OPPOSITION Nо B 3 107 235

 

Dronkers IP B.V., Oudezijds Achterburgwal 131, 1012 DE Amsterdam, The Netherlands (opponent), represented by Merk-Echt B.V., Keizerstraat 7, 4811 HL Breda, The Netherlands (professional representative) 

 

a g a i n s t

 

Pharma Puglia Soc. Agr. a r.l., Via Dell'Orso 9, 20121 Milano, Italy (applicant), represented by Giovanni Santovito, Via Firenze, 37, 70031 Andria, Italy (professional representative).

On 27/05/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 107 235 is rejected in its entirety.

 

2.	The opponent bears the costs, fixed at EUR 300.

 

REASONS

 

On 24/12/2019, the opponent filed an opposition against all the goods of European Union trade mark application No 18 123 400 (figurative mark). The opposition is based on European union trade registration No 16 010 621, (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.

 

 

a) The goods and services

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

 

Class 5: Dietetic foodstuffs and dietetic substances adapted for medical or veterinary use; Dietary supplements for humans and animals; food supplements, consisting primarily of hempseed; hemp protein powder for use as a nutritional supplement; protein supplements made in whole or in substantial part of hemp; dietary and nutritional supplements made in whole or in substantial part of hemp; hemp protein for use as a nutritional supplement in various powdered and ready-to-drink beverages.

Class 29: Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats; vegetarian foodstuffs containing hemp and/or vegetables (not included in other classes); vegetarian burgers, not included in other classes; dried pulses; snack foods containing hemp and/or vegetables, not included in other classes; edible oils and fats, including hemp oil; hempseeds for consumption; protein based nutrient dense nut and seed-based snack bars; fruit-based meal replacement powders; fruit-based meal replacement bars; hemp milk used as a milk substitute.

Class 30: Coffee, tea, cocoa and artificial coffee; rice, tapioca, sago; flour and preparations made from cereals, bread, pastry and confectionery, edible ices; sugar; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice; vegetarian foodstuffs containing cereals and/or herbs, not included in other classes; seeds for human consumption, including hemp seeds; crackers; grain-based chips; pretzels; snack food products consisting of cereal products; snack food products made from cereal flour; cereal bars and energy bars; crackers; vegetable flour; enriched farina [meal]; flour mixes; nut flours; oilseed flour for food.

Class 31: Grains and agricultural, horticultural and forestry products not included in other classes; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt; seeds; flax [linseed] plant seeds; edible seeds [unprocessed]; unprocessed flax seeds; germ (seed -) for botanical purposes; unprocessed oil seeds; oilseed flour.

Class 35: Wholesaling and retailing in the field of dietetic food and substances adapted for medical or veterinary use, dietary supplements for humans and animals, food supplements, mainly comprising hemp seeds, hemp protein powder for use as food supplements, protein supplements, consisting wholly or principally of hemp, diet food supplements consisting wholly or principally of hemp, hemp protein for use as a nutritional supplement in various powered and ready-to-drink beverages; wholesaling and retailing in the field of meat, fish, poultry and game, meat extracts, preserved, dried and cooked fruits and vegetables, jellies jams, compotes, eggs, milk and milk products, edible oils and fats, vegetarian foodstuffs containing hemp and/or vegetables, vegetarian burgers, dried pulses, snack foods containing hemp and/or vegetables, edible oils and fats, including hemp oil; wholesaling and retailing in the field of hemp seeds for food, snack bars based on nuts and seeds, based on proteins and rich in nutrients, meal replacement powders based on fruits, meal replacement bars based on fruits, hemp milk used as a milk substitute; wholesaling and retailing in the field of coffee, tea, cocoa, artificial coffee, rice, tapioca, sago, flour and preparations made from cereals, bread, pastries and confectionery, edibles ices, sugar, honey, treacle, yeast, baking-powder, salt, mustard, vinegar, sauces (condiments), spices, ice, vegetarian foodstuffs containing cereals and/or herbs, seeds for human consumption, including hemp seeds; wholesaling and retailing in the field of crackers, grain-based chips, pretzels, snack products consisting of cereal products, snack foods made from cereal flour, cereal and energy bars, crackers, vegetable flour, enriched farina (meal), flour mixes, nut flours, oilseed flour for food; wholesaling and retailing in the field of seeds and agricultural, horticultural and forestry products, fresh fruits and vegetables, sowing seeds, natural plants and flowers, foodstuffs for animals, malt, sowing seeds, flax (linseed) plant seeds, unprocessed edible seeds, unprocessed linseed, seed germ for botanical purposes, unprocessed oil seeds, oilseed flour; wholesaling and retailing in the field of the aforesaid goods provided by mail order and the internet.

The contested goods are the following:

Class 3: Extracts of flowers [perfumes]; extracts of flowers; extracts of perfumes; essential oils and aromatic extracts; herbal extracts for cosmetic purposes; cosmetics and cosmetic preparations; cosmetic preparations for body care; ethereal oils; aromatics [essential oils]; oils for cosmetic purposes; food flavourings [essential oils]; essential vegetable oils; food flavorings prepared from essential oils.

Class 5: Extracts of medicinal plants; extracts of medicinal herbs; plant extracts for pharmaceutical purposes; herbal extracts for medical purposes; plant and herb extracts for medicinal use; pharmaceutical drugs; homeopathic pharmaceuticals; pharmaceutical compositions; pharmaceuticals; chemical preparations for medical purposes; chemical preparations for pharmaceutical purposes; pharmaceutical preparations for use in dermatology; preparations for use as additives to food for human consumption [medicated].

Class 22: Hemp; dressed hemp; hemp fibers; tow; natural fibers; textile fibres.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

  

The term ‘including’ used in the opponent’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

 

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 3

Cosmetics include goods such as tanning and slimming creams, and dietary supplements and dietetic preparations also include goods which are primarily intended to have a cosmetic effect, such as tanning pills and slimming pills. Therefore, these broad categories of goods both include goods that can have the same intended purpose (tanning/slimming the consumers’ body). Furthermore, tanning/slimming creams and pills are directed at the same consumers, may be sold through the same distribution channels and can also be produced by the same undertakings.

Consequently, the contested herbal extracts for cosmetic purposes; cosmetics and cosmetic preparations; cosmetic preparations for body care; oils for cosmetic purposes are similar to the opponent’s dietary supplements for humans and animals in Class 5.

However, the contested extracts of flowers [perfumes]; extracts of flowers; extracts of perfumes; essential oils and aromatic extracts; ethereal oils; aromatics [essential oils]; food flavourings [essential oils]; essential vegetable oils; food flavorings prepared from essential oils have nothing in common with the opponent’s dietetic/dietary and nutritional supplements in Class 5. Nor do they have anything in common with the opponent’s meat-, fish-, fruit- or vegetable-based food and the dairy products in Class 29, nor with the prepared or preserved foodstuffs in Class 30, nor with the agriculture, horticulture and forestry products in Class 31, nor with the retail services of all the goods in the afore mentioned classes in Class 35. The conflicting goods and services have different natures and purposes. They are not likely to originate from the same producers/providers, are not commercialized through the same distribution channels and do not target the same relevant public. Moreover, these goods and services are not complementary to each other, nor are they in competition. They are therefore dissimilar.

Contested goods in Class 5

The contested goods in this class are all medicinal plant/herb extracts and pharmaceutical preparations and are similar to the opponent’s dietary supplements for humans and animals because they have the same purpose and coincide in distribution channels and relevant public. Some can even be in competition.

Contested goods in Class 22

The opponent claims that the contested goods in this class are similar to the agricultural, horticultural and forestry products not included in other classes in Class 31 of the opponent. The Opposition Division does not share the opponent’s view because the applicant’s goods in this class are all raw textile fibers that are used in the manufacturing of textiles and textile goods. On the other hand, the opponent’s agricultural, horticultural and forestry products not included in other classes are goods specifically intended for human consumption and, consequently, the contested hemp; dressed hemp; hemp fibers; tow; natural fibers; textile fibres have nothing in common with the opponent's goods and services, listed above. They are therefore 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 similar are directed at the public at large as well as the professional public with specific professional knowledge or expertise in the pharmaceutical sector.

The degree of attention for the goods in Class 3 is average. Regarding the goods in Class 5, 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.

 

Consequently the degree of attention of the relevant public varies from average (goods in Class 3) to higher than average (goods in Class 5).

 

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).

 

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

 

The verbal element 'PHARMA' in the contested sign is descriptive of the relevant goods, since it indicates that the relevant goods are pharmaceuticals, have a pharmaceutical effect or can be bought in pharmacies. This verbal element therefore lacks any degree of distinctiveness.

 

The verbal element 'PUGLIA' in the contested sign is meaningless for the vast majority of the public in the relevant territory and is, therefore, distinctive to an average degree. However, the remaining part of the public, the public coming from Italy or familiar with Italian, will perceive 'PUGLIA' as the region located in the South of Italy and, consequently, as an indication of the geographical origin of the relevant goods, as the place of production of the goods. This element therefore has a low degree of distinctiveness for the Italian consumers in the relevant territory.

The figurative element in the contested sign, depicting a stylised flower in different shades of green and blue is allusive to the characteristics of the relevant goods, since it indicates that the relevant goods originate from plants or flowers. The green color of the figurative element reinforces this finding. Flowers or leaves are frequently used in the field of cosmetics and pharmaceuticals to make reference to the natural ingredients or the natural effect of the products. This figurative device, therefore, has a low degree of distinctiveness in relation to the relevant goods.

The opponent claims that the figurative device in the earlier mark has a high degree of distinctiveness in relation to the relevant goods. The Opposition Division does not agree with the opponent’s statement because the figurative device is allusive of the characteristics of the relevant goods and consequently distinctive to a low degree in relation to the relevant goods, as established above. The opponent’s claim is set aside.

The contested sign, contrary to the applicant’s point of view, has no element that could be considered clearly more dominant than other elements. 

 
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).

 

Visually, the signs coincide in that they both contain the depiction of a stylised flower. They show, however, significant differences in the graphical depiction of the flowers. The contested sign is depicted in different shades of green and blue and its stem is clearly visible, whereas the earlier mark is depicted in black and white with bigger leaves and without stem. The signs further differ in the additional verbal elements ‘PHARMA’ and ‘PUGLIA’ of the contested sign, with no counterparts in the earlier mark.

Based on the distinctiveness and the weight of all the elements composing the signs, they are visually similar to a low degree.

 

Purely figurative signs are not subject to a phonetic assessment. As one of the signs is purely figurative, it is not possible to compare them aurally.

 

Conceptually, the signs coincide in that they both contain the depiction of a stylized flower which is, however, weak in relation to the relevant goods. Since the conceptual similarity emanates from a weak element, the signs are conceptually similar to a low degree only.

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all the relevant goods.

 

e) Global assessment, other arguments and conclusion

 

According to the case-law of the Court of Justice, 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, § 22). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

The goods and services are partly similar and partly dissimilar and target the public at large, which is the public taken into account in this decision, as well as professionals. The degree of attention of the public varies from average to higher than average.

The signs are visually and conceptually similar to a low degree on account of their figurative element depicting a flower, which is weak in relation to the relevant goods, as established above. The signs differ in all their other characteristics, namely in the details of the figurative device and in the additional verbal elements of the contested sign. The signs cannot be compared aurally. The distinctiveness of the earlier mark is low.

The additional verbal element of the contested sign ‘PUGLIA’, which is distinctive for the majority of the relevant public and weak for the Italian-speaking public, together with the verbal element ‘PHARMA’, albeit non-distinctive, are clearly perceivable and sufficient to exclude any likelihood of confusion between the signs, especially taking into account that the remaining coinciding elements in the signs, namely the figurative elements, are weak in relation to the relevant goods for the relevant public.

 

Considering all the above, and even taking into account that the level of attention of the relevant public is higher in relation to part of the goods, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

  

This absence of a likelihood of confusion equally applies to the professional public, bearing in mind the low level of visual and conceptual similarity between the signs and the public’s higher level of attention for part of the 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.

 

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

 

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

 

 

 

The Opposition Division

 

 

Martin MITURA

Sylvie ALBRECHT

Christophe DU JARDIN

 

 

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.