OPPOSITION No B 3 064 357

Biofarma, Société par actions simplifiée, 50 rue Carnot, 92284 Suresnes, Cedex, France (opponent), represented by Cabinet Germain & Maureau, 31-33 Rue de la Baume, 75008 Paris, France (professional representative)

a g a i n s t

Dmytro Pichugin, Graf-Adolf-Str. 69, 40210 Düsseldorf, Germany (applicant).

On 24/09/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 064 357 is upheld for all the contested goods and services, namely:

Class 5: Powdered fruit-flavored dietary supplement drink mix; dietary supplements consisting primarily of calcium; calcium tablets as a food supplement; medicated food supplements; mineral food supplements; mineral dietary supplements for humans; dietary supplemental drinks; nutritional supplements; herbal supplements; flaxseed dietary supplements; flaxseed oil dietary supplements; mineral nutritional supplements; dietary supplements consisting of vitamins; dietary supplements for humans; dietary supplements for humans not for medical purposes; nutritional supplements; powdered nutritional supplement drink mix; dietary supplements consisting primarily of iron; nutritional supplements consisting primarily of calcium; dietary supplements consisting primarily of magnesium; nutritional supplements consisting primarily of magnesium; health food supplements made principally of vitamins.

Class 35: Retail services in relation to dietary supplements; wholesale services in relation to dietary supplements.

2. European Union trade mark application No 17 895 917 is rejected for all the contested goods and services. It may proceed for the remaining goods.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 895 917 ‘CARDIUM’, namely against all the goods in Class 5 and all the services in Class 35. The opposition is based on French trade mark registration No 4 420 225 ‘CARDYM’. 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 and services

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

Class 5: Pharmaceuticals, medical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals.

The contested goods and services are the following:

Class 5: Powdered fruit-flavored dietary supplement drink mix; dietary supplements consisting primarily of calcium; calcium tablets as a food supplement; medicated food supplements; mineral food supplements; mineral dietary supplements for humans; dietary supplemental drinks; nutritional supplements; herbal supplements; flaxseed dietary supplements; flaxseed oil dietary supplements; mineral nutritional supplements; dietary supplements consisting of vitamins; dietary supplements for humans; dietary supplements for humans not for medical purposes; nutritional supplements; powdered nutritional supplement drink mix; dietary supplements consisting primarily of iron; nutritional supplements consisting primarily of calcium; dietary supplements consisting primarily of magnesium; nutritional supplements consisting primarily of magnesium; health food supplements made principally of vitamins.

Class 35: Retail services in relation to dietary supplements; wholesale services in relation to dietary supplements.

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

All the contested goods are different kinds of dietary and nutritional supplements. They are identical to the opponent’s dietetic food and substances adapted for medical or veterinary use and dietary supplements for humans and animals, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, or overlap with, the contested goods.

Contested services in Class 35

Retail services and wholesale services concerning the sale of particular goods are similar (to a low degree) to these particular goods (05/05/2015, T‑715/13, Castello (fig.) / Castelló y Juan S.A. (fig.) et al., EU:T:2015:256, § 33). Although the nature, purpose and method of use of these goods and services are not the same, they display similarities, having regard to the fact that they are complementary and that the services are generally offered in the same places as those where the goods are offered for sale. Furthermore, they target the same public. Therefore, the contested retail services in relation to dietary supplements; wholesale services in relation to dietary supplements are similar to a low degree to the opponent’s dietetic food and substances adapted for medical or veterinary use and dietary supplements for humans and animals.

The applicant’s argument concerning the actual use of their trade mark, as far as the goods and services are concerned, cannot stand. The comparison of the goods and services must be made on the basis of the lists of goods and services as registered and as applied for and not on the basis of the actual or intended use of the 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 and services found to be identical or similar to a low degree are directed at the public at large and at professionals with specific professional knowledge or expertise in the medical and nutritional fields.

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. 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 of the public is high.

c) The signs and the distinctiveness of the earlier mark

CARDYM	CARDIUM
Earlier trade mark	Contested sign

The relevant territory is France.

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 applicant claims that the goods under his trade mark, ‘CARDIUM’, are planned to be produced and manufactured in Switzerland, and will be labelled Swiss made. Consequently, the end consumers will not only be the French public but the whole EU. The Opposition Division points out that this argument is irrelevant since similarity between the signs must be assessed for the territory in which the earlier mark is protected, which is France.

Both verbal elements ‘CARDYM’ and ‘CARDIUM’ are meaningless for the relevant public and have a normal degree of distinctiveness.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation. As explained above, the earlier trade mark as such has no meaning for any of the goods in question from the perspective of the relevant public. Therefore, the distinctiveness of the earlier mark must be seen as normal.

Visually, the signs coincide in the string of letters ‘CARD**M’. They differ in the letters ‘Y’ of the earlier mark and ‘IU’ of the contested sign. Moreover, the first four letters (out of six letters of the earlier mark and out of seven letters of the contested sign) are identical. In addition, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark, because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Therefore, the signs are visually similar to a higher-than-average degree.

Aurally, the pronunciation of the signs coincides in the sound of the string of letters ‘CARD(I/Y)*M’, present identically in both signs, since the public will pronounce the letters ‘I’ and ‘Y’ identically. The pronunciation differs in the sound of the letter ‘U’, which is in a rather non-prominent position. In addition, the signs have a highly similar structure, rhythm and intonation.

Therefore, they are aurally similar to a high degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) 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/or 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).

The goods and services are partly identical and partly similar to a low degree. They target the average as well as the professional public with a high degree of attention.

The signs are visually similar to an above-average degree and aurally highly similar, whilst the conceptual aspect does not influence the assessment of the similarity of the signs. The earlier mark has a normal degree of distinctiveness.

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).

The applicant states that ‘the trade mark CARDYM has not been active for a long time (being registered since 11/05/2018), so consumers will not be confused, even if a low level of similarity in the names of trade marks exists. The level of awareness of this trade mark is very low.’ He further points out that ‘CARDIUM’ already has its own consumer audience because the mark is already used on the market. This argument cannot prosper because the right to an EUTM begins on the date when the EUTM application is filed and not before, and it is from that date onwards that the EUTM has to be examined with regard to opposition proceedings. Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EUTM are irrelevant because the opponent’s rights, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

Moreover, it is settled case-law that only the reputation or high distinctiveness of the earlier mark will be taken into account in the assessment of the likelihood of confusion, but the holder/applicant cannot rely on the reputation of its younger mark (19/04/2013, T‑537/11, Snickers, EU:T:2013:207, § 55).

The fact that the marks’ beginnings are identical, together with the high degree of aural similarity and the similar length and structure of the signs, leads the Opposition Division to the finding that consumers will not be able to safely distinguish the marks on the market. Consequently, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s French trade mark registration No 4 420 225. It follows that the contested trade mark must be rejected for all the contested goods and services, even for the services that are similar to a low degree, based on the overall similarity of the signs, as explained in detail above.

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 applicant is the losing party, he must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Sofia SACRISTAN MARTINEZ

Sylvie ALBRECHT

Tzvetelina IANTCHEVA

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.