OPPOSITION No B 2 522 897

Sanboy Comercio de Productos Alimenticios, S.L., c. Osca, 18-20, 08830 Sant Boi de Llobregat, Spain (opponent), represented by Sugrañes Patentes y Marcas, Calle de Provenza, 304, 08008 Barcelona, Spain (professional representative)

a g a i n s t

Olimp Laboratories Sp. z o.o., Nagawczyna 109c, 39 200 Dębica, Poland (applicant), represented by Kondrat & Partners, Al. Niepodległości 223/1, 02-087 Warsaw, Poland (professional representative).

On 04/05/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 522 897 is upheld for all the contested goods.

2. European Union trade mark application No 13 582 705 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods (in Classes 5, 29 and 30) of European Union trade mark application No 13 582 705 (figurative mark:
“ ”). The opposition is based on, inter alia, Spanish trade mark registration No 2 903 578 (word mark: “SYMBIORAM”). 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Spanish trade mark registration No 2 903 578.

1. The goods

The goods in Class 5 on which the opposition is based are the following:

Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; 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 in Classes 5, 29 and 30 are the following:

Class 5: Medicines for human purposes, Diet supplements and Dietetic foodstuffs, Medicinal preparations enriched with probiotic bacterial cultures, strengthening supplements, parapharmaceutical preparations used in prophylaxis and in convalescence for medical purposes.

Class 29: High-protein concentrates and supplements, enriched with vitamins, mineral salts, amino acids and probiotic bacteria, for food, milk products (milk, yoghurts, kefir, cheese, whey, milk beverages or milk beverages, milk predominating), enriched with probiotic bacterial cultures.

Class 30: Carbohydrate concentrates and carbohydrate and high-energy supplements, enriched with vitamins, mineral salts and probiotic bacterial cultures, for food.

The relevant factors relating to the comparison of the goods include, inter alia, the nature and purpose of the goods, 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 Medicines for human purposes; Medicinal preparations enriched with probiotic bacterial cultures, strengthening supplements, parapharmaceutical preparations used in prophylaxis and in convalescence for medical purposes are included in the broad category of the opponent’s Pharmaceutical preparations. Therefore, they are identical

The contested diet supplements and dietetic foodstuffs include, as a broader category, the opponent’s dietetic substances adapted for medical use. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Contested goods in Classes 29 and 30

All the contested goods have the same distribution channels, public and producers as the opponent’s dietetic substances adapted for medical use, food for babies in Class 5. Therefore, they are similar to a low degree.

2. 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 and similar to a low degree are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention is between average and high.

3. The signs

SYMBIORAM
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 trade mark is a word mark, which is protected regardless of the use of upper or lower case, or a combination of the two. According to the description of the mark, the contested sign is a figurative mark consisting of the verbal element ‘SynBioMAX’ written in a stylised font’, with the letters ‘SynBio’ written in bold blue characters, the letters ‘S’ and ‘B’ being in upper case and the remaining letters in lower case, and with the word ‘MAX’ written in upper case red letters. The trade mark has a white background.

The element ‘MAX’ of the contested sign will be associated with the abbreviation for ‘MAXIMUM’. Bearing in mind that the relevant goods are health products, this element is non-distinctive for all the goods, as it will be perceived as referring to their having a powerful effect.

The nearly coinciding elements ‘SYMBIO’ in the earlier mark and ‘SynBio’ in the contested sign will be associated by a part of the public with the word ‘symbiosis’. Bearing in mind that the relevant goods are health products, this element is non-distinctive for all the goods, as it will be perceived as describing their operation. For the part of the public that does not perceive this meaning, these elements have a normal degree of distinctiveness.

Neither of the signs has a dominant element.

Visually, the contested sign comprises both word and figurative elements. The signs have the same length, namely nine letters. The first parts of the conflicting marks ‘SYMBIO’/’SYNBIO’ are nearly identical. 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. The signs differ in the abovementioned stylisation and figurative element of the contested sign and in its ending, ‘MAX’, which is non-distinctive. The differing letters, ‘M’/‘N’, create similar visual impressions. The ending of the earlier trade mark, ‘RAM’, is a differing and distinctive element. Therefore, the signs are visually similar to an average degree.

Aurally, the figurative elements will not be taken into account. The pronunciation of the elements ‘SYMBIO’ and ‘SynBio’ is nearly identical, and these elements are distinctive for a part of the public. The signs differ in the letter sequences ‘RAM’ and ‘MAX’, the latter of which is non-distinctive. Therefore, the signs are aurally similar to an above average degree.

Conceptually, for a part of the public neither of the signs, taken as a whole, has a meaning 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. When the nearly coinciding elements ‘SYMBIO’/‘SYNBIO’ are understood as referring to ‘interaction between two different organisms living in close physical association, typically to the advantage of both’, they are non-distinctive and, therefore, cannot result in conceptual similarity. For the same reason, the additional meaningful word ‘MAX’ in the contested sign cannot result in conceptual dissimilarity.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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 for a part of the public of a non-distinctive element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

A likelihood of confusion on the part of the public must be assessed globally. That global assessment implies some interdependence between the factors taken into account and in particular a similarity between the marks and between the goods or services covered. Accordingly, a lesser degree of similarity between these goods or 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; and 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19). The more distinctive the earlier mark, the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

For the purpose of the global appreciation, the average consumer of the category of goods or services concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. The consumer’s degree of attention is likely to vary according to the category of goods or services in question, and 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; and 30/06/2004, T‑186/02, Dieselit, EU:C:2011:238, § 38).

The goods are partly identical and partly similar to a low degree. The signs are similar to an average degree.

Taking into account the similarity between the signs, their nearly identical beginnings, the normal degree of distinctiveness of the earlier trade mark and the identity or similarity (to a low degree) between the goods, there is, even for the part of the public with a higher than average degree of attention, a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and, therefore, the opposition is upheld. This also applies to the goods that are similar only to a low degree, because of the clear similarity between the signs.

Contrary to the applicant’s opinion, the differences between the signs are not sufficient to distinguish them clearly from each other. In particular, it cannot be considered, and it has not been proved, that the expression ‘SYMBIO’ is non-distinctive for all Spanish-speaking consumers. Therefore, this element has a normal degree of distinctiveness for a part of the public.

As the earlier right “SYMBIORAM” leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T 342/02, Moser Grupo Media, S.L., EU:T:2004:268).

The opposition is well founded under Article 8(1)(b) EUTMR.

COSTS

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 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 Rule 94(3) and (6) and Rule 94(7)(d)(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

Konstantinos MITROU

Peter QUAY

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.