OPPOSITION No B 3 065 637

BioCell Technology, LLC, 20 Truman Street, Suite 105, 92620, Irvine, United States of America (opponent), represented by Casalonga Alicante, S.L., Avenida Maisonnave, 41-6C, 03003, Alicante, Spain (professional representative)

a g a i n s t

Bioceltix Sp. z o. o., Eugeniusza Kwiatkowskiego 4, 52326 Wrocław, Poland (applicant), represented by WTS Rzecznicy Patentowi – Witek, Śnieżko I Partnerzy, Weigla 12, 53-114 Wrocław, Poland (professional representative).

On 28/11/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 065 637 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 895 518 for the figurative mark . The opposition is based on European Union trade mark registrations No 11 518 834 for the word mark ‘BIOCELL COLLAGEN’ and No 11 518 792 for the figurative mark . 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.

a) The goods

European Union trade mark registrations No 11 518 834 and No 11 518 792 have the same scope of protection so the goods on which the opposition is based are the following:

Class 1: Dietary ingredient, namely collagen, for use in the manufacture of health food supplements and cosmetics.

The contested goods are the following:

Class 5: Medical and veterinary preparations, in particular based on stem cells; Dietary supplements and dietetic preparations; Biological preparations for veterinary purposes; Biological preparations for medical purposes; Biological tissue cultures for veterinary purposes; Biological tissue cultures for medical purposes; Stem cells for medical purposes; Stem cells for veterinary purposes; Medicines for veterinary purposes; Mixed biological preparations for medical purposes; Veterinary preparations and substances; Nucleic acid sequences for medical and veterinary purposes; Living cells for veterinary use; Diagnostic biomarker reagents for medical purposes; Immunostimulants; Surgical implants comprised of living tissues; Medicated shampoos for pets; Ointments for pharmaceutical purposes; Dressings, medical; Blood plasma; Diagnostic preparations for veterinary purposes; Enzyme preparations for veterinary purposes.

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

The term ‘namely’, used in the opponent’s list 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.

However, the term ‘in particular’, used in the applicant’s list of goods indicates that the specific goods 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 (09/04/2003, T 224/01, Nu Tride, EU:T:2003:107).

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

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

The earlier marks are protected for collagen for use in the manufacture of health food supplements and cosmetics. Collagen is a protein contained in human’s and animal’s body that is found in their bones, muscles, skin and tendons. Human´s and animal´s bodies naturally produce collagen every day, however this production slows down progressively. Nowadays, collagen is often used as an ingredient in cosmetics (in order to make the skin look younger) or as a nutritional supplement (in order to keep the bones strong). In order to be collected for use, collagen is taken from other dead animals (usually livestock for commercial use). The basic extraction is generally done using a process of cooking cartilaginous animal materials, such as bones, connective tissues and skin.

This having been explained, in the present case, collagen classified in Class 1 is a raw material used for the preparation of cosmetics or dietary and nutritional supplements.

On the other hand, the contested goods encompass a range of finished products for medical and veterinary purposes in Class 5. Even assuming that some of these goods in Class 5 can usually contain collagen, they are not considered similar to the collagen included in Class 1. Their purpose as a finished product usually differs from collagen in Class 1, which is mainly in its raw, unfinished state and not yet mixed with other chemicals and inert carriers into a final product. The finished products in Class 5 usually also target a different public (final consumers and not the industry) and do not share the same distribution channels.

Indeed, according to case-law, the raw materials subject to a transformation process are essentially different from the finished products that incorporate, or are coated with, those raw materials, in terms of their nature, aim and intended purpose (see, to that effect, 03/05/2012, T-270/10, Karra, EU:T:2012:212, § 53).

For all the above, the contested medical and veterinary preparations, in particular based on stem cells; dietary supplements and dietetic preparations; biological preparations for veterinary purposes; biological preparations for medical purposes; biological tissue cultures for veterinary purposes; biological tissue cultures for medical purposes; stem cells for medical purposes; stem cells for veterinary purposes; medicines for veterinary purposes; mixed biological preparations for medical purposes; veterinary preparations and substances; nucleic acid sequences for medical and veterinary purposes; living cells for veterinary use; diagnostic biomarker reagents for medical purposes; immunostimulants; surgical implants comprised of living tissues; medicated shampoos for pets; ointments for pharmaceutical purposes; dressings, medical; blood plasma; diagnostic preparations for veterinary purposes; enzyme preparations for veterinary purposes are considered to be dissimilar to the opponent’s dietary ingredient, namely collagen, for use in the manufacture of health food supplements and cosmetics.

Contrary to the opponent’s general assertion that the conflicting goods are similar and without the evidence to the contrary, it appears that they differ in their specific ultimate purpose and method of use. They do not usually come from the same undertakings and they are not distributed through the same channels. Finally, they do not address the same consumers and, hence, they can be neither in competition nor complementary.

b) Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

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, 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

Begoña URIARTE VALIENTE

Stanislava STOYANOVA

Boyana NAYDENOVA

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.