OPPOSITION No B 2 451 584

Merck KGaA, Frankfurter Str. 250, 64293 Darmstadt, Germany (opponent), represented by Best Rechtsanwälte PartmbB, Hostatostr. 26, 65929 Frankfurt am Main, Germany (professional representative)

a g a i n s t

Endoceutics Inc., 2989 rue de la Promenade, Quebec  G1W 2J5, Canada (applicant), represented by Bergenstråhle & Partners Stockholm AB, Ringvägen 100, 118 60 Stockholm, Sweden (professional representative).

On 09/12/2016, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 451 584 is upheld for all the contested goods.

2.        European Union trade mark application No 13 148 986 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 13 148 986. The opposition is based on, inter alia European Union trade mark registration No 9 349 051. 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 European Union trade mark registration No 9 349 051 which is not under the obligation of proof of use.

1. The goods

The goods on which the opposition is based are, inter alia, the following:

Class 5: Pharmaceutical preparations, dietetic preparations on the basis of vitamins, minerals, trace elements, oils and fats, either singly or combinations thereof, for medical use; dietetic preparations or food supplements not for medical use, on the basis of carbohydrates, minerals, trace elements, vitamins as far as included in this class.

The contested goods are the following:

Class 5: Pharmaceutical preparations for the prevention and treatment of breast and uterine cancer, Alzheimer's disease, medical conditions related to menopause, bone loss, muscle loss, type 2 diabetes, fat accumulation, osteoporosis, hot flushes, skin atrophy, memory loss, and cognition loss.

The contested pharmaceutical preparations for the prevention and treatment of breast and uterine cancer, Alzheimer's disease, medical conditions related to menopause, bone loss, muscle loss, type 2 diabetes, fat accumulation, osteoporosis, hot flushes, skin atrophy, memory loss, and cognition loss 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 the public at large and at business customers with specific professional knowledge or expertise.

It is apparent from case law that, insofar as pharmaceutical preparations are concerned, the relevant public’s degree of attention is relatively high, whether or not these goods are 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 quoted case law).

Medical and pharmaceutical professionals display a high degree of attentiveness when prescribing medicines. With regard to end consumers, pharmaceutical products, whether or not issued on prescription, can be regarded as receiving a heightened degree of attentiveness regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health.

Therefore, the degree of attention is high.

3. The signs

FEMIBION INTIMA	FEMIVIA
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the relevant public.

Both marks are word marks. The word ‘FEMIBION’ of the earlier mark has no meaning as such in Spanish. While it is true in that regard that the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, he will break it down into elements which, for him, suggest a concrete meaning or which resemble words known to him ((13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57; 12/11/2008, T-281/07, Ecoblue, EU:T:2008:489, § 30).

In the present case, the letter sequence ‘FEM’ included in both marks alludes to the Spanish word ‘femenino’ which means ‘feminine’ and derives from the Latin word ‘femina’ meaning ‘woman’ (16/07/2014, T-324/13, EU:T:2014:672, §35 in which the General Court confirmed that the prefix ‘fem’ has a weak distinctive character for the goods pharmaceuticals on account of its character as descriptive of the intended purpose of those goods).

The word ‘INTIMA’ will be perceived as meaning ‘intimate, close or personal’ in Spanish (despite the missing accent over the first letter ‘I’). Bearing in mind that the relevant goods are pharmaceuticals, this element is weak for these goods as it may indicate that the goods are for personal, intimate use or as it may be seen as a reference to the purpose of the goods at hand, namely to the area of the body where they are used for.

The marks have no element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the first four letters ‘FEMI’ of the earlier mark are identically reproduced as the first four letters of the contested sign, the part which normally catches the consumer’s attention. The marks also coincide in the sixth letter ‘I’ preceded by the consonants ‘B’ and ‘V’ and followed by the vowels ‘O’ and ‘A’, respectively. The earlier mark also contains the weak element ‘INTIMA’ and the letter ‘N’ in addition.

The signs are visually similar to an average degree.

Aurally, the first three syllables of both signs are, according to the pronunciation rules of the Spanish language, pronounced identically, namely as [fe|mi|bi]. The fact that in Spanish, the letter ‘v’ is pronounced as [b] leads to a coincidence of the signs’ third syllable, next to the identity of the two first syllables. The difference between the signs lies in the signs’ respective last syllable which will be pronounced as [a] in the contested sign and as [on] in the earlier mark and in the additional word ‘INTIMA’, of the earlier mark.

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

Conceptually, the word ‘INTIMA’ will be understood as ‘intimate, close or personal’ in Spanish. The element ‘fem’, constituting the beginning of the signs at issue, will, for the Spanish-speaking public of the European Union, evoke the Spanish word ‘femenino’, meaning ‘feminine’, which derives from the Latin word ‘femina’. The rest of the signs, ‘ivia’ and ‘ibion’, have no meaning for the Spanish-speaking public. It follows that there is a certain conceptual similarity between those signs due to the limited distinctiveness of the prefix ‘FEM’.

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. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some weak elements in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

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.

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).

The goods are identical and the distinctiveness of the earlier mark is normal.

The signs are visually and aurally similar to an average degree. Furthermore, there is a certain degree of conceptual similarity between the marks.

In the light of the identity of the conflicting goods, the average visual and aural similarity and the average degree of distinctiveness of the earlier mark, it must be concluded that there is a likelihood of confusion on the part of the relevant Spanish public even if it is considered that this public possesses an enhanced degree of attentiveness in relation to the goods concerned.

It should also be borne in mind that the weak distinctive character of one element of a mark does not necessarily mean that that element will not be taken into consideration by the relevant public. Accordingly, it cannot be ruled out that, by reason in particular of its position in the sign or its size, such an element holds an autonomous position in the overall impression conveyed by the mark concerned in the perception of the relevant public (10/07/2012, T-135/11 CLORALEX, EU:T:2012:356, §35). That is particularly so in the present case.

In addition, it should be borne in mind that the fact that the relevant public will be more attentive to the identity of the producer or provider of the goods of which it wishes to avail itself does not mean, however, that it will examine the mark before it in the slightest detail or that it will compare it in great detail to another mark. Even for a public with a high level of attentiveness, the fact remains 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

Considering all the above, there is a likelihood of confusion on the part of the Spanish-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 9 349 051. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right Spanish trade mark registration No 1 536 510 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

Lars HELBERT

Janja FELC

Adriana VAN ROODEN

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.