OPPOSITION No B 2 695 461

 

Merck Sharp & Dohme Corp., a New Jersey corporation, One Merck Drive, Whitehouse Station, New Jersey 08889, United States of America (opponent), represented by Merkenbureau Knijff & Partners B.V., Leeuwenveldseweg 12, 1382 LX Weesp, The Netherlands (professional representative)

 

a g a i n s t

 

Marie Charmaine Dias, 10 Normandy Pkwy, Morristown New Jersey 07960, United States of America, (applicant), represented by Berggren Oy, Eteläinen Rautatiekatu 10 A, 00100 Helsinki, Finland (professional representative).

 

On 25/05/2017, the Opposition Division takes the following

 

 

DECISION:

 

1.        Opposition No B 2 695 461 is upheld for all the contested goods.

 

2.        European Union trade mark application No 14 823 264 is rejected in its entirety.

 

3.        The applicant bears the costs, fixed at EUR 620.

 

 

REASONS:

 

The opponent filed an opposition against all the goods of European Union trade mark application No 14 823 264. The opposition is based on, inter alia United Kingdom trade mark registration No 3 073 853. 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 United Kingdom trade mark registration No 3 073 853.

 

 

1. The goods

 

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

 

Class 5:        Pharmaceutical preparations.

 

The contested goods are the following:

 

Class 5:        Pharmaceuticals; pharmaceutical drugs; pharmaceutical preparations; pharmaceutical compositions; cardiovascular pharmaceuticals; chemico-pharmaceutical preparations; cardiovascular pharmaceutical preparations.

 

Pharmaceutical preparations (and their synonyms pharmaceuticals; pharmaceutical drugs; pharmaceutical compositions) are identically contained in both lists of goods.

 

The contested cardiovascular pharmaceuticals; chemico-pharmaceutical preparations; cardiovascular pharmaceutical preparations are included in the broad category of the opponent’s pharmaceutical preparations. Therefore, they are identical.

 

 

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 found to be identical are directed at both qualified professionals and the general public at large, without any specific medical and pharmaceutical knowledge.

 

If a significant part of the relevant public for the goods at issue may be confused as regards the origin of the goods, this will be sufficient to establish a likelihood of confusion. It is not necessary to establish that all actual or potential consumers of the relevant goods are likely to be confused.

 

In the present case, the likelihood of confusion will be assessed against the perception of the general public, as it is a significant part of the public that will be more prone to confusion.

 

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.

 

 

3. The signs

 

 

 

ROSUZET	ROSZET
Earlier trade mark	Contested sign

 

The relevant territory is the United Kingdom.

 

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 of the string of letters ‘ROSUZET’. From the perspective of the relevant public (as defined in section b) of this decision), this word has no clear meaning. Even if part of the professional public would perceive the elements ‘ROS’ and ‘ZET’ as a reference to the chemical compounds ‘rosuvastatin’ and ‘ezetimibe’, as the applicant argues in its observations of 16/12/2016, this will in any event not be the case in the perception of the relevant public. Indeed, while part of the professional public in the given field will be familiar with specific terminology for specific pharmaceutical substances used in medical terminology, such sophistication and knowledge cannot be expected from the public at large.

 

The contested sign is a word mark consisting of the string of letters ‘ROSZET’, which is meaningless for the relevant public in the United Kingdom. Consequently, it will be seen as a fanciful word and it has an average degree of distinctive character, as is also the case in the earlier mark.

 

Furthermore, neither of the marks has any element that could be considered more dominant (visually eye-catching) than other elements.

 

Visually, the signs coincide in the string of six letters ‘ROS*ZET’, which forms the entire contested sign and which is distinctive from the perspective of the relevant public. They merely differ in the additional letter ‘U’, in the middle of the earlier mark, that has no counterpart in the contested sign.

 

Furthermore, the first parts of the conflicting marks are identical, and so are their endings. Consumers generally tend to focus on the beginning of a sign when being confronted with a trade mark. This is justified by the fact that 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. In addition, due to its position, the one-letter-difference in the present case has only a limited impact on the overall impression created by the sign and it may be overlooked by the public, which will not overanalyse the signs, given that they are both single, meaningless, terms.

 

Therefore, the signs are visually highly similar.

 

Aurally, the pronunciation of the signs coincides in the sound of the six letters ‘ROS*ZET’, present identically in both signs as a distinctive element. The pronunciation differs in the sound of the letter ‘U’ of the earlier mark which, whilst having no counterpart in the earlier mark, has a limited impact on the overall impression created by the earlier mark, due to its position in the middle of the mark, considering that the signs have identical beginnings and endings. In addition, the pronunciation of both signs coincides in rhythm and intonation.

 

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 in question from the perspective of the public in the relevant territory taken into account as mentioned above. Therefore, the distinctiveness of the earlier mark must be seen as normal.

 

 

5. 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).

 

Furthermore, 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.

 

Also, account must be 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 who pay 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).

 

The present assessment of likelihood of confusion is carried out in relation to the perception of the part of the public in the relevant territory that is more prone to confusion, namely the general public. As set out above, the only difference between the signs is the additional middle letter in the earlier mark; this difference is incapable of counteracting the similar overall impressions created by the signs sufficiently to enable the relevant public with an imperfect recollection to safely distinguish between them, even where the degree of attention is high.

 

The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. As the goods are identical, due to the visual and aural similarity to a high degree, while the conceptual aspect does not influence the assessment of the similarity of the signs, a likelihood of confusion exists.

 

In its observations, the applicant argues that the prefix ‘ROS-’ and the suffix ‘-ZET’ are commonly found in the Office’s trade mark register, and that this should be taken into account by the Office in its assessment of distinctive character.  In support of its argument the applicant refers to several trade mark registrations in the European Union.

 

However, it is to be noted 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 the elements ‘ROS’ and/or ‘ZET’ In question. Under these circumstances, the applicant’s claims must be set aside.

 

In addition, the applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

 

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case. In the present case, however, none of the previous cases referred to by the applicant are relevant to the present proceedings, because the signs are not comparable. In particular, as regards the decision of 15/09/2006 in opposition No B 722 621, it concerned short signs, as opposed to the present case. As regards the decision of the Board of Appeal of 18/05/2005 in R 234/2003-4, the case concerned an earlier mark with a weak initial element and the goods under comparison were not identical. As regards the decision of 18/10/2016 in opposition No B 2 575 176, the case concerned a contested mark with a weak initial element. As regards the decision of 29/04/2009 in opposition No B 1 255 027, the signs under comparison are short and not conceptually similar. As regards the cited decision of 20/08/2014 in opposition No B 1 579 344, this decision was reversed in appeal (No R 1 832/2013-2). As regards cited decision of the Board of Appeal of 20/05/2009 in R 1367/2007-4, the signs under comparison coincided in a descriptive initial element and were held dissimilar. As regards the cited decision of 30/01/2003 in opposition No B 383 432, the case concerned an earlier mark with a weak initial element and the goods under comparison were not identical. Finally, as regards the cited decisions of 16/09/2015 in opposition No B 2 432 766 and of 08/09/2016 in appeal proceedings No R 2 203/2015-1, the case, besides concerning goods different from the case at hand (in particular, Class 10 goods), was related to signs that both contain weak elements in relation to the goods.

 

Considering all the above, there is a likelihood of confusion on the part of the 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 United Kingdom trade mark registration No 3 073 853. It follows that the contested trade mark must be rejected for all the contested goods.

 

As the earlier right United Kingdom trade mark registration No 3 073 853 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

 

 

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.

 

 

 

 

The Opposition Division

 

 

Gueorgui IVANOV

Edith Elisabeth VAN DEN EEDE

Michele M. BENEDETTI-ALOISI

 

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.