OPPOSITION No B 3 066 984

Nektium Pharma S.L., Calle Las Mimosas, Nº8 (Poligono Industrial Arinaga), 35118 Aguimes, Spain (opponent), represented by Abelman Consultants, Calle Viera y Clavijo, 22 1ºEXT., 35002 Las Palmas de Gran Canarias, Spain (professional representative)

a g a i n s t

Beijing Refine Biology Co. Ltd., Zhaofeng Industrial Base, Quanying Town, Shunyi District, Beijing City, People’s Republic of China (applicant), represented by Sakellarides Law Offices, Adrianou Str. 70, 10556 Athens, Greece (professional representative).

On 25/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 066 984 is upheld for all the contested goods.

2. European Union trade mark application No 17 917 211 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 917 211 . The opposition is based on European Union trade mark registration No 11 615 002 . The opponent invoked Article 8(1)(a) and (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.

Preliminary remark

The applicant requested that the opponent submit proof of use of the earlier mark invoked. However, as was communicated by the Office on 24/05/2019, the request for proof of use cannot be taken into account because it concerns a mark which, at the date of filing of the contested trade mark, had not been registered for at least five years.

a) The goods

The goods on which the opposition is based are, inter alia, the following:

Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; 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 contested goods are the following:

Class 5: Vitamin preparations; tonics [medicines]; medicines for human purposes; medicinal drinks; syrups for pharmaceutical purposes; chemico-pharmaceutical preparations; decoctions for pharmaceutical purposes; drugs for medical purposes; medicinal herbs; herbal teas for medicinal purposes; medicinal roots; candy, medicated; dietetic foods adapted for medical purposes; dietetic beverages adapted for medical purposes; dietetic substances adapted for medical use; nutritional supplements.

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.

Dietetic substances adapted for medical use are identically included in both lists of goods.

The contested tonics [medicines]; medicines for human purposes; medicinal drinks; syrups for pharmaceutical purposes; chemico-pharmaceutical preparations; decoctions for pharmaceutical purposes; drugs for medical purposes; medicinal herbs; herbal teas for medicinal purposes; medicinal roots are products manufactured and used for the same purpose are included in or overlap with the opponent’s broad category of pharmaceutical preparations. Therefore, these goods are identical.

The contested vitamin preparations; dietetic foods adapted for medical purposes; dietetic beverages adapted for medical purposes; nutritional supplements overlap or are included in the opponent’s dietetic substances adapted for medical use since all of these goods are intended to supplement the nutrition or the diet of a human being with vitamins, proteins or whatever other supplements may be needed for the correct functioning of the body. Therefore, these goods are identical.

The contested candy, medicated is similar to the opponent’s pharmaceutical preparations as they have the same distribution channels, producers, consumers and method of use.

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 essentially directed at the public at large while some of them may also target a more specialised public with specific professional knowledge or expertise in the field of health care.

With regard to the degree of attention, 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.

As for the remaining goods such as dietetic supplements and the like, the degree of attention of both publics can be considered to be above average as these goods may also affect one’s health and physical condition.

c) The signs

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.

According to established case-law, the relevant consumers will break a verbal element down into parts 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).

The signs’ differing verbal elements are meaningful in the English-speaking part of the relevant territory. This public will perceive and understand ‘Life’ as having an obvious reference to the fact that the relevant goods are used for or related to health, and the same public will perceive ‘Power’ as referring to the strong effects or reinforcing, reinvigorating capabilities of the relevant goods, all being health-related products. Therefore, both of these words are very weakly distinctive from the perspective of this public.

Furthermore, in its observations, the applicant argues that the root “Rhodiola rosea” is a common substance in the traditional medicines, and vitamins or supplements or other medicinal preparations can contain the specific ingredient Rhodiola or Rhodiola rosea which possesses certain qualities in relation to enhance the stamina and the immune system. It then claims that ‘Rhodio’ present in both signs will be understood as originating from or referring to Rhodiola and is, thus, devoid of distinctiveness, and the applicant intends to corroborate this by citing the opponent’s website and also an analysis made by American Botanical Council. While the Opposition Division can neither deny nor confirm these assertions, and it may even be admitted that part of the public composed of essentially medical or botanical specialists know all about this, the fact remains that the word ‘Rhodio’ as such is neither included in English dictionaries nor is in common parlance. Therefore, the public at large cannot be presumed to know this word or its semantic origin, let alone the medical effects of the plant it is alleged to refer to.

Based on all the foregoing, the Opposition Division finds it appropriate to focus the comparison of the signs on the public at large in the English-speaking part of the public.

Visually and aurally, the signs coincide in their initial, distinctive verbal component ‘Rhodio’ albeit depicted in different colours and slightly different typeface. The signs differ in their second verbal component ‘Life’/’Power’ which are very weakly distinctive as explained above. The signs also differ in the use of green and yellow letters of the earlier mark as opposed to the simple black fonts of the contested sign. It is recalled that in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T 312/03, Selenium-Ace, EU:T:2005:289, § 37). This also applies to the typeface and colours in the earlier mark which will be viewed as decorative features, therefore, they have a limited impact on consumer perception. It must also be noted that consumers tend to focus on the initial part of signs since this is the part that first catches their attention. Considering all the foregoing, it must be concluded that the coinciding initial, distinctive verbal element of the signs can, to a significant extent, counteract the visual and aural differences, therefore, the signs are similar, at least, to an average degree.

Conceptually, the public will understand the signs’ differing words which are, however, very weakly distinctive. Therefore, these elements have a limited impact, if at all, on consumer perception and can certainly not indicate commercial origin of the relevant goods. Since the remaining elements are meaningless, it must be found that, overall, 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) 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 in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a very weak element in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

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).

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 or economically linked undertakings.

The goods compared are identical or similar while the signs are similar visually and aurally at least to an average degree, with the conceptual aspect playing no role. In particular, the signs’ initial verbal element is identical and distinctive, therefore, it plays a crucial role in the assessment. As a result, consumer perception will significantly be influenced by the identical element and the impact of this cannot fully be offset by the signs’ differing verbal components of limited distinctiveness and even less so by the different colours or typefaces of the signs. All these findings cannot be altered by the possible higher degree of attention of the public since they would still need to rely on their imperfect recollection. (see, in this regard, judgement of 21/11/2013, T 443/12, ancotel, EU:T:2013:605, § 54). Finally, the identity between a vast majority of the goods at issue is also a factor working strongly in favour of a finding that consumers may confuse the signs, also taking into account the interdependence principle.

In its observations, the applicant cites Opposition Decision B 2 777 830 as analogy. However, in that case, one of the signs contained a word which is included in, and was cited from, an official English dictionary while in the present case this was neither claimed nor shown. Essentially the same applies to Opposition Decision B 2 780 016 also cited by the applicant, which decision was later suspended in Decision of 19/11/2018 of the Boards of Appeal in R 901/2018-5. For these reasons, the cases cited by the applicant are not comparable to the present case. In any event, as was explained above, the relevant public in the present case cannot be expected to be aware of the alleged linguistic origin and medicinal-botanical reference of the verbal component shared by the signs.

Bearing in mind all the foregoing, it is concluded that the differences between the signs are insufficient to outweigh the similarities and consequently the relevant public is likely to think that the goods at issue come from the same or, as the case may be, economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking public at large in the relevant territory. 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 well founded on the basis of the opponent’s European trade mark registration invoked.

It follows that the contested trade mark must be rejected for all the contested goods.

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, it 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

Rosario GURRIERI

Ferenc GAZDA

Biruté SATAITE-GONZÁLEZ

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.