OPPOSITION Nо B 3 118 442

 

Société des Produits Nestlé S.A., 1800 Vevey, Switzerland (opponent), represented by Harte-Bavendamm Rechtsanwälte Partnerschaftsgesellschaft Mbb, Am Sandtorkai 77, 20457 Hamburg, Germany (professional representative) 

 

a g a i n s t

 

Beijing Zhonghe Huipin Trading Co., Ltd, Room 614-2,unit 3, 5th Floor, Building 4, no.5 Park, No.5 West Jingxing Rd, Daxign District, Beijing, People’s Republic of China (applicant), represented by Ieva Zvejsalniece, Imantas Iela 3b-18, 1067 Riga, Latvia (professional representative).

On 28/04/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 118 442 is upheld for all the contested goods, namely:

 

	Class 5: Dietary fiber; dietetic substances adapted for medical use.
2.		European Union trade mark application No 18 181 820 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 05/05/2020, the opponent filed an opposition against some of the goods of European Union trade mark application No 18 181 820 (figurative mark), namely against some of the goods in Class 5. The opposition is based on international trade mark registration designating the European Union No 1 337 416, ‘IPP’ (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: Dietary supplements for use in treating sleep disorders; nutritional supplements for use in treating sleep disorders; pharmaceutical preparations for use in treating sleep disorders; melatonin preparations for pharmaceutical purposes; over-the-counter pharmaceutical preparations for use in treating sleep disorders.

The contested goods are the following:

 

Class 5: Dietary fiber; dietetic substances adapted for medical use.

The contested dietetic substances adapted for medical use include, as a broader category the opponent’s dietary supplements for use in treating sleep disorders. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested dietary fiber refers to a group of nutritional substances that are beneficial to the human health and wellbeing, including to sleep. As such, it overlaps with the opponent’s dietary supplements for use in treating sleep disorders. 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 found to be identical are directed at the public at large and at customers with specific professional knowledge or expertise, such as doctors, dieticians and pharmacists.

The degree of attention is deemed to be higher than average because the choice of the product in question may affect the purchaser’s health.

 

 

c) The signs

 

IPP
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).

 

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

 

The element ‘Intelligent Protection Program’ is meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

 

The common verbal element ‘IPP’ has no meaning for the relevant public in relation to the relevant goods and is, therefore, distinctive.

 

The element ‘Intelligent Protection Program’ of the contested sign will be associated with a rational scheme of protecting from harm or damage. Bearing in mind that the relevant goods are dietary substances, this element is weak for these goods as it suggests their purpose.

 

As regards the figurative aspects of the contested sign, they are limited to the blue colour, standard stylisation and structure and are of a purely decorative nature. 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).

The element ‘ipp’ in the contested sign is the dominant element as it is the most eye-catching.

 

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

 

Visually and aurally, the signs coincide in the letters and their pronunciation ‘IPP’. They differ in the verbal element of the contested sign ‘Intelligent Protection Program’ and its pronunciation, which have no counterpart in the earlier mark. However, due to its weak distinctive character, its size and position within the sign, its impact will be reduced. Moreover, it cannot be discarded that at least part of the public will not pronounce it.

 

Therefore, the signs are visually and aurally highly similar.

Conceptually, although the public in the relevant territory will perceive the meaning of the element of the contested sign as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar. However, taking into account that this meaningful element is considered of weak distinctive character for the relevant goods and secondary, the impact of the conceptual difference created by this element of the contested sign will be limited.

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 marks are particularly distinctive by virtue of intensive use or reputation. However, it claims that the earlier mark has a high degree of inherent distinctiveness because it contains ‘a pronounceable invented word’ without any meaning. In this regard, it should be noted that when an earlier mark is not descriptive or otherwise non-distinctive the mark is considered to have no more than a normal degree of distinctiveness. A mark will not necessarily have a higher degree of distinctive character just because there is no conceptual link to the relevant goods and services (16/05/2013, C-379/12 P, H/Eich, EU:C:2013:317, § 71).

 

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

According to case-law, 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, § 23). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

The goods are identical. They target the public at large and customers with specific professional knowledge or expertise whose degree of attentiveness is deemed to be higher than average.

The earlier mark is inherently distinctive to a normal degree.

The signs are visually and aurally highly similar and conceptually not similar. In particular, the marks coincide in their distinctive verbal element ‘IPP’, which is the only verbal element of the earlier mark and is reproduced in its entirety in the contested sign.

The differences between the signs lie in the colour, stylisation and structure of the contested sign, of reduced impact, and the differing weak and non-dominant element – ‘Intelligent Protection Program’ in the contested sign – which do not significantly affect the visual and aural similarities. Therefore, these differences cannot outweigh the similarities between the signs, and they are not sufficient to exclude a likelihood of confusion.

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. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates, for example a new line of dietary supplements (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

 

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

 

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration designating the European Union No 1 337 416. It follows that the contested sign must be rejected for all the contested 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 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

 

 

Francesca DRAGOSTIN

Tzvetelina IANTCHEVA

María Clara IBÁÑEZ FIORILLO

 

 

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.