OPPOSITION Nо B 3 116 465

 

Nathura S.p.A., Via Galilei, 20, 42027 Montecchio Emilia (RE), Italy (opponent), represented by Bugnion S.p.A., Largo Michele Novaro, 1/A, 43121 Parma, Italy (professional representative) 

 

a g a i n s t

 

Bereket Ilaç Kozmetik Gida San. Ve Tic. A.S, Istanbul Deri Organize Sanayi Bölgesi Vakum Cad.no:3 I-3 Özel Parsel Tuzla, Istanbul, Turkey (applicant), represented by Dr. Helen G. Papaconstantinou And Partners, Law Firm, 2, Coumbari Street Kolonaki, 106 74 Athens, Greece (professional representative).

On 05/08/2021, the Opposition Division takes the following

 

 

DECISION:

1.	Opposition No B 3 116 465 is rejected in its entirety.

 

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

 

REASONS

 

On 21/04/2020, the opponent filed an opposition against some of the goods of European Union trade mark application No 18 172 506 (figurative mark), namely against all the goods in Class 5. The opposition is based on international trade mark registration No 942 419 designating the European Union and Italian trade mark registration No 1 057 564 both for the figurative mark and Italian trade mark registration No 1 663 238 ‘NATHURA’ (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.

a) The goods

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

International trade mark registration designating European Union No 942 419

Class 5: Pharmaceutical and veterinary preparations but excluding those relating to the dental field; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; disinfectants; preparations for destroying vermin; fungicides, herbicides.

Italian trade mark registration No 1 057 564

Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

Italian trade mark registration No 1 663 238

Class 5: Pharmaceutical and veterinary preparations; dietetic substance and beverages for medical purposes; disinfectants; sanitary products for medical purposes; dietary supplements.

The contested goods are the following:

 

Class 5: Antibacterial soap; Sunburn ointments; Medicated after-shave lotions; Vitamin preparations; Collagen for medical purposes; Medicated hair lotions; Tonics [medicines]; Aseptic cotton; Acetates for pharmaceutical purposes; Amino acids for medical purposes; Nutritional supplements; Medicated soap; Medicated shampoos; Antibacterial handwashes; Medicated dry shampoos.

The contested goods are clearly all included in the opponent’s broad categories of pharmaceutical preparations; sanitary products for medical purposes; dietary supplements and materials for dressings of e.g. Italian trade mark registration No 1 057 564. 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, the goods to be found identical are directed at the public at large and at business customers with specific professional knowledge, such as in the pharmaceutical, medical and/or cosmetics sector and/or in the field of retail of goods belonging to these sectors.

It is apparent from the case-law that, insofar as pharmaceutical preparations in Class 5, 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). 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 the state of health. Such finding holds true for most of the relevant goods in Class 5 since they all affect the state of health.

Therefore, the degree of attention varies from average (e.g. aseptic cotton) to high (e.g. tonics [medicines]).

c) The signs

 

NATHURA Italian trade mark registration No 1 663 238 IR No 942 419 Italian trade mark registration No 1 057 564
Earlier trade marks	Contested sign

 

The relevant territory is the European Union and Italy.

 

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 earlier Italian trade mark No 1 663 238 is a word mark, consisting of the sole verbal element ‘NATHURA’.

The other earlier international and Italian registration are figurative marks, consisting of the verbal element ‘NATHURA’ depicted in standard, bold and black typeface, between two banal black bold lines. Above the verbal element is depicted a black and white representation of what will be perceived as a plant, or part of a plant, with four leaves of a rather decorative nature. These marks have no elements that are more distinctive or dominant (visually eye-catching) than other elements.

The contested sign is a figurative mark consisting of the verbal element ‘naturagen’, placed underneath a representation of a plant, or part of a plant, with three leaves both depicted in a green colour which will be perceived as being of a rather decorative nature.

Although the signs as a whole do not have any meaning for the public throughout the European Union, the similar string of letters ‘NATHURA/’NATURA’ will be recognised and associated with a Danish, German and Swedish word meaning ‘nature’ by the speakers of those languages, and it will be associated with the same concept by the rest of the relevant public due to the similarities of this word to its equivalents in various languages, such as ‘nature’ in English, French, ‘natura’ in Italian, Polish and Romanian and ‘natuur’ in Dutch. The same goes for the Spanish and Portuguese equivalent ‘naturaleza’. Although there is no such similar equivalent in Greek and Finnish language, the Greek and Finish-speaking consumers are likely to associate ‘NAT(H)URA’ with nature, as this word is commonly used on the market for all kinds of products, pointing to the importance of having for instance a natural composition or relating to nature. In addition, Finish-speaking consumers will understand the word also since there exist some words in Finish that have ‘NATUR’ as their origin, namely ‘naturelli’ (an adjective which means ‘natura’).

The relevant consumers, when perceiving a verbal sign, will indeed 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).

Although the element ‘NAT(*)URA’ will not be necessarily split from its letter ‘H’ or from its suffix ‘-gen’ in the contested sign, the recognition and descriptive character of this element is the same in the signs under comparison. The figurative element of the plant - or a part of a plant - with leaves, in the figurative elements of both marks merely stresses this concept and is therefore also considered of very limited distinctiveness.

As to the ending of the contested sign ‘-gen’, it is likely to be associated by the public with ‘genetics’ (‘the study of heredity and the variation of inherited characteristics’) or ‘genes’ (‘a unit of heredity which is transferred from a parent to offspring and is held to determine some characteristic of the offspring’, ‘a distinct sequence of nucleotides forming part of a chromosome, the order of which determines the order of monomers in a polypeptide or nucleic acid molecule which a cell (or virus) may synthesize’); (for both terms, information extracted from Oxford Dictionaries at http://www.oxforddictionaries.com/) due to the similarities of this word to its equivalents in various languages, such as ‘génétique’ in French, genética in Spanish and Portuguese, ‘genetica’ in Dutch and Italian, ‘Genetik’ in German and Swedish, ´genetika in Czech, Hungarian, Slovak and Slovenian etc. Therefore, this element is considered to be weak.

Consequently, the signs under comparison, albeit not devoid of distinctiveness as a whole, are allusive to a characteristic of the goods on account of the descriptive or otherwise very weak character of their elements ‘NATHURA’, ‘natura’ and ‘gen’.

Visually, the signs coincide in the letters ‘NAT(*)URA(***)’. In contrast the signs differ in the additional letter ‘H’ of the earlier marks which will not go unnoticed since it is unusual within the term ‘NATURA’ that - as detailed above - will be understood. The signs also differ in their (albeit weak) figurative aspects of the earlier Italian and international registration figurative marks, on the one hand, and the string of letters ‘-gen’ and the stylisation (albeit either weak or of a rather decorative nature) of the contested sign, on the other hand.

Although it is established legal practice, according to which it is considered that consumers pay more attention to the beginning of a mark, the outcome always depends on the circumstances of the case.

Also, in this regard, the opponent argues that the signs at issue would be almost identical on account of their string of letters ‘NAT(H)URA’ and their respective logos placed in the same position. However, the Opposition needs to take into account all the relevant factors into account when comparing the signs and the fact that they share some letters is only one of them.

In the present case, it is of particular importance that ‘NAT(*)URA’ has only very limited distinctiveness for the reasons explained above, and therefore is not likely to be remembered more clearly than the rest of the signs.

Furthermore, 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).

Therefore, the signs are considered visually similar to a low degree only.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the signs coincide in the sound of the letters ‘NAT(*)URA’, but they differ at least in the ending ‘gen’ of the contested sign. While the opponent’s marks consist of three syllables ‘NA-THU-RA’, the applicant’s sign consists of four syllables pronounced as ‘NA-TU-RA-GEN’. Therefore, the pronunciation of the signs coincides only in the first three syllables, while the contested sign differs in a fourth syllable. Moreover, the signs under comparison differ in length and rhythm, especially in the relevant territories where the letter ‘H’ of the earlier mark is pronounced, such as Romania or Finland.

Taking into account the aforesaid, the signs are considered aurally similar to low degree.

Conceptually, as stated above, although none of the signs as a whole do not have a meaning as such for the public throughout the European Union, the element ‘NATURA’/’NATHURA’, included in all signs and the representation of the leaves on a plant will be associated with a reference to ‘nature’ and are thus of very limited distinctiveness. The element ‘gen’ in the contested sign evokes a different concept as explained under c) and albeit weak the consumer’s attention will be attracted to this differentiation.

Therefore, the signs are conceptually similar only to a very 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 marks

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 in relation to this earlier mark.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier marks must be seen as below average for all the goods in question.

e) Global assessment, other arguments and conclusion

The goods are identical and directed at the public at large and at business consumers. The degree of attention varies from average to higher than average. The earlier marks are distinctive to only a below average degree.

The signs are similar to the extent that they have ‘NAT(*)URA’ in common and the representation of a plant or part of a plant. Since these elements are devoid of distinctiveness in relation to the relevant goods, the signs are, as a whole, only similar to a low degree.

It is now an established practice that, when the marks share a descriptive element or an element with a low degree of distinctive character, the assessment of likelihood of confusion will focus on the impact of the non-coinciding components on the overall impression conveyed by the marks. Considering this, the differences between the signs, in particular the additional and arbitrary letter ‘H’ in the earlier marks and the element ‘gen’ of the contested sign, which have no concept in common, suffice to offset the similarities between the signs that lies in the coinciding descriptive element.

In light of all the above, the Opposition Division considers that, contrary to the opponent’s arguments, and even for identical goods, that the differences between the marks are sufficient to exclude any likelihood of confusion, including for those goods for which the degree of attention is average.

Considering all the above, there is no likelihood of confusion for any part of the public in the relevant territory.

Therefore, the opposition must be rejected.

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

 

 

Francesca DRAGOSTIN

Cynthia DEN DEKKER

Fernando AZCONA DELGADO

 

 

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.