OPPOSITION No B 2 759 929

Giuliani S.P.A., Via Palagi, 2, 20129 Milan, Italy (opponent), represented by Ufficio Veneto Brevetti, Via Sorio, 116, 35141 Padova, Italy (professional representative)

a g a i n s t

SC Vetro Design Srl, Str. Veronica Micle, nr. 20, bl. M6, sc. B, ap. 72, sector 1, Bucharest, Romania (applicant), represented by SC Rompatent Design Srl, Radu Borlan, Strada Matei Voievos 115-223 Bloc O2, Scara C, etaj 5, Ap. 112, 021453 Bucharest, Sector 2, Romania (professional representative).

On 26/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 759 929 is partially upheld, namely for the following contested goods:

Class 5:         Pharmaceutical and veterinary preparations; Dietetic foods adapted for medical use.

2.        European Union trade mark application No 15 291 685 is rejected for all the above goods. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 291 685 , namely against some of the goods in Class 5. The opposition is based on European Union trade mark registration No 8 850 241 ‘PRIMAK’. 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.

1. The goods

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

Class 5: Nutritional additives, dietetic supplements for oral use, dietetic supplements for oral use for skin care, protein complexes of natural origin.

The contested goods are the following:

Class 5: Pharmaceutical and veterinary preparations; Sanitary preparations for medical purposes; Dietetic foods adapted for medical use.

As a preliminary remark, it should be noted that in its observations of 06/02/2017 the opponent refers to the following contested goods: ‘Pharmaceutical and veterinary preparations; Sanitary preparations for medical purposes; Dietetic foods adapted for medical use, food for babies; Dressings and materials for dressings; Material for filling teeth, dental wax; Disinfectants; Preparations for destroying vermin; Fungicides, herbicides’. However, in the notice of opposition, the opponent clearly indicated that the opposition was directed only against ‘Pharmaceutical and veterinary preparations; Sanitary preparations for medical purposes; Dietetic foods adapted for medical use’. After the three-month opposition period that expired on 27/08/2016 it is not possible to broaden the extent of the opposition. Therefore, the goods which were not listed in the notice of opposition cannot be taken into account in the present decision.

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.

The contested dietetic foods adapted for medical use and the opponent’s dietetic supplements for oral use are prepared for special dietary requirements, with the purpose of treating or preventing a disease. These goods have the same purpose, distribution channels and relevant public. Therefore, they are similar.

As regards the contested pharmaceutical and veterinary preparations, these goods are related to the healthcare of humans and animals, in the same way as the earlier goods dietetic supplements for oral use. Medicinal and dietetic substances can equally be used to treat the human beings and animals. Although the nature of these goods may be different, these goods can be produced by the same or related undertakings. They are directed at the same public, be it the end-consumer or a professional, and generally have the same distribution channels. They are, therefore, similar.

The contested sanitary preparations for medical purposes serve hygienic purposes in the healthcare sector, in hospitals, consulting rooms, etc. As such, they have little in common with the earlier mark’s nutritional additives, dietetic supplements for oral use, dietetic supplements for oral use for skin care and protein complexes of natural origin. Whilst the earlier mark’s goods have medical and nutritional purposes the contested goods are sanitary preparations used to provide a clean environment and stopping the spread of harmful agents such as bacteria through items such as soaps and disinfectants. Thus the origin, nature and intended purpose of the goods under comparison are different. They are not produced by the same or related undertakings and they are neither complementary nor in competition with each other. Consequently, the goods under comparison are considered to be dissimilar.

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 similar are directed at the public at large and at professionals in the field of healthcare. Medical professionals have a high degree of attention when prescribing or recommending the relevant goods. The general public also have a higher degree of attention, regardless of whether the relevant goods are sold with or without prescription, as these goods affect their state of health (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).

Given that the general public is more prone to confusion, the examination will proceed on this basis.

3. The signs

PRIMAK
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.

The words ‘PRIMAK’ and ‘PRIMA’ – included in the signs under comparisons – do not exist as such in certain languages, for example in French. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the public.

The term ‘PRIMAK’ is the only element of the earlier word mark. It is a meaningless, fanciful word, and it has an average degree of distinctiveness in relation to the relevant goods.

The contested mark is a figurative mark. It contains a verbal element ‘PRIMA’ written in quite standard bold uppercase typeface. Although it includes the root ‘PRIM’ which is used in words such as the adjective ‘primaire’ or the verb ‘primer’ which have connotations of being ‘first’ in importance, in rank or in time, the word ‘PRIMA’ as such does not exist in French and the possibility of an association with the abovementioned words/meanings is too remote to affect the distinctiveness of the element ‘PRIMA’. Therefore, from the perspective of the French-speaking part of the public, the word ‘PRIMA’ is distinctive to an average degree in relation to the relevant goods.

Furthermore, the registered trade mark symbol, ®, placed next to the word element ‘PRIMA’, is an informative indication that the sign is purportedly registered and is not part of the trade mark as such. Consequently, it will not be taken into consideration for the purposes of comparison.

Finally, the figurative element represents a rainbow and will be perceived as such by the relevant public. Since it has no relation to the relevant goods, its distinctiveness is considered to be average.

The Opposition Division recalls 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 verbal element of the contested mark is considered to have a greater impact on the consumers than the figurative device.

Given the size and position of the word ‘PRIMA’ and the rainbow device, it is considered that the contested mark has no element that could be considered clearly more dominant.

Visually, the signs coincide in the letters ‘PRIMA’ that compose the only verbal element of the contested sign and almost the entire earlier mark. The signs differ in the last letter ‘K’ of the earlier mark, a slight stylisation of the word element and the figurative device of the contested sign. Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘PRIMA’, present identically in both signs. The pronunciation differs in the additional consonant ‘K’ at the end of the earlier mark, which has no counterpart in the contested mark. Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Since the earlier mark has no meaning for the relevant public, while the contested sign will be associated with the meaning of its figurative element, the signs are not conceptually similar.

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 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.

5. Global assessment, other arguments and conclusion

The goods are partly similar and partly dissimilar. The signs are visually similar to an average degree and aurally similar to a high degree on the account of the coinciding letters ‘PRIMA’ that constitute the only verbal element of the contested sign and five out of six first letters of the earlier mark. The signs are not similar conceptually. However, it should be noted that this conceptual difference is due to the presence of a figurative element in the contested mark, which – as stated above – has a lesser impact on the consumer than the verbal element. Furthermore, the earlier mark has a normal degree of distinctiveness.

Consequently, the similarities between the signs are sufficient to counteract the differences between them. The only different letter at the end of the earlier mark may be easily overlooked, because even consumers who pay in the present case 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). Therefore, although the contested mark contains an additional figurative element, the Opposition Division finds that there is a risk that the relevant French-speaking general public may confuse the origin of the conflicting goods.

In its observations, the applicant argues that the earlier trade mark coexists on the market with other trade marks that include the element ‘PRIMA’ and are registered for goods in Class 5. In support of its argument the applicant refers to three European Union trade mark registrations. 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 and that their coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public. Furthermore, the list of three trade mark registrations filed by the applicant neither demonstrates that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element ‘PRIMA’ which might be an indication of dilution of its distinctive character. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict. Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, there is a likelihood of confusion on the part of the French-speaking part of the general 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 and 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 European trade mark registration No 8 850 241 ‘PRIMAK’. It follows that the contested trade mark must be rejected for the goods found to be similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods 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 will decide a different apportionment of costs.

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

The Opposition Division

Cynthia DEN DEKKER

Zuzanna STOJKOWICZ

Carmen SÁNCHEZ PALOMARES

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.