OPPOSITION Nо B 3 116 008

Artesania Agricola, S.A., Ctra. Vilafranca, Km. 4, 08810 Sant Pere de Ribes (Barcelona), Spain (opponent), represented by Roeb y Cia, S.L., Plaza de Cataluña, 4 - 1º, 28002 Madrid, Spain (professional representative)

a g a i n s t

Unilab LP, 966 Hungerford Drive, Suite 3B, 20850 Rockville, United States (applicant), represented by Kondrat & Partners, Al. Niepodległości 223/1, 02‑087 Warszawa, Poland (professional representative).

On 29/07/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 116 008 is partially upheld, namely for the following contested goods:

Class 5: Pharmaceutical products intended for the treatment of the digestive system or the support of the digestive system; medical preparations intended for the treatment of the digestive system or the support of the digestive system; vitamins intended for the treatment of the digestive system or the support of the digestive system; mineral food supplements intended for the treatment of the digestive system or the support of the digestive system; mineral waters for medical purposes intended for the treatment of the digestive system or the support of the digestive system; preparations for increasing the effectiveness of treatments intended for the treatment of the digestive system or the support of the digestive system; diet supplements; dietetic foods intended for the treatment of the digestive system or the support of the digestive system; dietary substances intended for the treatment of the digestive system or the support of the digestive system; herbal preparations for medical use intended for the treatment of the digestive system or the support of the digestive system; medicinal herbs intended for the treatment of the digestive system or the support of the digestive system; tea for medical purposes intended for the treatment of the digestive system or the support of the digestive system; infant formula; medicinal drinks, herbs and infusions intended for the treatment of the digestive system or the support of the digestive system; tonics [medicines] intended for the treatment of the digestive system or the support of the digestive system.

2. European Union trade mark application No 18 180 917 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

On 14/04/2020, the opponent filed an opposition against some of the goods of European Union trade mark application No 18 180 917 ‘Verdin’ (word mark), namely against some of the goods in Class 5. The opposition is based on Spanish trade mark registration No M 2 960 295 ‘VERDIUM’ (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:

Class 5: Dietetic food and substances adapted for medical use.

The contested goods, after a restriction done by the applicant on 21/07/2020 are the following:

Class 5: Pharmaceutical products intended for the treatment of the digestive system or the support of the digestive system; medical preparations intended for the treatment of the digestive system or the support of the digestive system; vitamins intended for the treatment of the digestive system or the support of the digestive system; mineral food supplements intended for the treatment of the digestive system or the support of the digestive system; mineral waters for medical purposes intended for the treatment of the digestive system or the support of the digestive system; preparations for increasing the effectiveness of treatments intended for the treatment of the digestive system or the support of the digestive system; diet supplements; dietetic foods intended for the treatment of the digestive system or the support of the digestive system; dietary substances intended for the treatment of the digestive system or the support of the digestive system; herbal preparations for medical use intended for the treatment of the digestive system or the support of the digestive system; medicinal herbs intended for the treatment of the digestive system or the support of the digestive system; tea for medical purposes intended for the treatment of the digestive system or the support of the digestive system; infant formula; sanitary preparations for medical purposes intended for the treatment of the digestive system or the support of the digestive system; medicinal drinks, herbs and infusions intended for the treatment of the digestive system or the support of the digestive system; tonics [medicines] intended for the treatment of the digestive system or the support of the digestive system.

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 vitamins intended for the treatment of the digestive system or the support of the digestive system; diet supplements; dietetic foods intended for the treatment of the digestive system or the support of the digestive system; dietary substances intended for the treatment of the digestive system or the support of the digestive system; mineral food supplements intended for the treatment of the digestive system or the support of the digestive system and infant formula are included in the broad category of, or overlap with, the opponent’s dietetic food and substances adapted for medical use. Therefore, they are identical.

Dietetic food and substances adapted for medical use 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 pharmaceutical products intended for the treatment of the digestive system or the support of the digestive system; medical preparations intended for the treatment of the digestive system or the support of the digestive system; mineral waters for medical purposes intended for the treatment of the digestive system or the support of the digestive system; preparations for increasing the effectiveness of treatments intended for the treatment of the digestive system or the support of the digestive system; herbal preparations for medical use intended for the treatment of the digestive system or the support of the digestive system; medicinal herbs intended for the treatment of the digestive system or the support of the digestive system; tea for medical purposes intended for the treatment of the digestive system or the support of the digestive system; medicinal drinks, herbs and infusions intended for the treatment of the digestive system or the support of the digestive system; tonics [medicines] intended for the treatment of the digestive system or the support of the digestive system, (substances used to treat disease) insofar as they are used to improve a patient’s medical condition related to the digestive system. The relevant public coincides and the goods generally have the same distribution channels. Therefore, these goods are considered similar.

The contested sanitary preparations for medical purposes intended for the treatment of the digestive system or the support of the digestive system belong to the broader category of sanitary preparations. They are normally used to protect and promote health by providing a clean environment and stopping the spread of harmful agents, such as bacteria, by means of disinfectants and sterile pads. The opponent’s goods, on the other hand, consist of dietetic food and substances intended to provide nutrients that are beneficial to health. The aforementioned contested goods and the opponent’s goods have different natures, purposes and methods of use. Furthermore, these goods are neither complementary nor in competition. Although they may conceivably be sold through the same distribution channels and target the same relevant public, these goods are not normally produced by the same manufacturers and consumers will not expect them to come from the same undertaking. Therefore, they are 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 identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise.

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).

Therefore, given that all the goods have a medical purpose that directly impacts on health, the level of attention will be high.

c) The signs

VERDIUM	Verdin
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 or weakly distinctive elements.

The applicant points out that the coinciding part ‘verdi’ of both signs is devoid of any distinctive character, since it is rather descriptive as it refers to the term ‘verde’ which means ‘green’ in Spanish and therefore, the endings ‘-N’ and ‘-UM’ will catch the consumers attention.

However, in the present case, and although the element ‘verdi’ will be associated with the meaning indicated by the applicant, it is not the exact word ‘verde’ and it will not be identified separately from the respective endings. Consumers will perceive both signs as an indivisible whole. The earlier mark is a fanciful word on the whole.

The contested mark ‘verdin’ will be also associated with the term ‘verde’ and, although it lacks the accent on the final ‘i’, could be perceived by the relevant public as the word ‘verdín’, meaning ‘green layer of plants such as fungi, lichens or mosses, which forms in some waters, especially in stagnant ones, and in damp places’ or ‘ green colour of grass or plants, especially when they are newly sprouted ‘ (information extracted from the Dictionary of the Real Academia Española on 16/07/2021 at https://dle.rae.es/verd%C3%ADn).

The signs are considered to be merely allusive and distinctive to an average degree, since, taking into account the goods in question, they will be associated with the meaning of ‘green’, which could lead to the idea that the goods are of plant origin. However, this concept is present in both signs.

Therefore, the signs are conceptually similar at least to a high degree.

Visually and aurally the signs share their first letters ‘Verdi’. The signs differ in the two final letters of the earlier mark ‘-UM’ and the final letter of the contested mark ‘-n’. It is worth noting that the last letters of both signs are consonants that have a sound that is not particularly distinct. However, phonetically, the earlier mark is composed of three syllables, whereas the contested sign consists of two.

Therefore, the signs are visually similar to a high degree and aurally similar to an average 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 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 word ‘VERDIUM’ is fanciful and merely alludes to the colour green for the goods in question. Therefore, the distinctiveness of the earlier mark must be seen as average.

e) Global assessment, other arguments and conclusion

There is a likelihood of confusion (including a likelihood of association) where the public may be led to believe that the goods or services in question, if they bear the trade marks in question, originate from the same undertaking or, as the case may be, from economically linked undertakings. It suffices that a significant part of the relevant public that uses the goods or services in question shows confusion as to the origin of the goods or services; it is therefore not necessary to establish that all actual or potential consumers of the goods or services in question could prove confusion.

The Court has stated that the likelihood of confusion must be appreciated globally, taking into account all factors relevant to the circumstances of the case; that assessment depends on numerous factors and, in particular, on the degree of recognition of the trade mark on the market, the association that the public may make between the two marks and the degree of similarity between the signs and the goods or services (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The signs are aurally similar to an average degree and visually similar to a high degree and there is at least a high conceptual similarity between the signs. The earlier mark has an average degree of distinctiveness.

The goods in Class 5 covered by the trade marks have been found partly identical, partly similar and partly dissimilar. They target both the general public and a professional public, whose level of attention will be high.

The applicant argues that the differences in the endings ‘-UM’ and ‘-N’ will attract the attention of consumers and that more importance should be attributed to these elements when comparing the signs. However, the difference in the endings and in only two and one letter, respectively, is not enough to make the overall impression of the signs sufficiently different for consumers to distinguish them with certainty. Account is 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 if in the present case consumers pay a high degree of attention, they must rely on their imperfect recollection of the marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

Therefore, the abovementioned differences cannot counteract the overall similarity of the signs.

Considering all the relevant factors, the similar overall impression given by the signs will lead consumers to believe that the identical and similar goods come from the same undertaking or economically linked undertakings.

In its observations, the applicant argues that the element ‘VERDI’ is weak, given that there are many trade marks including this element registered for goods in Class 5. In support of its argument, the applicant refers to several EUTMs.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of trade marks which include ‘VERDI’ or that they have become accustomed to such marks.

Furthermore, in support of its arguments, the applicant cites previous decisions given by the Office. However, such decisions are not binding on the Office, since each case must be dealt with separately, taking account of its specific characteristics.

This practice has been confirmed by the General Court, which has stated that it is clear that the legality of decisions must be assessed solely on the basis of the EUTMR and not on the basis of a previous decision-making practice of the EUIPO (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Although earlier Office decisions are not binding, the grounds expressed therein and the conclusions reached should in any event be given due consideration when taking a decision in relation to a particular case.

In the present case, the precedents cited by the applicant are not relevant for the purposes of the present proceedings. In particular, it is noted that all of the decisions referred to by the applicant concern signs with noticeable differences, which give a different overall impression. This argument raised by the applicant must therefore be rejected as unfounded.

Considering all the above, there is a likelihood of confusion on the part of the public and therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No M 2 960 295.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As the identity or similarity of goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Irena LYUDMILOVA LECHEVA

Inés GARCÍA LLEDÓ

Meglena BENOVA

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.