairy products, milk drinks, tofu, gelatin, edible oils.

The contested goods are the following:

Class 5: Pharmaceuticals; Dietetic substances adapted for medical use; Baby food.

Class 29: Jellies; Milk; Milk products; Edible oils and fats.

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 dietetic substances adapted for medical use are identical to the opponent’s dietary supplements and nutritional supplements.

The opponent’s dietary supplements and nutritional supplements are substances prepared for special dietary requirements, with the purpose of treating or preventing disease. Bearing this in mind, their purpose is similar to that of the contested pharmaceuticals insofar as they are used to improve a patient’s medical condition. The relevant public coincides and the goods generally have the same distribution channels. Therefore, these goods are considered similar.

The contested baby food coincides with the opponent’s dietetic beverages adapted for medical use in their purpose, manufacturer and distribution channel. Therefore, these goods are, at least, similar.

Contested goods in Class 29

Edible oils and milk are identically included in both lists of goods.

The contested edible fats overlap with and are identical to the opponent’s edible oils.

The contested milk products are a broad category which the Opposition Division cannot dissect ex officio. Therefore, these goods are considered to contain and are identical to the opponent’s milk.

The contested jellies are at least similar to the opponent’s gelatine since these goods may be manufactured by the same undertakings, intended for the same public and sold via the same distribution channels.

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 medical professionals.

The degree of attention is considered to be average for the goods in Class 29 while it is above average as regards the goods in Class 5. Since 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.

c) The signs

	FONTAMIX
Earlier trade mark	Contested sign

The relevant territory is the Czech Republic.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark consists of the verbal element ‘Amix’ in slightly stylized letters and with its final ‘x’ in larger size and having a small circle above it. Since this verbal element lacks any meaning, it has average distinctiveness.

The contested sign consists of the verbal element ‘FONTAMIX’. This word is meaningless and, therefore, has an average degree of distinctiveness.

It is recalled that 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; 19/12/2011, R 233/2011-4, BEST TONE (fig.) / BETSTONE, § 24; 13/12/2011, R 53/2011-5, JUMBO (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Visually, the signs coincide in the letter sequence ‘AMIX’ and differ in the additional element ‘FONT’ in the contested sign as well as in the stylization in the earlier mark as explained above. While the contested mark is meaningless, the relevant public is likely to perceive the coinciding letter sequence ‘AMIX’ therein, partly because it takes up half of the mark and also because the final ‘X’ is rather uncommon in Czech and will be retained in consumers’ memory. Given that the only element composing the earlier mark is reproduced in the contested sign, and the impact of this coincidence cannot be fully offset by the differences, the signs are similar to an average degree.

Aurally, the signs coincide in the verbal element ‘AMIX’ and differ in the contested sign’s other verbal component ‘FONT’. While the applicant is correct in claiming that the beginning of signs usually has importance, the fact remains that the contested sign entirely reproduces the only element composing the earlier mark. The additional element ‘FONT’ adds one more syllable, however, the signs’ pronunciation – FONT-A-MIX / A-MIX – will still result in the signs producing similar aural impression, with the common final ‘X’ being rather memorable. Based on all the foregoing, the signs are similar to an average degree.

Conceptually, neither sign has any meaning, therefore, the conceptual aspect plays no role.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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

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.

Account is taken of the fact 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).

In the present case, the goods are identical or similar, and the signs are visually and aurally similar, too. As explained above, the contested sign identically reproduces the whole of the element composing the earlier mark. The Opposition Division is of the opinion that this coincidence is capable of counteracting the differences between the signs, and consumers are likely to presume that the identical or similar goods originate from the same or linked undertakings.

In its observations, the applicant claims that it is the owner of several ‘FONT’ marks and this shows that it had no intention to imitate the opponent’s mark. In this regard, it suffices to recall that the right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings. Therefore, when considering whether or not a contested EUTM application falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM. In addition, how the applicant intends to use the contested sign is not relevant since this has no impact on the objective criteria assessed above, namely the similarity of the signs and the goods.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Czech trade mark registration No 356 592. It follows that the contested trade mark must be rejected for all the contested goods, even considering the higher degree of attention of the public for some of the goods at issue.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark examined, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As earlier Czech trade mark registration No 356 592 leads to the success of the opposition and to the rejection of the contested trade mark for all the contested goods, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

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

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

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

The Opposition Division

Michaela SIMANDLOVA

Ferenc GAZDA

Octavio MONGE GONZALVO

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.