ACTI-JOINT | Decision 2638388

Date Published: Sep 22, 2017

OPPOSITION No B 2 638 388

Fidia Farmaceutici S.p.A., Via Ponte della Fabbrica, 3/A, 35031 Abano Terme (PD), Italy (opponent), represented by Dr. Kunz-Hallstein Rechtsanwälte, Galeriestr. 6A, 80539 Munich, Germany (professional representative)

a g a i n s t

Bioiberica, S.A.U., Ctra. Nacional II, Km. 680,6. Pol. Ind. Mas Puigvert, 08389 Palafolls, Spain (applicant), represented by Sugrañes Patentes y Marcas, Calle de Provenza, 304, 08008 Barcelona, Spain (professional representative).

On 05/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 638 388 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 575 633, ‘ACTI-JOINT’. The opposition is based on European Union trade mark registration No 8 952 087, ‘CARTIJOINT’. 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.

1. The goods

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

Class 5: Vitamins; minerals for medical purposes; veterinary; food supplements and additives for veterinary or medical purposes, food supplements and additives for veterinary or medical purposes, nutritional and dietetic additives for veterinary or medical purposes; dietetic foods and beverages adapted for medical purposes; antioxidants, vitamins, minerals or trace elements as individual or combined ingredients for foodstuffs or food supplements.

The contested goods are the following:

Class 1: Chemical substances derived from a combination of natural ingredients for use in the food and pharmaceuticals industry.

Class 5: Dietary food supplements.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to 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 1

The opponent’s goods in Class 5 are vitamins, minerals, dietetic substances, and additives and food supplements adapted for medical or veterinary use. These products are often taken by patients or given to animals with special dietary requirements, most likely with the purpose of treating or preventing disease.

The contested chemical substances derived from a combination of natural ingredients for use in the food and pharmaceuticals industry are raw substances that require little processing to be considered finished products such as the opponent’s products in Class 5. It is unlikely that these chemical substances would be available in their unprocessed form at the same points of sale as the opponent’s products, mostly nutritional supplements and additives, and, furthermore, the contested goods target a different, professional public that has expertise in processing them. Since the goods differ at least in their natures, methods of use and purposes, as well as in their distribution channels and relevant publics, they are considered dissimilar.

Contested goods in Class 5

The contested dietary food supplements are included in, or overlap with, the broad category of the opponent’s food supplements for medical purposes. Therefore, these goods are considered 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 at a professional public with a certain level of medical expertise, including in the nutritional and pharmaceutical fields.

It is apparent from the 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 (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 cited case-law). 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. Although the goods found to be identical (nutritional supplements) in the present case are not, strictly speaking, pharmaceuticals with a medical application for serious diseases or prescribed under medical supervision, they will still be paid a high degree of attention, since they concern human health and well-being.

3. The signs

CARTIJOINT	ACTI-JOINT
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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The signs are word marks consisting of one word each; in the contested sign, that word consists of two verbal elements connected by a hyphen.

The element ‘JOINT’ will be understood in part of the EU, in particular by professionals in the relevant medical field and by the English-speaking public, as meaning ‘the junction between two or more bones, usually formed of connective tissue and cartilage’. Since this anatomical term indicates a part of the human body, which could be treated using the relevant food supplements, the word ‘JOINT’ is strongly indicative of the nature of the goods. Consequently, this word is non-distinctive for these parts of the public and for all the relevant goods in Class 5 of both signs.

However, for another part of the public, such as the Bulgarian- or Spanish-speaking general public, it has no meaning and is distinctive. For the sake of completeness, it should be noted that the professional public with medical expertise and knowledge of medical terms is excluded here, as general consumers are more prone to confusion.

Therefore, the Opposition Division will first examine the opposition in relation to the part of the public for which the word ‘JOINT’ has no meaning and has a normal degree of distinctiveness.

For this part of the public, the signs’ differing elements, ‘CARTI’ and ‘ACTI-’, have no meaning either. Furthermore, considering that both signs are word marks, they have no elements that are more distinctive or dominant than others.

Visually, the signs coincide in the letter sequence ‘TI(-)JOINT’, with the hyphen present only in the contested sign. However, they differ in their beginnings, ‘CAR’ in the earlier mark and ‘AC’ in the contested sign. The first parts of the conflicting signs are different. 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. Given that the similarities between the signs lie in the latter parts of the marks, their impact is reduced.

Furthermore, given the length of the signs coupled with the differences at the beginnings, consumers will not undertake an artificial dissection of the earlier sign that would lead them to identify a string of letters functioning within the sign in an independent or clearly identifiable manner. On the other hand, the contested sign is a combination of two clearly identifiable letter sequences, the verbal elements ‘ACTI’ and ‘JOINT’. In such cases, differences at the beginnings of the marks are decisive. Therefore, the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the second syllable ‘TI’, as well as in the last syllable ‛JOINT’, present identically in both signs. Although the signs are of almost the same length, the pronunciation of their first parts significantly differs, since the first syllable, ‘CAR’, in the earlier mark is a closed syllable that begins with a consonant, ‘C’, whereas the first syllable in the contested sign, ‘AC’, consists of two letters and begins with an open vowel, ‘A’. Therefore, bearing in mind the significance of the first part of a sign, as explained above, the signs are aurally similar to a low 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.

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, in particular the Bulgarian- and Spanish-speaking parts of the public. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The goods are partly identical and partly dissimilar, and the degree of attention is rather high, for the reasons explained above in section b).

When determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison 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).

In the present case, the signs are visually and aurally similar to a low degree, as they coincide in their latter parts. A conceptual comparison cannot be carried out, since the signs have no meaning for the relevant public.

When considering the principle of interdependence as established in the judgment of 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17, it is true that the goods are identical, which may be sufficient in some cases to counterbalance a low degree of similarity between the signs. However, this principle also takes into account other relevant factors such as the relevant consumer and their degree of attention. In the present case, consumers will display a higher degree of attention given that the goods have important repercussions on health. Therefore, the signs’ different beginnings and their length will enable the marks to be clearly distinguished. Furthermore, the coinciding element is not featured independently in the earlier mark and so would not be singled out. Separate elements will be perceived in the contested sign, as the sign is split into two different verbal elements conjoined by a hyphen, but it must be recalled that an artificial dissection of the signs should be not relied on, since consumers rarely have the chance to make a side-by-side comparison but must trust in their imperfect recollection of signs.

Taking into account also the lack of conceptual similarity, the Opposition Division considers that the relevant public’s high degree of attention means that the differences between the signs are sufficient to exclude the possibility of their believing that the goods in question come from the same undertaking or economically linked undertakings.

Considering all the above, even taking into account the identity between the goods, there is no likelihood of confusion on the part of the Bulgarian- and Spanish-speaking parts of the public.

This absence of a likelihood of confusion equally applies to the part of the public for which the element ‘JOINT’ is non-distinctive. This is because, as a result of the non-distinctive character of that element, that part of the public will perceive the signs as being even less similar.

Therefore, on the basis of the relevant findings outlined in the previous sections, the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.

COSTS

According to Article 85(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 Rule 94(3) and Rule 94(7)(d)(ii) 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.

The Opposition Division

Robert MULAC

Manuela RUSEVA

Dorothée SCHLIEPHAKE

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.