OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET

(TRADE MARKS AND DESIGNS)


Opposition Division



OPPOSITION No B 2 452 764


N.V. Nutricia, Eerste Stationsstraat 186, 2712 HM Zoetermeer, Netherlands (opponent), represented by NLO Shieldmark B.V., New Babylon City Offices, 2e étage, Anna van Buerenplein 21°, 2595DA Den Haag, Netherlands (professional representative)


a g a i n s t


Shandong Topscience Biotech Co., Ltd., No. 98 Lanshan West Road, Lanshan District, Rizhao, Shandong Province, People’s Republic of China (applicant), represented by Eurochina Intellectual Property, Calle San Mateo, 65 – Local 1 ‘Llopis & Asociados’, 03012 Alicante, Spain (professional representative).


On 02/11/2015, the Opposition Division takes the following



DECISION:


1. Opposition No B 2 452 764 is partially upheld, namely for the following contested goods:


Class 5: Medicinal drinks; dietetic foods adapted for medical purposes; dietetic beverages adapted for medical purposes; dietetic substances adapted for medical use; albuminous foodstuffs for medical purposes; albuminous preparations for medical purposes; candy, medicated; candy for medical purposes; food for babies; dietary supplements for animals; protein supplements for animals; animal washes; lacteal flour for babies; mineral food supplements; protein dietary supplements; veterinary preparations; diabetic bread adapted for medical use; malted milk beverages for medical purposes; lactose for pharmaceutical purposes; chewing gum for medical purposes; milk of almonds for pharmaceutical purposes; glucose dietary supplements; alginate dietary supplements; lecithin dietary supplements; wheat germ dietary supplements; casein dietary supplements; yeast dietary supplements; enzyme dietary supplements; enzyme preparations for veterinary purposes; powdered milk foods for infants.


Class 30: Wheat germ for human consumption; coffee-based beverages; cocoa-based beverages; chocolate-based beverages; tea-based beverages; fondants [confectionery]; fruit jellies [confectionery]; cookies; confectionery; farinaceous foods; pastries; flour-milling products; starch for food; candy; cake powder; wheat flour; meal; noodle-based prepared meals; caramels [candy]; corn meal; pasta; oatmeal; cereal preparations; cakes; cereal-based snack food; soya flour for food.


Class 32: Beer; non-alcoholic fruit juice beverages; whey beverages; fruit juice; waters [beverages]; mineral water [beverages]; vegetable juices [beverages]; lactic acid beverages (fruit products, non-dairy); milky tea, non-milk-based; purified water (beverage); plant beverages; beans beverages; preparations for making beverages; preparations for making aerated water; aerated water; non-alcoholic beverages; non-alcoholic honey-based beverages; kvass [non-alcoholic beverage]; isotonic beverages; peanut milk [non-alcoholic beverage]; mung bean beverages; sorbets [beverages]; must; milk of almonds [beverage]; fruit nectars, non-alcoholic; fruit juice powder; ginger juice (beverage); preparations for making mineral water; aloe vera drinks, non-alcoholic; vegetable juices [beverage]; fruit-based beverages.


2. Community trade mark application No 13 137 716 is rejected for all the above goods. It may proceed for the remaining goods.


3. Each party bears its own costs.



REASONS:


The opponent filed an opposition against all the goods of Community trade mark application No 13 137 716. The opposition is based on Community trade mark registration No 07 198 914. The opponent invoked Article 8(1)(b) CTMR.



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.



  1. The goods


The goods on which the opposition is based are the following:


Class 5: Pharmaceutical products; dietetic substances adapted for medical use, fortifying foodstuffs adapted for medical use, including food for babies, namely soup, fruit purees, vegetable purees, fruit juices and vegetable juices, including for infants with specific dietary needs and invalids; dietary nutritional supplements for medical use; a combination of active nutrients for medical use; ingredients, in particular a combination of ingredients, for the use of or for pharmaceutical preparations and food products, preparations and substances for medical purposes, yeast, and trace additives for medical use; vitamin preparations.


Class 30: Flour and preparations made from cereals, preparations made from cereals for young children.


Class 32: Carbonated or non-carbonated water (mineral or otherwise), fruit or vegetable juices, fruit or vegetable drinks, preparations for making beverages, syrups for making beverages and fruit or vegetable extracts including drinks based on dairy products included in this class; fermented preparations and other preparations for making beverages.






The contested goods are the following:


Class 5: Medicinal drinks; dietetic foods adapted for medical purposes; dietetic beverages adapted for medical purposes; dietetic substances adapted for medical use; albuminous foodstuffs for medical purposes; albuminous preparations for medical purposes; candy, medicated; candy for medical purposes; food for babies; dietary supplements for animals; protein supplements for animals; animal washes; lacteal flour for babies; mineral food supplements; protein dietary supplements; veterinary preparations; diabetic bread adapted for medical use; malted milk beverages for medical purposes; lactose for pharmaceutical purposes; chewing gum for medical purposes; milk of almonds for pharmaceutical purposes; glucose dietary supplements; alginate dietary supplements; lecithin dietary supplements; wheat germ dietary supplements; casein dietary supplements; yeast dietary supplements; enzyme dietary supplements; enzyme preparations for veterinary purposes; powdered milk foods for infants.


Class 30: Wheat germ for human consumption; coffee-based beverages; cocoa-based beverages; chocolate-based beverages; tea-based beverages; fondants [confectionery]; fruit jellies [confectionery]; cookies; confectionery; farinaceous foods; pastries; flour-milling products; starch for food; candy; sugar; ice cream; powders for ice cream; cake powder; wheat flour; meal; noodle-based prepared meals; edible ices; caramels [candy]; corn meal; pasta; oatmeal; cereal preparations; cakes; cereal-based snack food; soya flour for food.


Class 32: Beer; non-alcoholic fruit juice beverages; whey beverages; fruit juice; waters [beverages]; mineral water [beverages]; vegetable juices [beverages]; lactic acid beverages (fruit products, non-dairy); milky tea, non-milk-based; purified water (beverage); plant beverages; beans beverages; preparations for making beverages; preparations for making aerated water; aerated water; non-alcoholic beverages; non-alcoholic honey-based beverages; kvass [non-alcoholic beverage]; isotonic beverages; peanut milk [non-alcoholic beverage]; mung bean beverages; sorbets [beverages]; must; milk of almonds [beverage]; fruit nectars, non-alcoholic; fruit juice powder; ginger juice (beverage); preparations for making mineral water; aloe vera drinks, non-alcoholic; vegetable juices [beverage]; fruit-based beverages.


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


The terms ‘in particular’ and ‘including’, used in the opponents list of goods, indicate that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non‑exhaustive list of examples (see judgment of 09/04/2003, T‑224/01, ‘Nu‑Tride’).


However, the term ‘namely’, used in the opponents list of goods to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.


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 5


The contested dietetic substances adapted for medical use are identically contained in both lists of goods (including synonyms).


The opponent’s pharmaceutical products refer to any kind of medicine, i.e. a substance or combination of substances for treating or preventing disease in people or animals. Therefore, the contested veterinary preparations are included in the broader category pharmaceutical products. They are identical.


The contested food for babies overlaps with the opponent’s fortifying foodstuffs adapted for medical use, including food for babies, namely soup, fruit purees, vegetable purees, fruit juices and vegetable juices, including for infants with specific dietary needs and invalids. The contested goods can be for medical use, as can the opponent’s goods. Therefore, they are considered identical.


The contested dietetic foods adapted for medical purposes; dietetic beverages adapted for medical purposes; medicinal drinks; malted milk beverages for medical purposes; albuminous foodstuffs for medical purposes; albuminous preparations for medical purposes; enzyme preparations for veterinary purposes are all medical products for people or animals that contain substances such as vitamins and/or minerals and are intended to boost the nutritional content of the diet. Therefore, all these contested goods are included in the broad category of the opponent’s dietetic substances adapted for medical use. Consequently, these goods are considered identical.


The contested powdered milk foods for infants; lacteal flour for babies are similar to the opponent’s fortifying foodstuffs adapted for medical use, including food for babies, namely soup, fruit purees, vegetable purees, fruit juices and vegetable juices, including for infants with specific dietary needs and invalids. They have the same nature, purpose and method of use. Furthermore, they can have the same manufacturers and consumers.


The contested dietary supplements for animals; diabetic bread adapted for medical use; mineral food supplements; protein dietary supplements; glucose dietary supplements; alginate dietary supplements; lecithin dietary supplements; wheat germ dietary supplements; casein dietary supplements; yeast dietary supplements; enzyme dietary supplements; protein supplements for animals are similar to the opponent’s dietetic substances adapted for medical use. They have the same nature, purpose and method of use. Furthermore, they can have the same distribution channels and sales outlets.


The contested lactose for pharmaceutical purposes; milk of almonds for pharmaceutical purposes are similar to the opponent’s pharmaceutical products. They have the same nature, purpose and method of use. Furthermore, they can have the same manufacturers and consumers.


The contested candy, medicated; candy for medical purposes; chewing gum for medical purposes are similar to the opponent’s pharmaceutical products, as they have the same distribution channels, producers, consumers and method of use.


The contested animal washes are substances that are applied to living tissue/skin to destroy microorganisms in order to clean and reduce the possibility of infection. These goods have the same general purpose as the opponent’s pharmaceutical products, which is to prevent diseases. They can have the same commercial origin, distribution channels and consumers. Therefore, these goods are highly similar.



Contested goods in Class 30


The contested cereal preparations are identically contained in both lists of goods (including synonyms).


The contested wheat germ for human consumption; flour-milling products; farinaceous foods; wheat flour; meal; corn meal; oatmeal; pasta; soya flour for food; cakes; cookies are different kinds of flours or cereal-based products and they are included in the broad category of the opponent’s flour and preparations made from cereals. Therefore, they are considered identical.


The contested pastries overlap with the opponent’s preparations made from cereals. Therefore, they are considered identical.


The contested cereal-based snack food is similar to the opponent’s preparations made from cereals, as the main ingredient of these goods (snack food/preparations) is cereal. These goods have the same purpose and method of use. They can have the same manufacturers, distribution channels and consumers.


The contested starch for food; cake powder are similar to the opponent’s flours. These goods may serve the same purpose, namely thickening foodstuffs, they have the same distribution channels and they target the same public. Furthermore, these goods are in competition.


The contested candy; caramels [candy]; confectionery; fondants [confectionery]; fruit jellies [confectionery] are similar to the opponent’s preparations made from cereals. These goods can have the same distribution channels, providers and relevant public and can be in competition.


The contested noodle-based prepared meals are similar to a low degree to the opponent’s preparations made from cereals, as they can have the same end users and distribution channels. Furthermore, they are in competition.


The contested coffee-based beverages; cocoa-based beverages; chocolate-based beverages; tea-based beverages are similar to the opponent’s carbonated or non-carbonated water (mineral or otherwise), fruit or vegetable juices in Class 32. The goods are various drinks of a non-alcoholic nature, which may be in competition with one another, may be consumed on the same occasions and can be served together in the same establishments, such as coffee shops. They can have the same relevant public and distribution channels.


The contested sugar; powders for ice cream, which are raw materials, are dissimilar to all of the opponent’s goods in Classes 5, 30 and 32. These goods have different natures and purposes and they come from different manufacturers. Although they may be used in some way in conjunction with the goods of the earlier right (to add flavour, to bind, to add texture), this is not in itself an immediate indicator of similarity. Ingredients used for the preparation of foodstuffs are a sub-category of raw materials and treated as such.


The contested ice cream; edible ices are dissimilar to the opponent’s flour and preparations made from cereals, preparations made from cereals for young children. Although all these goods are intended for human consumption, this is not sufficient to find them similar. They have different natures and methods of use. Furthermore, they do not usually originate from the same undertakings. In addition, they are neither complementary nor in competition.


Even the contested ice cream; edible ices and the opponent’s drinks in Class 32 and pharmaceutical and dietetic products in Class 5 have nothing relevant in common.



Contested goods in Class 32


The contested aerated water; non-alcoholic fruit juice beverages; fruit juice; waters [beverages]; mineral water [beverages]; vegetable juices [beverages; preparations for making beverages are identically contained in both lists of goods (including synonyms).


The contested non-alcoholic beverages include, as a broader category, the opponent’s carbonated or non-carbonated water (mineral or otherwise), fruit or vegetable juices, fruit or vegetable drinks. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s goods, they are considered identical to the opponent’s goods.


The contested beans beverages; mung bean beverages; fruit nectars, non-alcoholic; must; ginger juice (beverage); vegetable juices [beverage]; fruit-based beverages are included in the broad categories of the opponent’s fruit or vegetable juices, fruit or vegetable drinks. Therefore, they are identical.


The contested purified water (beverage) is included in the broad category of the opponent’s carbonated or non-carbonated water (mineral or otherwise). Therefore, these goods are identical.


The contested fruit juice powder is included in the broad category of the opponent’s preparations for making beverages including drinks based on dairy products included in this class. Therefore, these goods are identical.


The contested preparations for making aerated water; preparations for making mineral water are similar to the opponent’s carbonated or non-carbonated water (mineral or otherwise). These goods are complementary. Furthermore, they target the same end consumers. Therefore, they are similar.


The contested kvass [non-alcoholic beverage] is a fermented beverage, and this product is similar to the opponent’s fermented preparations and other preparations for making beverages. These goods have the same nature (fermented beverages) and purpose. They can have the same relevant public and distribution channels. Therefore, they are similar.


The contested whey beverages; lactic acid beverages (fruit products, non-dairy); milky tea, non-milk-based; plant beverages; non-alcoholic honey-based beverages; isotonic beverages; peanut milk [non-alcoholic beverage]; sorbets [beverages]; milk of almonds [beverage]; aloe vera drinks, non-alcoholic are similar to the opponent’s fruit or vegetable juices, fruit or vegetable drinks in Class 32, which include various drinks of a non-alcoholic nature. These goods may be in competition with one another, may be consumed on the same occasions and can be served together in the same establishments. They can have the same producers, relevant public and distribution channels.


The contested beers are considered to be similar to a high degree to the opponent’s carbonated or non-carbonated water (mineral or otherwise), fruit or vegetable juices, fruit or vegetable drinks; fermented preparations and other preparations for making beverages. These goods are sold side by side in the same shops and bars and on drinks menus, etc. These goods may have the same providers and distribution channels, target the same public and be in competition. Therefore they are similar to a high degree.



  1. The signs



NUTRICIA



Earlier trade mark


Contested sign



The relevant territory is the European Union.


Visually, the signs are similar to the extent that they coincide in the sequence of letters ‘NUTRI*A’, which are the first five letters (out of eight) and the last letter of both signs. However, they differ in two middle letters, ‘CI’ in the earlier mark and ‘HY’ in the contested sign.


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 ‘NUTRI-A’ present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the middle letters, ‛CI’ in the earlier sign versus ‛HY’ in the contested mark. In some languages, such as Bulgarian, Estonian and French, the sounds of the letters ‘I’ and ‘Y’ are identical and in some, such as French and Spanish, the sound of the letter ‘H’ is silent, thus making the pronunciation of the signs somewhat more similar.


Conceptually, the signs as a whole do not have any meaning for the public in the relevant territory. However, part of the public can be expected to dissect the verbal element ‘NUTRI’ from both of the signs. This is the part of the relevant public that will perceive a reference to the word ‘nutrition’ in the relevant language (at least the English‑, French-, Italian-, Portuguese- and Spanish-speaking parts of the public).


Therefore, since the signs will be associated with a similar meaning on account of the element ‘NUTRI’, the signs are conceptually similar for a part of the relevant public, but will have no meaning for consumers who do not understand this element and do not separate it out from the marks as a whole.


Taking account of the abovementioned visual and aural coincidences, and, for a part of the public, a degree of conceptual similarity, it is considered that the signs under comparison are similar.



  1. Distinctive and dominant elements of the signs


In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.


The element ‘NUTRI’, present in both signs, will be associated with the concept of nutrition. Bearing in mind that the relevant goods are dietetic products in Class 5, food products in Class 30 and isotonic beverages in Class 32, it is considered that this element is non-distinctive for the goods. The part of the public who understands the meaning of the element and undertakes the dissection will not pay as much attention to this non-distinctive element as to the other more distinctive elements of the marks. Consequently, for a part of the public, the impact of this non-distinctive element is limited.


The marks under comparison have no elements which could be considered clearly more dominant (visually eye-catching) than other elements.



  1. 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, despite the presence of a non‑distinctive element in the mark as stated above in section c) of this decision.



  1. 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 some of them are directed at a specialised public with specific professional knowledge or expertise in the field of health care. The degree of attention may vary from average to high, depending on whether these goods affect the user’s state of health.



  1. Global assessment, other arguments and conclusion


The goods are partly identical or similar and partly dissimilar. The signs are visually and aurally similar. Moreover, the pronunciation of the signs is more similar still in some languages, particularly Bulgarian.


Both signs, as whole, have no meaning, despite the allusive element ‘NUTRI’.


The part of the relevant public that dissects the element ‘NUTRI’ from the signs will pay less attention to this letter sequence for the reasons given in section c) of this decision. It is, however, emphasised that only the part of the public that understands its meaning, and not the entire public, will separate out this element. For the remaining part of the public, the signs will have a normal degree of distinctiveness in their entirety and with regard to the letters ‘NUTRI*A’, which the marks have in common and which constitute the major part of both marks.


The signs are similar to the extent that they have in common the letters NUTRI*A’. The differing letters, CI’/‘HY, in the signs are placed in the middle of the signs and will not initially catch the consumer’s attention. The signs have similar lengths and are aurally similar to one another. No conceptual similarity has been established for a part of the relevant territory.


The signs coincide visually and aurally in the initial parts of their verbal elements. The relevant public generally tends to focus on the first part 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. Consequently, the identical first parts of the signs at issue have to be taken into account when assessing the likelihood of confusion between the marks.


Furthermore, consumers tend to remember the similarities rather than the dissimilarities between signs. In addition, average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (judgment of 22/06/1999, C‑342/97, ‘Lloyd Schuhfabrik Meyer’).


Based on the principle of imperfect recollection, it is considered that the similarities between the signs are sufficient to cause at least part of the Bulgarian, Estonian and Polish public to believe that the conflicting identical and similar goods come from the same undertaking or economically linked undertakings.


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 Community trade mark registration.


It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.


The contested mark must also be rejected for the goods found to be similar to a low degree, since the signs have a sufficiently high degree of similarity for confusion to remain possible for these goods.


The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) CTMR, the opposition based on this article and directed at these goods cannot be successful.


Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the opponent’s argument that states its trade marks with the verbal element NUTRI.


Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods, as the similarity of goods and services is a sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.



COSTS


According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) CTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.


Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.




The Opposition Division


Richard THEWLIS


Julie GOUTARD

Orlin DENKOV



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.


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