OPPOSITION No B 2 931 965

Evelyn Waldeck, Osteranwand 8, 86946 Vilgertshofen, Germany (opponent), represented by Zeitler Volpert Kandlbinder Patent- und Rechtsanwälte Partnerschaft mbB, Herrnstr. 44, 80539 Munich, Germany (professional representative)

a g a i n s t

Metagenics Belgium BVBA (besloten vennootschap met beperkte aansprakelijkheid), Edward Vlietinckstraat 20, 8400 Oostende, Belgium (applicant), represented by Gevers, Brussels Airport Business Park, Holidaystraat 5, 1831 Diegem, Belgium (professional representative).

On 23/08/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 931 965 is partially upheld, namely for the following contested goods:

Class 5: Homeopathic products and preparations; foods for medical or dietary use; dietetic substances for medical use; food supplements, extracts and ingredients for medical or dietetic use; enzymes, sugars, vitamins, vitamin preparations, minerals and mineral preparations for medical use; fortifying beverages namely vitaminised beverages for medical use; medicinal herbs and herbal beverages for medical purposes; food supplements; dietetic foods, not for medical use.

Class 29: Foods of animal origin, not included in other classes; food extracts and ingredients included in this class.

Class 30: Foods of plant origin, not included in other classes; food extracts and ingredients, namely yeast extracts, propolis for food purposes; herbs and herbal products and products based thereon (not for medical purposes).

2. European Union trade mark application No 16 633 521 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 633 521, ‘BIOTICAL’. The opposition is based on European Union trade mark registration No 13 478 292, ‘BIOTICANA’. 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 5: Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, food supplements, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants.

Class 29: Meats; fish, seafood and molluscs; dairy products and dairy substitutes; birds eggs and egg products; oils and fats; processed fruits and vegetables (including nuts, pulses) and processed mushrooms; ready meals, soups and broths, snacks and desserts, namely birds’ nests and casseroles, condensed tomatoes, dips, fish crackers, pollen prepared as foodstuff, snacks made of pork, soya preparations, prepared meals mainly consisting of meat, fish, seafood or vegetables, snacks and side dishes made from potatoes, soups and preparations therefor, stews, stocks and broths, yucca chips.

Class 30: Coffee, tea, cocoa, cocoa products, rice; flour, preparations made from cereals for food, in particular made from wheat, maize, rice and oats in the form of flakes, semolina, groats, bran, macerated, roasted and extruded grains, including sweetened, flavoured or with added spice or vitamins; food preparations made from the aforesaid cereal preparations, in particular breakfast foodstuffs, muesli, snacks, cereal and snack bars, including mixed with dried fruits and nuts.

Following the limitation to the list of goods requested by the applicant on 01/08/2017, which was accepted by the Office on 16/08/2017 and duly notified to the opponent on 16/08/2017, the contested goods are the following:

Class 5: Homeopathic products and preparations; foods for medical or dietary use; dietetic substances for medical use; food supplements, extracts and ingredients for medical or dietetic use; enzymes, sugars, vitamins, vitamin preparations, minerals and mineral preparations for medical use; fortifying beverages namely vitaminised beverages for medical use; medicinal herbs and herbal beverages for medical purposes; food supplements; dietetic foods, not for medical use.

Class 29: Foods of animal origin, not included in other classes; food extracts and ingredients included in this class.

Class 30: Foods of plant origin, not included in other classes; food extracts and ingredients, namely yeast extracts, aromatic preparations, edible salt, propolis for food purposes, alimentary seasonings; herbs and herbal products and products based thereon (not for medical purposes).

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 opponent’s 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 (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’, used in both the applicant’s and the opponent’s lists of goods to show the relationship of individual goods to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

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.

Contested goods in Class 5

Dietetic substances for medical use; food supplements are identically contained in both lists of goods.

Food supplements are concentrated sources of nutrients or other substances that have a nutritional or physiological effect and are used as an addition to a normal diet. Such food supplements can be marketed in dose form, such as pills, tablets, capsules or liquids in measured doses. The contested extracts and ingredients for medical or dietetic use; enzymes, sugars, vitamins, vitamin preparations, minerals and mineral preparations for medical use are included in the broad category of the opponent’s food supplements. Therefore, they are identical.

Foods for medical or dietary use are specifically for dietary or medical purposes. In order to be dietetic, a food must meet a specific medical requirement and usually be eaten under the supervision of a doctor, as in the case of special food for diabetics, for example. Therefore, it is considered that the contested foods for medical or dietary use are included in the broad category of, or overlap with, the opponent’s dietetic substances adapted for medical use. Therefore, they are identical.

The contested medicinal herbs and herbal beverages for medical purposes; fortifying beverages namely vitaminised beverages for medical use are included in the broad category of the opponent’s dietetic substances adapted for medical use. Therefore, they are identical.

Homeopathy is a system of alternative medicine. Homeopathic preparations and products are used for the purpose of treating a disease or medical condition. Therefore, the contested homeopathic products and preparations have the same purpose as the opponent’s pharmaceutical preparations. Homeopathic preparations and products can be sold in pharmacies and therefore these goods also have the same distribution channels. Moreover, they target the same relevant public and can be in competition. Therefore, they are similar to a high degree.

The contested dietetic foods, not for medical use and the opponent’s food for babies have similar natures. They can have the same manufacturers and distribution channels. Therefore, they are similar.

Contested goods in Class 29

The contested foods of animal origin, not included in other classes include, as a broader category, the opponent’s meats; fish, seafood and molluscs; dairy products and dairy substitutes; birds eggs and egg products. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested food extracts and ingredients included in this class is a broad category that includes seafood, fish, meat or vegetable extracts and ingredients. These goods can be made from seafood, fish, meat or vegetables and are used to add flavour when cooking food and/or to make broth for soups and other foods. The contested food extracts and ingredients included in this class include, as a broader category, or overlap with, the opponent’s meats; fish, seafood and molluscs. 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 Class 30

The contested foods of plant origin, not included in other classes include, as a broader category, the opponent’s rice; preparations made from cereals for food, in particular made from wheat, maize, rice and oats in the form of flakes, semolina, groats, bran, macerated, roasted and extruded grains, including sweetened, flavoured or with added spice or vitamins; food preparations made from the aforesaid cereal preparations, in particular breakfast foodstuffs, muesli, snacks, cereal and snack bars, including mixed with dried fruits and nuts. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Yeast extracts can be used as food additives or flavourings, or as nutrients for bacterial culture media. They can be found in a large variety of packaged foods including frozen meals, crackers, snack foods and stock. On the market, yeast extracts are available as food spreads, eaten on toast or bread in addition to being used as ingredients in cooking. The contested food extracts and ingredients, namely yeast extracts and the opponent’s food preparations made from the aforesaid cereal preparations, in particular breakfast foodstuffs, muesli, snacks, cereal and snack bars, including mixed with dried fruits and nuts have similar purposes. They have the same relevant public and distribution channels. Moreover, they can be in competition. Therefore, they are similar to a low degree.

Herbs such as chamomile, salvia, thyme, hibiscus and mint are used in infusions. Therefore, the contested herbs and herbal products and products based thereon (not for medical purposes) and the opponent’s tea are considered to have similar purposes. They have the same producers, target the same relevant public and may be distributed through the same channels. Moreover, they can be in competition. Therefore, they are similar.

Propolis is a bee-produced substance. It has been found to offer numerous health benefits. It is often sold in capsule or tincture form as a food supplement. The contested food extracts and ingredients, namely propolis for food purposes and the opponent’s food supplements in Class 5 have the same nature. Moreover, they can have the same distribution channels and target the same public. Therefore, they are similar to a low degree.

The contested food extracts and ingredients, namely aromatic preparations, edible salt, alimentary seasonings are ingredients or condiments that can be used in the preparation of some of the opponent’s goods, such as ready meals, soups and broths, snacks and desserts, namely birds’ nests and casseroles, condensed tomatoes, dips, fish crackers, pollen prepared as foodstuff, snacks made of pork, soya preparations, prepared meals mainly consisting of meat, fish, seafood or vegetables, snacks and side dishes made from potatoes, soups and preparations therefor, stews, stocks and broths, yucca chip. However, this factor alone does not suffice to find similarity between these goods. Therefore, the contested food extracts and ingredients, namely aromatic preparations, edible salt, alimentary seasonings are dissimilar to all the opponent’s goods in Classes 5, 29 and 30, as they have different natures, purposes and methods of use. They are neither in competition nor complementary in the sense that one is indispensable for the use of the other.

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 or similar are directed at the public at large.

The public’s degree of attention may vary from average, for the goods in Classes 29 and 30, to high, for most of the goods in Class 5, since these goods affect the consumer’s state of health.

3. The signs

BIOTICANA	BIOTICAL
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.

The coinciding element ‘BIOTIC’ is not meaningful in certain territories, for example in those countries in which English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Czech-, Hungarian-, Lithuanian- and Polish-speaking parts of the public.

The earlier trade mark is a one-word mark. The word ‘BIOTICANA’ has no meaning as such for the relevant public. According to settled case-law, 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).

Nowadays, the prefix ‘BIO’ is widely used in commerce to refer to organic and/or natural and environmentally friendly products. This has been confirmed by the General Court, which held that the term ‘bio’ is used on the market to indicate that the goods in question contribute to environmental sustainability, that they use natural products or that they have been produced organically (10/09/2015, T‑610/14, BIO organic, EU:T:2015:613, § 17; 21/02/2013, T‑427/11, Bioderma, EU:T:2013:92, § 45‑46). Moreover, the element ‘BIO’ is an abbreviation derived from the word ‘BIOLOGICAL’ or equivalent words such as ‘biologický’ in Czech, ‘biológiai’ in Hungarian, ‘biologinis’ in Lithuanian and ‘biologiczny’ in Polish. Therefore, it can reasonably be assumed that the relevant part of the public will readily discern the prefix ‘BIO’ as referring to ‘biological’ or ‘life’ or to organic and natural products. In particular, in relation to the goods in question, the relevant part of the public will immediately grasp the meaning of the prefix ‘BIO’ in the earlier trade mark and consequently will split the earlier trade mark into two components, ‘BIO’ and ‘TICANA’.

Bearing in mind the nature of the goods in question, it is considered that the element ‘BIO’ is non-distinctive for the relevant goods, as it indicates that they are of organic origin and/or are produced using natural methods. The component ‘TICANA’ has no meaning for the relevant part of the public and therefore is of average distinctiveness.

The contested sign is a one-word mark. The relevant part of the public will also perceive the prefix ‘BIO’ in this sign and consequently will split the contested sign into two components: ‘BIO’ and ‘TICAL’. The considerations as regards the perception and the distinctiveness of the prefix ‘BIO’ in the earlier sign on the part of the relevant public apply equally to the contested sign. The remaining component, ‘TICAL’, is meaningless and therefore of average distinctiveness for the relevant goods.

In its observations, the applicant argues that the verbal elements ‘BIOTIC’ and ‘BIOTICA’ refer to ‘pertaining to life’ or ‘relating to living organisms’. However, the relevant part of the public will not perceive these words in the marks ‘BIOTICANA’ and ‘BIOTICAL’, because the words ‘BIOTIC’ and ‘BIOTICA’ have no meaning as such in the relevant languages. Furthermore, the relevant part of the public will not perceive the words ‘BIOTIC’ and ‘BIOTICA’ and will not associate them with similar equivalent words mainly because of the presence of the prefix ‘BIO’, which is so widely used nowadays that consumers will spot it immediately and will be unlikely to analyse the signs further and split them into other components. Therefore, this argument of the applicant must be set aside.

Visually, overall the signs have similar structures. They coincide in the letters ‘BIOTICA’. The signs differ in the letters ‘NA’ and ‘L’, present in the earlier trade mark and in the contested sign, respectively.

According to settled case-law, in word signs or in signs containing a verbal element the first part is generally the one that primarily catches the consumer’s attention and, therefore, will be remembered more clearly than the rest of the sign. This means that in general the beginning of a sign has a significant influence on the general impression made by the mark (15/12/2009, T‑412/08, Trubion, EU:T:2009:507, § 40; 25/03/2009, T‑109/07, Spa Therapy, EU:T:2009:81, § 30). Both signs begin with the prefix ‘BIO’, which, as explained above, is non-distinctive for the relevant goods. Therefore, although it appears at the beginnings of the signs, it will not be viewed by consumers as the most distinctive part. However, consumers will not ignore this element either. The remaining components of the signs, ‘TICANA’ and ‘TICAL’, coincide in the majority of their letters. They differ only in their endings, namely ‘NA’ versus ‘L’.

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛BIOTICA’, present identically in both signs. As explained above, ‘BIO’ is non-distinctive for the relevant goods; therefore, although it appears at the beginnings of the signs, it will not be viewed by consumers as the most distinctive part. However, consumers will not ignore this element either. The pronunciation of the signs differs in the sounds of the letters ‛NA’ and ‘L’ of the earlier trade mark and the contested sign, respectively.

The applicant argues that the contested sign has four syllables, whereas the earlier trade mark has five. Regardless of whether the element ‘bio’ is counted as one syllable or two syllables, it is true that the earlier trade mark contains one syllable more than the contested sign. However, this difference is not sufficient to significantly affect the strong phonetic similarity between the signs, which results from the fact that the signs coincide in the sounds of the majority of their letters.

Therefore, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the signs as a whole do not have any meaning for the relevant part of the public, the element ‘BIO’, included in both signs, will be associated with the meaning explained above. However, this element is non-distinctive for the relevant goods. For this reason, 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.

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 her 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.

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 (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 16). In addition, evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and 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).

In the present case, some of the goods are identical or similar (to various degrees) and some are dissimilar. They target the general public. The degree of attention varies from average to high. The signs are visually highly similar, aurally similar to an average degree and conceptually similar to a low degree.

The signs coincide in most of the letters of the words ‘BIOTICANA’ and ‘BIOTICAL’. Although the prefix ‘BIO’, which appears at the beginning of these words, is non-distinctive for the relevant goods, it will not be overlooked by the relevant part of the public, precisely because it appears at the beginnings of the signs. The remaining letters of the signs also coincide to a large extent. The signs differ only in their endings, namely in the letter ‘L’ at the end of the contested sign versus the letters ‘NA’ at the end of the earlier mark. This difference will have a minimal impact visually and aurally. Conceptually, the signs are similar to a low degree because of the coinciding non-distinctive element, ‘BIO’; however, the remaining parts of the signs are meaningless.

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).

Taking into account the abovementioned principles of interdependence and imperfect recollection, it is considered that the difference in the last two letters or one letter of the signs is not sufficient to safely dispel the risk of likelihood of confusion, even for the part of the public that displays a high degree of attention.

The applicant refers to previous decisions of the Office to support its arguments, namely the decisions of the Boards of Appeal of 23/09/2008, R 1445/2007-2, PROBIÓTICA (fig.) / PROBIOTICAL (fig.), and of 12/09/2006, R 1398/2005-2, INOMIX / INOMAXX.

In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings.

Regarding 23/09/2008, R 1445/2007-2, the only commonalities between the signs and were in descriptive elements, unlike in the present case, in which the marks coincide in the majority of the letters of their distinctive parts.

Regarding the decision of 12/09/2006, R 1398/2005-2, the Opposition Division notes that it was annulled by the General Court on 15/10/2008 in joined cases T‑305/06 to T‑307/06 (15/10/2008, T‑305/06 - T‑307/06, FERROMAXX, INOMAXX and ALUMAXX, EU:T:2008:444). This decision of the General Court (15/10/2008, T‑305/06 - T‑307/06, FERROMAXX, INOMAXX and ALUMAXX, EU:T:2008:444) was upheld by the European Court of Justice on 15/01/2010 (15/01/2010, C‑579/08 P, Ferromix, Inomix, Alumix, EU:C:2010:18).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Czech-, Hungarian-, Lithuanian- and Polish-speaking parts of the public, and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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.

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

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some 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

Michaela SIMANDLOVA

Birute SATAITE-GONZALEZ

Marine DARTEYRE

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.