OPPOSITION No B 2 357 005

Redexis Gas, S.A., C/ Doctor Aznar Molina, 2, 50002 Zaragoza, Spain (opponent), represented by Javier Ungría López, Avda. Ramón y Cajal, 78, 28043 Madrid, Spain (professional representative)

a g a i n s t

Redoxis AB, Medicinaregatan 8A, Sahlgrenska Science Park, 41346 Göteborg, Sweden (applicant).

On 22/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 357 005 is partially upheld, namely for the following contested services:

Class 42: Medical research; biological research, clinical research and medical research; pharmaceutical research services; research on the subject of pharmaceuticals; scientific research in the field of pharmacy; pharmaceutical research services; research in the pharmaceutical and biotechnology fields; providing medical and scientific research information in the field of pharmaceuticals and clinical trials; conducting early evaluations in the field of new pharmaceuticals; medical laboratory services; laboratory research services relating to pharmaceuticals

2.        European Union trade mark application No 12 622 213 is rejected for all the above services. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all of the services of European Union trade mark application No 12 622 213. During the proceedings, the applicant filed a request for limitation. On 06/05/2015, the opponent confirmed that it wished to maintain the opposition against the remaining services. The opposition is based on, inter alia, Spanish trade mark registration No 3 102 404. 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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Spanish trade mark registration No 3 102 404.

1. The goods and services

The goods and services on which the opposition is based are, after a partial refusal by the Spanish trade mark office, the following:

Class 4: Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit), in particular gas; lighting fuel; candles and wicks for lighting.

Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; gas boilers and electric boilers; regulation and reliability accessories for gas devices and conductors; gas cleaners and purifiers; gas condensers; electric and gas radiators; gas generators, gas lamps; electric lamps; gas burners; gas stoves, electric cookers; ovens; fireplaces; radiators, heating radiators.

Class 37: Building services; repair services; installation services.

Class 39: Transport; packaging and storage of goods; distribution (delivery) of goods, in particular transport, storage and distribution of gas, electricity, water and energy of all kinds, including distribution (delivery), storage, supply and transport of components of all kinds for gas and electric installations; travel arrangement.

Class 40: Material treatment services; contract manufacturing services; custom manufacture of goods and manufacture of goods for others, including production of energy, in particular electric energy and energy produced from gas, oil, diesel oil and steam, including nuclear, solar, wind and biomass energy; recycling of waste and rubbish; transformation and treatment of waste by mechanical and/or chemical processes; transformation and treatment of fluids of all kinds by mechanical and/or chemical processes.

Class 41: Education and instruction; entertainment; sporting and cultural activities.

The contested services are the following:

Class 42: Medical research; biological research, clinical research and medical research; pharmaceutical research services; research on the subject of pharmaceuticals; scientific research in the field of pharmacy; pharmaceutical research and development services; research and development in the pharmaceutical and biotechnology fields; providing medical and scientific research information in the field of pharmaceuticals and clinical trials; pharmaceutical drug development services; conducting early evaluations in the field of new pharmaceuticals; medical laboratory services; laboratory research services relating to pharmaceuticals.

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.

All the contested services that relate to research, namely medical research; biological research, clinical research and medical research; pharmaceutical research services; research on the subject of pharmaceuticals; scientific research in the field of pharmacy; pharmaceutical research services; research in the pharmaceutical and biotechnology fields; providing medical and scientific research information in the field of pharmaceuticals and clinical trials; conducting early evaluations in the field of new pharmaceuticals; medical laboratory services; laboratory research services relating to pharmaceuticals, are services that involve activities by or in collaboration with, for example, laboratories and/or universities in a wide range of fields, such as biology, chemistry and pharmacology, with the goal of developing new medicines or medical procedures or improving the application of those already available, including the provision of evaluations in this field. The most basic medical research is a rapidly evolving area in universities that aims to make new discoveries in these areas, for example ‘Human Biosciences’, and transfer technology to the marketplace.

Therefore, these services have points in common with the opponent’s education in Class 41. They have the same general purpose of acquiring and/or imparting or disseminating knowledge or skills. Moreover, these services may be provided by the same entities and they clearly target the same professional public. It follows that these services are similar.

The actual development of a drug takes place at a later stage during which the drug is brought on to the market once a lead compound has been identified. The development is, however, not done by universities, and therefore these services will not – unlike the above – be provided by the same entities. They will also not target the same public. It is therefore considered that the contested pharmaceutical development services; development in the pharmaceutical and biotechnology fields; pharmaceutical drug development services are dissimilar to the opponent’s education services. Nor do these services have anything in common with the remaining services in Class 41 or the opponent’s goods and services in Classes 4, 11, 37 and 39, which are clearly very different.

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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 services found to be similar are specialised research and laboratory services directed at customers with specific professional knowledge or expertise in, inter alia, the scientific field, such as medical or clinical laboratory scientists (e.g. clinical research and medical research services in Class 42), whose degree of attention is high, as these are highly specialised services.

3. The signs

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 figurative mark composed of the word element ‘Redexis’, in dark blue in a fairly standard typeface, and a fanciful element in blue, yellow and green on its top right side. The mark has no meaning for the relevant public in the relevant territory, nor does it have elements that are visually more eye-catching or more distinctive than others.

The contested mark is a figurative mark composed of the word element ‘redoxis’, in small black letters in a standard typeface, except for the fifth letter, ‘x’, which is red. The word element is preceded by a fanciful figurative element, also depicted in red. The word ‘redoxis’ will be perceived as meaningless by the relevant public and therefore has a normal degree of distinctiveness in relation to the relevant services. The mark has no elements that are more dominant or more distinctive than others.

Visually, the signs coincide in six out of seven letters, ‘RED*XIS’. However, they differ in their fourth letter, ‘E’ of the earlier mark and ‘O’ in the contested sign. They also differ in their figurative elements, both of which are coloured abstract devices.

It must be borne in mind that when signs consist 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. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

Therefore, the signs are visually similar to an average degree.

Aurally, the signs coincide in the sound of six out of seven letters, ‘RED*XIS’. Moreover, the difference in the pronunciation of the vowel ‘O’ or ‘E’ in fourth position, and thus in the middle of the signs, is difficult to perceive or at least easy to confuse.

Therefore, the signs are aurally highly similar.

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.

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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

In the present case, the goods and services are partly similar and partly dissimilar. The signs are visually similar to an average degree and aurally highly similar.

As explained above, when signs consist 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. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements. Accordingly, it is relevant that, in this case, the marks coincide in the only elements that can be read and pronounced, which contain practically the same letters and have the same rhythm and length. Consumers will perceive that, when pronounced, the sounds of the word elements are highly similar.

Because of this high aural similarity, the differences in colour of the elements in the marks and in the stylisation of the verbal element in the marks are not enough per se to differentiate them.

It must also be pointed out that the figurative elements are set in the top corner of the word, to either the left or the right. Therefore, visually, the consumer will remember from both signs the arrangement of a single word beginning and ending with the same letters and a fanciful element at the beginning or the end. The two trade marks thus have similar structures.

Considering all the above, there is a likelihood of confusion on the part of the public and, therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 3 102 404. It follows from the above that the contested trade mark must be rejected for the services 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.

Since the opposition is based on more than one earlier trade mark, the Opposition Division will continue with the examination of the opposition in relation to the opponent’s European Union trade mark registrations No 12 355 401 and No 12 406 211.

6. The goods and services

The goods and services on which the opposition is based are, after a partial refusal in opposition proceedings, the following:

European Union trade mark registration No 12 355 401, ‘REDEXIS’

Class 4: Industrial oils and greases; Lubricants; Dust absorbing, wetting and binding compositions; Fuels (including motor spirit), in particular gas; Lighting fuel; Candles and wicks for lighting.

Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; Gas boilers and electric boilers; Regulation and reliability accessories for gas devices and conductors; Gas cleaners and purifiers; Gas condensers; Electric and gas radiators; Gas generators, gas lamps; Electric lamps; Gas burners; Gas stoves, electric cookers; Ovens; Fireplaces; Radiators, heating radiators.

Class 35: Retailing, wholesaling or sale via global computer networks of industrial oils and greases, lubricants, dust absorbing, wetting and binding compositions, fuels (including motor spirit) and in particular gas, illuminants, apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, gas boilers and electric boilers, regulation and reliability accessories for gas devices and conductors, gas purifying apparatus, gas condensers, gas and electric radiators, gas generators, gas lamps, electrical lighting devices, gas burners, gas cookers and electrical cookers, ovens, kilns and heating radiators; Exclusive sale of industrial oils and greases, lubricants, dust absorbing, wetting and binding compositions, fuels (including motor spirit) and in particular gas, illuminants, apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, gas boilers and electric boilers, regulation and reliability accessories for gas devices and conductors, gas purifying apparatus, gas condensers, gas and electric radiators, gas generators, gas lamps, electrical lighting devices, gas burners, gas cookers and electrical cookers, ovens, kilns and heating radiators.

Class 37: Repair; Installation services.

Class 39: Services relating to the packaging and storage of goods; Distribution (delivery) of goods, in particular storage and distribution of gas, electricity, water and energy of all kinds, and warehousing, supply of components of all kinds for gas and electric installations; Travel arrangement.

Class 40: Material treatment services; Contract manufacturing services; Custom manufacture of goods and manufacture of goods for others, including production of energy, in particular electric energy and energy produced from gas, oil, diesel oil and steam, including nuclear, solar, wind and biomass energy; Recycling of waste and rubbish; Transformation and treatment of waste by mechanical and/or chemical processes; Transformation and treatment of fluids of all kinds by mechanical and/or chemical processes.

Class 41: Sporting and cultural activities.

European Union trade mark registration No 12 406 211,

Class 4: Industrial oils and greases; Lubricants; Dust absorbing, wetting and binding compositions; Fuels (including motor spirit), in particular gas; Lighting fuel; Candles and wicks for lighting.

Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; Gas boilers and electric boilers; Regulation and reliability accessories for gas devices and conductors; Gas cleaners and purifiers; Gas condensers; Electric and gas radiators; Gas generators, gas lamps; Electric lamps; Gas burners; Gas stoves, electric cookers; Ovens; Fireplaces; Radiators, heating radiators.

Class 35: Sole agencies, and retailing, wholesaling or sale via global computer networks of oils and greases for industrial purposes, lubricants, dust absorbing, wetting and binding compositions, fuels (including motor spirit), in particular gas, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling gas, illuminants, apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, gas boilers and electric boilers, regulating and safety fittings for gas devices and conductors, gas scrubbing apparatus, gas condensers, gas and electric radiators, gas generators, gas lamps, electric lighting devices, gas burners, gas cookers and electric cookers, ovens, kilns and heating radiators.

Class 39: Transport; Packaging and storage of goods; Distribution (delivery) of goods, in particular transport, storage and distribution of gas, electricity, water and energy of all kinds, including distribution (delivery), storage, supply and transport of components of all kinds for gas and electric installations; Travel arrangement.

Class 40: Material treatment services; Contract manufacturing services; Custom manufacture of goods and manufacture of goods for others, including production of energy, in particular electric energy and energy produced from gas, oil, diesel oil and steam, including nuclear, solar, wind and biomass energy; Recycling of waste and rubbish; Transformation and treatment of waste by mechanical and/or chemical processes; Transformation and treatment of fluids of all kinds by mechanical and/or chemical processes.

Class 41: Education and instruction; Sporting and cultural activities.

The remaining contested services are:

Class 42: Pharmaceutical development services; development in the pharmaceutical and biotechnology fields; pharmaceutical drug development services.

These other earlier rights invoked by the opponent cover the same or a narrower scope of goods and services in Classes 4, 11, 37, 39, 40 and 41 as the earlier mark already compared above in section a). The same findings apply here and the contested services are considered dissimilar to the goods and services in these classes.

Furthermore, these two other earlier rights differ in their scope of services from the earlier mark already compared above, in the sense that they cover various services around ‘sales’ in Class 35. However, these services have nothing in common with the remaining contested services, since they are of different natures and are provided by different companies. They have different purposes and do not coincide in their relevant public, nor do they follow the same distribution channels. It follows that they are not complementary or in competition with each other and that they are therefore dissimilar.

7. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the remaining contested services and the goods and services covered by the opponent’s European Union trade mark registrations No 12 355 401 and No 12 406 211 are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

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 will decide a different apportionment of costs.

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

The Opposition Division

Zuzanna STOJKOWICZ

Cynthia DEN DEKKER

Julie GOUTARD

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.