LactoBio InnerGel | Decision 2646316 - Bioline Products s.r.o. v. Health Product Group

Date Published: Sep 28, 2017

OPPOSITION No B 2 646 316

Bioline Products s.r.o., Krakovská 1338/10, 11000  Praha, The Czech Republic (opponent), represented by Klára Labalestra, Na Poříčí 12, 11000  Praha 1, The Czech Republic (professional representative)

a g a i n s t

Health Product Group, Spółka z ograniczoną odpowiedzialnością, Świętokrzyska 30/63, 00-116 Warszawa, Poland (applicant), represented by Kancelaria Patentowa Irena Janicka, Magellana 8/39, 02-777 Warszawa, Poland (professional representative).

On 11/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 646 316 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 and services of European Union trade mark application No 14 699 318. The opposition is based on European Union trade mark registration No 11 664 885. The opponent invoked Articles 8(1)(b) and 8(5) 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 and services

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

Class 5: Nutritional supplements, dietary supplements for animals, dietetic substances adapted for medical use, ointments for pharmaceutical purposes, medicines for veterinary purposes, drugs for medical purposes, medicines for human purposes, veterinary preparations, preparations for the treatment of burns, pharmaceutical preparations for skin care, pharmaceutical preparations, enzyme preparations for veterinary purposes, enzyme preparations for medical purposes, chemico-pharmaceutical preparations, chemical preparations for veterinary purposes, chemical preparations for medical purposes, digestives for pharmaceutical purposes, enzyme dietary supplements.

The contested goods and services are the following:

Class 3: Cosmetics, Preparations for cosmetic uses.

Class 5: Mineral food supplements, pharmaceutical preparations, medical and veterinary preparations and articles, dietetic preparations, dietary supplements, cosmetics with medical properties.

Class 35: Promotion, organisation of demonstrations and exhibitions for commercial or advertising purposes, business management consultancy, commercial information, the bringing together, for the benefit of others, of the following goods: pharmaceutical preparations, cosmetics, cosmetics with medical properties, dietetic preparations, preparations for cosmetic purposes, dietary supplements, and medical and veterinary preparations and articles.

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 3

The contested cosmetics, preparations for cosmetic uses are all those preparations used to improve the appearance of the body or face. They are similar to the opponent´s pharmaceutical preparations since they have the same purpose, can be produced by the same companies and distributed through the same channels. Furthermore, they target the same end consumers.

 

Contested goods in Class 5

Pharmaceutical preparations, veterinary preparations are identically contained in both lists of goods. The contested veterinary articles are identical to the opponent´s veterinary preparations since they are synonyms.

The contested medical preparations and medical articles include, as broader categories, the opponent’s medicines for human purposes. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested mineral food supplements are included in the broader category of the opponent´s Nutritional supplements, they are hence identical.

The contested dietetic preparations include, as a broader category, the opponent’s dietetic substances adapted for medical use. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested dietary supplements include, as a broader category, the opponent’s dietary supplements for animals. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested cosmetics with medical properties are all those preparations used to cure some ailments in the body or face. Bearing this in mind, their purpose is identical to that of the opponent´s pharmaceutical preparations (substances used to treat disease) insofar as they are used to improve a patient’s medical condition. Therefore, these goods are considered identical.

Contested goods in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested the bringing together, for the benefit of others, of the following goods: pharmaceutical preparations, cosmetics with medical properties, dietetic preparations, dietary supplements, and medical and veterinary preparations and articles are similar to a low degree to the opponent’s pharmaceutical preparations, dietetic substances adapted for medical use, dietary supplements for animals, medicines for human purposes and veterinary preparations in Class 5. 

However, the contested services the bringing together, for the benefit of others, of the following goods: cosmetics, preparations for cosmetic purposes are different to the opponent´s goods in Class 5. Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are only similar. These goods and services are therefore dissimilar.

Business management consultancy services are usually rendered by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. The services include activities such as business research and assessments, cost and price analyses, organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a business, such as advice on how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, market products, research consumer trends, launch new products, create a corporate identity, etc.

Promotion services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc.

Therefore, the remaining contested services promotion, organisation of demonstrations and exhibitions for commercial or advertising purposes, business management consultancy, commercial information are different to all goods in Class 5 protected by the earlier mark. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Furthermore, goods and services have different methods of use and are neither in competition nor complementary. These goods and services are therefore dissimilar.

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.

As regards goods found to be similar in Class 3, they are directed at the public at large whose degree of attention will be average.

In relation to goods in Class 5 found to be identical, they are directed at the public at large and at professionals in the medical 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 (judgments of 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 quoted case-law).

In particular, medical professionals have a high degree of attentiveness when prescribing medicines. With regard to non-professionals, they also show a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health.

Finally, the services found to be similar to a low degree to the earlier goods are directed at the public at large and at business customers with specific professional knowledge or expertise in the relevant field. The degree of attention may vary from average to high depending on the exact nature, price and sophistication of the services.

3. The signs

	LactoBio InnerGel
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.

Whist the contested sign is a word mark which consists of the elements ‘LactoBio’ and ‘InnerGel’, the earlier mark is a figurative sign which consists of the central verbal element ‘ENTEROSGEL’ written in standard white characters placed in a grey rectangle above of which the word ‘LactoBio’ is represented in a smaller size. On the left hand side of the mark, a figurative element which resembles a molecule is depicted in grey.

First of all, it must be noted that the Court has held that, 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, he will break it down into elements which, for him, suggest a specific meaning or which resemble words known to him (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).

In the present case, the Opposition Division considers that the relevant public will split the common element into ‘Lacto’ and ‘Bio’. The prefix ‘Lacto’ will be associated with ‘lactose’ and/or ‘milk’ and the element ‘BIO’ with ‘biological’ and/or with ‘life’. All these terms will be perceived by the relevant public territory as they are Latin prefixes used in the different languages of the European territory, as such or in a very equivalent form. Bearing in mind that the relevant goods and services are essentially cosmetics, pharmaceuticals, dietetic substances, dietary and nutritional products as well as food supplements for medical purposes and the retail of those goods, it is considered that these elements are weak for all the relevant goods and services since they indicate the characteristics, the properties, the ingredients or the purpose of those goods and services. The figurative element representing a molecule included in the contested sign will be perceived as weak by the relevant public for the relevant goods and services.  

On the other hand, although the remaining verbal elements contained in both signs convey no meaning as such, it cannot be denied that the relevant public will split ‘Inner’ and ‘Gel’ of the contested sign and ‘ENTEROS’ and ‘GEL’ of the earlier mark. The common element ‘GEL’ will be associated with a ‘jelly-like substance’ by all the relevant consumers since it exists in the majority of the languages of the European territory or close variations thereof (‘geel’ in Estonian ‘geeli’ in Finish). Bearing in mind that the relevant goods and services could be offered in form of gels, it is considered that this element is weak for all the relevant goods and services.

The element ‘ENTEROS’ of the earlier mark will be understood by a part of the relevant public relating to the ‘intestine’. For this part of the public, this element is weak as it indicates that the relevant goods have beneficial effects against intestinal problems. For the remaining part of the public for which this element conveys no meaning, it is therefore distinctive.

On the other hand, the element ‘Inner’ of the contested sign will be perceived by a part of the relevant public as situated inside or further in; internal. For this part of the public, this element is weak as it indicates that the relevant goods and services have effects inside as opposite to superficial. For the remaining part of the public, this element conveys no meaning and it is therefore distinctive.

The element ‘ENTEROSGEL’ and the figurative element representing a molecule are the co-dominant elements of the earlier mark as they are the most eye-catching, the element ‘LactoBio’, due to its size and position, plays a secondary role. The rectangle and the colours of the earlier mark are banal decorative elements with less distinctive character.

Visually, the signs coincide in their weak elements ‘Lacto’, ‘Bio’ and ‘Gel’ however they differ in the elements ‘ENTEROS’ and ‘Inner’ included in both marks respectively as well as in the figurative elements and the colours of the earlier mark.

Since the coincidences between the signs lie in weak elements, the signs are visually similar to a very low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters /lacto-bio/ and /gel/. The pronunciation differs in the sound of the letters /enteros/ of the earlier mark and in /inner/ of the contested sign.

Since the signs coincide in weak elements, the signs are aurally similar to a low degree.

Conceptually, as explained above, the common elements ‘Lacto’, ‘Bio’ and ‘Gel’ will be perceived by the relevant public as well as the figurative element of the earlier mark, all of them are weak for the relevant goods and services.

A part of the public might perceive ‘ENTEROS’ of the earlier mark as referring to ‘intestine’ and ‘Inner’ included in the contested sign as internal whereas for another part of the public, these two words are meaningfulness.

Since the coincidences between the signs lie in weak elements, the signs are conceptually similar to a low degree.

As the signs have been found similar, in at least one aspect of the comparison (although to a low degree), 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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all of the goods in question for the part of the relevant territory for which ‘ENTEROS’ will be perceived as weak.

For the remaining part of the relevant public for which ‘ENTEROS’ is meaningfulness and therefore distinctive, the earlier trade mark as a whole has no clear and direct meaning for any of the goods in question. Although the essential verbal elements ‘Lacto’, ‘Bio’ and ‘Gel’ and the figurative element are weak for the relevant goods, the distinctiveness lies on the additional word ‘ENTEROS’ and the overall composition and the specific graphic representation of the elements within the sign. Therefore, in this latter case and for this part of the public the distinctiveness of the earlier mark must be seen as normal, despite the presence of some weak elements in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

Likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa. Furthermore, the more distinctive the earlier mark, the greater the risk of confusion. Marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (see judgement 29/09/1998, C-39/97, Canon, EU:C:1998:442).

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, phonetic 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). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

The goods and services are identical or similar to various degrees.

In this case, the points of similarity between the conflicting signs exclusively affect the terms ‘Lacto’, ‘Bio’ and ‘Gel’ that the consumers are likely to perceive as weak of the relevant goods and services. The figurative element of a molecule of the earlier mark is also weak for the relevant goods and services. The fact that they share the same elements ‘Lacto’, ‘Bio’ and ‘Gel’ which refer to the relevant goods and services as mentioned in section c) will not lead consumers to confusion between the marks as those elements do not indicate the commercial origin of the trade marks at issue but merely describe the characteristics or the purpose of the goods and services.  

Therefore, despite the identity or similarity of the goods and services at issue, it is considered that the differences between the signs are enough to counteract the similarities between them. In the Opposition Division´s view, there exist differences between the signs which outweigh the similarities and consequently the consumers will safely distinguish them, even for those consumers for which the degree of attention is average.

Considering all the above, there is neither likelihood of confusion nor likelihood of association on the part of the public. Therefore, the opposition must be rejected insofar as based on the grounds under Article 8(1)(b) EUTMR.

The examination of the opposition will continue as regards the remaining ground invoked by the opponent, namely, Article 8(5) EUTMR. 

REPUTATION – ARTICLE 8(5) EUTMR

The opponent claims that its earlier mark is reputed in Italy, Germany, the Czech Republic, the European Union, Poland and the United Kingdom for the goods for which it is registered in Class 5.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

In the present case the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.

On 12/04/2016 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 24/08/2016.

The opponent did not submit any evidence concerning the reputation of the trade mark on which the opposition is based.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.

Conclusion

The opposition is entirely rejected.

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

María Belén IBARRA DE DIEGO

Carmen SÁNCHEZ PALOMARES

José Antonio GARRIDO OTAOLA

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.