OPPOSITION No B 3 056 059

Volchem S.R.L., Contra' San Silvestro, 49, 36100 Vicenza, Italy (opponent), represented by Avvocati Associati Feltrinelli & Brogi, Corso Palladio, 54, 36100 Vicenza, Italy (professional representative)

a g a i n s t

Cafea GmbH, Am Sandtorkai 2, 20457 Hamburg, Germany (applicant), represented by Harmsen Utescher, Neuer Wall 80, 20354 Hamburg, Germany (professional representative).

On 19/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 056 059 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 17 773 615 for the word mark ‘PROMILK’, namely all the goods in Classes 5, 30 and 32 and some of the goods in Class 29. The opposition is based on European Union trade mark registration No 9 593 989 for the word mark ‘PROMEAL’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

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 mark 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.

1. The goods

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

Class 5: Dietetic foodstuffs; Solid and liquid dietetic preparations and food supplements; Solid and liquid dietetic energy foods, preparations for dietetic beverages, preparations for dietetic energy beverages, dietetic bars, dietetic protein bars, dietetic energy bars; Solid and liquid meal replacements; Solid and liquid vitamin enriched foods; Minerals; Other substances with a nutritional or physiological effect.

Class 30: Preparations made from cereals, pastry and confectionery; Energy foodstuffs; Meal replacement preparations; Protein and Energetic bars; Vitamin enriched foodstuffs, minerals, other substances with a nutritional or physiological effect.

Class 32: Preparations for making beverages.

The contested goods are the following:

Class 5: Dietetic preparations for medical use, In particular milk supplements for adults.

Class 29: Spreads based on protein.

Class 30: Coffee, cocoa, chocolate, chocolate goods and confectionery, other than chocolate bars and chocolate slabs, including with added milk and fruit products, nuts and/or cereal products; Pastry and confectionery; Coffee, cocoa and chocolate beverages, including the aforesaid goods with added milk products and/or flavouring substances and/or sweetening substances, including the aforesaid goods in instant form; Natural sweeteners and sweetening substances; Coffee, cocoa and chocolate preparations for making non-alcoholic beverages; Non-alcoholic drinks with added coffee, cocoa, chocolate; Coffee, cocoa and chocolate preparations for making alcoholic beverages; None of the aforesaid goods being dietary supplements.

Class 32: Non-alcoholic beverages, including the aforesaid goods with added fruit products; Fruit beverages and fruit juices; None of the aforesaid goods being dietary supplements.

Some of the contested goods are identical to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 assumed to be identical in classes 30 and 32 are mainly directed at the public at large.

The term ‘in particular’, used in the applicant’s list of goods, indicates that the specific goods (milk supplements for adults) are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples of dietetic preparations for medical use.

As far as goods in Class 5 are concerned, they are specialised goods also directed at medical professionals. It is apparent from the case-law that, insofar as pharmaceutical preparations, whether or not issued on prescription, are concerned, the relevant public’s degree of attention is relatively high (15/12/2010, T‑331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T‑288/08, Zydus, EU:T:2012:124, § 36).

In particular, medical professionals have a high degree of attentiveness when prescribing medicines or recommending dietetic preparations. 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.

In conclusion, the degree of attention may therefore vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

3. The signs

PROMEAL	PROMILK
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).

In the present case, in relation to the goods at hand, the common term ‘PRO’ will be understood throughout the relevant territory as an indication that the designated goods are intended for ‘professionals’ or are ‘supporting’ something (25/04/2013, T-145/12, Eco Pro, EU:T:2013:220, § 29-32). Given that the term merely denotes a particular positive or appealing quality or function of the goods this prefix will be devoid of distinctive character.

The English words ‘MEAL’, referring to food served and eaten and ‘MILK’, referring to a white liquid produced by cows, goats and some other animals will be understood by part of the relevant public. For this part of the relevant public the terms are weak given that they refer to foodstuff and a drink, respectively, which are goods commonly consumed with the conflicting goods in classes 30 and 32 or serve as ingredient, for example for the contested mark’s beverages ‘with added milk products.’ The same weak distinctiveness applies to the conflicting dietetic preparations as for these goods the terms ‘MEAL’ and ‘MILK’ will be associated with to the nutritional purpose of the goods, especially taking into account the applicant’s specification ‘in particular milk supplements’.

For the rest of the relevant public the signs’ parts ‘MEAL’ and ‘MILK’ are meaningless and thus distinctive.

Visually, the signs coincide in ‘PROM’, however they differ in the letters/sounds that follow, notably ‘EAL’ and ‘ILK’.

Even though the letter ‘L’ appears in both marks, it is the last, seventh letter in the earlier mark and the sixth letter in the contested mark, followed by a consonant ‘K’. The General Court has held that the same number of letters in two marks is not, as such, of any particular significance for the relevant public, even for a specialised public. Since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar. In addition, the public is not, in general, aware of the exact number of letters in a word mark and, consequently, will not notice, in the majority of cases, that two conflicting marks have the same number of letters (25/03/2009, T‑402/07, ARCOL / CAPOL, EU:T:2009:85, § 81-82; 04/03/2010, C‑193/09 P, ARCOL / CAPOL, EU:C:2010:121).

Therefore, taking into consideration the distinctiveness of the coinciding and differing elements, the signs are visually similar, at most, to a below average degree.

Aurally, the signs coincide in ‘PROM’, however they differ in the sounds that follow, notably the sounds of ‘EAL’ and ‘ILK’.

For the English-speaking relevant public the pronunciation of the vowels ‘EA’ and ‘I’ will result in only one vowel which is pronounced in a similar way in the two marks. In the rest of the relevant territory, all the vowels ‘E-A’ and ‘I’ will be pronounced separately.

Even though the pronunciation of the vowels ‘EA’ and ‘I’ are closer for the English-speaking public, this part of the public will also perceive the weak distinctive character of the terms where these vowels are placed.

Therefore, taking into consideration the distinctiveness of the coinciding and differing elements, the signs are aurally similar to a below average degree.

Conceptually, neither of the signs has a meaning as a whole. Although the coinciding word ‘PRO’ will evoke a concept, it is not sufficient to establish any conceptual similarity, as this element is non-distinctive and cannot indicate the commercial origin. The attention of the relevant public will be attracted by the additional verbal elements. These additional verbal elements either have no meaning for part of the public, in which case the conceptual comparison remains neutral. For the rest of the relevant public the signs are conceptually not similar, although due to elements with weak distinctive character.

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 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.

The earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public which does not understand the meaning of the English term ‘MEAL’. Therefore, for this part of the public the distinctiveness of the earlier mark must be seen as normal, despite the presence of a non‑distinctive element ‘PRO’ in the mark, as stated above in section c) of this decision.

For the rest of the relevant public, the distinctiveness of the earlier mark, composed of a non-distinctive prefix and a weak element, must be seen as low for all the goods.

5. Global assessment, other arguments and conclusion

The goods are assumed to be identical and they aim at a public with average to high attentiveness.

It is true, in principle, that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark, as the opponent argues. However, in the present case the beginning of the signs is a non-distinctive prefix. Even though the signs also coincide in the letter ‘M’ that follows the non-distinctive ‘PRO’, the following three letters ‘EAL’ and ‘ILK’ are sufficiently different to allow consumers to safely distinguish between the signs.

This especially applies to the English-speaking relevant public, which will discover different concepts in the marks, even if of weak distinctive character.

The opponent refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the opponent are not relevant to the present proceedings, because they refer to cases where the coinciding initial part does not have a clear descriptive meaning (Case T739/16, Cases R 2228/2007-4 and 2229/2017-4), including the scenario there was part of a public in the relevant territory for whom the coinciding initial part was meaningless and therefore distinctive.

Considering all the above, even if the goods were assumed to be identical there is no likelihood of confusion on the part of the public. Therefore, the opposition must 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 (former 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

Aldo BLASI

Marianna KONDAS

Cristina SENERIO LLOVET

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.