OPPOSITION No B 3 084 925

Biosun GmbH, Steinstr. 5, 35641 Schöffengrund, Germany (opponent), represented by Patentanwälte Bauer Vorberg Kayser Partnerschaft mbB, Goltsteinstr. 87, 50968 Köln, Germany (professional representative)

a g a i n s t

Vitalis Pharma AS, Klingenberggata 4, 0161 Oslo, Norway (applicant)

On 28/08/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 084 925 is upheld for all the contested goods, namely

Class 5: Dietary supplements and dietetic preparations.

2. European Union trade mark application No 18 030 403 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 18 030 403 for the figurative mark , namely against all the goods in Class 5. The opposition is based on, inter alia, European Union trade mark registration No 11 347 804 for the figurative mark . The opponent invoked Article 8(1)(b) and Article 8(4) 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 right. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 11 347 804.

a) The goods

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

Class 5: Nutritional supplements.

The contested goods are the following:

Class 5: Dietary supplements and dietetic preparations.

The opponent’s nutritional supplements are substances intended to provide nutrients that are claimed to have a biologically beneficial effect, and which may be medicated or not. Therefore, the contested dietary supplements and dietetic preparations are identical to the opponent’s nutritional supplements, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, as a broader category, the contested 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 found to be identical are directed at the public at large and professionals.

The level of attention of the public is above average insofar as those goods are health related (24/01/2017, T‑258/08, DIACOR / DIACOL, EU:T:2017:22, § 50; 02/12/2014, T‑75/13, Momarid, EU:T:2014:1017, § 50; 10/02/2015, T‑368/13, ANGIPAX, EU:T:2015:81, § 46; 23/01/2014, T‑221/12, Sun Fresh, EU:T:2014:25, § 64).

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 earlier mark includes the registered trade mark symbol, ®. This is an informative indication that the sign is purportedly registered and is not part of the trade mark as such. Consequently, this will not be taken into consideration for the purposes of comparison.

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 signs contain components that have a meaning in English or evoke an association with English terms. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

Although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57). Therefore, despite the presence of a device overlapping the letter ‘O’, the English-speaking consumers are likely to perceive the earlier mark as composed of words which are meaningful for them, namely ‘BIO’ and ‘SUN’. Similar considerations apply to the contested sign which the English-speaking consumers are likely to perceive as composed of the components ‘BIO’ and ‘SUNN’, especially since the bold font of the letters ‘BIO’ assists in a visual separation and identifying parts with a concept. The double/second letter ‘N’ of the contested sign does not prevent the immediate association with the word ‘SUN’ in the contested sign, taking into account the difference in the font’s thickness between the parts ‘BIO’ and ‘SUNN’ and that the second ‘N’ comes at the very end of the contested sign.

The coinciding prefix, ‘BIO’ is an English term ‘indicating or involving life or living organisms’ (information extracted from Collins Dictionary on 17/08/2020 at https://www.collinsdictionary.com/dictionary/english/bio). It is widely used in environmentally friendly products and indicates that they are natural or organic (11/09/2018, R 814/2018‑2, AUREA BIOLABS (fig.) / Aurea et al. § 56).

The component ‘SUN’ of the earlier mark is an English term for, inter alia, ‘the star at the centre of our solar system’; ‘the radiant energy, esp heat and light, received from the sun’ (information extracted from Collins Dictionary on 17/08/2020 at https://www.collinsdictionary.com/dictionary/english/sun). It may be considered as referring to suncare properties of the relevant goods. The same applies to the component ‘SUNN’ of the contested sign, which is close to the word ‘SUN’ and likely to be associated with this term.

The components ‘BIO’ and ‘SUN(N)’, therefore, may be considered as referring to the characteristics or purpose of the relevant goods. However, whether this affects the distinctive character of either of these components or the whole expression ‘BIOSUN(N)’ is irrelevant, since ‘BIO’ and ‘SUN(N)’ refer to the same concepts and are on equal footing as concerns their distinctiveness.

Although the letter ‘O’ of the earlier mark is larger than the other letters, it does not overshadow them. However, the oblique rectangular figurative element overlapping the letter ‘O’ is relatively small and, therefore, less eye-catching than the word ‘BIOSUN’.

In spite of its bold font and position at the beginning of the contested sign, the word ‘BIO’ does not overshadow the word ‘SUNN’ which, although positioned in the second part of the sign and written in thinner font, is visually longer than the component ‘BIO’. Therefore, it is considered that the contested sign has no element that could be considered clearly more eye-catching.

Nevertheless, most of the signs’ letters are standard except for the first letter, ‘B’, of the earlier mark. However, despite the stylisation of this letter and the larger size of the letter ‘O’, the word ‘BIOSUN’ is easily legible. The same applies to the contested sign in which the graphical representation of the letters is limited to their depiction in standard characters and the letters ‘BIO’ in bold, which helps to separate the parts visually and identify them with a concept but does not overshadow the word ‘BIOSUNN’. This stylisation of letters, and the secondary (figurative) element overlapping the letter ‘O’ in the earlier mark, will not attract the consumers’ attention away from the word ‘BISOUN(N)’. When a sign consists of both verbal and figurative components, 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).

Visually, the signs coincide in the sequence of letters ‘BIOSUN’, which constitutes the whole verbal element of the earlier mark and the first six letters of the contested sign. They differ in the additional letter, ‘N’, at the end of the contested sign, which has no counterpart in the earlier mark. However, given that the public reads from left to right and tends to focus on the beginning of a sign, this difference is less noticeable. Furthermore, the signs differ in the stylisation of their letters and the additional oblique rectangular figurative element overlapping the letter ‘O’ in the earlier mark. These figurative aspects have less impact on the consumers, as explained above.

Therefore, the signs are visually highly similar.

Aurally, the signs are identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs refer to the same concepts (although maybe less so as far as the component ‘SUNN’ of the contested sign is concerned), they are conceptually at least highly 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) 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. The earlier mark is registered and, therefore, it is considered to have at least a minimum degree of distinctiveness.

e) Global assessment, other arguments and conclusion

The goods are identical. The signs are visually and conceptually similar to a high degree and aurally they are identical.

The earlier mark has at least a minimum degree of distinctiveness and it should be recalled that ‘even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered’ (13/12/2007, T‑134/06, Pagesjaunes.com, EU:T:2007:387, § 70).

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).

Consequently, even if the distinctiveness of the earlier mark was considered to be lower than normal, the high visual and conceptual similarity and aural identity of the signs would be sufficient for consumers – even if their level of attention is heightened – to be led to believe that the identical goods come from the same undertaking or, as the case may be, from economically linked undertakings.

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 11 347 804. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier European Union trade mark registration No 11 347 804 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(4) 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

Michele M. BENEDETTI - ALOISI

Justyna GBYL

Maria SLAVOVA

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.