OPPOSITION No B 3 073 462

Tong-Il, S.L., C/ Oro n° 20, Pol. Ind. Sur., 28770 Colmenar Viejo (Madrid), Spain (opponent), represented by Iñigo A. González-Mogena González, Bravo Murillo nº 373, 3º A, 28020 Madrid, Spain (professional representative)

a g a i n s t

Sabia System S.r.l, Via Firenze 47, 00184 Roma, Italy (applicant).

On 28/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 073 462 is upheld for all the contested goods, namely

Class 5: Dietary supplements and dietetic preparations; sanitary preparations and articles.

2. European Union trade mark application No 17 962 502 is rejected for all the contested goods. It may proceed for the remaining services.

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 17 962 502 namely, against all the goods in Class 5. The opposition is based on, inter alia, European Union trade mark registration No 15 594 781 . 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.

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 European Union trade mark registration No 15 594 781.

1. The goods

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

Class 5: Medical and veterinary preparations and articles; dietary supplements and dietetic preparations.

The contested goods are the following:

Class 5: Dietary supplements and dietetic preparations; sanitary preparations and articles.

Dietary supplements and dietetic preparations are identically contained in both lists of goods.

The contested sanitary preparations and articles overlaps with the opponent’s medical and veterinary preparations and articles. Therefore, they are identical.

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 found to be identical are directed at the public at large as well as business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness will be high.

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. This is also valid for dietary supplements.

3. 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.

The sign’s verbal element ‘SAVIA ROJA’ and ‘SABÌA’ are meaningful in certain territories, for example in those countries where Spanish is understood. Indeed, even though the inverse accent does not exist in Spanish, ‘SABÌA’ will be perfectly understood due to its resemblance with the Spanish verb tense ‘SABÍA’ or the name ‘SABIA’. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public for which these elements are meaningless and, therefore, distinctive.

The contested sign’s element ‘SYSTEM’ will be perceived by the relevant consumers as ‘a way of working, organizing, or doing something which follows a fixed plan or set of rules’. It follows that this element is non distinctive in relation to all the relevant goods, since it merely refers to the set of rules followed for producing the relevant products. Additionally, this element plays a secondary role due to its limited dimensions.

In the assessment of the visual and aural similarity of the marks in question it has to be also borne in mind that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is 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.

The contested sign’s distinctive figurative element representing a stylized and encircled letter ‘S’ will be perceived as recalling the initial letter of the next word ‘SABÍA’.

Visually and aurally, the signs coincide in the letters ‘SA*IA’ whereas they differ in their respective third letter ‘V’ / ‘B’, in the contested sign’s accent on the letter ‘I’ and in the sign’s respective element ‘ROJA’ and ‘SYSTEM’. The marks also (visually) differ in their respective stylizations and colours and in the contested application’s graphical element. It is unlikely that the relevant public will pronounce the contested sign’s stylized letter ‘S’ as it is just a mere repetition of the initial letter of the next verbal component.

Therefore, the signs are visually and aurally similar to an average degree.

Conceptually, neither of the signs has a meaning as a whole. Although the contested sign’s element ‘SYSTEM’ will evoke a concept, it is non-distinctive and cannot indicate the commercial origin. The attention of the relevant public will be attracted by the additional fanciful verbal elements, which have no meaning. 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 the visual and aural 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. 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.

5. Global assessment, other arguments and conclusion

In the present case the goods have been found identical. They target both the general and professional public. The degree of attention is high. The distinctiveness of the earlier mark is normal.

The signs under comparison have been found visually and aurally similar to an average degree insofar as they coincide in the initial sequence of letters ‘SA*IA’. The conceptual comparison has no influence in the comparison.

Taking all the above into account, the Opposition Division considers that the assessed differences between the signs are not sufficient to outweigh the visual and aural similarities between them. Consequently, the relevant public, when encountering the signs in relation to identical goods are likely to think that they come from the same undertaking or from economically linked undertakings, despite the high degree of attention paid.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. 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 Union trade mark registration No 15 594 781. It follows that the contested trade mark must be rejected for all the contested goods.

As the subject earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) EUTMR.

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, 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

Cristina SENERIO LLOVET

Aldo BLASI

Sandra IBAÑEZ

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.