OPPOSITION No B 2 645 839

Bayer Aktiengesellschaft, Kaiser-Wilhelm-Allee, 51373 Leverkusen, Germany (opponent), represented by Bomhard IP, S.L., C/Bilbao, 1, 5º, 03001 Alicante, Spain (professional representative)

a g a i n s t

Laboratorios Lisan S.A., San Francisco de dos Rios, San José, Costa Rica (applicant), represented by Doñaque & Asociados, S.L., Conde de Xiquena, 9, piso 1, pta. D, 28004 Madrid, Spain (professional representative).

On 18/05/2017, the Opposition Division takes the following

DECISION:

1. Opposition decision No 2 645 839 notified to the parties on 15/02/2017 is hereby revoked.

2. Opposition No B 2 645 839 is partially upheld, namely for the following contested goods:

Class 5:        Pharmaceutical preparations obtained from the medicinal plant with the name "JUSTICIA PECTORALIS" for preventing anxiety.

3.        European Union trade mark application No 14 549 067 is rejected for all the above goods. It may proceed for the remaining goods and services.

4.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of the European Union trade mark application No 14 549 067, namely against all the goods in Class 5 and some of the services in Class 35. The opposition is based on Spanish trade mark registration No 2 928 206 The opponent invoked Article 8(1)(b) EUTMR.

DECISION ON THE REVOCATION – Article 80 CTMR

Where the Office has made an entry in the Register or taken a decision that contains an obvious procedural error attributable to the Office, it shall ensure that the entry is cancelled or the decision is revoked.

On 17/02/2017, the Office informed the parties that it had the intention to revoke the decision of 15/02/2017. The reason was that there was an error in the dictum as the opposition should be partially upheld. The opponent’s request to address the opposition also against some services in Class 35, namely wholesaling or retailing and sale via global computer networks of pharmaceutical preparations obtained from medicinal plants with the name "JUSTICIA PECTORALIS" for preventing anxiety was not taken into consideration. Upon receiving the original decision the opponent became aware of the error and informed the Office accordingly.

In accordance with Article 80 CTMR, the Office gave the parties one month to submit observations.

The parties did not submit any observations.

Therefore, the decision adopted by the Opposition Division on 15/02/2017 in the opposition No B 2 645 839 is herewith revoked and is replaced by the present decision.

PROOF OF USE

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely Spanish trade mark registration No 2 928 206.

According to Article 42(2) and (3) CTMR, the earlier mark can only be subject to the request for proof of use when it has been registered for not less than five years at the date of publication of the contested trade mark.

In the present case, the contested trade mark was published on 30/10/2015.

On 17/08/2016, the parties were informed by the Office during the proceedings that such request cannot be taken because it concerns marks which, at the date of publication of the contested mark, had not been registered for at least five years.

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

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

Class 5:        Dietetic substances adapted for medical use for humans exclusively.

The contested goods and services are the following:

Class 5:        Pharmaceutical preparations obtained from the medicinal plant with the name "JUSTICIA PECTORALIS" for preventing anxiety.

Class 35:         Wholesaling or retailing and sale via global computer networks of pharmaceutical preparations obtained from medicinal plants with the name "JUSTICIA PECTORALIS" for preventing anxiety.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘exclusively’, used in the opponent’s list of goods to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods for humans use.

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 5

The dietetic substances adapted for medical use for humans exclusively 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 obtained from the medicinal plant with the name "JUSTICIA PECTORALIS" for preventing anxiety (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.

Contested goods in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to these 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. The same principle applies to the services rendered in connection with different forms exclusively consisting of activities around the actual sale of goods, such as wholesale services.

However, in the present case the contested wholesaling or retailing and sale via global computer networks of pharmaceutical preparations obtained from medicinal plants with the name "JUSTICIA PECTORALIS" for preventing anxiety and the opponent’s goods are not similar. Apart from being different in nature, given that services are intangible whereas goods are tangible, they serve different needs. Retail and wholesale services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of the goods. Furthermore, the method of use of those goods and services is different. They are neither in competition nor complementary.

Similarity between retail services/wholesale services of specific goods covered by one mark and specific goods covered by the other mark can only be found where the retailed/wholesaled goods and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case in relation to the above mentioned services since the goods at issue are only similar.

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.

In the present case, the goods considered similar are directed at the public at large, as well as at professionals in the medical and pharmaceutical fields with specific professional knowledge or expertise. The level of attention of the relevant public is considered to vary from average to higher than average, for those affecting the person’s state of health.

3. The signs

SERENIA
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 earlier mark is a word mark consisting solely of the word ‘SERENIA’ written in uppercase characters.

The contested sign is a figurative mark consisting of the word ‘SERENUM’ depicted in white capital letters, rather standard, against a black rectangular background.

The earlier mark ‘SERENIA’ and the verbal element of the contested sign ‘SERENUM’ are invented words. Although, it cannot be excluded that some consumers could link the first five letters ‘SEREN’ with ‘SERENITY’, ‘calmness’/’serenidad’ in their official language, however, it is unlikely that they will be dissected in an artificial manner and will be more likely to read ‘SERENIA’ and ‘SERENUM’ as a complete entity. Therefore, the analysis of the opposition will continue for the part of the public of the relevant territory who does not associate the letters ‘SEREN’ to any concept, which will be a substantial part of the relevant public.

In this regard, the earlier mark ‘SERENIA’ has no elements that could be considered clearly more distinctive and dominant (visually eye-catching) than other elements.

As regards the contested sign, it is composed of a distinctive verbal element ‘SERENUM’ and a less distinctive figurative element of a purely decorative nature, the black background. Therefore, the verbal element is more distinctive than the figurative element.

The contested sign has no elements that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the letters ‘S-E-R-E-N’. However, they differ in the last two letters of the earlier mark ‘I-A’ and of the contested sign, ‘U-M’, as well as in the graphical representation and the figurative decorative element of the contested sign, the black rectangular back ground considered non-distinctive.

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. Therefore, the fact that five of the seven letters of the verbal element of the contested sign are included at the beginning of the earlier mark in the same order is of particular relevance.  

When a sign consists of both verbal and figurative components, as the contested sign, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public will more readily refer to a sign by its verbal component than by describing the elements of stylisation. In fact, unless the figurative elements are extraordinarily striking, the verbal elements are prevalent, as the consumer will use them to refer to the mark (see Judgment of 22/02/2006, T 74/04, Quicky, EU:T:2006:60, §  50). Therefore, in the present case, in which the graphical representation of the contested sign is not particularly striking and the letters are rather standard, it is reasonable to state that the relevant consumers will pay more attention to the more distinctive element, the word ‘SERENUM’, of which five of its seven first letters are incorporated, in the same order, in the earlier mark.

Therefore, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters /S-E-R-E-N/, present identically in both signs. The pronunciation differs in the sound of the last two letters /I-A/ of the earlier mark and /U-M/ of the contested sign.

Therefore, the signs are similar to an average degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Therefore, 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.

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 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 as a whole has no meaning for any of the goods in question from the perspective of the relevant public. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

As has been concluded above, the contested goods in Class 5 were found similar to those of the earlier mark and are directed at the public at large and professionals whose level of attention is likely to vary from average to high. Furthermore, the earlier mark is considered to enjoy a normal degree of distinctiveness and the signs are visually and phonetically similar to an average degree, without this impression being altered by any conceptual perception.

The differences between the signs are based on secondary and non-distinctive elements, which will not have such an impact on the consumers and would be insufficient to offset the similarities and thus exclude a likelihood of confusion as to the commercial origin of the goods.

Additionally, 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). Even consumers with a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T 443/12, ancotel, EU:T:2013:605, §  54).

In the light of the above, the degree of similarity between the marks at issue is sufficient for it to be considered that a substantial part of the consumers, could reasonably believe that the goods bearing the contested sign come from the same undertaking or from economically-lined undertakings as those bearing the earlier mark.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that there are many trade marks that include ‘SEREN’. In support of its argument the applicant holder refers to 24 trade mark registrations in Europe.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘SEREN’. Under these circumstances, the applicant’s claims must be set aside.

Therefore, the opposition is partially well founded on the basis of the opponent’s European Union trade mark registration No 2 928 206.

It follows from the above that the contested trade mark must be rejected for the contested goods, found to be similar to those of the earlier trade mark.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these services cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Lynn Burtchaell	María Clara  IBÁÑEZ FIORILLO	Francesca CANGERI SERRANO

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.