OPPOSITION No B 2 608 431

Emami Limited, 687, Anandapur, EM By Pass, Kolkata 700107, India, (opponent), represented by Elzaburu S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative).

a g a i n s t

LKMH, rue du Midi 119, 1000 bruxelles, Belgium (applicant), represented by Marks & Us Marcas y Patentes, Licenciado Poza 52 6ºB, 48013 Bilbao, (Vizcaya), Spain (professional representative).

On 17/11/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 608 431 is upheld for all the contested goods namely:

Class 5: Health food supplements made principally of vitamins; Vitamin preparations in the nature of food supplements; Vitamins and vitamin preparations; Nutritional supplements; Dietary and nutritional supplements; Vitamin drinks; Vitamin and mineral supplements; Extracts of medicinal plants; Herbal dietary supplements for persons special dietary requirements; Medicinal drinks; Herbal beverages for medicinal use; Dietary supplemental drinks.

2. European Union trade mark application No 13 978 424 is rejected for all the contested goods. It may proceed for the remaining goods.

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

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 13 978 424 namely against all the goods in class 5. The opposition is based on European Union trade mark registration No 8 932 188. 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.

1. The goods

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

Class 3 Soaps; Perfumery; Essential oils; Cosmetics; hair lotions; dentifrices; medicated soap; massage oil; massage oils and lotions; Massage oils, not medicated.

Class 5: Pharmaceutical preparations; medicinal preparations; sanitary preparations; disinfectants; medicinal oils; medicated lotions; pain relieving creams; pain relieving preparations; pain relieving substances; medicine tonics; pastilles being medicated tonics; pharmaceutical tonic preparations; skin tonics [medicated]; tonic water [medicated beverages]; tonics [medicine]; antiseptic body care preparations; antiseptic cleansers; antiseptic ointments; antiseptic preparations; Antiseptic products; Medicated creams; Tonics [medicinal]based on plant extracts; Massage oils (medicated- ); Medicated powders.

Class 44: Medical services; hygienic and beauty care for human beings.

The contested goods are the following:

Class 5: Health food supplements made principally of vitamins; Vitamin preparations in the nature of food supplements; Vitamins and vitamin preparations; Nutritional supplements; Dietary and nutritional supplements; Vitamin drinks; Vitamin and mineral supplements; Extracts of medicinal plants; Herbal dietary supplements for persons special dietary requirements; Medicinal drinks; Herbal beverages for medicinal use; Dietary supplemental drinks.

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.

The contested Health food supplements made principally of vitamins; Vitamin preparations in the nature of food supplements; Vitamins and vitamin preparations; Nutritional supplements; Dietary and nutritional supplements; Vitamin drinks; Vitamin and mineral supplements; Extracts of medicinal plants; Herbal dietary supplements for persons special dietary requirements; Medicinal drinks; Herbal beverages for medicinal use; Dietary supplemental drinks in class 5 are substances prepared for special dietary requirements, with the purpose of treating or preventing disease. Bearing this in mind, their purpose is similar to that of the earlier Pharmaceutical preparations; medicinal preparations (substances used to treat disease) insofar as they are used to improve a patient’s medical condition. The relevant public coincides and the goods generally have the same distribution channels. Therefore, these goods are considered similar.

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 are directed at the public at large but can also be specialised goods directed at medical professionals with specific professional knowledge or expertise. The degree of attention may vary from average to high because the goods can be over the counter products without prescription but can also be prescribed by medical specialists for treating or preventing ailments or nutritional deficiencies.

3. The signs

ZANDU	ZENDO
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

The marks under comparison are word marks ZANDU and ZENDO without any meaning in the relevant territory. 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 three out of five letters (consonants) Z-ND- in the same order and place and differ in the second and last letter (vowels) A-U and E-O for the earlier mark and contested sign respectively.

The applicant refers to Case (04/03/2010, C 193/09 P, Arcol II, EU:C:2010:121) “CAPOL” v. “ARCOL” and argues that “The fact that the trademarks comprise the same amount of letters is not basis for refusing registration, and the fact that the trademarks share three consonants out of three consonants and two vowels is not basis for refusing a trade mark, either, especially in the present case where, … the trademarks are short, and in short names the differences between the signs are spotted at a first glance”. The Opposition Division contends however that ZENDO and ZANDU are closer in similarity because all the consonants are identical and in exactly the same position with the ‘Z’ as the first letter and the ‘N-D’ combination in the middle of the words (third and fourth position). This combination and the shared position of the letter ‘Z’ at the more noticeable beginning of the mark makes the visual impression very similar.

The applicant also contends that short trademarks make it easier for the public to spot differences. The Opposition Division agrees with the applicant that in principle, the shorter a sign, the more easily the public is able to perceive all its single elements. In contrast, the public is usually less aware of differences between longer signs and each case must be judged on its own merits, having regard to all the relevant factors. However, In this case the words are not that short (five letters) and therefore the public will not spot the differences in two out of its five that easily especially considering that marks have the same consonant sequence while the differences in the vowels are located in the less noticeable middle and endings of the signs. Therefore, the Opposition Division considers there is an average degree of visual similarity.

Aurally, for the English speaking public the pronunciation of the signs coincides in the in the sound of the letters ‛Z-A-N-D-’ and ‘Z-E-N-D-’. In the English language the sound of the letters A and E is very close and hardly discernible. The marks also share the alliteration of the sounds ‘ZA-’ and ‘ZE-’. Overall the signs coincide in the sound of the sequence, stress, rhythm and intonation of the syllables. Therefore, the signs are aurally similar to a high degree.

Conceptually, neither of the signs has a meaning for the public 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.

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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The goods under comparison are considered similar.

The comparison of the signs is focussed on a part of the relevant public of the European Union, namely on the English-speaking part.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

The marks are word marks and it is considered that they are similar in three out of a total of five letters in the following letter sequence ‘Z-ND’.

While they differ in the letters E-A and O-U, these letters are not enough to counterbalance the strong resemblance in the overall look, sound and rhythm (including alliteration). Especially aurally, the English speaking public will pronounce first four letters ZEND-/ZAND- in a very similar way because of the similar pronunciation of the letters E and A making the signs phonetically highly similar overall.

Account is taken of the fact that 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).

The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

While the Office does have 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 to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In the cases of the examples Opposition B 1686867 GOAL v GOALZ (stylised), Opposition B 1462102 SMILY v SMILE (stylised), Opposition B 1711103 DEYK v DAIKE & Device and Opposition B1658429 AIRTECH (stylised) v RAITECH it must be noted that these concern cases where the marks under comparison have stylised or figurative elements which impedes a proper comparison with the current evaluation.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

Considering all the above, there is a likelihood of confusion on the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 8 932 188. It follows that the contested trade mark must be rejected for all the contested goods. It may continue for the goods in class 32 that were not contested.

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

Adriana VAN ROODEN

Steven Charles STAM

Janja FELC

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.