NUTRINOVATE | Decision 2691452 - ALTER FARMACIA, S.A. v. Nutrinovate AB
Date Published: Sep 28, 2017
OPPOSITION No B 2 691 452
Alter Farmacia, S.A., Mateo Inurria, 30, 28036 Madrid, Spain (opponent), represented by Ryo Rodríguez Oca, S.L., Calle Juan Hurtado de Mendoza, 9, Apto. 507, 28036 Madrid, Spain (professional representative)
a g a i n s t
Nutrinovate AB, Lahällsvägen 48, 183 30 Täby, Sweden (applicant), represented by Brann AB, Drottninggatan 27, 111 51 Stockholm, Sweden (professional representative).
On 23/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 691 452 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 14 947 782, namely against all the goods in Class 5. The opposition is based on European Union trade mark registration No 382 333. 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: Dietetic food products for medical purposes; dietetic substances adapted for medical use; food for babies; vitaminized products.
Class 29: Meat, fish and poultry; meat extracts; eggs, milk and milk products; preserved fruits and vegetables; jellies, jams, compotes.
Class 30: Tea, cocoa, sugar, flour and preparations made from cereals; ices.
Class 32: Mineral and aerated waters and other non-alcoholic drinks; fruit juices.
The contested goods are the following:
Class 5: Pharmaceutical preparations and substances for medical purposes; natural remedies; nutritional supplements, dietary supplements, health food supplements; vitamins, minerals; antioxidants; medicated skin care preparations; carrier substances for the delivery of pharmaceutical preparations, natural remedies, nutritional supplements, dietary supplements, health food supplements, vitamins, minerals, antioxidants and medicated skin care preparations; medicated creams and lotions.
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.
The contested natural remedies; nutritional supplements, dietary supplements, health food supplements; vitamins, minerals; antioxidants are included in, or overlap with, the broad category of the opponent’s dietetic substances adapted for medical use. Therefore, they are identical.
The contested medicated skin care preparations; medicated creams and lotions overlap with the opponent’s vitaminized products. Therefore, they are identical.
The opponent’s dietetic substances adapted for medical use are substances prepared for special dietary requirements, with the purpose of treating or preventing disease. Bearing this in mind, their purpose is similar to that of the contested pharmaceutical preparations and substances for medical purposes (substances used to treat disease) insofar as they are used to improve a patient’s medical condition. The relevant public coincides and the goods generally have the same distribution channels. Therefore, these goods are considered similar.
The opponent claims that the wording of the contested carrier substances for the delivery of pharmaceutical preparations, natural remedies, nutritional supplements, dietary supplements, health food supplements, vitamins, minerals, antioxidants and medicated skin care preparations is imprecise and does not identify the actual products that the applicant seeks registration for. The applicant responds that ‘the carrier substances used as a platform in this case consists of thin film strip made of alginate extracted from organic sea to be placed underneath your lip for quick delivery into blood streams of, such as for instance, a pharmaceutical preparation’. The Opposition Division considers that, since the object of those ‘carrier substances’ is specified in the list of goods, namely as for the delivery of the abovementioned preparations and supplements (understood as facilitating their dissolution or dilution by oral prescription and without altering their functions), the wording of these goods as filed by the applicant is sufficient to identify the kind of goods intended, in the form of capsules and the like, and thus to enable the present comparison of the goods in question to be carried out. Furthermore, it should be borne in mind that, within the context of opposition proceedings initiated on the basis of Article 8(1)(b) EUTMR by the proprietor of an earlier trade mark, the examination of a possible similarity between the goods and services covered by the mark applied for and by the earlier mark must be carried out by reference to the list of goods and services covered by those two marks and not to the goods or services actually marketed under those marks (04/04/2014, T-568/12, Focus extreme, EU:T:2014:180, § 30 and the case-law cited therein). Therefore, the additional explanation by the applicant as regards these contested goods is irrelevant.
The contested carrier substances (which may be capsules for medicines or containing dietary supplements, for instance) are designed only to hold a certain dosage of these products. Even if it could be claimed that the purpose, very broadly speaking, is a medical one, the specific purpose of these items will differ. On the one hand, the purpose of pharmaceuticals is to heal or prevent illness and the purpose of nutritional and dietary supplements is to provide nutrients that may otherwise not be consumed in sufficient quantities, whereas, on the other hand, the purpose of capsules, cachets, etc., is only to hold a certain dosage of medicines or dietary supplements, for instance (in the form of a powder or liquid), allowing them to be taken orally. Furthermore, the same medicine or dietary supplement can be offered to consumers in the form of tablets. The producers, target publics and distribution channels of these goods are different.
Therefore, the contested carrier substances for the delivery of pharmaceutical preparations, natural remedies, nutritional supplements, dietary supplements, health food supplements, vitamins, minerals, antioxidants and medicated skin care preparations are dissimilar to the opponent’s dietetic food products for medical purposes; dietetic substances adapted for medical use; food for babies; vitaminized products in Class 5. These contested goods are also dissimilar to the opponent’s goods in Class 29 (which covers, in general, food products), Class 30 (tea, cocoa, sugar, flour and preparations made from cereals; ices) and Class 32 (mineral and aerated waters and other non-alcoholic drinks; fruit juices), since they have nothing relevant in common.
- 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 or similar are directed at the public at large and at professionals in the medical field, such as dieticians and pharmacists, with specific professional knowledge or expertise.
The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the purchased goods. For instance, the degree of attention of the average consumer will be average when purchasing natural remedies, whereas it will be high in the case of medicated skin care preparations or medicated creams and lotions.
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.
- The signs
NUTRIBEN | NUTRINOVATE |
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
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 element ‘NUTRI-’, present at the beginning of both signs, is understood in part of the EU, such as in Spain, France, Italy, Portugal and the United Kingdom, as referring to the general concept of ‘nutrition’, and therefore is weak for this part of the public in relation to at least the relevant goods that relate to nutrition and diet.
However, for the other part of the public, such as in Germany, it has no meaning and is distinctive.
The Opposition Division will first examine the opposition in relation to the part of the public for which ‘NUTRI’ has no meaning and has a normal degree of distinctiveness.
Visually and aurally, the signs coincide in the string of letters and sounds ‘NUTRI*’, present identically at the beginning of both signs. However, they differ in the remaining three letters of the earlier mark, ‘BEN’, and six letters of the contested sign, ‘NOVATE’. Although these differing parts of the signs coincide in the letters ‘E’ and ‘N’, and a certain similarity in the pronunciation of the letters ‘B’ and ‘V’ exists, as pointed out by the opponent, these letters are placed in different positions within these long signs and, therefore, any possibility that consumers will perceive a similarity in the pronunciation due to the presence of these coinciding letters is certainly remote.
The signs have different lengths: the earlier mark consists of eight letters and three syllables (NU-TRI-BEN) and the contested sign consists of eleven letters and five syllables (NU-TRI-NO-VA-TE). Consequently, although the signs coincide in their beginnings (i.e. their first two syllables), contrary to the opponent’s opinion, the remaining letters in the signs will not go unnoticed by the relevant public and, taken together, the letters that form the conflicting signs generate different rhythms and intonations.
Therefore, the signs are visually and 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.
- 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 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
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, 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, § 22). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.
The goods are partly identical, partly similar and partly dissimilar. The relevant public has a degree of attention that varies from average to high.
The signs are visually and aurally similar to a low degree on account only of the coincidence in their first two syllables (NU-TRI), whereas these long signs differ in their remaining syllables (BEN and NO-VA-TE). Therefore the signs have different lengths, rhythms and intonations. Since the signs are meaningless, a conceptual comparison is not possible.
Considering all the above, notwithstanding the identity or similarity between some of the contested goods and the opponent’s goods, the Opposition Division finds that the differences between the signs are sufficient to exclude any likelihood of confusion on the part of the public, including the risk that the consumers might believe that the goods come from the same undertaking or from economically-linked undertakings. 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 ‘NUTRI’ is weak. This is because, as a result of the weak character of that element, that part of the public will perceive the signs as being even less similar.
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
Alexandra APOSTOLAKIS | Marta GARCÍA COLLADO | Richard BIANCHI |
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.