OPPOSITION No B 3 124 291

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

Coswell S.P.A., Via P. Gobetti, 4, 40050 Funo Di Argelato, Italy (applicant), represented by Porta & Consulenti Associati S.P.A., Via Vittoria Colonna, 4, 20149 Milano, Italy (professional representative).

On 30/07/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 124 291 is upheld for all the contested goods, namely:

Class 5 Capsules for medicines; medicinal herbs; tonics [medicines]; nutritional supplements; vitamin preparations; herbal teas for medicinal purposes; syrups for pharmaceutical purposes.

2. European Union trade mark application No 18 214 111 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 18/06/2020, the opponent filed an opposition against some of the goods of European Union trade mark application No 18 214 111 ‘VERUM’ (word mark), namely against some of the goods in Class 5. The opposition is based on the 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 preparations adapted for medical use.

The contested goods are the following:

Class 5: Capsules for medicines; medicinal herbs; tonics [medicines]; nutritional supplements; vitamin preparations; herbal teas for medicinal purposes; syrups for pharmaceutical purposes.

Contrary to the applicant’s assertion, the comparison of the goods required by Article 8(1)(b) EUTMR must relate to the description of the goods covered by the earlier mark relied on in opposition as it appears in the registration document, and not to the goods for which that mark is actually used unless, following a request for proof of genuine use of the earlier mark, in accordance with Article 47(2) and (3) EUTMR, such proof is furnished only in respect of some of the goods or services for which the earlier mark is registered (19/03/2019, T‑133/18, Lumiqs (fig.) / Lumix et al., EU:T:2019:169, § 38).

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 and vitamin preparations are included in the broad category of or overlap with, the opponent’s dietetic preparations adapted for medical use. Therefore, they are identical.

The contested capsules for medicines is a broad term that, without any restriction to the contrary, must be considered to encompass ‘filled’ capsules that contain, in principle, any sort of active ingredients (i.e. dietetic ingredients or substances) or pharmaceutical preparations. Therefore, these goods are identical to dietetic preparations adapted for medical use (30/09/2015, T‑720/13, KARIS / CARYX et al., EU:T:2015:735, § 70,75-76,80).

Dietetic preparations adapted for medical use are preparations for special dietary requirements, with the purpose of treating or preventing disease. Bearing this in mind, their purpose is similar to that of medicinal herbs; tonics [medicines]¸ herbal teas for medicinal purposes and syrups for pharmaceutical purposes (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, these goods are considered similar.

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). This rule will apply to the goods in the present case, since they have a medical use that directly impacts on health.

c) The signs

VERDIUM	VERUM
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).

The applicant claimed that the relevant public will perceive the contested sign as the Latin word for ‘truth’. However, the relevant part of the public will not perceive a meaning in the contested sign, since the Spanish equivalent of truth, ‘verdad’, is quite different from the Latin equivalent, and a substantial part of the Spanish public will not have studied Latin. Therefore, in order to avoid considering multiple scenarios in which the outcome would be the same, the Opposition Division finds it appropriate to focus on this part of the public, for whom the contested sign has no meaning and is, therefore, distinctive.

As the applicant indicated, the earlier sign will be associated with ‘verde’, which means ‘green’ in Spanish, an element that is commonly used in commerce to indicate that goods are environmentally friendly or are produced in an environmentally-friendly manner. However, the earlier sign is a fanciful word, overall, with no meaning in Spanish. Therefore, the sign is considered merely allusive and distinctive to an average degree as, bearing in mind the relevant goods, several mental steps are required to reach the idea of the goods being environmentally friendly.

Visually and aurally the signs coincide in the letters/sounds ‘VER**UM’. Consequently, the signs have identical beginnings and ends. However, they differ in the letters ‘*DI*’ of the earlier mark, placed in the middle of the sign, where they are more likely to go unnoticed. Phonetically, the earlier mark comprises three syllables, whereas the contested sign comprises two.

Therefore, the signs are visually similar to a high degree and aurally similar to an average degree.

Conceptually, since the public in the relevant territory will associate the earlier mark with the meaning ‘green’, as explained above, and the contested sign will not be associated with any meaning, the signs are conceptually not similar.

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 allusive to the colour green, for the goods at issue. Therefore, the distinctiveness of the earlier mark must be seen as average.

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 et seq). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

In the present case, the goods are partly identical and partly similar. They target both the public at large and business customers with specific professional knowledge or expertise in the medical field. The distinctiveness of the earlier mark must be seen as average.

The signs are visually highly similar, aurally similar to an average degree, and conceptually not similar. The coinciding letters comprise the entire contested mark and are fully reproduced at the beginning and end of the earlier mark. Although the signs differ in the letters ‘*DI*’, in the earlier mark, these are placed in the middle of the sign, where they are more likely to go unnoticed by the consumer, who rarely has the opportunity to compare the signs side by side, but must instead rely on their imperfect memory (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay 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). Furthermore, the conceptual aspects will have a limited impact on the consumers’ perception.

In view of the foregoing, the Opposition Division considers that the differences between the signs are clearly not sufficient to outweigh the visual and aural similarities between them.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public that will not perceive a meaning in the contested sign. Given that a likelihood of confusion for only part of the relevant public is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No M 2 960 295. It follows that the contested trade mark 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

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.