OPPOSITION No B 2 661 711

Teva Santé, Société par actions Simplifiée, 110 Esplanade du Général de Gaulle, 92931 La Defénse Cedex, France (opponent), represented by Ladas & Parry LLP, Temple Chambers, 3-7 Temple Avenue, London EC4Y 0DA, United Kingdom (professional representative)

a g a i n s t

Ferrer Internacional, S.A., Gran Vía Carlos III 94, 08028 Barcelona, Spain (applicant), represented by Curell Suñol S.L.P., Via Augusta 21, 08006 Barcelona, Spain (professional representative).

On 21/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 661 711 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 817 341. The opposition is based on European Union trade mark registration No 5 925 111. The opponent invoked Articles 8(1)(b) and 8(5) 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: Fentanyl citrate pharmaceutical preparations for the treatment of pain dispensed on medical prescription.

The contested goods are the following:

Class 5: Pharmaceutical preparations; sanitary preparations for medical purposes; disinfectants.

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 contested pharmaceutical preparations include, as a broader category, the opponent’s fentanyl citrate pharmaceutical preparations for the treatment of pain dispensed on medical prescription. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested sanitary preparations for medical purposes are highly similar to the opponent’s fentanyl citrate pharmaceutical preparations for the treatment of pain dispensed on medical prescription. These goods have the same purpose, i.e. to treat or prevent a disease or health problems, the same distribution channels, target the same public and they are normally manufactured by the same kinds of undertakings.

The contested disinfectants are similar to the opponent’s fentanyl citrate pharmaceutical preparations for the treatment of pain dispensed on medical prescription. These goods have the same distribution channels, target the same public and they may be manufactured by the same kinds of undertakings.

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 or similar target both the public at large and professionals in the medical and healthcare field (26/04/2007, C-412/05 P, ‘TRAVATAN’). Some of the contested goods, such as disinfectants, but also the broad category of the applicant’s pharmaceutical preparations, can include preparations that are relatively cheap and are sold directly to the consumer without prescription, while other goods are more specialised drugs for treating serious health problems, like those of the opponent. 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. The level of attention is rather high.

3. The signs

EFFENTORA	FENT
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 opponent, in its observations of 06/09/2016, points out that the marks contain the ‘FENT’ element, which derives from fentanyl citrate pharmaceutical preparations. Contrary to the opponent’s claim, ‘FENT’ at the most alludes to fentanyl, but it is nevertheless distinctive. In any event the public is not likely to see ‘FENT’ in the earlier mark, because that would require a completely artificial dissection. So, the Opposition Division will proceed on the assumption that ‘FENT’ is distinctive. Consequently, the earlier mark and the contested sign have no element which is clearly more distinctive.

Visually, the signs coincide in the sequence of letters ‘*-*-F-E-N-T-*-*-*’. However, they differ in the first letter ‘E’, the second letter ‘F’ and final letters ‘-O-R-A’ of the earlier mark which have no counterparts in the contested sign. The fact that the first letters are different is important, since they will attract the attention of consumers first. Furthermore, the earlier mark is twice as long as the contested sign.

The length of the signs may influence the perception of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs. The contested sign consists only of four letters and is, therefore, a relatively short mark, whereas the earlier mark consists of nine letters.

Therefore, the signs are visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters /‘*-*-F-E-N-T-*-*-*/, present identically in both signs. The marks differ in the sound of the first letter ‘E’ and the last three letters ‘-O-R-A’ of the earlier mark, which are not shared by the contested sign. The earlier mark is pronounced as /EF-FEN-TO-RA/ in four syllables in contrast to the pronunciation of only one syllable in the contested sign /FENT/. The marks also have a different intonation and rhythm. Therefore, the signs are aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Since the earlier mark will not be dissected, as a whole it will be perceived as meaningless. The word ‘FENT’ of the contested sign at the most alludes to fentanyl. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

As the signs have been found similar (to a low degree) 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’). The examination will proceed on the assumption that the earlier mark has enhanced distinctiveness.

5. Global assessment, other arguments and conclusion

All the contested goods are identical or similar (to various degrees) to the goods of the earlier mark and the degree of attention of the public is rather high.

The signs have been found to be visually and aurally similar to a low degree; conceptually, the marks are not similar.

The Opposition Division has assumed in part d) of this decision that the earlier mark has been extensively used and enjoys an enhanced scope of protection. The examination of likelihood of confusion will, therefore, proceed on the premise that the earlier mark has an enhanced degree of distinctiveness. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore, marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18). However, even assuming that the earlier mark enjoys an enhanced distinctiveness due to extensive use/reputation, the Opposition Division is of the opinion that there is no likelihood of confusion for the reasons explained below.

In the present case, the Opposition Division is of the opinion that the low visual and phonetic similarity between the signs is not enough to lead, in any case, to a likelihood of confusion. Although both signs coincide in the sequence of letters ‘-F-E-N-T-’, the marks still contain significant visual and aural differences.

The marks, taken as a whole, show overall more differences than similarities and the minor visual and phonetic similarities are not strong enough to induce the public to believe that the goods that are sold or offered under the signs come from the same or from economically-linked companies, even more taking into account the higher level of attention of the relevant public, which is less vulnerable to confusion.

Considering all of the above, the Opposition Division finds that there is no likelihood of confusion on the part of the public, including a likelihood of association. Therefore, the opposition must be rejected as far as based on Article 8(1)(b) EUTMR.

Likewise, even assuming that the earlier mark enjoys an enhanced distinctiveness due to extensive use/reputation, the outcome of no likelihood of confusion remains the same. Therefore, it is not necessary to examine the evidence of extensive use/reputation.

As the opposition is rejected as far as it is based on Article 8(1)(b) EUTMR, the Opposition Division will now examine the opposition on the basis of the other ground invoked, namely Article 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist/Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

The marks are only visually and phonetically similar to a low degree. Conceptually, the marks are not similar.

2. Reputation of the earlier trade mark

According to the opponent the earlier trade mark has a reputation in the European Union for fentanyl citrate pharmaceutical preparations for the treatment of pain dispensed on medical prescription in Class 5.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

The contested trade mark was filed on 20/11/2015. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to this date. The evidence must, furthermore, show that the reputation was acquired in respect of the goods in connection with which reputation has been claimed by the opponent.

However, for reasons of procedural economy, the evidence filed by the opponent to prove its claim will not be assessed and the Opposition Division will continue on the assumption that the earlier mark ‘EFFENTORA’ does have a reputation for all the goods on which the opposition is based.

3. The ‘link’ between the signs

As seen above, the earlier mark is assumed to have a reputation and the signs are similar to a certain extent. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 42):

∙        the degree of similarity between the signs;

∙        the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

∙        the strength of the earlier mark’s reputation;

∙        the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

∙        the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

The types of injury referred to in Article 8(5) EUTMR may result from a lesser degree of similarity between the marks in question, provided that it is sufficient for the relevant section of the public to make a connection between those marks, that is to say, to establish a link between them (23/10/2003, C-408/01, Adidas-Salomon and Adidas Benelux, EU:C:2003:582, § 27, 29 and 31; 27/11/2008, C-252/07, EU:C:2008:655,  Intel Corporation, § 57, 58 and 66).

The earlier mark is assumed to have a reputation in the European Union in relation to the following goods:

Class 5: Fentanyl citrate pharmaceutical preparations for the treatment of pain dispensed on medical prescription.

The Court established in the judgment of 12/03/2009, C-320/07 P, ‘NASDAQ/NASDAQ’, § 43, that the types of injury referred to in Article 8(5) EUTMR, where they occur, are the consequence of a certain degree of similarity between the earlier and the later marks, by virtue of which the relevant public makes a connection between those two marks, that is to say, it establishes a link between them, although it does not confuse them. In the absence of such a link in the mind of the public, the use of the later mark is not likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark. According to § 45 of the same judgment, the existence of the link must be subject to an overall assessment taking into account all factors relevant to the circumstances of the case and, in particular, the degree of similarity between the marks at issue, the nature of the goods or services for which the marks at issue are registered, the relevant section of the public, the strength of the earlier mark’s reputation and the degree of the earlier mark’s distinctive character.

The opponent points out that the evidence shows that the mark on which the opposition is based has a reputation. As a result of the repute of the opponent’s earlier trade mark, use of the contested mark would damage the reputation that has been established for the opponent’s earlier mark.

The Opposition Division is of the opinion that the coincidences between the elements ‘EFFENTORA’ and ‘FENT’ are too low and that there are important differences between the opponent’s mark and the contested sign, explained above under the section of likelihood of confusion, c) The Signs, and resumed below, that make it unlikely that the opponent’s mark would enter the consumers’ minds when they see the contested sign, thus making the products labelled with the contested sign more attractive to consumers. Even considering that the contested goods are identical or similar (to various degrees) to those of the opponent, no mental link will be made between the two marks, due to these important differences.

First of all, visually, only the letters ‘FENT’ are reproduced in the earlier mark, which will, however, be seen as a whole without dissecting it. Furthermore, the earlier mark is much longer, starting with the letter ‘E’ and double letter ‘F’ and ending with the letters ‘-O-R-A’, which have no counterpart in the contested sign. Furthermore, the contested sign is a relatively short one in contrast to a long earlier mark.

Phonetically, even though the contested sign is pronounced in the earlier mark, the latter has three more syllables, which are not shared by the contested sign.

Conceptually, the marks are not similar.

Therefore, when encountering the contested sign ‘FENT’, the opponent’s mark ‘EFFENTORA’ would not come to mind when confronted with the contested goods and the consumer would not make any mental link with the ‘EFFENTORA’ mark which has been assumed to be reputed for the goods in Class 5, despite the fact that the contested goods are also considered identical or similar (to various degrees). The way the marks are perceived is too different to make a link, as required under Article 8(5) EUTMR.

Reputation is a requirement for succeeding in an opposition based on Article 8(5) EUTMR, but it is not enough on its own. Even the most famous of brands must submit to the additional requirement that the marks in question be sufficiently similar that consumers are likely to make a connection between the younger mark and the older, reputed mark. Owing to the significant differences between the marks on the visual and aural levels, the Opposition Division is not persuaded that consumers will make the necessary connection in this case.

Therefore, taking into account and weighing up all the relevant factors of the case at hand, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them. Therefore, the opposition is not well founded under Article 8(5) EUTMR and 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.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Martin MITURA

Chantal VAN RIEL

Lucinda CARNEY

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.