OPPOSITION No B 3 048 783

Laboratorios Viñas S.A., Provenza, 386 5ª Planta, 08025 Barcelona, Spain (opponent), represented by Ponti & Partners, S.L.P, C. Consell de Cent, 322, 08007 Barcelona, Spain (professional representative)

a g a i n s t

Натурфарма България ЕООД, ул. Янко Софийски Войвода No 21 вх. А, 1164 гр. Sofia, Bulgaria (applicant), represented by IP Consulting Ltd. 6-8 Mitropolit Kiril Vidinski Str., entr. 8, floor 2, office 2, 1164 Sofia, Bulgaria (professional representative).

On 15/04/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 048 783 is partially upheld, namely for the following contested goods:

Class 5: Food supplements; Medicated food supplements; Dietary and nutritional supplements; Nutritional supplements; Dietary supplements and dietetic preparations; Vitamin preparations in the nature of food supplements; Dietary supplements for humans not for medical purposes; Powdered nutritional supplement drink mix; Health food supplements for persons with special dietary requirements; Pharmaceuticals; Chemico-pharmaceutical preparations; Pharmaceutical drugs.

2. European Union trade mark application No 17 623 422 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 623 422, for the word mark ‘URIMIL NEURO’. The opposition is based on European Union trade mark registration No 8 622 714 for the word mark ‘UROMIL’, Spanish trade mark registration No 83 459 for the word mark ‘UROMIL-SALZ’ and Spanish trade mark registration No 19 865 for the word mark ‘UROMIL’. 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.

The applicant requested that the opponent submit proof of use of the earlier trade marks on which the opposition is, inter alia, based.

The date of filing of the contested application is 20/12/2017. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union and in Spain from 20/12/2012 to 19/12/2017 inclusive.

The request was submitted in due time and is admissible given that the earlier trade marks was registered more than five years prior to the relevant date mentioned above.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

European Union trade mark registration No 8 622 714

Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes, dietetic substances adapted for medical use, food for babies; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

Spanish trade mark registration No 83 459

Class 1: Chemical preparations.

Class 5: Pharmaceutical preparations.

Spanish trade mark registration No 19 865

Class 5: Pharmaceutical preparations.

According to Article 10(3) EUTMDR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 25/02/2019, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 02/05/2019 to submit evidence of use of the earlier trade mark. Upon the opponent’s request, extension of time for providing proof of use was granted until 02/07/2019. On 01/07/2019, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

 103 invoices, in Spanish, issued by the opponent for the sale of, inter alia, a diet supplement bearing the mark ‘UROMIL’. The invoices are dated between 21/12/2012 to 28/04/2017 (inside the relevant period).

 One screenshot of the opponent’s website www.vinas.com dated 27/06/2019 (outside the relevant period) including a product picture of the dietetic supplement bearing the mark along with a brief explanation of the nature and purpose of the product (i.e. a diet complement for the protection of the urinary apparatus from infections).

 One extract displaying the results of a google search for the word ‘UROMIL’ between 20/12/2012 and 19/12/2017. These results include the opponent’s website (result dated 31/03/2013) and the websites of several pharmacies (results dated 2016) displaying few lines of text concerning the opponent’s product as well as pictures of the opponent product corresponding to the picture included in the submitted screenshot of the opponent’s website.

Spanish trade mark registrations No 83 459 and 19 865

Nature of use in relation to the registered goods

With specific reference to these earlier marks, The Opposition Division will focus the analysis on the criterion of nature of use since, in its opinion, the evidence provided by the opponent is insufficient to prove that this requirement has been met.

In the context of Article 10(3) EUTMDR, the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

The evidence of use as a whole shows that the marks have been used for the sale of specific dietetic supplements for the protection of the urinary apparatus.

These products do not fall within any of the categories of goods for which these earlier marks are registered and on which the present opposition is, inter alia, based. Indeed, these earlier goods consist of raw chemicals in Class 1 and finished pharmaceutical preparations in Class 5.

Although the dietetic supplements for which the marks have been used can be combinations of various raw or semi-finished chemicals, these goods clearly belong to a different market sector than that of the raw chemicals in Class 1, which are in general intended for use in industry rather than for direct purchase by the final consumer.

Furthermore, the use of the earlier marks for dietetic supplements for medical use cannot serve to prove the genuine use of the marks for pharmaceutical preparations in Class 5. Indeed, although dietetic supplements for medical use are similar to pharmaceutical preparations, the concept of similarity of goods is not valid in the context of Article 47(2) EUTMR.

Therefore, the opponent has not shown use for the goods for which the earlier Spanish trade mark registrations No 83 459 and No 19 865 are registered and which have been claimed as a basis of the present opposition. Therefore, the opposition must be rejected pursuant to Article 47(2) and (3) EUTMR and Article 10(2) EUTMDR insofar as it is based on these earlier rights. The examination of the opposition will continue in respect of the other earlier mark invoked.

European Union trade mark registration No 8 622 714

Place of use

The documents submitted, in particular the invoices, demonstrate that the earlier mark has been used is Spain. This can be inferred from the language of the documents (Spanish), and the addresses of the dealers, in several locations in Spain (e.g. Alicante, Barcelona, Burgos, Caceres, Madrid, Sevilla, Valencia, Vizcaya).

The Opposition Division notes that, although it is true that if the earlier mark is a European Union mark, it must be used ‘in the Union’ (Articles 18(1) and 47(2) EUTMR), in territorial terms and in view of the unitary character of the EUTM, the appropriate approach is not that of political boundaries but of markets. Moreover, one of the aims pursued by the EUTM system is to be open to businesses of all kinds and sizes. Therefore, the size of an undertaking is not a relevant factor to establish genuine use. The Office must determine on a case-by-case basis whether the various indications and evidence can be combined for the purpose of assessing the genuine character of use, the geographical dimension of which is only one of the aspects to be considered.

All the relevant facts and circumstances must be taken into account, including the characteristics of the market concerned, the nature of the goods or services protected by the trade mark and the territorial extent and scale of the use as well as its frequency and regularity (19/12/2012, C-149/11, Leno, EU:C:2012:816, § 58).

In the present case the Opposition Division considers the use of the mark for in several locations of Spain is sufficient to constitute genuine use in the European Union, taking into account the territorial extent and demographics of Spain, the characteristics of the market as well as the frequency and regularity of use (as explained below).

Therefore, the evidence submitted contains sufficient indications concerning the place of use.

Time of use

Most of the evidence, including the invoices and Google search results, are dated within the relevant period.

Therefore, the evidence of use sufficiently indicates the time of use.

Extent of use

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, and its commercial volume, duration and frequency.

In the present case, the documents filed, and in particular the invoices and the extracts of the opponent’s website and the Google search results page including the product picture, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration and the frequency of use.

The numerous invoices issued by the opponent are spread across all five years of the relevant period and although the amounts sold in the invoices are not particularly high they do show frequency of use of the mark during that period. Furthermore, they show that the goods were sold to clients located in several locations in Spain. As a consequence, the evidence is sufficient to demonstrate that the use of the mark is of more than just local significance.

The invoices and the Google search results can be considered sufficiently representative evidence of the trade mark being used publicly and outwardly with a view to creating a commercial market for the goods.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of use of the earlier mark.

Nature of use

Sign used as a trade mark

Nature of use requires, inter alia, that the sign is used as a trade mark, that is, for identifying origin, thus making it possible for the relevant public to distinguish between goods and/or services of different providers.

The materials submitted, when assessed as a whole, show that the earlier sign was used in such a way as to establish a clear link between the goods (diet complement for medical use) and the opponent, as on all of the submitted invoices the name of the opponent is clearly indicated, as well as the sign ‘UROMIL’ under which the goods are invoiced. In the product images displayed in the Google search page results, the sign is clearly visible. Therefore, a link can be made between the signs used on the invoices and packaging and the goods themselves.

The Opposition Division considers, therefore, that the evidence shows use of the signs depicted above as a trade mark.

Use of the trade mark as registered

In the context of Article 10(3) EUTMDR, the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 18(1), second subparagraph, point (a), EUTMR, the following will also constitute use within the meaning of § 1: use of the European Union trade mark in a form differing in elements that do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 47(2) and (3) EUTMR, Article 18 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, the opponent’s sign is registered as a word mark ‘UROMIL’. In the evidence and in the screenshots of the opponent’s website submitted, the sign appears as registered, albeit sometimes adopting a particular typeface such as . Despite the adoption of a very mildly stylised typeface, this use of the sign in such a way clearly does not alter the distinctive character of the mark.

Therefore, the signs above show use of the mark as registered or in a form essentially the same as that registered and such use, therefore, constitutes use of the earlier mark under Article 18(1), second subparagraph, point (a) EUTMR.

Use in relation to the registered goods

The earlier European Union trade mark registration No 8 622 714 is registered for the following goods:

Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes, dietetic substances adapted for medical use, food for babies; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, the Opposition Division finds that it does reach the minimum level necessary to establish genuine use of the earlier mark during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods on which the opposition is based.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

According to case-law, when applying the abovementioned provision, the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub‑categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub‑category or sub‑categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub‑categories.

(14/07/2005, T‑126/03, Aladin, EU:T:2005:288, § 45 and 46).

In the present case, the evidence shows use only for dietetic supplements, all in relation to the health of the urinary apparatus. These goods can be considered to form an objective subcategory of the opponent’s dietetic substances adapted for medical use. Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for dietetic substances adapted for medical use, namely for the protection of urinary apparatus.

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.

a) The goods

As a result of the analysis of proof of use, the goods on which the opposition is based are the following:

Class 5: Dietetic substances adapted for medical use, namely for the protection of urinary apparatus.

The contested goods are the following:

Class 5: Food supplements; Medicated food supplements; Dietary and nutritional supplements; Nutritional supplements; Dietary supplements and dietetic preparations; Vitamin preparations in the nature of food supplements; Dietary supplements for humans not for medical purposes; Powdered nutritional supplement drink mix; Health food supplements for persons with special dietary requirements; Delivery agents in the form of dissolvable films that facilitate the delivery of nutritional supplements; Delivery agents in the form of coatings for tablets that facilitate the delivery of nutritional supplements; Pharmaceuticals; Chemico-pharmaceutical preparations; Pharmaceutical drugs.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods and services.

The term ‘namely’, used in the opponent’s list of goods for which genuine use have been demonstrated is exclusive and restricts the scope of protection only to the goods specifically listed.

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 food supplements; medicated food supplements; dietary and nutritional supplements; nutritional supplements; dietary supplements and dietetic preparations; vitamin preparations in the nature of food supplements; powdered nutritional supplement drink mix; health food supplements for persons with special dietary requirements include as, broad categories, or overlap with, the opponent’s dietetic substances adapted for medical use, namely for the protection of urinary apparatus. Therefore, they are identical.

The contested dietary supplements for humans not for medical purposes and the contested dietetic substances adapted for medical use, namely for the protection of urinary apparatus have similar nature and they can coincide in relevant public and distribution channels. Therefore, they are at least similar.

The contested pharmaceuticals; chemico-pharmaceutical preparations; pharmaceutical drugs are similar to the opponent’s dietetic substances adapted for medical use, namely for the protection of urinary apparatus as they can have the same purpose and they usually coincide in relevant public and distribution channels.

Conversely, the contested delivery agents in the form of dissolvable films that facilitate the delivery of nutritional supplements; delivery agents in the form of coatings for tablets that facilitate the delivery of nutritional supplements are dissimilar to the opponent’s goods. In particular, the contested delivery agents in the form of coatings for tablets and dissolvable films are preparations that are designed to hold a certain dosage of medicines. On the other hand, the opponent’s goods are dietary and food supplements adapted for medical use. Even if it could be claimed that the purpose of all these goods, very broadly speaking, is a medical one, the concrete purpose of each of these items differs. The purpose of the opponent’s dietary supplements is to supply a nutrient that is missing from a diet, whereas the purpose of the contested films and coatings is to hold a certain dosage of substances (in the form of powder or liquid), allowing them to be taken orally. Producers, distribution channels and/or targeted public of these conflicting sets of goods are different.

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 business customers with specific professional knowledge or expertise in the fields of pharmaceuticals, nutrition or healthcare.

On one hand, given that dietetic food and nutritional supplements are products that have an impact on a person’s health, either as a prevention or a cure, it is expected that the degree of attention of the relevant public when purchasing these goods will be higher than average. On the other hand, it is apparent from case-law that, insofar as pharmaceutical preparations are concerned, whether or not issued on prescription, 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). 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.

Therefore, the degree of attention may vary from higher than average to high, depending on the specialised nature of the goods.

c) The signs

UROMIL	URIMIL NEURO
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.

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, although the verbal elements ‘UROMIL’ in the earlier mark, and ‘URIMIL’, in the contested sign, as a whole, have no meaning for the public in the relevant territory, consumers will perceive a meaning in their initial components ‘URO’/‘URI’ and will dissect them from the common sequence of letters ‘MIL’.

In particular, the component ‘URO’ will convey the message that the relevant dietetic substances are intended to treat urinary-tract complaints. Consequently, the public will perceive this component more as an allusion to the purpose of the product than as an indication of its commercial origin. As such, it has low degree of distinctiveness (20/09/2018, T-266/17, EU:T:2018:569, UROAKUT / UroCys (fig.) et al., § 43).

Contrary to the applicant’s view, the same consideration is valid also in relation to the component ‘URI’ at the beginning of the contested sign at least for the Greek- and Italian-speaking part of the public. Indeed, the prefixes ‘URO’ and ‘URI’ (or their equivalents in Greek characters) are both included in Greek and Italian words (e.g. ουροποιητικός [uropiitikos], ουρολοίμωξη [urolimoksi], ουρικός [urikos], ουρία [uria] in Greek and ‘urologia’, ‘urologo’, ‘urinario’, ‘urinoso’ in Italian) with meanings that are directly linked to the concept of ‘urology’ and ‘urinary apparatus’.

Considered that references to the field of application and the active ingredients of products are common in the field of pharmacology (14/07/2011, Winzer Pharma v OHIM — Alcon (OFTAL CUSI), T‑160/09, EU:T:2011:379, § 80), it is considered that at least the Italian-and Greek-speaking parts of the public will perceive also the component ‘URI’ as suggesting that the relevant dietetic substances and pharmaceutical preparations are intended to treat or protect the urinary apparatus. This perception will not be significantly influenced by the presence of the element ‘NEURO’ in the contested sign that will be understood as ‘indicating a nerve or the nervous system’ (14/12/2016, R 935/2016-2, NEURONORM (fig.) / NORMON et al., § 33). Indeed, it exists a field of medicine dealing with the urological problems arising due to neurological causes (i.e. neuro-urology). As such, given the nature of the relevant goods, both this component ‘URI’ and the element ‘NEURO’ have a low degree of distinctiveness.

Therefore, the Opposition Division finds it appropriate to focus the comparison of the signs on the Greek and Italian-speaking parts of the public who will find a conceptual link between the signs.

The applicant argues that the common element ‘MIL’ will be perceived as referring to a unit of length equal to one thousandth of an inch or even as an abbreviation of ‘millimetre’. However, given that ‘mil’ is an English system unit of length (information extracted from Treccani on 01/04/2020 and available at http://www.treccani.it/enciclopedia/tag/mil/), it is likely that the public under examination is not familiar with it. Furthermore, even where perceived as an abbreviation of ‘millimetre’, the measure of length is not relevant in the sector of the specific goods at issue. Therefore, contrary to the applicant’s view, the common element ‘MIL’ has no meaning in relation to the relevant goods for the relevant public and it has therefore an average degree of inherent distinctiveness.

Visually and aurally, the signs are similar to the extent that five (out of the six) letters UR*MIL of the earlier mark are identically reproduced, in the same order, in the first element of the contested sign. The signs differ in their third letters, namely, ‘O’ in the earlier mark and ‘I’ in the contested sign and in the additional element ‘NEURO’ of the contested sign. Reference is made to the assertions made above concerning the distinctiveness of the components and elements composing the signs under comparison.

Considering all of the above, the signs are visually and aurally similar at least to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although neither of the signs has a meaning as a whole, the elements ‘URO’ and ‘URI’ at the beginning of the signs clearly allude to urinary apparatus. However, this concept is weak in relation to the relevant goods. Therefore, also taking into account the differing concept introduced by the weak element ‘NEURO’ in the contested sign, the signs are conceptually similar only 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 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 under examination. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a weak element in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

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).

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 economically linked undertakings.

In the present case, the goods are partly identical, partly similar and partly dissimilar. They target both a professional public and the public at large. The degree of attention varies from higher than average to high.

The signs are visually and aurally similar at least to an average degree, while they are conceptually similar to a low degree. The similarities between the signs lie in the fact that five (out of the six) letters of the earlier mark are identically reproduced, in the same order, in the first element of the contested sign.

It is true that there are some differing elements in the marks. Nevertheless, these differing elements are incapable of sufficiently differentiating the signs. In particular, the difference in their third letters is not particularly relevant, because in addition to being placed in the middle of the signs (among coinciding letters), it does not create any conceptual distance. The additional element ‘NEURO’ in the contested sign is weak and is placed at the end of the contested sign, to which the public will pay less attention, as consumers generally tend to focus on the beginning of a sign when they encounter a trade mark.

Furthermore, account is taken of the fact that 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 all the circumstances of the case, the differences between the signs are not sufficient to counterbalance the similarities between them. The relevant public, even if they are professionals and/or have a high degree of attention, could confuse the signs or believe that they came from the same or an economically linked undertaking. Indeed, it is not excluded that the relevant consumer will perceive the contested mark as a sub-brand, or a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion at least for the Greek- and Italian-speaking parts 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 partially well founded on the basis of the opponent’s European Union trade mark registration No 8 622 714. It follows that the contested trade mark must be rejected for all the contested goods found to be identical or similar.

The remaining goods were found to be 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

Nicole CLARKE

Rosario GURRIERI

Erkki MÜNTER

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.