DECISION

of the Fourth Board of Appeal

of 27 November 2015

In Case R 172/2015-4

Laboratorios Farmacéuticos Nutrición Center 1985 SLU
Marina 1 E-21001 Huelva Spain	Applicant / Appellant

represented by NEWPATENT, Puerto, 34, E-21001 Huelva, Spain

v

Naturkost Übelhör GmbH & Co. KG
Friesenhofen-Bahnhof 23-25 D-88299 Leutkirch Germany	Opponent / Respondent

represented by VONNEMANN KLOIBER & KOLLEGEN, Edisonstr. 2, D-87437 Kempten, Germany

APPEAL relating to Opposition Proceedings No B 2 307 703 (Community trade mark application No 12 191 409)

The Fourth Board of Appeal

composed of D. Schennen (Chairperson), F. López de Rego (Rapporteur) and C. Bartos (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. On 2 October 2013, the applicant sought to register the figurative mark

in sandy yellow and white, as a Community trade mark for, inter alia, the following goods:

Class 5 - Pharmaceutical preparations; Dietetic substances adapted for medical use, food for babies; Medicated food additives; Medical foodstuff additives for pharmaceutical use; Mineral additives, Mineral additives to foodstuffs for animal consumption; Low calorie foodstuffs for persons with special dietary needs due to a medical condition; Dietetic foods for medical purposes; Dietetic foodstuffs for medical use in the form of prepared meals; Protein foods for dietetic purposes (adapted for medical purposes); Dietetic foods and drinks adapted for medical purposes; Dietetic milk shakes for medical use, Dietary supplemental drinks; Vitamin drinks; Nutritionally-fortified beverages; Combinations of vitamins and minerals; Prepared meals for use in a controlled diet for persons with special requirements due to a dietary disorder; mineral food supplements; Dietary food supplements; Vitamin and mineral food supplements; Food supplements for dietetic use; Nutritional supplements; Preparations of trace elements for human and animal use; Dietetic food preparations adapted to have a low fat content.

2. On 4 February 2014, the opponent filed a notice of opposition based on Article 8(1) (b) CTMR on the basis of its earlier Community trade mark No 11 705 761

filed on 2 April 2013 and registered on 26 September 2013 for, inter alia, the following goods:

Class 5 - Pharmaceutical preparations; Dietetic food and substances adapted for medical or veterinary use, food for babies; Dietary supplements for humans and animals.

3. The opposition was based on part the goods for which this earlier trade mark is registered, namely the goods listed in paragraph 2 above, and was directed against only a part of the goods applied for, those listed in paragraph 1 above.

4. By decision of 18 November 2014 (the ‘contested decision’), the Opposition Division upheld the opposition in its entirety, ordering the applicant to bear the costs and fees of the opponent. It reasoned essentially that:

• The conflicting goods are identical.

• For reasons of procedural economy, the comparison of the signs focuses on the German-speaking part of the relevant public.

• The conflicting signs are visually similar to the extent that they both share the letter sequence ‘S-A-C-(*)-I-A’ which constitutes the first part of the word element of the contested sign and a substantial part of the sole word element in the earlier sign. They differ in the letter ‘H’ of the earlier sign, the word ‘forte’ after ‘Sacia’ in the contested sign, and the respective figurative elements including their colours.

• Aurally, the signs will be pronounced as ‘sahia’ and ‘satsia-forte’ by the German-speaking relevant public.

• The signs are not conceptually similar.

• Despite the fact that the signs have a different structure, different figurative elements and are in different colours, due to the similarities of the word elements, coupled with the fact that ‘forte’ is descriptive for the relevant goods (as it will be perceived as meaning ‘strong’), and the greater impact of word elements here, a likelihood of confusion exists under Article 8(1)(b) CTMR for the relevant public regardless of their higher than average level of attention.

Submissions and arguments of the parties

5. The applicant filed a notice of appeal, duly followed by a statement of grounds in which it argues that the contested decision was not well founded and that there is no likelihood of confusion between the conflicting trade marks. Its arguments are in essence as follows:

• Given that the earlier mark includes the word ‘chia’ which describes products of the chia seed, the conflicting goods have no real point of connection.

• The signs have only ‘SAC’ in common. The addition of ‘forte’ in the contested sign further differentiates their pronunciation. And ‘forte’ does not mean strong (‘stark’) in German, whilst the earlier sign’s meaning refers to the chia seeds, also known as ‘sachia’ which lowers its inherent distinctive character for the relevant goods.

‘SACIAFORTE’, in contrast to the earlier sign, means ‘quenchforte’ because ‘saciar’ in Spanish means ‘to quench’.

• The very different figurative elements must also be considered. Overall the signs are visually, phonetically and conceptually different and bear different icons: this element is predominant for the earlier sign.

• The word in the earlier sign is short, so any differences will be more easily noticeable.

• The relevant consumers have a high level of attention for the goods at hand.

• In light of this, there can be no likelihood of confusion with the earlier trade mark.

6. The opponent observed that the appeal is unfounded, noting, inter alia, that the conflicting goods are identical, and asserting that the differences in the signs are not outweighed by their similarities. It added that the relevant public is not very attentive for the conflicting goods, whether given on prescription or not.

Reasons

7. The appeal is not well founded. Due to the similarity of the applied-for trade mark with earlier Community trade mark, and the identity and similarity of the conflicting goods, there exists a likelihood of confusion within the meaning of Article 8(1)(b) CTMR for all the contested goods.

Article 8(1)(b) CTMR

8. In accordance with Article 8(1)(b) CTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered if, because of the identity or similarity of the signs and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected.

9. The average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect (22.06.1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 17ss). It should, however, be recalled that the consumer’s level of attention is likely to vary according to the category of goods or services in question and that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind (22.06.1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). The goods at issue in these proceedings are directed both at the general public and at a professional public, namely medical specialists such as doctors who prescribe medicines to patients. Since the goods directly affect the health of the user, the level of attention of the relevant public will be high, both for the public at large purchasing non-prescription goods and the professional public choosing prescription products for patients.

10. Since the earlier trade mark is a Community trade mark, the relevant territory is the European Union.

Comparison of the goods

11. The applicant asserts that, because the earlier mark includes the word ‘CHIA’ which describes ‘Chia seed’ products, the conflicting goods are unconnected. Such an argument bears no merit. This is because, firstly, the specifications of the goods for which the earlier trade mark is registered indicate no such limitation to only products made from one particular seed. Secondly, even if that were the case, the specifications of the contested goods are broad enough to include any such products. The respective lists of goods must be compared on the basis of the natural and usual meaning, regardless of any alleged descriptiveness of the signs.

12. No convincing arguments are made on appeal that the contested decision erred with regard to its comparison of the conflicting goods, nor can the Board see any such reasons. The Board fully endorses the reasoning and conclusions of the Opposition Division in this respect. The conflicting goods are identical.

Comparison of the signs

13. The comparison of the conflicting signs in relation to the visual, aural and conceptual similarity of the signs in question has to take into account the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant components (06.10.2005, C-120/04, Thomson Life, EU:C:2005:594, § 28). As the Opposition Division, the Board will focus on the German-speaking part of the relevant public for the comparison of the conflicting signs.

14. The contested sign is a figurative depiction of the wording ‘Sacia’, joined to the smaller word ‘forte’, both in standard white lettering on a sand-coloured slightly graduated (darker at the bottom) rectangular background. It contains no element more dominant (in the sense of eye-catching) than any other. In terms of distinctive elements, the coloured rectangular is merely a banal background serving to contrast the white word elements. The word element ‘forte’ will be perceived as a separate element due to its smaller lettering. For many of the relevant public, including the German-speaking public, it will be perceived as merely descriptive of the strength of the contested products or active ingredients contained within them, and has no independent distinctive function in relation to the Class 5 goods (08.09.2008, T‑373/06, Epican Forte, EU:T:2008:312, §56 to 61, appeal dismissed by the Court of Justice in 04.12.2009, C‑488/08 P & C‑489/08 P, Epican / Epican Forte, EU:C:2009:754). Accordingly, the word element ‘Sacia’ will be perceived by that public as the most distinctive element in the sign.

15. The earlier sign is composed of a circular graduated (darker at the right-hand side) green device bearing a stylised figure of a person in white, with arms and legs outstretched, and a section cut away in the lower right quadrant where a word element ‘sachia’ is depicted in standard, lower-case green letters. While the green circular figurative device bearing the simplified human figure is much bigger than the word element, the fact that this device is banal and decorative is reinforced by the fact that the word element intersects it, and indeed appears to be placed above the green background. As a result, the larger device element is not more visually dominant than the word element, but the visual impact will be of the two integrated elements together.

16. Upon appeal, the applicant argues that ‘chia’ is a kind of plant, and that accordingly the word element of the earlier sign is descriptive. By way of evidence of this, it submits (i) print-outs from www.sachia.de entitled ‘What is Chia?’ stating that the chia seed is part of the staple diet of the Tarahumara Indians, that Chia plant was originally cultivated by the Aztecs, and that the chia seeds, which are grown in Acatic in the State of Jalisco, are called ‘sachia’; and (ii) a print-out from Wikipedia entitled ‘Salvia hispanica’ in English which states that this plant, commonly known as chia is native to Mexico and Guatemala. In fact ‘chia’ is a nahuatl word which also forms a part of the name of the Mexican State of Chiapas. Under ‘Seeds’, it is stated that ‘Chia seed (…) is not widely known in Europe.’

17. This evidence fails to establish that any substantial part of the relevant public, that is to say the EU public at large, and in particular the German-speaking part of it, have any knowledge of the alleged meaning of the words ‘Chia’ or ‘Sachia’ in the context of the conflicting goods. The fact that the cited German website needs to explain what ‘chia’ is reinforces this: if this were well-known, there would be no need for any such explanation. The Wikipedia evidence, to the extent it may be considered reliable, confirms that this seed is not well-known in Europe.

18. In conclusion, the Board finds that it has not been proven that the word ‘Sachia’ would be perceived as descriptive of seeds from the chia plant by the relevant public and that, indeed, a significant part of this public will have no idea of this Mexican seed and will see the word ‘sachia’ as entirely fanciful for the relevant Class 5 goods. As against this, the green circular background bearing a simplified stylistic representation of a person will be seen merely as a decorative and banal reference to the fact that the products at hand are for people, green commonly being used as a reference to imply a healthy, ecological aspect. Moreover, it is settled case-law that where a sign is composed of word elements and figurative elements, the former are, as a rule, more distinctive than the latter, since the average consumer will more easily refer to the goods in question by citing the name rather than describing the figurative element (18.09.2012, T-460/11, Bürger, EU:T:2012:432, § 35; 31.01.2012, T-205/10, La victoria de Mexico, EU:T:2012:36, § 38). This principle applies here.

19. Overall, the word element ‘sachia’ is the most distinctive part of the earlier sign.

20. Visually, the distinctive elements of the conflicting signs are ‘Sacia’ and ‘sachia’, both written in standard typeface, in white and in green, respectively. These bear the identical first three and last two letters, differing only with regard to the capital letter of ‘Sacia’ and the central ‘h’ in ‘sachia’. Although the element ‘forte’ will be perceived as merely descriptive by the relevant public, and it is clearly separate to ‘Sacia’ as it is written in smaller type, it is nevertheless not visually negligible. In addition, the banal background colours of the signs differ, sand-coloured as against green, and indeed the rectangular background of the contested sign is different to the circular figurative device contained the stylised depiction of a person in the earlier sign. Overall, the signs are visually similar to an average degree, but this similarity is high with regard to the most distinctive word element in each sign, ‘Sacia’ and ‘sachia’ respectively.

21. Phonetically, the relevant German-speaking public will pronounce the distinctive element of contested sign as ‘SA-HI-A’ as against ‘SA-TSI-A’ for the earlier sign. If the element ‘forte’ of the contested sign is perceived by this public merely as an indication of the strength of the products, it is unlikely to be pronounced and aurally the signs are highly similar. Even if the element ‘forte’ were pronounced, the signs are phonetically similar to an average degree due to the very strong similarities between ‘SA-HI-A’ and ‘SA-TSI-A’.

22. Conceptually, although the German-speaking part of the relevant public will understand the element ‘forte’ as a descriptive indication of the strength of the product, the distinctive word element ‘Sacia’ will not be seen as bearing any particular meaning by this part of the public. Nor indeed, for at least a substantial part of that public, will the earlier trade sign ‘sachia’ be perceived as having any meaning. Accordingly the conceptual comparison is neutral.

Overall assessment of the likelihood of confusion

23. Likelihood of confusion on the part of the public must be assessed globally, and that global assessment implies some interdependence between the factors taken into account and in particular similarity between the signs and between the goods or services covered. Accordingly, a lesser degree of similarity between these goods or services may be offset by a greater degree of similarity between the signs, and vice versa (29.09.1998, C-39/97, Canon, EU:C:1998:442, § 17). The more distinctive the earlier mark, the greater the risk of confusion, and 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 (29.09.1998, C-39/97, Canon, EU:C:1998:442, § 18).

24. The earlier trade mark enjoys an average degree of inherent distinctive character. Overall, the conflicting signs are visually and phonetically highly similar with regard to their distinctive elements, indeed the distinctive word element of the earlier sign ‘Sachia’ is reproduced nearly in its entirety as the only distinctive element of the contested sign, ‘Sacia’. The differences in the non-distinctive elements in the case at hand cannot outweigh this.

25. Moreover, the high level of attention of the relevant public has no bearing on the perception of non-distinctive and descriptive elements of the signs, which will not be relied upon to distinguish the signs insofar as they will not be perceived as indicating a particular source of origin. In addition, bearing in mind the imperfect recollection of the relevant public, which seldom has the chance to make side-by-side comparisons of the signs, the differences in the banal colours and the decorative figurative elements will not be memorable.

26. In light of all of the above and considering the identity of the conflicting goods, the Board finds that a likelihood of confusion exists within the meaning of Article 8(1)(b) CTMR for all the contested goods.

27. The appeal must therefore be dismissed in its entirety.

Costs

28. As the appellant (applicant) is the losing party within the meaning of Article 85(1) CTMR, it must be ordered to bear the costs of the appeal proceedings. The Opposition Division correctly decided that it should bear the costs and fees of the respondent (opponent) for the opposition proceedings.

Fixing of costs

29. Pursuant to Article 85(6) CTMR and Rule 94(7)(d) (i) and (vi) CTMIR, the amount of representation costs to be paid by the appellant to the respondent for the opposition proceedings was fixed at EUR 300 and for the appeal proceedings it is fixed at EUR 550. Pursuant to Rule 94(6) CTMIR the applicant shall also bear the opposition fee of EUR 350 incurred by the respondent as decided by the Opposition Division. The total amount to be paid is EUR 1 200.

Order

On those grounds,

THE BOARD

hereby:

1. Dismisses the appeal;

2. Orders the appellant to bear the costs of the respondent in the appeal proceedings;

3. Fixes the total amount of costs and fees to be paid by the appellant to the respondent with respect to the opposition and appeal proceedings at EUR 1 200.

Signed D. Schennen

Signed F. López de Rego

Signed C. Bartos

Registrar: Signed H.Dijkema