OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
OPPOSITION No B 2 367 707
Laboratorios Normon, S.A., Rda. Valdecarrizo (Zade Tres Cantos), 6, 28760 Tres Cantos (Madrid), Spain (opponent), represented by Vadimark, S.L., Galería de Vallehermoso, 4 -1º, 28003 Madrid, Spain (professional representative)
a g a i n s t
Powerband Corporation, Jose Antonio Armona 4 5ºA, 28012 Madrid, Spain (applicant), represented by Kostadin Manev, 73, Patriarh Evtimii Blvd., fl.1, 1463 Sofia, Bulgaria (professional representative).
2. The opponent bears the costs, fixed at EUR 300.
opponent filed an opposition against all the goods of Community trade
mark application No
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR
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.
The goods on which the opposition is based are the following:
Community trade mark registration No 4 385 399
Class 5: Food for babies.
International trade mark registration No 861 938 designating Portugal
Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for dental fillings and dental impressions; disinfectants; pesticides; fungicides; herbicides.
Spanish trade mark registration No 2 402 142
Class 5: Pharmaceutical products, veterinary and hygienic; dietetic substances adapted for medical use; food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.
The contested goods are the following:
Class 5: Dietary supplements and nutraceutical supplements for humans, all being sold in the form of capsules, creams, liquids, gels, powders or tablets; medicated isotonic drinks; dietary supplements supplied in the form of non-medicated and non-alcoholic beverages.
Class 32: Sports drinks; energy drinks; drinks enriched with vitamins and/or minerals; preparations for making drinks.
Some of the contested goods are identical to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier marks.
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 assumed to be identical are directed at the public at large and at a professional public with specific professional knowledge or expertise. Depending on their price, the frequency of their purchase and the effects they have on the human’s state of health, the level of attention will vary from average to high. For example, as some of the goods involved, such as medicated isotonic drinks, affect a person’s state of health the consumer will be more attentive.
Earlier trade marks
The relevant territory is the European Union, Portugal and Spain.
The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).
The earlier marks are word marks consisting of the word ‘NORMON’. As regards word marks, the words themselves are protected, not their written form. Therefore, it is irrelevant whether a word mark is represented in lower or upper case or a combination of those letters.
The contested sign is a figurative mark consisting of the words ‘NEURO’ and ‘NORM’, written in a slightly fancy typeface in which the element ‘NEURO’ is in bold green and the element ‘NORM’ outlined in green. The two elements are separated by a figurative element comprised of a combination of small circles forming a bigger concentric shape in light and darker green.
Dominant and distinctive elements
The earlier marks, consisting of merely one word, have no element that could be considered more dominant (visually eye-catching).
Regarding the contested sign, even though the letters all have the same size, the beginning of the sign ‘NEURO’, because of its bold green colour, together with the figurative element, stands out more than the element ‘NORM’ that is only outlined in green and will not attract so much the attention. Therefore, the element ‘NEURO’ and the figurative element are the dominant elements of the contested sign.
The element ‘NEURO’ of the contested sign will be associated by all the public with ‘indicating a nerve or the nervous system’. Bearing in mind part of the relevant goods, for those that are broadly speaking in the pharmaceutical field, this element is weak for these goods. The relevant public understands the meaning of that element and will not pay as much attention to this weak element as to the other more distinctive element of the mark. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue. In this regard, the Opposition Division agrees with the opponent, in its observations of 05/11/2014, that the element ‘NEURO’ has a Greek origin and means ‘nerve’ and that it is often used in compound words such as ‘neurobiologist, neurosurgery, neurology’.
Visually, the signs coincide in the letters ‘N-O-R-M’. However, these letters form the first four letters of the earlier marks, while they are the last element in the contested sign. In addition, they differ in the last letters ‘-O-N’ of the earlier marks versus the first element ‘NEURO’, the typeface and figurative element, as described above, of the contested sign. The differing first element ‘NEURO’ is a weak element, however, together with the figurative element, it is the visually most eye-catching part.
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 (decisions of 14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37; 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).
The first parts of the conflicting marks do not coincide, as the earlier marks start with the letters ‘N-O-R-M’, while the contested sign begins with ‘N-E-U-R-O’. 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 attention of the reader.
Therefore, the signs are similar to a low degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters /N-O-R-M/, present identically in both signs. However, regarding these letters, they are divided over two syllables in the earlier marks /NOR-MON/ and form the last syllable of the contested sign, that is pronounced in three syllables as /NEU-RO/ /NORM/. The pronunciation of the earlier marks differs in the sound of almost the entire last syllable, with the exception of the letter ‘M’, /-MON/, versus the first syllables /NEU-RO/ of the contested sign. Therefore, the signs are similar to a low degree.
Conceptually, the public in the relevant territory will perceive the contested sign as ‘indicating a nerve or the nervous system’ (NEURO-) and ‘NORM’ as ‘an average level of achievement or performance, as of a group or person; a standard of achievement or behaviour that is required, desired, or designated as normal’ (see Collins English Dictionary online). The term ‘NORM’ will be understood by all of the public, since it is also used in other languages, for example in Dutch, English, German, Danish, Estonian, Swedish, or it is very close to the equivalent word in other languages, for example ‘norma’ (in Portuguese, Italian, Hungarian, Latvian, Lithuanian, Maltese, Polish, Romanian, Slovenian, Slovakian, Czech and Spanish), ‘norme’ (in French) and ‘normi’ (in Finnish), whereas the earlier marks ‘NORMON’ lack any meaning in that territory. Even though the element ‘NORM’ of the contested sign has a meaning, it is not likely that the public perceives this element as being descriptive in relation to the contested goods, since it does not actually describe any characteristics of the goods at issue (see decision of 01/02/2011, R 489/2010-2, ‘ALBUNORM/ALBUMAN’, § 33). Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
Distinctiveness of the earlier marks
The distinctiveness of the earlier marks is one of the factors to be taken into account in the global assessment of likelihood of confusion.
The opponent claimed that for two of the earlier trade marks, namely Spanish trade mark registration No 2 402 142 and Community trade mark registration No 4 385 399, but the latter only in the territory of Spain, the marks enjoy enhanced distinctiveness, but the opponent did not file sufficient evidence in order to prove such a claim. The existence of many trade marks in Spain, of which only four that are mentioned refer to the same mark as the earlier one, namely ‘NORMON’, does not mean that the earlier marks on which the opposition is based have a reputation or have acquired distinctiveness through use. For the other earlier trade mark, namely International trade mark No 861 938, designating Portugal, 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 marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal.
Global assessment, other arguments and conclusion
A likelihood of confusion (including a likelihood of association) 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.
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’ (see judgment of 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22 et seq.).
The contested goods are assumed to be identical and the level of attention varies from average to high.
For the public, the marks are visually and aurally similar insofar as they contain the letters ‘N-O-R-M’. However, since they are placed in different positions in the marks, they give a very different visual and aural impression. Furthermore, the earlier marks are composed of one word and the contested sign of two elements with in between a figurative element. In addition, the earlier marks also contain two letters at the end that are not shared by the contested sign. Even though the contested sign starts with an element that has a weak distinctive character, namely ‘NEURO’, it gives the contested mark anyway a concept that is not shared by the earlier marks and, as pointed out above already, it can also be considered one of the most eye-catching elements of the sign. The same is applicable for the figurative element. Even though consumers normally pay more attention to the verbal elements of a mark, the figurative element cannot overlooked at all, even more since it is quite eye-catching and one of the co-dominant elements of the sign. Also the term ‘NORM’ gives the contested sign an additional concept that the earlier marks do not have.
As already pointed out in the comparison of the signs, the marks start with different letters, both visually and aurally; in the earlier marks being the letters ‘NORM-‘ versus ‘NEURO-’ in the contested sign. Consequently, the impact of the different first letters of the marks at issue have to be taken into account when assessing the likelihood of confusion between the marks.
The Opposition Division does not agree with the opponent, in its arguments, where it points out that the consumer would separate the element ‘NORM-’ from the additional letters ‘-ON’ and would, thus, perceive the same term as in the contested sign. The rule is that marks are perceived as a whole, the exception to the rule is that, under certain circumstances, consumers could break them down into smaller parts. Since this is an exception, it has to be applied restrictively. In the case at hand, the consumer would not dissect the earlier marks and proceed to analyse their various details. Consequently, the general rule should be to compare the sign in its entirety, taking into account primarily the overall impression conveyed. The average consumer normally perceives a mark as a whole and, as it has been mentioned above, does not proceed to analyse its various details (12/06/2007, C-334/05 P Limoncello (FIGURATIVE), EU:C:2007:333, § 35).
In the light of the visual and phonetic differences between the signs at issue and the additional conceptual meaning of the contested sign, notwithstanding the assumed identity of the contested goods and the interdependence principle, there cannot be any likelihood of confusion on the part of the target public, since the existence of a similarity of four letters between the signs at issue, taking into account all the additional differences between them, is not sufficient to give rise to a presumption of such a likelihood of confusion.
Bearing in mind the above, the Opposition Division deems that the existing differences between the marks are sufficient to exclude a likelihood of confusion between them, even taking into account an average level of attention of the relevant public, because it is the one displaying the lower degree of attention and, thus, the one more vulnerable to confusion.
Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
Given that the opposition is not well founded under Article 8(1) CTMR it is unnecessary to examine the evidence of use filed by the opponent.
The opponent refers, in its observations of 15/08/2015, to a previous decision of the Office to support its arguments, namely B 2 328 253. However it must be noted that the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities. While it is true that the Office has a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect for legality. It must also be emphasised that examination must be undertaken in each individual case. The outcome of a particular case depends on specific particular criteria, which are applicable in the factual circumstances of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, it must be pointed out that a party before the Office cannot rely, to its advantage and in order to secure an identical decision, on a possibly unlawful act committed to the benefit of someone else. It follows that even if it is acknowledged that the previous decision submitted before the Opposition Division presents some factual similarities to the case dealt with in the present proceedings, they cannot secure, considering the above mentioned principles, the same outcome. This is even more the case, since in the opposition that the opponent has mentioned, both marks are word marks, while in this case the earlier mark is a word mark and the contested sign a figurative mark and the Opposition Division, for all the aforementioned reasons, finds that the marks contain sufficient differences to avoid a likelihood of confusion.
According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and (7)(d)(ii) CTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Victoria DAFAUCE MENENDEZ
According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 800 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) CTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Article 2(30) CTMFR) has been paid.