OPPOSITION No B 2 910 274

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

Euronational S.r.l., Via Antonelli 17, 28100 Novara, Italy (applicant), represented by Con Lor S.p.A., Via Bronzino 8, 20133 Milan, Italy (professional representative).

On 27/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 910 274 is upheld for all the contested goods.

2. European Union trade mark application No 16 494 619 is rejected in its entirety.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 494 619 for the word mark ‘LINFONORM’. The opposition is based on Spanish trade mark registration No 3 648 564 for the word mark ‘GRIPALNORM’, on Spanish trade mark registration No 2 402 142 and Spanish trade mark registration No 2 402 143 both for the word mark ‘NORMON’, Spanish trade mark registration No 306 861 for the word mark ‘NORMOVITE’. The opponent invoked Article 8(1)(b) EUTMR in relation to all the earlier marks and Article 8(5) EUTMR in relation to Spanish trade mark registration No 2 402 142.

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 3 648 564 for the word mark ‘GRIPALNORM’, for which no proof of use was validly requested.

a) The goods

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

Class 5: Pharmaceutical and veterinary products; hygienic and sanitary products for medical use; food and dietary substances for medical or veterinary use; baby foods; food supplements for people or animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; products destroying vermin; fungicides, herbicides.

The contested goods are the following:

Class 5: Veterinary preparations; sanitary preparations for medical purposes; dietetic foods adapted for medical use; dietetic food adapted for veterinary use; dietetic substances adapted for medical use; dietetic substances adapted for veterinary use; infant formula; dietary supplements for animals; adhesive bands for medical purposes; medical dressings, coverings and applicators; teeth filling material; dental impression materials; disinfectants; preparations for destroying vermin; fungicides; herbicides; dietary and nutritional supplements.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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 veterinary preparations; sanitary preparations for medical purposes; dietetic foods adapted for medical use; dietetic food adapted for veterinary use; dietetic substances adapted for medical use; dietetic substances adapted for veterinary use; infant formula; dietary supplements for animals; adhesive bands for medical purposes; medical dressings, coverings and applicators; teeth filling material; disinfectants; preparations for destroying vermin; fungicides; herbicides; dietary and nutritional supplements in Class 5 are all identical to the opponent’s goods, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, or overlap with, the contested goods.

The contested dental impression materials in Class 5 are similar to the opponent’s material for stopping teeth as they usually coincide in producer, relevant public and distribution channels.

b) 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 at professional consumers with specific expertise, such as healthcare professionals, including doctors, pharmacists and dentists. Specific goods such as material for stopping teeth and dental impression materials, indeed, are sold through specialised distribution channels aiming at professionals, namely dentists.

The goods at issue are likely to receive a heightened degree of attention from the relevant public, given that they are health related. Indeed, it is apparent from case law that, as far as pharmaceutical preparations are concerned, the public’s degree of attention is relatively high, whether or not the goods in question are issued on prescription (15/12/2010, T‑331/09, Tolposan, EU:T:2010:520, §§ 26 and 27). In particular, medical professionals will have a higher degree of attention when buying, prescribing or dispensing medicines. Non-professionals also show a higher than average degree of attention, even if the pharmaceuticals are sold without prescription, as these goods affect their health.

c) The signs

GRIPALNORM	LINFONORM
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).

Contrary to the applicant’s opinion, it cannot be excluded that the signs under comparison will suggest a meaning to the relevant public. Although it is acknowledged that they are both composed of one verbal component, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). In the present case, the earlier mark will be perceived as as a combination of two elements because at least one element, namely ‘GRIPAL’, will be associated with a concrete meaning, namely with the Spanish adjective meaning ‘related to the flu’, the latter being the illness similar to a bad cold but more serious, which often makes one feel very weak and makes one’s muscles hurt. It can thus be directly descriptive of a characteristic of the goods at issue, for example that they are intended to contrast or avoid the flu or flu symptoms, to be (better) resistant to the flu or can be used during or despite flu (or flu alike) symptoms of the user. As regards the element ‘NORM’, although it does not have a meaning as such, it cannot be excluded that it may be perceived as a prefix related to the word ‘normal’ in Spanish, which denotes normality, and may therefore be understood by part of the public, at least, 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 a certain disorder or disequilibrium. Therefore, this element may be of weaker distinctiveness for part of the public under analysis, For the remaining part of the public under analysis that does not associate ‘NORM’ with any meaning, however, it is distinctive to a normal degree.

The contested sign will be perceived as as a combination of two elements because at least the term ‘LINFO’ will be associated with ‘lymph’, ‘lymph glands’ or ‘the lymphatic system’ (lymph being generally understood as the almost colourless fluid, containing chiefly white blood cells, that is collected from the tissues of the body and transported in the lymphatic system). It can thus be directly descriptive of a characteristic of the goods at issue, for example that they are intended to contrast or avoid a disequilibrium in, or to promote the healthy functioning of, the lymphatic system. As regards ‘NORM’, the same as stated above applies; hence it is considered allusive and of weaker distinctiveness for part of the public but it is in any event distinctive to a normal degree for the part of the public which does not associate it with any meaning.

While it is true, as the applicant argues, 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 hold 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 and aurally, the signs coincide in the sequence of letters ‘NORM’ that is normally distinctive for at least part of the public (and weaker for the remaining), whereas they differ in the first (but non-distinctive) verbal element ‘GRIPAL’ of the earlier mark and in the initial (but non-distinctive) element ‘LINFO’ of the contested sign. The signs also coincide in the position of their more distinctive element, ‘NORM’, and they have a similar structure (each composed of one word of similar length starting with the descriptive term followed by ‘NORM’) and a similar rhythm (GRI/PAL/NORM vs LIN/FO/NORM).

Therefore, the signs are visually and aurally similar to at least an average degree.

Conceptually, neither of the signs has a meaning as a whole. Although the prefix ‘GRIPAL-‘ as well as ‘LINFO-‘ will evoke a concept as detailed above, it is not sufficient to establish any conceptual dissimilarity, as these elements are non-distinctive and cannot indicate the commercial origin. The attention of the relevant public will be attracted by the fanciful verbal element, ‘NORM’, which will either have no meaning for part of the public, and thus a conceptual comparison is not possible, so that the conceptual aspect cannot influence the assessment of the similarity of the signs at issue, or will evoke the concept (albeit of weaker distinctiveness) as stated above: for the latter part of the public, the signs are conceptually similar to a low degree.

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

d) 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 the earlier mark compared above 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 direct meaning for any of the goods in question from the perspective of the public in the relevant territory. Even if some consumers might perceive not only the component ‘GRIPAL’ as descriptive but also ‘NORM’ as allusive, the word ‘GRIPALNORM’ is unusual and creates an impression which is sufficiently removed from that produced by a mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts. Therefore, the distinctiveness of the earlier mark as a whole must be seen as normal.

e) 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 the present case, the contested goods are partly identical and partly similar and they target health professionals and the general public. The earlier mark is assumed to be distinctive to a normal degree and its second verbal element ‘NORM’ also forms the second verbal element in the contested sign, and the more distinctive element in both signs. The signs differ visually and aurally essentially in the initial elements ‘GRIPAL’ and ‘LINFO’ which, as seen above, are descriptive. 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 covered are from the same or economically linked undertakings. Indeed, it is conceivable that the relevant consumer, whether professional or not, will perceive – on account of the common and distinctive term ‘NORM - the signs as variations of the same brand coming from the same undertaking but configured in a different way for goods that are intended for treating, preventing, or contrasting a different disorder or disequilibrium.

In its observations of 15/01/2018, the applicant argues that it owns a Spanish registration for LINFONORM covering all Class 5 goods, registered on 07/02/2008 and duly renewed. In view of this, the applicant argues that the opponent has had the chance to dispute the application ten years ago but instead the signs now peacefully coexist on the market.

According to case-law, the possibility cannot be ruled out that the coexistence of two marks on a particular market might, together with other elements, contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public (03/09/2009, C-498/07 P, La Española, EU:C:2013:302, § 82). In certain cases, the coexistence of earlier marks in the market could reduce the likelihood of confusion that the Office finds between two conflicting marks (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86). However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds for refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard it should be noted that formal coexistence in national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) at national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion. This has to be assessed on a case-by-case basis, and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

Therefore, in the absence of convincing arguments and evidence thereof, this argument of the applicant must be rejected as unfounded.

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. It follows that the contested trade mark must be rejected for all the contested goods.

As the Spanish trade mark registration No 2 402 142 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) nor is it necessary to examine the evidence of use filed by the opponent in relation to these earlier rights.

Likewise, 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 (5) EUTMR that was invoked in relation to Spanish trade mark registration No 2 402 142, nor to enter into the evidence of reputation submitted to this end.

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 (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Andrea VALISA

Edith Elisabeth VAN DEN EEDE

Justyna GBYL

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.