OPPOSITION Nо B 3 129 469

 

Ipsen Consumer Healthcare SAS, 65 quai Georges Gorse, 92100 Boulogne-Billancourt, France (opponent), represented by Cabinet Germain & Maureau, 31-33 Rue de la Baume, 75008 Paris, France (professional representative) 

 

a g a i n s t

 

Fertin Pharma A/S, Dandyvej 19, 7100 Vejle, Denmark (applicant), represented by Chas. Hude A/S, H. C. Andersens Boulevard 33, 1780 København V, Denmark (professional representative).

On 17/08/2021, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 3 129 469 is upheld for all the contested goods, namely:

 

Class 3: Breath freshening preparations for personal hygiene; Mouthwashes, not for medical purposes; Tooth whitening preparations; Dental products, including toothpastes, mouthwashes and cosmetic preparations for oral care (not for medical purposes); Breath fresheners. Class 5: All goods in this Class.

 

2.	European Union trade mark application No 18 241 112 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 26/08/2020, the opponent filed an opposition against some of the goods of European Union trade mark application No 18 241 112 ‘FORBLISS’ (word mark), namely initially against all the goods in Classes 3 and 5. The opposition is based on European Union trade mark registration No 16 751 381 ‘FORLIB’ (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: Pharmaceutical preparations; Dietetic foods adapted for medical purposes; Dietetic substances adapted for medical use; Food for babies; Probiotic bacterial formulations for medical use; Food supplements; Nutritional supplements; Adhesive tapes for medical purposes.

On 04/02/2021, in its submission of further facts and evidence the opponent limited the scope of the opposition, excluding some of the initially contested goods in Class 3.

Consequently, the contested goods are the following:

Class 3: Breath freshening preparations for personal hygiene; Mouthwashes, not for medical purposes; Tooth whitening preparations; Dental products, including toothpastes, mouthwashes and cosmetic preparations for oral care (not for medical purposes); Breath fresheners.

Class 5: Acetates for pharmaceutical purposes; Acids for pharmaceutical purposes; Alginate dietary supplements; Dietary and nutritional supplements; Dietary supplements and dietetic preparations; Alginates for pharmaceutical purposes; Analgesics; Appetite suppressant pills; Astringents for medical purposes; Bacterial preparations for medical and veterinary use; Bacteriological preparations for medical and veterinary use; Biological preparations for medical purposes; Bronchodilating preparations; Camphor for medical purposes; Medicated candy; Candy for medical purposes; Chemical preparations for pharmaceutical use for the treatment of pain, indigestion, cough and colds, allergy symptoms, sleep problems, relaxation problems, weight control, energy deficiency and oral health problems; Chemical preparations for medicinal purposes for the treatment of pain, indigestion, cough and colds, allergy symptoms, sleep problems, relaxation problems, weight control, energy deficiency and oral health problems; Chewing gum for medical purposes; Dental abrasives; Dental mastics; Dietary fibre for the treatment of constipation; Dietary fiber to aid digestion; Dietary supplements for animals; Dietary supplements with a cosmetic effect; Dietetic foods adapted for medical use; Dietetic beverages adapted for medical purposes; Dietetic infusions for medical use; Digestives for pharmaceutical purposes; Disinfectants; Drugs for medicinal purposes for the treatment of pain, indigestion, cough and colds, allergy symptoms, sleep problems, relaxation problems, weight control, energy deficiency and oral health problems; Enzyme dietary supplements; Enzymes for medical purposes; Fungicides; Gum for medical purposes; Laxatives; Medical preparation for slimming purposes; Beverages adapted for medicinal purposes; Constipation (Medicines for alleviating -); Medicines for dental purposes; Medicine for human use for the treatment of pain, indigestion, cough and colds, allergy symptoms, sleep problems, relaxation problems, weight control, energy deficiency and oral health problems; Mint for pharmaceutical purposes; Mouthwashes for medical purposes; Nicotine gum for use as an aid to stop smoking; Nicotine patches for use as aids to stop smoking; Nutritional preparations for therapeutic or medicinal purposes for the treatment of pain, indigestion, cough and colds, allergy symptoms, sleep problems, relaxation problems, weight control, energy deficiency and oral health problems; Nutritional supplements; nutritive substances for microorganisms for medical purposes; Lozenges for pharmaceutical purposes; Throat lozenges for pharmaceutical purposes; Pharmaceutical preparations for the treatment of pain, indigestion, cough and colds, allergy symptoms, sleep problems, relaxation problems, weight control, energy deficiency and oral health problems; Pharmaceuticals for the treatment of pain, indigestion, cough and colds, allergy symptoms, sleep problems, relaxation problems, weight control, energy deficiency and oral health problems; Salts for medical purposes; Tranquillizers; Tranquillizers; slimming pills, slimming preparation for medical purposes; Sugar for medical purposes; Tonics (medicinal) for the treatment of pain, indigestion, cough and colds, allergy symptoms, sleep problems, relaxation problems, weight control, energy deficiency and oral health problems; Vitamin preparations; Vitamin tablets; Medicated lozenges; Medicated cough drops; Vitamin supplements; Medicated mouthwash; Mouthwashes for the prevention of caries; Medicated anti-cavity mouthwashes; Antiseptic mouthwashes; Antiseptic mouthwashes for cleansing; Antimicrobial mouthwashes; Dietary supplements, medicated confectionery, including medicated chewing gum.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘including’, used in the applicant’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

 

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

 

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.

 

Contested goods in class 3

The contested breath freshening preparations for personal hygiene; breath fresheners; mouthwashes, not for medical purposes; tooth whitening preparations; dental products, including toothpastes, mouthwashes and cosmetic preparations for oral care (not for medical purposes) are similar to a low degree to the opponent's pharmaceutical preparations because they may coincide in their producers, end users and distribution channels.

Contested goods in class 5

Nutritional supplements (contained twice) are identically contained in both lists of goods (including synonyms).

The contested goods appetite suppressant pills; bacteriological preparations for medical and veterinary use; chewing gum for medical purposes; bronchodilating preparations; biological preparations for medical purposes; analgesics; acids for pharmaceutical purposes; bacterial preparations for medical and veterinary use; medicated candy; beverages adapted for medicinal purposes; medicines for dental purposes; laxatives; gum for medical purposes; digestives for pharmaceutical purposes; constipation (Medicines for alleviating -); enzymes for medical purposes; medical preparation for slimming purposes; sugar for medical purposes; lozenges for pharmaceutical purposes; mint for pharmaceutical purposes; nicotine patches for use as aids to stop smoking; acetates for pharmaceutical purposes; alginates for pharmaceutical purposes; astringents for medical purposes; camphor for medical purposes; candy for medical purposes; nicotine gum for use as an aid to stop smoking; salts for medical purposes; tranquillizers; medicated lozenges; chemical preparations for pharmaceutical use for the treatment of pain, indigestion, cough and colds, allergy symptoms, sleep problems, relaxation problems, weight control, energy deficiency and oral health problems; chemical preparations for medicinal purposes for the treatment of pain, indigestion, cough and colds, allergy symptoms, sleep problems, relaxation problems, weight control, energy deficiency and oral health problems; drugs for medicinal purposes for the treatment of pain, indigestion, cough and colds, allergy symptoms, sleep problems, relaxation problems, weight control, energy deficiency and oral health problems; medicine for human use for the treatment of pain, indigestion, cough and colds, allergy symptoms, sleep problems, relaxation problems, weight control, energy deficiency and oral health problems; nutritive substances for microorganisms for medical purposes; throat lozenges for pharmaceutical purposes; pharmaceutical preparations for the treatment of pain, indigestion, cough and colds, allergy symptoms, sleep problems, relaxation problems, weight control, energy deficiency and oral health problems; pharmaceuticals for the treatment of pain, indigestion, cough and colds, allergy symptoms, sleep problems, relaxation problems, weight control, energy deficiency and oral health problems; slimming pills, slimming preparation for medical purposes; tonics (medicinal) for the treatment of pain, indigestion, cough and colds, allergy symptoms, sleep problems, relaxation problems, weight control, energy deficiency and oral health problems; medicated cough drops are included in the opponent's broad category of pharmaceutical preparations or overlap with it. Therefore, they are identical.

The contested goods nutritional preparations for therapeutic or medicinal purposes for the treatment of pain, indigestion, cough and colds, allergy symptoms, sleep problems, relaxation problems, weight control, energy deficiency and oral health problems are included in the opponent's broad category of nutritional supplements. Therefore, they are identical.

The contested goods dietary supplements; dietary supplements and dietetic preparations alginate dietary supplements; dietetic foods adapted for medical use; dietary supplements for animals; dietetic beverages adapted for medical purposes; dietary fiber to aid digestion; dietetic infusions for medical use; enzyme dietary supplements; dietary supplements with a cosmetic effect; vitamin preparations; vitamin tablets; vitamin supplements; dietary supplements, medicated confectionery, including medicated chewing gum; dietary fibre for the treatment of constipation are identical to the opponent's dietetic substances adapted for medical use, either because they are identically contained in both lists (including synonyms) or because the earlier goods include, are included in, or overlap with, the contested goods.

The contested mouthwashes for the prevention of caries; antiseptic mouthwashes for cleansing; mouthwashes for medical purposes; medicated mouthwash; medicated anti-cavity mouthwashes; antiseptic mouthwashes; antimicrobial mouthwashes are similar to the opponent's pharmaceutical preparations, because they may coincide in producer, end user and their distribution channels. Furthermore, they have the same purpose.

The contested disinfectants are similar to the opponent's pharmaceutical preparations, because they may coincide in producer, end user and their distribution channels. Furthermore, they have the same purpose.

The contested dental abrasives; dental mastics are similar to a low degree to the opponent's pharmaceutical preparations, because they may coincide in their end users and distribution channels.

Likewise, the contested fungicides are similar to a low degree to the opponent's pharmaceutical preparations, because they may coincide in their distribution channels. Furthermore, they are complementary and have the same purpose.

 

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 to various degrees are directed at the public at large and at business customers with specific professional knowledge or expertise in the medical field.

 

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 applies to dietetic substances and nutritional supplements which are for medical use or at least can have a substantial effect on health.

Therefore, the degree of attention may vary from average, e.g. for non-medicated dental care products such as dentifrices in Class 3, to high, e.g. for pharmaceutical products as explained above.

 

c) The signs

 

FORLIB	FORBLISS
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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

At least the English-speaking part of the public may recognize in both signs the English preposition ‘for’ and also in the contested sign the word ‘bliss’ (meaning perfect happiness). However, both signs are not meaningful in other territories (neither as a whole nor parts of them) for example in those countries where German is spoken. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the German-speaking part of the public such as consumers in Germany and Austria.

Since both, the earlier FORLIB and the contested FORBLISS, have no meaning for the relevant public, as explained above, they are distinctive.

 

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, the signs coincide in the letters ‘FOR’, appearing in the same order in the beginning of both signs, and also the string of letters ‘LI’ and the letter B, placed, however, in different positions. Apart from the difference in the position of the letter B the signs also differ in the additional double S in the contested sign, placed at its end.

 

Therefore, the signs are highly similar.

 

Aurally the pronunciation of the signs coincides in the sound of the letters ‘FOR’ in the same order in the beginning of both signs and also the string of letters ‘LI’ and the letter B, appearing, however, in different positions. The pronunciation also differs in the sound of the additional double S letter of the  contested mark, which has no counterparts in the earlier sign. In particular, both signs are composed of two syllables, the first being identical, and the second of each containing the same vowel (i) and coinciding in the two consonants (L and B), though in different orders. Consequently, they are of a very similar structure and rhythm.

 

Therefore, the signs are highly similar.

 

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect 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) 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. 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

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. 

The goods are identical and similar to various degrees. The signs are visually and aurally highly similar, whereas the conceptual aspect does not influence the assessment of the similarity of the signs.

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). It is true that for some goods at issue the attention of the public is rather high, but 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).

The signs coincide in six out of the eight letters of the contested sign, that is, all the letters of the earlier word mark are reproduced in the contested sign. In particular, the relevant beginning in both signs, which as explained above under part c) catches more the consumer’s attention, is identical. Furthermore, the letters of the earlier mark’s second syllable (L, I and B), though in reverse order, coincide. The main difference in form of the double letter S in the contested sign is placed at its end and may, therefore, go unnoticed. Therefore, and even for consumers with a higher level of attention, a likelihood of confusion cannot be excluded.

 

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17). In the present case, the high similarity between the signs outweighs the low degree of similarity for some of the relevant goods.

Considering all the above, there is a likelihood of confusion on the part of German-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 EUTM registration No 16 751 381. 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

 

 

Christian STEUDTNER

Konstantinos MITROU

Philipp HOMANN

 

 

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.