OPPOSITION No B 2 464 173
Walmark a.s., Oldřichovice 44, 73961 Třinec, Czech Republic (opponent), represented by Dana Lukajová, Voršilská 10, 110 00 Praha 1, Czech Republic (professional representative)
a g a i n s t
TdeltaS Limited, 30 Upper Street, Thame OX9 3EZ, United Kingdom (applicant), represented by Bawden & Associates, 4 The Gatehouse 2 High Street Harpenden Hertfordshire AL5 2TH, United Kingdom (professional representative).
2. The opponent bears the costs, fixed at EUR 300.
opponent filed an opposition against all the goods
European Union trade mark application No
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.
The goods and services
The goods and services on which the opposition is based and covered identically by both earlier trade marks are the following:
Class 5: Pharmaceutical and parapharmaceutical products, vitamins and minerals and trace elements, nutritional and dietetic preparations and medicines, medicinal syrups, extract of medicinal herbs and combined preparations of vitamins, minerals, trace elements and of medicinal plant extracts, food supplements with added vitamins or minerals or trace elements, vitamin-enriched preparations, vitamins and multi-vitamin preparations, minerals and multi-mineral preparations, herb teas, medicinal herbs, confectionery or pastils or tablets or gelatine capsules or capsules or chewing gums containing curative ingredients, dietetic products adapted for medical use, dietetic mineral waters and drinks adapted for medical purposes, dietetic foodstuffs adapted for medical use, nutritional supplements for medical use, protein preparations or foodstuffs for medical use, salves and creams and ointments for medical use, chemical products for medical use, curative oils, oils for medical use, greases for medical purposes, curative salts, tinctures for medical purposes, herbal extracts or syrups, vitamin and mineral enriched foodstuffs in the form of concentrates, concentrates of protein as nutritional food supplements, yeast for pharmaceutical use, medicinal food supplements, nutritional or dietetic preparations for medical purposes used as daily food supplements in the form of instant foodstuffs or separate mixtures, composed mainly of powdered milk or animal proteins or vegetable proteins, also with supplements of vitamins or minerals or trace elements or sugar; food supplements for non-medical use and containing animal substances; food supplements for non-medical use and containing plant based substances.
Class 30: Sugar confectionery, chewing gums, sweets, ice-creams, bakery goods, pastry goods, cocoa, coffee, tea, chocolate, chocolate-based beverages, beverages made with tea, cocoa or of coffee, cereal-based foodstuffs for human consumption, pasta, muesli, honey, bee glue (propolis) for human consumption
Class 35: Advertising; business management; business administration; office functions; presentation of goods on communication media, for retail purposes.
The contested goods are the following:
Class 3: Creams, lotions or other preparations for cosmetic purposes in particular for skin care; cosmetics; cosmetics, namely, any creams, lotions or other preparations when containing or used in combination with ketone body esters in particular hydroxybutyrates and/or mid-chain triglycerides.
Class 5: Nutritional additives for use in pharmaceutical or veterinary preparations; dietetic substances for use in pharmaceutical or veterinary preparations; pharmaceutical and veterinary preparations including such preparations in the form of foods, ices, drinks, infusions, syrups, toffees, chewing gums tablets or ointments; esters including ketone body esters for use as additives in pharmaceutical and veterinary preparations; hydroxybutyrates for use as additives in pharmaceutical and veterinary preparations; mid-chain triglycerides (MCT) for use as additives in pharmaceutical and veterinary preparations; any of the above additives or preparations when containing components for raising blood ketone levels in the human or animal body; any of the above additives or preparations for treating medical conditions including vascular conditions, weight loss, diabetes, heart failure, sickle cell anaemia, trauma, administration pre-surgery or post-surgery, use in intensive care treatment and conditions of the brain including Alzheimer's disease, Parkinson's disease, depression; any of the above additives or preparations for muscular conditions including treating, preventing or aiding recovery from fatigue, improving muscle function efficiency and muscular power and in maintaining or improving cognitive function, or for raising blood ketone levels in the human or animal body; creams, lotions and other preparations for pharmaceutical or veterinary purposes in particular for skin treatments including creams, lotions or other preparations when containing or used in combination with ketone body esters in particular hydroxybutyrates and/or mid-chain triglycerides; any of the above additives or preparations when adapted for oral, topical, sublingual or intravenous administration to the human or animal body.
Class 29: Foodstuffs of animal origin, milk products, comestible vegetable products, any other comestible horticultural products including processed products; any of the above foodstuffs, milk or vegetable or other products when containing or used in combination with ketone body esters in particular hydroxybutyrates and/or mid-chain triglycerides; foodstuffs of animal origin, milk products, comestible vegetable products, any other comestible horticultural products when containing ketone body esters in particular hydroxybutyrates and/or mid-chain triglycerides.
Class 30: Foodstuffs of plant origin and preparations made from them, ices or non-alcoholic drinks having a coffee, tea or cocoa base; cereal preparations; any of the above foodstuffs and preparations made from them when containing or used in combination with ketone body esters in particular hydroxybutyrates and/or mid-chain triglycerides; flavourings for foodstuffs, for cereal preparations, for ices or for drinks; foodstuffs of plant origin and preparations made from them, ices or non-alcoholic drinks having a coffee, tea or cocoa base which foodstuffs and drinks contain components for preventing, treating or aiding recovery from fatigue, for increasing muscle function efficiency or for raising blood ketone levels in the human or animal body or when containing ketone body esters in particular hydroxybutyrates and/or mid-chain triglycerides; cereal preparations containing components for preventing, treating or aiding recovery from fatigue, for increasing muscle function efficiency or for raising blood ketone levels in the human or animal body.
Class 32: Non-alcoholic drinks and gels other than milk products and those having a coffee, tea or cocoa base; beers; fruit drinks and fruit juices; syrups and other preparations for making non-alcoholic drinks other than milk products and those having a coffee, tea or cocoa base; non-alcoholic drinks, gels or beverages any of the above foodstuffs and preparations made from them when containing or used in combination with ketone body esters in particular hydroxybutyrates and/or mid-chain triglycerides and energy drinks and gels; non-alcoholic drinks or beverages containing components for preventing, treating or aiding recovery from fatigue, for increasing muscle function efficiency or for raising blood ketone levels in the human or animal body; ices, drinks or including energy ices and energy drinks when containing ketone body esters in particular hydroxybutyrates and/or mid-chain triglycerides.
Class 33: Alcoholic beverages (except beers); alcoholic energy beverages; any of the above beverages when containing or used in combination with ketone body esters in particular hydroxybutyrates and/or mid-chain triglycerides.
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 mark.
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 also at business customers with specific professional knowledge or expertise. The degree of attention will vary from average to relatively high. In fact, it is apparent from the case-law that, insofar as pharmaceutical preparations are concerned, the relevant public’s degree of attention is relatively high, whether or not issued on prescription (judgments of 15/12/2010, T-331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T-288/08, Zydus, EU:T:2012:124, § 36 and quoted case-law).
In particular, medical professionals have a high degree of attentiveness when prescribing medicines. With regard to non-professionals, they also show a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health.
Earlier trade marks
The relevant territory is the Czech Republic as regards the Czech trade mark registration No 335 204 and, as concerns the international trade mark registration No 1 184 851, Bulgaria, Croatia, Estonia, Hungary, Latvia, Lithuania, Poland, Romania and Slovakia.
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 earlier mark is a word mark consisting of the elements ‘DH-norm’.
The contested sign is a figurative mark. It is made of a triangle, which can also be seen as the uppercase fourth letter of the Greek alphabet ‘delta’, followed by a letter ‘H’, which might be also seen as the seventh letter of the Greek alphabet ‘eta’.
The marks have no elements that could be considered clearly more distinctive or more dominant (visually eye-catching) than other elements.
Visually, the signs coincide in the second letter ‘H’. However, they differ in their first elements, namely the letter ‘D’ in the case of the earlier mark and the triangle or Greek letter ‘delta’ in the contested sign and in the remaining elements of the earlier mark, namely ‘-norm’.
Therefore, the signs are visually similar to a low degree.
Aurally, irrespective of the different pronunciation rules in the relevant territories, the pronunciation of the signs coincides in the sound of the letter ‘H’, present identically in both signs. The pronunciation differs in the sound of the letters ‛D’ and ‘norm’ of the earlier mark, which have no counterparts in the contested mark. Also, it cannot be excluded that the part of the relevant public who might perceive the first element of the contested sign as a letter of the Greek alphabet will pronounce it as ‘delta’.
Therefore, the signs are aurally similar to a low degree.
Conceptually, neither of the signs has a meaning for the public in the relevant territories. 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.
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.
Global assessment, other arguments and conclusion
The Opposition Division has assumed that the goods are all identical. The degree of attention will vary from average to relatively high.
The marks are only similar to a low degree both from a visual and aural perspective. In fact, the only element they have in common is the letter ‘H’, which will be pronounced accordingly to the rules of any language spoken in the relevant territories. The remaining elements of the signs are different.
Contrarily to what has been claimed by the opponent in its observations of 25/02/2015, the contested sign will not be perceived as composed of the letter ‘D’ and ‘H’. In fact, as seen in the section c) of the present decision, it can be expected that a part of the relevant public will not even perceive it as a letter but only as a figurative element. For the part of the relevant public, who, on the contrary, will recognize the Greek letter ‘delta’, this does not mean that it will automatically link it to the first letter ‘D’ of the earlier sign. Furthermore, right this part of the public who might have some knowledge of Greek will therefore also recognize the second letter ‘H’ of the contested mark as a Greek letter too. The opponent has not submitted any explanation on the reason why consumers should find normal to consider two letters placed together one as a Greek alphabet letter and the other as a Latin alphabet letter. Moreover, the same is valid for the part of the public such as the Bulgarian-speaking part who normally use the Cyrillic alphabet.
Contrarily to what claimed by the opponent, who in fact only makes reference to Czech speakers who might be familiar with Cyrillic alphabet, a consumer who is used to the Cyrillic alphabet will not necessarily perceive the first element of the contested sign as the equivalent of the letter ‘D’. On the contrary, it is likely to expect that the Bulgarian–speaking consumers will react in the same two manners as the other parts of the relevant public, that is to say, considering the first element of the contested sign whether as a triangle or a letter of the Greek alphabet.
It follows that the totality of the relevant public will only link the signs to the extent that they share their second element, the letter ‘H’, independently on how it will be perceived and, consequently, pronounced.
It is the opinion of the Opposition Division that this only coincidence is not sufficient to cause any likelihood of confusion considering that there are additional distinctive elements in both marks. The additional elements ‘-norm’ of the earlier mark and the first element of the contested sign play a relevant role.
Since these latter additional and different elements are clearly perceivable it can therefore be safely excluded that there exists a likelihood of confusion on the part of the public even assuming that the goods and services are identical. Therefore, the opposition must be rejected.
According to Article 85(1) EUTMR, 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 Rule 94(7)(d)(ii) EUTMIR, 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 MENÉNDEZ
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 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 720 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) EUTMIR, 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 (Annex I A(33) EUTMR) has been paid.