OPPOSITION No B 2 904 988

Laboratorios Normon, S.A., Ronda de Valdecarrizo, 6, 28760 Tres Cantos (Madrid), Spain (opponent), represented by Vadimark, S.L., Bravo Murillo, 373, 3º A, 28020 Madrid, Spain (professional representative) 

a g a i n s t

Livinggreens B.V., G.H. Roeterdinkstraat 52, 3781 CC Voorthuizen, Netherlands (applicant), represented by Merk-Echt B.V., Keizerstraat 7, 4811 HL Breda, Netherlands (professional representative).

On 29/01/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 904 988 is upheld for all the contested goods.

2. European Union trade mark application No 16 464 018 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 16 464 018, (figurative mark). The opposition is based on, inter alia, Spanish trade mark registration No 2 402 142, ’NORMON’ (word mark).The opponent invoked Article 8(1)(b) and Article 8(5) 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 2 402 142, ’NORMON’ (word mark).

1. The goods

The goods on which the opposition is based are, among others, the following:

Class 5: Dietetic substances adapted for medical use.

After a limitation of the contested application during the course of the proceedings, the remaining contested goods are the following:

Class 5: Nutritional supplements.

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

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 are directed at the public at large and at a specialist public, for example in the field of medicine and nutrition.

It is apparent from the case-law that, insofar as pharmaceutical preparations, whether or not issued on prescription, are concerned, the relevant public's degree of attention is relatively high (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 cited case-law).

In particular, medical professionals have a high degree of attentiveness when prescribing medicines. Non-professionals also have a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health.

The same reasoning applies to dietary and nutritional supplements because they also have an impact on the consumer's health.

Therefore, the degree of attention of the relevant public in relation to the goods concerned is to high.

3. The signs

NORMON
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 mark has no meaning for the relevant public. Therefore, the earlier mark is distinctive to an average degree.

In the contested sign, the use of the bold font in the verbal element, ’BRAINNORM’ allows the public to perceive two verbal elements, ‘BRAIN’ and ‘NORM’. The word ‘BRAIN’ is weak in relation to all the contested goods, at least for a part of the public whose level of English is not basic. Indeed, this element is commonly used in the medical/pharmaceutical field to indicate a relationship with specific brain products. Therefore, the relevant public, whether or not professional, will establish, rightly or mistakenly, a relationship between the contested sign and the medical/pharmaceutical field and may perceive ‘BRAIN’ as indicating a characteristic of the contested goods, namely that they are intended for treating the brain, such as enhancing brain activity. The element ‘NORM’ may be perceived as an element related to the word ‘normal’ in Spanish, which denotes normality, and may, therefore, be understood by at least a part of the public, as an indication of a characteristic of the contested goods, for instance that they are intended to help bring levels, whichever these may be, to normality in relation to brain disorders. For this part of the public, this element is weak. For the part of the public that does not associate ‘NORM’ with any meaning, it is distinctive to an average l degree.

The contested sign also contains a figurative element consisting of a head with a coloured drawing of what resembles neurons at the brain level, depicted against a grid background of a purely decorative nature. This figurative element reinforces the meaning of brain and/or activity of a brain. Considering the goods at issue it is weak.

Therefore, the verbal element taken as a whole, ‘BRAINNORM’ is more distinctive than the figurative element. In any event, it is to be noted that 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 (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

While it is true that consumers generally tend to focus on the first element of a sign when being confronted with a trade mark, it must be stressed that this argument cannot be held in all cases and does not, in any event, cast doubt on the principle that the assessment of the similarity of marks must take account of the overall impression created by them, bearing in mind, in particular, their distinctive and dominant components.

Visually, the signs coincide in the sequence of letters ‘*NORM*’, whereas they differ in the final letters ‘ON’ of the earlier mark and in the initial weak element ‘BRAIN’ of the contested sign, as well as in the device and the remaining graphic elements, including the colours, of this sign. Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛NORM’, present identically in both. The pronunciation differs in the sound of the final letters ‘ON’ of the earlier mark and of the initial letters ‘BRAIN’ of the contested sign, which, as explained above form a weak element. Therefore, the signs are aurally similar to an average degree.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, there is at least one element in the contested sign which will be associated with the meaning explained above. Since in any event the earlier mark 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.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 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.

5. Global assessment, other arguments and conclusion

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (see Canon, § 16).

According to the same line of case-law, 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). In addition, the global assessment of the risk of confusion entails certain interdependence between the factors taken into account and, in particular, between the similarity of the trademarks and the similarity of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 25).

In the present case, the contested goods are identical and they target health professionals and the general public. The earlier mark’s inherent distinctiveness is normal and its initial letters ‘NORM’ form the second but most distinctive (for part of the public) verbal element in the contested sign. The signs differ visually and aurally essentially in the initial element ‘BRAIN’ of the contested sign which, as noted above, is weak, at least for part of the public.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand configured in a different way for those goods that are intended for example for treating brain disorders or for enhancing brain activity (see 23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

In view of the foregoing, it is likely that a significant part of the relevant consumers associate the signs, especially bearing in mind the principle of imperfect recollection. Indeed, 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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, §  54).

Considering all the above, there is a likelihood of confusion on the part of the public.Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 2 402 142, ’NORMON’ (word mark). It follows that the contested trade mark must be rejected for all the contested goods.

Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As earlier Spanish trade mark registration No 2 402 142, ’NORMON’ (word mark) 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).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

COSTS

According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(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

Chantal VAN RIEL

Inés GARCIA LLEDOÓ

Alicia BLAYA ALGARRA

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.