OPPOSITION No B 2 861 501

Probi AB, Forskarbyn Ideon, 223 70 Lund, Sweden (opponent) represented by Advokatbyrån Gulliksson AB, Carlsgatan 3, 211 20 Malmö, Sweden (professional representative)

a g a i n s t

Saludbox S.L., Avinguda Barcelona 245-247, 08750 Molins de Rei, Spain (applicant) represented by R. Volart Pons y Cia. S.L., Pau Claris 77 2º 1ª, 08010 Barcelona, Spain (professional representative).

On 23/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 861 501 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 16 258 824 , namely against some of the goods in Class 5. The opposition is based on European Union trade mark registrations No 3 829 405 for the figurative mark and No 7 449 051 for the word mark ‘PROBI’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

Proof of use of the earlier mark was requested by the applicant. However, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T‑296/02, Lindenhof, EU:T:2005:49, § 41, 72). The examination of the opposition will proceed as if genuine use of the earlier marks had been proven for all the goods invoked, which is the best light in which the opponent’s case can be considered.

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 European Union trade mark registration No 7 449 051.

a) The goods

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

Class 5: Dietetic substances adapted for medical use; bacteriological preparations and preparations of microorganisms for medical use, namely probiotic bacteria and bacteria cultures being ingredients for dietetic substances for pharmaceutical, medical and veterinary use; Media for bacteriological cultures.

The contested goods are the following:

Class 5: Dietetic substances adapted for medical use.

Dietetic substances adapted for medical use are identically contained in both lists of goods.

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 are directed at the public at large and at business customers with specific professional knowledge or expertise, such as pharmacists and dieticians. The relevant public’s degree of attention is relatively high. In particular, medical professionals have a high degree of attention when prescribing medicines or pharmaceutical preparations (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). With regard to non-professionals, they also have a higher than average degree of attention, as the goods in question affect their state of health.

c) The signs

PROBI
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 earlier mark is a word mark consisting of the verbal element ‘PROBI’. The verbal element ‘PROBI’ in the earlier mark has no particular meaning in the relevant territory and is distinctive.

The contested sign is a figurative mark consisting of the verbal elements ‘Probichok’ and ‘SALUDBOX’, and also the figurative element of a grey square, in which the top right corner is displaced to the right creating the impression of a three-dimensional arrow. Although it is composed of simple geometric shapes, the figurative element is not of a merely banal, decorative nature. Consequently, it has an average degree of distinctiveness in relation to the relevant goods. The element ‘SALUDBOX’ appears underneath the figurative element in grey upper case letters. It has no clear meaning in the relevant territory. Part of the relevant public, such as the English-speaking part, may perceive the meaning of the word ‘box’, whereas the Spanish-speaking part of the public will perceive the word ‘salud’ as referring to health. In any case, due to its size and subordinate position, the verbal element ‘SALUDBOX’ is less eye-catching than the other elements of the mark; however, it is distinctive in relation to the relevant goods. The verbal element ‘Probichok’ is a fanciful word written in large grey title case letters in a prominent position in the sign. It has no meaning in the relevant territory and is therefore distinctive. However, a significant part of the relevant public may perceive the prefix ‘Pro-’ in this element as meaning ‘professional’ and therefore separate the mark mentally into the elements ‘Pro-’ and ‘-bichok’.

Visually, the signs coincide in the string of the letters ‘PROBI’. However, they differ significantly in the length of their verbal elements, that is, in the four additional letters ‘CHOK’ and the additional verbal element ‘SALUDBOX’ of the contested sign. Furthermore, the signs differ in the figurative element of the contested sign, which has no counterpart in the earlier mark. Therefore, the signs are visually similar to a lower than average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛PROBI’. The pronunciation differs in the sounds of the letters ‛CHOK’ and of the verbal element ‘SALUDBOX’ of the contested sign, which have no counterparts in the earlier mark. Even assuming that the less prominent verbal element ‘SALUDBOX’ in the contested sign will not be pronounced, the verbal elements ‘PROBI’ and ‘PROBICHOK’ still differ in length (two syllables versus three syllables), rhythm and stress pattern (the stress will fall on the first syllable in the earlier mark, whereas it is most likely to fall on the third syllable in the contested sign). Therefore, the signs are aurally similar to a lower than average degree.

Conceptually, for the part of the public for which neither of the signs has a meaning, a conceptual comparison is not possible and the conceptual aspect does not influence the assessment of the similarity of the signs. However, the remaining part of the public may perceive various concepts evoked by the verbal and figurative elements of the contested sign, as explained above, as well as by the prefix ‘Pro-’. In all the possible scenarios, the signs are conceptually not similar, as the elements of the contested sign will always convey a concept that is not present in the earlier mark.

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 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.

e) Global assessment, other arguments and conclusion

Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case. Likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa.

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 signs are visually and aurally similar to a lower than average degree. The conceptual aspect does not influence the assessment of the similarity of the signs or the signs are conceptually not similar. The contested goods are identical to the opponent’s goods and they target the public at large and a professional public. The relevant public’s degree of attention in relation to the relevant goods is high.

Undeniably, the distinctive verbal elements in both signs have the same beginnings, the letters ‘PROBI’, but, while, in principle, the first part of a word mark is more likely to capture the public’s attention, that is not true in all cases and cannot, in any event, cast doubt on the principle that an examination of the similarity of trade marks must take into account the overall impression produced by them (16/05/2007, T‑158/05, Alltrek, EU:T:2007:143). It must also be recalled that, according to settled case-law, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (11/11/1997, C‑251/95, Sabèl, EU:C:C1997:528, § 23). Therefore, no artificial dissection of the signs under comparison should be made, although due weight has to be given to any feature that is part of the sign and contributes to the overall impression that it creates.

Although a part of the relevant public may mentally dissect the contested sign into two or more components, there is no particular reason to believe that it would separate, for example, the verbal element ‘PROBICHOK’ into ‘PROBI’ and ‘CHOK’, rather than ‘PRO’ and ‘BICHOK’. On the contrary, the latter perception is much more likely bearing in mind the extensive use of the prefix ‘PRO-’ as a short form of ‘professional’. Therefore, the earlier mark cannot be seen as an independent element that is clearly identifiable in the contested sign.

Furthermore, the contested sign has additional verbal and figurative elements that are of average distinctiveness, and which also result in its being a much more complex sign than the earlier mark.

Therefore, the Opposition Division considers that the differences identified above are sufficient to counteract the similarities between the signs for the public throughout the relevant territory, especially taking into account that the relevant public’s degree of attention is high. The fact that the verbal elements of the signs have some letters in common cannot lead automatically to likelihood of confusion.

Considering all the above, there is no likelihood of confusion on the part of the public and the opposition must be rejected.

The opponent has also based its opposition on European Union trade mark registration No 3 829 405 for the figurative mark .

The other earlier right invoked by the opponent is less similar to the contested mark, as it contains further figurative elements, which are not present in the contested trade mark. Moreover, it covers a narrower scope of goods. Therefore, the outcome cannot be different. Consequently, the opposition based on this earlier mark must also be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR, it is unnecessary to examine the evidence of use filed by the opponent.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (formerly Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Plamen IVANOV

Arkadiusz GORNY

Michal KRUK

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.