GOUMY KIDS | Decision 2550542 - DERMOGEN FARMA, S.A. v. LEHNING ENTREPRISE S.A.S.
Date Published: Sep 22, 2017
OPPOSITION No B 2 550 542
Dermogen Farma, S.A., San Rafael, 28108 Madrid, España (opponent), represented by Ryo Rodríguez Oca, S.L., Calle Juan Hurtado de Mendoza, 9 Apto. 507, 28036 Madrid, España (professional representative)
a g a i n s t
Lehning Entreprise S.A.S., 1-3 rue du Petit Marais, 57640 Sainte Barbe, France (applicant), represented by Areopage, 1 bis rue de Pongerville, 92000 Nanterre, France (professional representative).
On 14/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 550 542 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against some of the goods of European Union trade mark application No 13 925 425 ‘GOUMY KIDS’, namely against all the goods in Class 5. The opposition is based on European Union trade mark registration No 11 889 731 for the word mark ‘TIP GUMY’. 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 goods
The goods on which the opposition is based are the following:
Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides; dietetic supplements for medical purposes; vitamin preparations in the nature of food supplements; dietary food supplements; health food supplements in particular made of vitamins or minerals.
The contested goods are the following:
Class 5: Pharmaceutical preparations; Veterinary preparations; Foods and dietetic substances adapted for medical use; dietetic foods and substances adapted for veterinary use; food supplements for human beings; nutritional supplements; nutritional supplements; food supplements of plant origin; vitamin supplements; albumin dietary supplements; flaxseed dietary supplements; flaxseed oil dietary supplements; wheat germ dietary supplements; yeast dietary supplements; royal jelly dietary supplements; propolis dietary supplements; pollen dietary supplements; enzyme dietary supplements; glucose dietary supplements; lecithin dietary supplements; alginate dietary supplements; casein dietary supplements; protein dietary supplements; dietary supplemental drinks; dietetic beverages adapted for medical purposes; vitamin preparations; fibre (dietary -); enzymes for medical purposes; enzymes for veterinary purposes; medicinal infusions; dietary supplements for animals; food supplements for veterinary purposes; protein supplements for animals.
Pharmaceutical preparations; veterinary preparations; dietetic foods and substances adapted for veterinary use are identically included in both lists of goods.
The contested foods and dietetic substances adapted for medical use overlap with the opponent’s dietetic food and substances adapted for medical use. They are identical.
The contested food supplements for human beings; nutritional supplements; nutritional supplements; food supplements of plant origin; vitamin supplements; albumin dietary supplements; flaxseed dietary supplements; flaxseed oil dietary supplements; wheat germ dietary supplements; yeast dietary supplements; royal jelly dietary supplements; propolis dietary supplements; pollen dietary supplements; enzyme dietary supplements; glucose dietary supplements; lecithin dietary supplements; alginate dietary supplements; casein dietary supplements; protein dietary supplements; dietary supplemental drinks; dietetic beverages adapted for medical purposes; vitamin preparations; fibre (dietary -); enzymes for medical purposes; enzymes for veterinary purposes; medicinal infusions; dietary supplements for animals; food supplements for veterinary purposes; protein supplements for animals are included in, or overlap with, the opponent’s dietary supplements for humans and animals. They are therefore identical.
- 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 business customers with specific professional knowledge or expertise.
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. Therefore, the degree of attention of the public in relation to pharmaceutical, veterinary and dietetic preparations and substances will be rather high.
- The signs
TIP GUMY | GOUMY KIDS |
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 element ‘GUMY’ in the earlier sign will be associated by the English-speaking public with the English word ‘gummy’, that is, a gum-like substance (information extracted from Oxford Dictionaries at www.oed.com). Consequently, the word ‘GUMY’ will be perceived as alluding to characteristics of the goods, namely their gum-like texture, that may make the consumption of the goods easier. Therefore, the word ‘GUMY’ in the earlier sign has a low degree of distinctive character for the English-speaking consumers. The same applies to other parts of the public, such as the Swedish- or German-speaking consumers, who will associate ‘GUMY’ with the Swedish and German word ‘Gummi’, which means ‘rubber’, and therefore it may be perceived as alluding to the texture that the relevant goods may have.
However, for the other parts of the public, such as the French- and Spanish-speaking consumers, the word ‘GUMY’ has no meaning, and therefore it is distinctive.
The word ‘TIP’ in the earlier sign will be associated by part of the public, for instance the English-speaking consumers, with different meanings, inter alia ‘the slender extremity or top of a thing’, ‘a small present of money given to an inferior’ and ‘a piece of useful private or special information communicated by an expert’ (information extracted from Oxford Dictionaries at www.oed.com). However, since none of its meanings is related to the relevant goods, it is distinctive. For other parts of the public, this word has no meaning. Therefore, since ‘TIP’ lacks meaning or because none of its meanings is related to the relevant goods, it is a distinctive element within the earlier sign.
As regards the contested sign, the word ‘GOUMY’ will be perceived as a fanciful term by all the relevant public, and therefore it is distinctive.
The word ‘KIDS’ in the contested sign will be perceived as meaning ‘children’ by the English-speaking public and consumers with a basic knowledge of English (www.oed.com), and therefore it is a weak element in the contested sign, as it refers to the targeted public. For the rest of the public, this word has no meaning, and therefore it is distinctive.
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 Opposition Division will first examine the opposition in relation to the part of the public for which ‘GUMY’ has no meaning and therefore has a normal degree of distinctiveness, for instance the French- and Spanish-speaking parts of the public.
Visually, the signs coincide in the letters ‘G*UMY’ of the distinctive elements ‘GUMY’ and ‘GOUMY’, which, however, have different positions in the signs. The signs differ in the additional letter ‘O’ of the word ‘GOUMY’ in the contested sign and in the remaining words that compose each sign, namely ‘TIP’ in the earlier sign and ‘KIDS’ in the contested sign, the latter being weak for part of the public. Therefore, the signs are visually similar to a low degree.
Aurally, the earlier sign will be pronounced as /TIP-GU-MY/ and the contested sign as /GOU-MY-KIDS/. The pronunciation of the signs coincides in the syllable ‘MY’ and partly in the syllables ‘GU’ and ‘GOU’; however, these identical and similar syllables have different positions in the signs. Moreover, the pronunciation of the signs differs in the sound of the additional words that compose each sign, namely ‘TIP’ in the earlier sign and ‘KIDS’ in the contested sign, the latter being weak for part of the public. Therefore, the signs are aurally similar to a low degree.
Conceptually, for part of the public, neither of the signs has a meaning and therefore, since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs. However, it cannot be excluded that part of the public may perceive the meaning of the weak element ‘KIDS’. For this part of the public, as only one of the signs will be associated with a meaning, the signs are not conceptually similar, although the impact of this diverging element is limited due to its low degree of distinctive character.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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.
- Global assessment, other arguments and conclusion
The goods are identical and target both the professional and general public with a high degree of attention.
Despite the signs coinciding visually in the letters ‘G*UMY’, and aurally in the sound ‘MY’ and partly in ‘GU’ and ‘GOU’, the additional and diverging elements are clearly perceptible and sufficient to exclude any likelihood of confusion between the marks, especially bearing in mind that the coinciding elements are in different positions in the signs and the public’s degree of attention is high – even if ‘KIDS’ is perceived as a weak element by part of the public.
Considering all the above, and despite the identity between the goods, there is no likelihood of confusion on the part of the public for which the word ‘GUMY’ is distinctive. Therefore, the opposition must be rejected.
This absence of a likelihood of confusion equally applies to the part of the public for which the element ‘GUMY’ is weak. This is because, as a result of the weak character of that element, this part of the public will perceive the signs as being even less similar. Moreover, part of this public will understand the meanings of ‘TIP’ and the weak element ‘KIDS’, and consequently the signs will be associated with dissimilar meanings.
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
Lena FRANKENBERG GLANTZ | Ana MUÑIZ RODRIGUEZ | Natascha GALPERIN |
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.