Judgments nº T-41/19 of Tribunal General de la Unión Europea, October 24, 2019

• Resolution Date: October 24, 2019
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-41/19

(EU trade mark - Opposition proceedings - Application for the EU figurative mark nume - Earlier EU word mark numederm - Relative ground for refusal - Likelihood of confusion - Article 8(1)(b) of Regulation (EU) 2017/1001) In Case T-41/19,

MSI Svetovanje, marketing, d.o.o., established in Vrhnika (Slovenia), represented by M. Maček, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by K. Kompari and H. O’Neill, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO being

Industrial Farmaceutica Cantabria, SA, established in Madrid (Spain),

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 8 November 2018 (Case R 722/2018-5), relating to opposition proceedings between Industrial Farmaceutica Cantabria and Nutrismart d.o.o.,

THE GENERAL COURT (Third Chamber),

composed, at the time of the deliberation, of S. Frimodt Nielsen (Rapporteur), President, V. Kreuschitz and N. Półtorak, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 23 January 2019,

having regard to the response lodged at the Court Registry on 8 May 2019,

having regard to the fact that no request for a hearing was submitted by the parties within 3 weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

gives the following

Judgment

Background to the dispute

1 On 16 February 2016, Nutrismart d.o.o., the predecessor in title to the applicant, MSI Svetovanje, marketing, d.o.o., filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

2 Registration as a mark was sought for the following figurative sign:

3 The goods in respect of which registration was sought are in, inter alia, Classes 5, 29 and 30 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

- Class 5: ‘Pharmaceutical, veterinary and sanitary preparations for medical purposes; aloe vera preparations for pharmaceutical purposes; aluminium acetate for pharmaceutical purposes; amino acids for medical purposes; albumin dietary supplements; pearl powder for medical purposes; candy, medicated; sweets for medical purposes; diabetic bread adapted for medical use; diagnostic preparations for medical purposes; dietetic foods adapted for medical purposes; dietetic beverages adapted for medical purposes; dietetic substances adapted for medical use; elixirs (pharmaceutical preparations); infant formula; nutritional supplements; cachets for pharmaceutical purposes; lotions for pharmaceutical purposes; royal jelly dietary supplements; royal jelly for pharmaceutical purposes; ointments for pharmaceutical purposes; sunburn ointments and frostbite salve for pharmaceutical purposes; mineral waters for medical purposes; mineral food supplements; lacteal flour for babies; malted milk beverages for medical purposes; milk ferments for pharmaceutical purposes; milk sugar for pharmaceutical purposes; lozenges for pharmaceutical purposes; douching preparations for medical purposes; protein dietary supplements; slimming pills; syrups for pharmaceutical purposes; medicated candies; sugar for medical purposes; antioxidant pills; tanning pills; medicinal drinks; medicinal tea; medical preparations for slimming purposes; mud (medicinal -); herbal teas for medicinal purposes; chewing gum for medical purposes; casein dietary supplements’;

- Class 29: ‘Meat, fish, poultry and game; albumen for culinary purposes; low-fat potato chips; weed extracts for food; hummus [chickpea paste]; yoghurt, soups, preparations for making soup, broth concentrates, cocoa butter; kefir; coconut fat; coconut, desiccated; coconut oil, coconut butter; almonds, ground; broth; milk beverages, milk predominating, milk shakes; milk and milk products; palm kernel oil for food; nuts, prepared; palm oil for food; sausages in batter; tomato purée; tomato juice for cooking; poultry, not live; preparations for making bouillon, fruit-based snack food; dishes of fish; canned fruits; preserved fruit, cooked fruits (compotes), frozen fruits, fruit pulp, fruit salads; fruit chips; fruit peel, fruit jellies, sesame oil; whey; curd; cream (dairy products); preserved soya beans for food, soya milk (milk substitute); sunflower seeds, prepared; whipped cream; tinned vegetables, preserved vegetables, cooked vegetables; dried vegetables, preparations for making vegetable soup, vegetable mousses, vegetable salads; vegetable juices; albumin milk’;

- Class 30: ‘Ice cream; beverages based on cocoa, coffee, chocolate or tea’.

4 The trade mark application was published in European Union Trade Marks Bulletin No 2016/160 of 25 August 2016.

5 On 25 November 2016, Industrial Farmaceutica Cantabria SA, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.

6 The opposition was based on the EU word mark numederm, which was filed on 17 February 2015 and registered on 23 September 2016 under the number 13745 052 in respect of goods in Classes 5, 29 and 30 corresponding, for each of those classes, to the following description:

- Class 5: ‘Food supplements for human beings for medical purposes, for supplementing a normal diet and for improving health’;

- Class 29: ‘Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats’;

- Class 30: ‘Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; ices and ice creams; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice’.

7 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).

8 On 20 March 2018, the Opposition Division partially upheld the opposition on the ground that there was a likelihood of confusion as regards the following goods:

- Class 5: ‘Pharmaceutical preparations for medical purposes; aloe vera preparations for pharmaceutical purposes; aluminium acetate for pharmaceutical purposes; amino acids for medical purposes; albumin dietary supplements; pearl powder for medical purposes; candy, medicated; sweets for medical purposes; diabetic bread adapted for medical use; diagnostic preparations for medical purposes; dietetic foods adapted for medical purposes; dietetic beverages adapted for medical purposes; dietetic substances adapted for medical use; elixirs (pharmaceutical preparations); infant formula; nutritional supplements; cachets for pharmaceutical purposes; lotions for pharmaceutical purposes; royal jelly dietary supplements; royal jelly for pharmaceutical purposes; ointments for pharmaceutical purposes; sunburn ointments and frostbite salve for pharmaceutical purposes; mineral waters for medical purposes; mineral food supplements; lacteal flour for babies; malted milk beverages for medical purposes; milk ferments for pharmaceutical purposes; milk sugar for pharmaceutical purposes; lozenges for pharmaceutical purposes; douching preparations for medical purposes; protein dietary supplements; slimming pills; syrups for pharmaceutical purposes; medicated candies; sugar for medical purposes; antioxidant pills; tanning pills; medicinal drinks; medicinal tea; medical preparations for slimming purposes; mud (medicinal -); herbal teas for medicinal purposes; chewing gum for medical purposes; casein dietary supplements’;

- Class 29: ‘Meat, fish, poultry and game; albumen for culinary purposes; low- fat potato chips; weed extracts for food; hummus [chickpea paste]; yoghurt, soups, preparations for making soup, broth concentrates, cocoa butter; kefir; coconut fat; coconut, desiccated; coconut oil, coconut butter; almonds, ground; broth; milk beverages, milk predominating, milk shakes; milk and milk products; palm kernel oil for food; nuts, prepared; palm oil for food; sausages in batter; tomato purée; tomato juice for cooking; poultry, not live; preparations for making bouillon, fruit-based snack food; dishes of fish; canned fruits; preserved fruit, cooked fruits (compotes), frozen fruits, fruit pulp, fruit salads; fruit chips; fruit peel, fruit jellies, sesame oil; whey; curd; cream (dairy products); preserved soya beans for food, soya milk (milk substitute); sunflower seeds, prepared; whipped cream; tinned vegetables, preserved vegetables, cooked vegetables; dried vegetables, preparations for making vegetable soup, vegetable mousses, vegetable salads; vegetable juices; albumin milk’;

- Class 30: ‘Ice cream; beverages based on cocoa, coffee, chocolate or tea’.

9 On 19 April 2018, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.

10 By decision of 8 November 2018 (‘the contested decision’), the Fifth Board of Appeal of EUIPO partially annulled the Opposition Division’s decision by rejecting the opposition and allowing registration of the mark applied for in respect of the following goods in Class 5: ‘aluminium acetate for...