OPPOSITION Nо B 3 123 533

Biofarma, Société par actions simplifiée, 50 rue Carnot, 92284 Suresnes cedex, France (opponent), represented by Plasseraud IP, 66, rue de la Chaussée d’Antin, 75440 Paris Cedex 09, France (professional representative)

a g a i n s t

Hemperium GmbH, Spiegelstr. 11, 81241 Munich, Germany (applicant).

On 26/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 123 533 is upheld for all the contested goods, namely:

Class 5: Nutritional supplements.

2. European Union trade mark application No 18 160 808 is rejected for all the contested goods. It may proceed for the remaining goods.

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

REASONS

On 08/06/2020, the opponent filed an opposition against some of the goods of European Union trade mark application No 18 160 808 (figurative mark), namely against all the goods in Class 5. The opposition is based on inter alia, French trade mark registration No 1 578 104 ‘HYPERIUM’ (word 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. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s French trade mark registration No 1 578 104.

a) The goods

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

Class 5: Pharmaceutical products.

The contested goods are the following:

Class 5: Nutritional supplements.

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.

The contested nutritional supplements are substances prepared for special dietary requirements, with the purpose of treating or preventing disease. Therefore, their purpose is similar to that of the opponent’s pharmaceutical products (substances used to treat disease) 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, the contested nutritional supplements are considered similar to the opponent’s pharmaceutical products.

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 both at the public at large and business customers with specific professional knowledge or expertise, including, for example, medical professionals.

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). 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. The same findings apply to nutritional supplements, as they also affect a person’s health.

c) Distinctiveness of the earlier mark and comparison of the signs

HYPERIUM
Earlier trade mark	Contested sign

The relevant territory is France.

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 distinctiveness of the earlier mark, which, in the present case, is a single word, 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 present assessment will rest on the earlier mark’s inherent distinctiveness.

The word ‘HYPERIUM’ of the earlier mark has no meaning for the relevant public and is, therefore, distinctive.

The contested sign is composed of the verbal element ‘HEMPERIUM’, which is meaningless for the relevant public, the verbal element ‘GmbH’ and a figurative element showing some foliage resembling a cannabis or hemp plant, all placed on a blue label. The element ‘GmbH’ is the abbreviation in German of the legal form ‘Gesellschaft mit beschränkter Haftung’ meaning ‘company with limited liability’ in English (information extracted from Duden online dictionary on 07/05/2021 at https://www.duden.de/rechtschreibung/GmbH). This abbreviation refers to a type of legal entity common in Austria, Germany, Liechtenstein and Switzerland (where it is equivalent to a French société à responsabilité limitée). Legal entities from Austria, Germany, Switzerland, etc. commonly act under this abbreviation in France (information extracted from SOCIETE company name database on 07/05/2021 at https://www.societe.com/cgi-bin/search?champs=GmbH).

Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public in the pertinent territory that is familiar with this term and for whom it is a non-distinctive element with a limited impact on the overall perception of the contested sign. The same applies to the figurative elements of the contested sign. Both the depiction of the foliage and the blue label essentially are of a decorative nature and therefore non-distinctive in relation to nutritional supplements, which are typically based on ingredients of plant origin. Furthermore, none of the elements can be clearly considered visually more dominant than the others.

Visually, the signs coincide in their first letter ‘H’ and in the string of letters ‘PERIUM’ placed identically in both marks. They differ in letter ‘Y’ of the earlier mark and the letters ‘EM’ of the contested sign, as well as in the verbal element ‘GmbH’ and the figurative elements of the contested sign. However, the impact of these differences is limited and not sufficient to render the signs visually dissimilar, particularly since the additional specification of the legal form ‘GmbH’ is a non-distinctive element in the contested sign. Overall, the signs are, therefore, visually similar to an average degree.

Aurally, the earlier mark will be pronounced in three syllables, as ‘hy-per-ium’. The verbal element ‘HEMPERIUM’ of contested sign will also be pronounced in three syllables as ‘hem-per-ium’, while the verbal element ‘GmbH’ of the contested sign, which is non-distinctive, is unlikely to be pronounced by the relevant public. The pronunciation of the signs therefore coincides in two identical syllables in verbal elements of a very similar length. The aural difference between the marks primarily concerns the weak element ‘GmbH’, whilst the figurative aspects of the contested sign do not play a role. The marks are, therefore, aurally similar to a high degree.

Conceptually, although one of the contested sign’s elements, namely the verbal element ‘GmbH’, has a meaning, it only serves to identify the legal form of the company without introducing any other distinctive concept. This element does therefore not contribute to any conceptual difference between the signs. The attention of the relevant public will primarily be attracted by the additional fanciful verbal element ‘HEMPERIUM’, which has no meaning. The figurative elements of the contested sign, which are non-distinctive, also do not create any conceptual differences between the signs. Therefore, the conceptual comparison is neutral, that is to say, it does not influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) 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 that can be made with the registered mark, and the degree of similarity between the marks, and between the goods or services identified (recital 11 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).

Account must also be taken of the fact that average 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 with 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).

As concluded above, the contested goods are similar to the opponent’s goods and the goods at issue target both the public at large and business customers, whose degree of attention is relatively high. The earlier mark has an average degree of inherent distinctiveness. The signs are visually similar to an average degree, aurally similar to a high degree, and a conceptual comparison is not possible. The similarity between the signs is because the verbal element in the earlier mark is almost identically reproduced in the only distinctive verbal element of the contested sign. The differences between the signs lie, in contrast, in non-distinctive elements. Overall, particularly when taking into account the principle of imperfect recollection, the differences are insufficient for safely ruling out any likelihood of confusion.

Considering all the above, there is a likelihood of confusion on the part of the public in the relevant territory, who is familiar with the meaning of the verbal element ‘GmbH’, and this renders it non-distinctive in the contested sign.

The present opposition is, therefore, well founded on the basis of the opponent’s French trade mark registration No 1 578 104.

It follows that the contested trade mark must be rejected for all the contested goods.

As earlier French trade mark registration No 1 578 104 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right 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

Solveiga BIEZA

Philipp HOMANN

Andrea VALISA

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.