Real Nutri | Decision 2782699
Date Published: Sep 22, 2017
OPPOSITION No B 2 782 699
MIP Metro Group Intellectual Property GmbH & Co. KG, Metro-Str. 1, 40235 Düsseldorf, Germany (opponent), represented by Eva Schiller, MIP Metro Group Intellectual Property GmbH & Co. KG, Metro-Str. 1, 40235 Düsseldorf, Germany (employee representative)
a g a i n s t
Wuxi Ruinian Industry & Commerce Co. Ltd.,No. 68, Meiliang Road, Mashan, Binhu
Wuxi, People’s Republic of China (applicant), represented by Beetz & Partner, Steinsdorfstr. 10, 80538 Münich, Germany (professional representative).
On 12/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 782 699 is upheld for all the contested goods.
2. European Union trade mark application No 15 682 479 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 320.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 15 682 479, . The opposition is based on European Union trade mark registration No 9 512 609, . 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, inter alia, the following:
Class 5: Pharmaceutical and veterinary preparations; hygiene preparations for medical purposes; dietic products for medical use, food for babies; plasters, medical dressings; teeth filling material and dental impression materials; disinfectants; preparations for killing vermin; fungicides, herbicides, algicides, medicines for human purposes, medicines for veterinary purposes, medicines for dental purposes, acetates for pharmaceutical purposes, bath salts for medical purposes, therapeutic preparations for the bath, balm for medical purposes, hygienic bandages, haemostatic pencils; chemical preparations for medical purposes, medicated confectionery, chemical preparations for pharmaceutical purposes, chemical preparations for veterinary purposes, chemico-pharmaceutical preparations, sanitary towels, deodorants, other than for personal use, dietetic beverages adapted for medical purposes, dietetic substances adapted for medical use, dietetic foods adapted for medical purposes, albuminous foodstuffs for medical purposes, aluminium acetate for pharmaceutical purposes, greases for medical purposes, fly catching paper, fly glue, additives to fodder for medical purposes, glucose for medical purposes, belts for sanitary napkins (towels), adhesives for dentures, anti parasitic collars for animals, herbal teas for medicinal purposes, corn remedies, corn rings for the feet, repellents for dogs, dog lotions, dog washes, absorbent pants for incontinents, insecticides, chewing gum for medical purposes, germicides, adhesive tapes for medical purposes, compresses, air freshening preparations, medicinal drinks, medicinal hair growth preparations, medicinal tea, milking grease, sanitary panties, menstruation pads, mineral food-supplements, mineral water for medical purposes, menstruation bandages, sanitary panties, moth proofing preparations, moth proofing paper, mouth washes for medical purposes, albuminous foodstuffs for medical purposes, medicinal oils, pesticides, plasters for medical purposes, pharmaceutical preparations, rat poison, fumigating sticks, medicine cases, portable, filled, pesticides, panty liners (sanitary), breast-nursing pads, tobacco-free cigarettes for medical purposes, tissues impregnated with pharmaceutical lotions, first-aid boxes (filled), medical dressings, surgical dressings, absorbent cotton, vitamin preparations, wadding for medical purposes, napkins for incontinents, dietic foodstuffs for healthcare purposes based on vitamins, minerals, trace elements, either individually or in combination, nutritional additives based on amino acids, minerals and trace elements, feminine hygiene products, solid air fresheners, deodorants for clothing and textiles; food supplements not for medical purposes based on white of egg, fats, fatty acids, with added vitamins, minerals, trace elements, either individually or in combination, included in this class; food supplements not for medical purposes based on carbohydrates, fibre, with the addition of vitamins, minerals and trace elements individually or in combination, included in this class.
The contested goods are the following:
Class 5: Milk powder for babies; Food for babies; Vitamin preparations; Mineral food supplements; Nutritional supplements; Dietetic substances adapted for medical use; Dietetic beverages adapted for medical purposes; Dietetic foods adapted for medical purposes; Medicines for human purposes; Pharmaceutical drugs.
Food for babies; vitamin preparations; dietetic substances adapted for medical use; dietetic beverages adapted for medical purposes; dietetic foods adapted for medical purposes; medicines for human purposes; mineral food supplements are identically contained in both lists of goods.
The contested milk powder for babies is included in the broad category of the opponent’s food for babies. Therefore, they are identical.
The contested nutritional supplements overlap with the opponent’s nutritional additives based on amino acids, minerals and trace elements. 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 pharmaceutical drugs are included in the broad category of the opponent’s pharmaceutical preparations. Therefore, they are 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 goods found to be identical are directed at the public at large and at specialists 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.
Given that the general public is more prone to confusion, the examination will proceed on this basis.
- 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 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 element ‘REAL’ of both signs will be associated, inter alia, by a part of the relevant public, such as the English, Portuguese, Spanish or Romanian speaking public, as ‘something existing or occurring in the physical world; not imaginary, fictitious, or theoretical; actual’ or ‘not artificial or simulated; genuine’ (https://www.collinsdictionary.com/dictionary/english/real). The Spanish- and Portuguese-speaking public will also associate the element ‘REAL’ in both signs with the concept of royal and majestic. From the perspective of the other parts of the relevant public, like, inter alia, the Polish-, Slovak- and Slovenian-speaking public, the word has no meaning and is, therefore, distinctive. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Polish-, Slovak- and Slovenian-speaking part of the public.
The earlier mark is figurative and consists of the verbal element ‘real’ written in red lower case italic characters, followed by a figurative element composed of two blue strokes, that will be perceived as such, but since they are following a letter string they may also be seen as a comma and a hyphen.
The graphic feature of the earlier mark plays a secondary role within the overall impression. The two blue strokes are just decorative elements, and even when perceived as a comma and a hyphen, they will be seen as complementary to the letter string before them. Therefore, their distinctiveness is considered lower than average. Taking into account that when signs 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 (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37), the word element ‘real’ must be considered the most distinctive element of the earlier sign.
The contested sign consists of the verbal elements ‘REAL’ and ‘NUTRI’ in capitalised letters above some Chinese-looking letters, invoked by two irregularly shaped lines surrounding the other elements.
The element ‘NUTRI’ has no meaning for the relevant public and is therefore distinctive.
The figurative depiction of the Chinese symbols will be associated with the origin of the relevant goods (i.e. China or another Asian country where such logograms are used), which are health products and medicals. It is therefore considered that this element is weaker than average for the relevant goods.
Furthermore, the depiction of the two irregularly lines surrounding the other elements are purely decorative and therefore less distinctive than the other elements in the sign.
In the earlier mark, the element ‘REAL’ is the dominant element as it is the most eye-catching.
The contested sign has no elements that could be considered clearly more dominant than other elements.
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.
Visually, the distinctive and dominant element ‘real’ in the earlier mark is entirely included in the verbal element in the beginning of the contested sign, where the attention of the public is usually focused. The signs differ in the additional letters ‘NUTRI’, the two blue strokes in the earlier mark, the Chinese symbols and the figurative elements of the contested mark, which are less distinctive.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛REAL’, present identically in both signs. The pronunciation differs in the sound of the letters ‛NUTRI’ of the contested mark, which have no counterpart in the earlier mark. Taking into account that the public pay more attention to the beginning of signs, the signs are considered aurally similar to an average degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. 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.
According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).
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 relevant part of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some elements with limited distinctiveness in the mark as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
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).
Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.
The earlier mark is inherently distinctive to an average degree.
The goods are identical. They target the general public. The degree of attention is average to high.
The signs are visually and aurally similar to an average degree, to the extent that they coincide in the distinctive, and in the earlier mark, dominant verbal element ‘REAL’.
Taking into account all the relevant circumstances of the case, the differences between the marks are not sufficient to counterbalance the similarity between them. The relevant public in part of the European Union may believe that the relevant goods come from the same undertaking or at least economically-linked undertakings.
Indeed, it is conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, due to the Chinese symbols, because the relevant goods may be based on the Chinese (Asian) medicine and nutrition.
Considering all the above, there is a likelihood of confusion on the part of the Polish, Slovak- and Slovenian-speaking general public. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 9 512 609. It follows that the contested trade mark must be rejected for all the contested goods.
Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.
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 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 Rule 94(3) and (6) and Rule 94(7)(d)(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. In the present case the opponent did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.
The Opposition Division
Irina SOTIROVA | Lena FRANKENBERG GLANTZ | Plamen IVANOV |
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.