DECISION

of the Fifth Board of Appeal
of 13 March 2015

In Case R 501/2014-5

Calin Alexandru Nedelcu
Sos. Brailei, DN2B, km. 8+900 Buzau Romania	Applicant / Appellant

v

HOUSEDIET, S.L.U SOCIEDAD UNIPERSONAL
Rector Triadó, 94, entr. ES-08014 Barcelona Spain	Opponent / Respondent

represented by OFICINA PONTI, SLP, Consell de Cent, 322, ES-08007 Barcelona, Spain

APPEAL relating to Opposition Proceedings No B 2 111 014 (Community trade mark application No 11 114 709)

The Fifth Board of Appeal

composed of G. Humphreys (Chairperson), C. Negro (Rapporteur) and A. Pohlmann (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 13 August 2012, Calin Alexandru Nedelcu (‘the applicant’) sought to register the word mark

REDUSALT

for the following list of goods:

Class 5 – Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides;

Class 30 – Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice.

2. The application was published in the Community Trade Marks Bulletin No 178/2012 of 18 September 2012.

3. On 13 December 2012, HOUSEDIET, S.L.U (‘the opponent’) filed a notice of opposition against the registration of the published trade mark on the basis of the following earlier rights:

• Spanish trade mark No 2 095 323 for the word mark ‘REDUNAT’, registered on 7 September 1998, for ʻdietetic products of medicinal natureʼ in Class 5.

• Spanish trade mark No 2 588 897 for the word mark ‘REDUNAT’, registered on 18 October 2004, for ʻcoffee, tea, cocoa, sugar, rice, tapioca, sago, substitute of coffee; flours, fibre cereals and preparations made of cereals, bread, baking, patisserie, biscuit, ice-creams; honey, molasses syrup; yeast, baking powder; salt; mustard; vinegar, sauces (condiments); spices; iceʼ in Class 30.

4. The opposition was directed against all the goods of the contested application. The grounds of opposition are those laid down in Article 8(1)(b) CTMR (ʻlikelihood of confusionʼ).

5. On 13 December 2013, the Opposition Division adopted its decision (‘the contested decision’) partially upholding the opposition and rejecting the application for ‘pharmaceutical and veterinary preparations; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals’, in Class 5, and for all the goods applied for in Class 30. Each party was ordered to bear its own costs. The Opposition Division reasoned as follows:

• The contested ‘dietetic food and substances adapted for medical or veterinary use, dietary supplements for humans and animals’ in Class 5 are identical to the opponent’s products in the same class. The applicant’s ‘food for babies’ and ‘pharmaceutical and veterinary preparations’ are similar to the opponent’s goods, as they have the same purpose and can coincide in producers and distribution channels.

• The remaining contested goods, namely ‘sanitary preparations for medical purposes; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides’ are considered to be dissimilar to any of the opponent’s goods, as they have no relevant points of contact with them.

• The contested goods in Class 30 are identical to the opponent’s goods.

• Visually and aurally, the signs are similar to the extent that they coincide in ‘REDU*A(*)T’ and differ in the letters ʻNʼ and ʻS*Lʼ, respectively. Visually, an additional difference is attributable to the signs’ different lengths (seven versus eight letters). Moreover, the signs have no concept in common, as none of them has a meaning for the public in the relevant territory (Spain).

• The marks have no elements which could be considered more distinctive or dominant than others. Moreover, the earlier marks’ distinctiveness must be seen as normal.

• The beginnings of the signs, the first four letters ‘REDU’, are identical, and it is well known that consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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 reader’s attention. Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and, therefore, the opposition is partially well founded on the basis of the opponent’s Spanish trade mark registrations.

6. On 12 February 2014, the applicant filed a notice of appeal against the above decision, followed by a statement of grounds submitted on 11 April 2014.

Submissions and arguments of the parties

7. The applicant requests that the Board annul the contested decision. He raises the following points:

• The two signs have different lengths (seven vs. eight letters) and different suffixes (‘-NAT’ and ‘-SALT’) which are pronounced differently. This implies a low degree of visual similarity and a different overall sonority.

• Conceptually, whereas the suffix ‘-NAT’ has no meaning, the suffix ‘-SALT’ makes reference to a chemical substance, which gives the mark enough power, from the relevant public’s perception, so as to eliminate any likelihood of confusion.

• The mere fact that the marks have a common element (‘REDU-’) does not determine a high degree of similarity, or a likelihood of confusion between the signs.

• The contested mark’s products are intended to be sold only as pharmaceutical preparations/dietary supplements. It is obvious that the only distribution channels for these goods is pharmacies/drug stores (according to the regulations in Romania and the EU, pharmaceutical preparations/dietary supplements cannot be sold through common retail outlets such as supermarkets, even if they are over-the-counter goods).

• Consequently, the Opposition Division has wrongly stated that ʻpharmaceutical and veterinary preparations’ are similar to the opponent’s dietetic products of a medical nature, as they have the same purpose. They can coincide in producers and distribution channels. It is indeed true that both have the same purpose, but they certainly cannot coincide in distribution channels.

• The relevant public should be considered to be made up of healthcare professionals who have a high degree of skill and care when dealing with these products and are unlikely to be confused. Moreover, the end-user of such products is likely to be assisted by a professional when buying them, even if the goods can be picked off a shelf.

• A consumer cannot help him or herself to a pharmaceutical preparation that is not directly accessible, but has to rely on the intervention of a professional. In all situations involving verbal use of those marks, a knowledgeable person will be present to assist the consumer with his or her purchase, thereby limiting the possibility of any confusion resulting from any similarity between the marks at issue.

8. On 12 June 2014 the opponent submitted its observations in reply, by which it requested that the Board dismiss the appeal and confirm the partial rejection of the CTM application. The opponent’s arguments may be summarised as follows:

• In their overall impression, the confronted signs are highly similar. They share six letters and the only and slight difference between the words lie in their last syllables (ʻ-natʼ vs. ʻ-saltʼ). These differences are clearly insufficient to counteract the existing similarities between the words seen as a whole, mainly due to their identical beginnings ʻREDU-ʼ.

• At a phonetic and aural level, the marks are also very similar. The overall sonority of the words is very close since they have the same number of syllables (three) and share the same vowel and consonant framework, except for the last letters (sounds) ʻ-NATʼ and ʻ-SALTʼ. However, the pronunciation of ʻNATʼ and ʻSALTʼ is quite similar. The words have the same rhythm and are stressed in the same way. Accordingly, the above similarities in the words clearly outweigh this sole difference.

• The fact that the trade mark applied for includes a suffix which conceptually describes a substance (-SALT) does not constitute any significant difference nor does it affect the overall impression and the sound of the mark.

• The goods covered by the trade marks in conflict are identical or very closely related. As regards the goods found to be similar in Class 5, the opponent strongly disagrees with the applicant´s opinion that the distribution channels of the goods in Class 5 will not coincide, as the applicant’s products are distributed and sold in several kinds of establishments, e.g. supermarkets and retailers of dietetic products.

• The opponent also disagrees with the applicant’s view that the relevant public ʻshould be limited to healthcare professionals’.

• In the opponent’s opinion, there is a clear likelihood of confusion between the signs, not only because of their overall similarity, but also because they belong to the same sector, thus meaning that the goods will be offered through the same commercial channels and even at the same commercial premises.

Reasons

9. The appeal complies with Articles 58, 59 and 60 CTMR and Rule 48 CTMIR and is, therefore, admissible.

Scope of the appeal

10. For the sake of clarity, the opponent does not request a decision on a point not raised in the appeal, in particular, as regards the Opposition Division’s finding of dissimilarity with regard to part of the contested goods in Class 5, for which the opposition was rejected. Therefore, the part of the contested decision rejecting the opposition for those goods has become final. The scope of the present appeal is thus limited to the contested goods for which the opposition was upheld.

Likelihood of confusion - Article 8(1)(b) CTMR

11. It follows from Article 8(1)(b) CTMR that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. A likelihood of confusion includes a likelihood of association with the earlier trade mark.

12. According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the goods or services concerned and account being taken of all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services designated (see 09.07.2003, T-162/01, Giorgio Beverly Hills, EU:T:2003:199, § 30 to 33 and the case-law cited).

The relevant public and the consumer’s level of attention

13. In the present case, the earlier rights are Spanish trade mark registrations. The relevant territory in respect of which a likelihood of confusion must be assessed is, therefore, Spain.

14. As for the relevant public, the conflicting goods in Class 5 are directed at both the average consumer and the specialised public, where the latter category consists of professionals in the medical and pharmaceutical sectors. It can be assumed that, irrespective of whether these goods are sold with or without prescription, the consumers interested in those products are more attentive, since those products affect their state of health (see, in this respect, judgment of 09.04.2014, T-501/12, OCTASA, EU:T:2014:194, § 24; 21.10.2008, T‑95/07, PRAZOL, EU:T:2008:455, §§ 27 and 29 and the case-law cited; 10.02.2015, T-368/13, ANGIPAX, EU:T:2015:81, § 31 to 47).

15. The conflicting goods in Class 30 primarily target the public at large. With regard to these goods, which can be bought on a daily basis and are relatively inexpensive, the level of attention displayed by end-users when purchasing the concerned goods would be of an average degree at best.

Comparison of the goods

16. It is settled case-law that in assessing the similarity of the goods, all the relevant factors relating to those goods should be taken into account, including, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary (see 29.09.1998, C‑39/97, Canon, EU:C:1998:442, § 23). Other factors may also be taken into account such as, for example, the distribution channels of the goods concerned (see 11.07.2007, T‑443/05, Pirañam, EU:T:2007:219, § 37).

17. As a preliminary remark, it must be noted that, in order to assess the similarity of the goods at issue, within the meaning of Article 8(1)(b), the group of goods protected by the marks at issue must be taken into account, and not the goods actually marketed subject to those marks (see 16.06.2010, T-487/08, KREMEZIN, EU:T:2010:237, § 71).

18. The contested goods subject of the appeal are:

Class 5 – Pharmaceutical and veterinary preparations; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals;

Class 30 – Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice.

19. These goods must be compared with the goods on which the opposition is based, namely:

Spanish trade mark No 2 095 323

Class 5 – Dietetic products of medicinal nature.

Spanish trade mark No 2 588 897

Class 30 – Coffee, tea, cocoa, sugar, rice, tapioca, sago, substitute of coffee; flours, fibre cereals and preparations made of cereals, bread, baking, patisserie, biscuit, ice-creams; honey, molasses syrup; yeast, baking powder; salt; mustard; vinegar, sauces (condiments); spices; ice.

20. The Board endorses the Opposition Division’s uncontested finding that the contested ʻdietetic food and substances adapted for medical or veterinary useʼ and ʻdietary supplements for humans and animalsʼ in Class 5 are identical to the opponent’s ʻdietetic products of a medicinal natureʼ. Likewise, it is undisputed that the contested goods in Class 30 are identically included in the opponent’s list of goods, albeit worded differently.

21. With regard to the contested ʻpharmaceutical and veterinary preparations’ and ʻfood for babiesʼ, the Board agrees with the contested decision in that they are similar to ʻdietetic products of a medicinal natureʼ of the earlier mark. In this regard, the applicant’s argument that they do not have the same distribution channels cannot be upheld, since it is a well-known fact that all these goods can be found in pharmacies and, given that these categories are not further specified, also in supermarkets. Moreover, the goods have the same purpose insofar as they can be used to improve a patient’s medical condition or prevent a disease or a nutritional deficiency. The relevant public coincides and the goods can originate from the same producers. Given all these points of contact, the conflicting goods are similar.

Comparison of the signs

22. The signs to be compared are:

Contested sign	Earlier signs
REDUSALT	REDUNAT

23. The comparison of the conflicting signs in relation to the visual, aural or conceptual similarity of the marks in question has to take into account the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (06.10.2005, C‑120/04, Thomson Life, EU:C:2005:594, § 28). The comparison must be based on the perception, pronunciation and meaning of the conflicting signs in the language of the Member State where the earlier marks are protected, in this case Spain, and by reference to the public of the goods at issue.

24. Regarding the comparison of the marks, it should be recalled that, according to case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (see 23.10.2002, T‑6/01, Matratzen, EU:T:2002:261, § 30 and 18.10.2007, T‑28/05, Omega 3, EU:T:2007:312, § 54).

25. Visually, the Board agrees with the Opposition Division´s finding insofar as it held that the marks are similar from a visual perspective, since they merely differ in the letters ‘S’ and ʻLʼ of the contested sign and ‘N’ of the earlier marks. Six out of the seven and eight letters, respectively, of the marks are identical and they are placed in the same order. The similarity between the signs is further enhanced due to the fact that their first letters ʻREDU-ʼ are identical and by the fact that the last letter ʻTʼ of the marks coincides. In this regard, as is apparent from case-law, consumers in general pay more attention to the first part of a mark, taking account of the fact that they read from left to right and that the beginning of a word sign is on the left (see, to that effect, 27.02.2008, T‑325/04, Worldlink, EU:T:2008:51, § 82). Bearing in mind the above, the marks are at least visually similar to an average degree.

26. Aurally, there is an identity in the first two syllables ‘RE/DU’ and in the last letter ʻTʼ of the signs. Despite the phonetic differences brought about by the last syllable of the signs, ‘SALT’ and ‘NAT’, respectively, which is not very prominent since both these syllables contain the letters ʻAʼ and ʻTʼ in the same order, the marks have a similar rhythm and are stressed in a similar way. As a result, there is an average degree of aural similarity overall.

27. From a conceptual perspective, the Opposition Division concluded that neither of the signs will have a meaning for the relevant public. Indeed, neither the word ‘REDUSALT’ nor ‘REDUNAT’ has any meaning per se. However, while it is true that the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, he/she may break it down into elements which, for him/her, suggest a concrete meaning or which resemble words known to him/her (see, to that effect, 13.06.2012, T‑342/10, Mesilette, EU:T:2012:290, § 33 and the case-law cited therein).

28. Bearing the above in mind, the Board finds it reasonable that some consumers, in particular within the professional part of the Spanish public, who operate in the medical and pharmaceutical sectors, may be able to grasp and understand the foreign (e.g. English) word ‘-SALT’ included in the contested sign, as a reference to a substance, known chemically as sodium chloride (SAL in Spanish). However, a significant part of non-professional consumers are unlikely to dissect the mark applied for and grasp the meaning of the final element ʻ-SALTʼ. Likewise, for the sake of clarity, even though this issue was neither raised by the parties nor by the Opposition Division, the Board points out that it is very unlikely that consumers would make any semantic link between the common prefixes of the marks ʻREDUʼ and the concept given by the Spanish word reducir, i.e. ʻreduceʼ, ʻdecreaseʼ, given the particular structure of the signs (forming a single word with no separation) and the fact that the prefix ʻREDUʼ is uncommon. Therefore, the conceptual comparison remains neutral for a significant part of the public, who will not divide the signs into different elements but rather perceive them as meaningless wholes.

29. In light of the above findings, it has to be concluded that, given the visual and aural similarities between the signs, which are not counteracted by any conceptual difference for a significant part of the non-professional public, the marks are similar to an average degree overall.

Global assessment

30. With reference to the applicant’s appeal, the Board considers that the relevant public for the goods at issue will be influenced decisively by the fact that the conflicting marks, which have a similar length, share the same sequence of vowels E-U-A, begin with the same four letters ʻREDU-ʼ and end with the same letter ʻ-Tʼ, have a similar overall impression. It is also important to recall that for a significant part of the consumers targeted, the signs are unlikely to convey any meaning that will aid in distinguishing between them.

31. Furthermore, the earlier trade marks ‘REDUNAT’ do not have any meaning when perceived by the relevant Spanish public and possess, therefore, an average distinctive character. Also given that the goods at issue are identical and similar and that consumers only rarely have the opportunity to compare the signs side by side but must instead rely on their imperfect memory (see 22.06.1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26), the Board considers that there is a likelihood of confusion on the part of the Spanish public, even when taking into account that consumers will be more attentive when they are faced with goods in Class 5.

32. As to the decisions cited by the applicant, namely judgments of 18.06.2008, T‑175/06, Mezzopane, EU:T:2008:212 and of 08.03.2012, C‑81/11 P, Resverol, EU:C:2012:132, the Board does not see how those decisions would alter the above findings in the present proceedings, since none of these judgments are fully comparable to the present case in which the conflicting signs coincide both in their beginnings and in their last letter.

33. It follows that there is a likelihood of confusion between the signs at issue within the meaning of Article 8(1)(b) CTMR.

34. In light of the above, the appeal is dismissed.

Costs

35. As the applicant is the losing party within the meaning of Article 85(1) CTMR, he must be ordered to bear the costs incurred by the opponent in the appeal proceedings. As to the opposition proceedings, the contested decision ordered each party to bear its own costs. This order remains unchanged.

Fixing of costs

36. In accordance with Article 85(6) CTMR and Rule 94(7)(d)(i) and (vi) CTMIR, the Board fixes the costs to be reimbursed by the losing party. These consist of the opponent’s representation costs in the appeal proceedings of EUR 550 pursuant to Rule 94(7)(d)(vi) CTMIR.

Order

On those grounds,

THE BOARD

hereby:

1. Dismisses the appeal;

2. Orders the applicant to bear the total amount of EUR 550 in respect of the opponent’s costs incurred in the appeal proceedings.

Signed G. Humphreys

Signed C. Negro

Signed A. Pohlmann

Registrar: Signed H.Dijkema