OPPOSITION No B 3 062 435

Laboratoires M&L, Société Anonyme, Zone Industrielle St-Maurice, 04100 Manosque, France (opponent), represented by Brandstock Legal Rechtsanwaltsgesellschaft mbH, Rückertstr. 1, 80336 München, Germany (professional representative)

a g a i n s t

Dietmed - Produtos Dietéticos e Medicinais, S.A., Edifício Verde – Queimadas – Sernada, 3505-330 Viseu, Portugal (applicant).

On 17/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 062 435 is rejected in its entirety.

2. The opponent bears the costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 898 409 for the word mark ‘ELIXIR ELVITAE’. The opposition is based on, inter alia, international registration No 881 365 designating the European Union for the word mark ‘MELVITA’. 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.

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 international trade mark registration No 881 365, as it has the broadest territorial scope.

a) The goods

The goods on which the opposition is based are, among others, the following:

Class 5: Dietetic substances adapted for medical use.

The contested goods are the following:

Class 5: Dietetic substances adapted for medical use.

Dietetic substances adapted for medical use are identically included 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 identical goods are directed at the public at large and at a specialist public consisting of medical and pharmaceutical professionals.

It is apparent from case-law that, insofar as pharmaceutical preparations are concerned, the relevant public’s degree of attention is relatively high, whether or not issued on prescription (judgments of 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 quoted case-law). In particular, medical professionals have a high degree of attentiveness when prescribing medicines. With regard to non-professionals, they also show a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health. Since the contested goods are for medical use and, therefore, have an impact on the consumers’ health, the above reasoning is applicable.

Therefore, contrary to the opponent’s arguments, the degree of attention may vary from relatively high to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

c) The signs and distinctiveness of the earlier mark

MELVITA	ELIXIR ELVITAE
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 distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion. Since the opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier mark as a whole, ‘MELVITA’, has no meaning for 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.

As regards the first verbal element, ‘ELIXIR’, of the contested sign, it will, as also stated by the opponent, be understood as ‘a substance, usually a liquid, with a magical power to cure, improve, or preserve something’ (information extracted from Cambridge Dictionary at https://dictionary.cambridge.org/dictionary/english/elixir on 16/07/2019). As such, this element exists in some of the relevant languages (for example, Spanish, Portuguese, Romanian, Swedish, Slovenian), or is close to the equivalent in some of the respective languages (for example, in Italian, ‘elisir’, in Danish and Polish, ‘eliksir’, ‘Elixier’ in German, ‘elixer’ in Dutch, ‘elixír’ in Czech). For the goods at issue (dietetic substances adapted for medical use), this word is of a reduced distinctive character since it will be perceived as a particular type of medical solution.

The second element, ‘ELVITAE’, of the contested sign is an invented word and does not evoke any meaning. Therefore, its distinctiveness is normal.

Visually, the signs coincide in the string of letters ‘****** *ELVITA*’. They differ in the initial letter, ‘M’, of the earlier mark, in the first element, ‘ELIXIR’, in the contested sign and in the additional letter ‘E’ at the end of the second verbal element of the contested sign. The signs clearly differ in their length and structure (seven letters and one verbal element of the earlier mark vs. thirteen letters and two verbal elements in the contested sign). It is relevant to note that neither the earlier mark nor the contested sign has any element that could be considered clearly more dominant (visually eye-catching) than other elements, since both signs are word marks, and since word marks do not contain dominant elements per se. The opponent’s argument in this regard is, therefore, not relevant. However, as is apparent from case-law, consumers in general pay more attention to the first part of a mark, taking account of the fact that they read 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 differences placed in the beginning of the signs have stronger impact on the perception of the signs and attenuate the coincidence in the string of letters that follow, in this very case, within the second element in the contested sign.

It is important to underline that the coinciding string of letters does not constitute an independent component in the earlier mark, and, furthermore, it is not separated in the way in which it is written (i.e. there is no use of a special character, hyphen or other punctuation mark). Indeed, consumers will not artificially dissect the overlapping letters since they do not form any particular semantic unit for the relevant public. The average consumer does not proceed to analyse the various details of the mark when making a purchase. It is the immediate impression created from the sign that is of relevance and not a possible perception upon a detailed analysis of the signs in question.

Although the element ‘ELIXIR’ in the contested sign may have reduced distinctiveness and, as such, consumers may pay less attention to it, its presence cannot be denied in the present case, especially on account of the fact that the two verbal elements, ‘ELIXIR’ and ‘ELVITAE’, constitute an alliteration, that is to say that they both begin with the same letter, ‘E’. In fact, not only the first letters are the same, but both the first and the second letters, ‘EL’, are the same in both elements. This repetition of letters creates a significant impact on the visual perception of the signs. Moreover, account must be taken of the circumstance that the differences between the signs are placed at the beginning of the second verbal element in the contested sign and at the beginning of the earlier mark (i.e. ‘MELVITA’ vs ‘ELVITAE’). Therefore, the signs are considered 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 string of letters ‛E-L-V-I-T-A’, present in both signs. The pronunciation differs in the sound of the initial letters, ‘M’ in the earlier mark and in the sound of ‘E-L-I-X-I-R’ in the contested sign, as well as in the additional letter ‘E’, at the end of the contested sign, which has no counterpart in the earlier mark. The signs differ in their vowel structure, ‘E-I-A’ in the earlier mark and ‘E-I-I-E-I-A-E’ in the contested sign. For this reason, the signs at issue have a clearly different rhythm of pronunciation.

Therefore, the signs are aurally similar to a low degree.

Conceptually, although the public in the relevant territory will perceive the meaning of ‘ELIXIR’ of the contested sign, as explained above, the other sign has no meaning. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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

The goods are identical; they are directed at the public at large and at professionals. The degree of attention may vary from relatively high to high, since consumers take health seriously and, thus, will be careful when selecting such goods, even if purchasing them off the shelf. Furthermore, the earlier mark is considered to have a normal degree of distinctiveness.

In the present case, the signs are visually similar to a lower than average degree, aurally similar to a low degree, while the signs are not conceptually similar.

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, since the signs referred to (‘Delvita’ vs ‘Davita’ in B 1 903 270 and SeniVita vs Sanivita (figurative) in B 1 934 713) begin and end with the same letters and merely consist of one element each, which is not the case with the signs in the present proceedings. Furthermore, the comparison in the latter case concerns a word mark and a figurative mark.

The differences between the signs, which have been explained in detail in section c) of the present decision, are clearly perceivable, and they create a significant impact on the overall impression produced by them. Therefore, taking the relatively high to high degree of attention of the relevant public into account, the fact that the signs coincide in six letters cannot lead to a finding of likelihood of confusion, even for identical goods.

Consequently, considering all the above, there is no likelihood of confusion on the part of the public.

The opponent has also based its opposition on the earlier French trade mark No 3 082 092 for the word mark ‘MELVITA’. Since this mark is identical to the one that has been compared (and also covers dietetic substances adapted for medical use) the outcome cannot be any different. Therefore, no likelihood of confusion exists with respect to this earlier mark either.

Therefore, 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. In the present case, the applicant did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Alicia BLAYA ALGARRA

Marzena MACIAK

Mads Bjørn Georg JENSEN

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.