OPPOSITION No B 2 636 622

Kern Pharma, S.L., pol. Ind. Colon II, Calle Venus, 72, 08228 Terrassa (Barcelona), Spain (opponent), represented by Sugrañes Patentes y Marcas, Calle de Provenza, 304 08008 Barcelona, Spain (professional representative)

a g a i n s t

HSBG Helmuth Schmidt Beteiligungsgesellschaft mbH, Lindenallee 70, 50968 Köln, Germany (holder), represented by CMS Hasche Sigle Partnerschaft Von Rechtsanwälten Und Steuerberatern mbB, Kranhaus 1, Im Zollhafen 18, 50678 Köln, Germany (professional representative).

On 24/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 636 622 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 and services of international registration designating the European Union No 1 242 338. The opposition is based on Spanish trade mark registration No 3 083 935. 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 and services

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

Class 5: Pharmaceutical preparations for skin treatment.

The contested goods and services are the following:

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

Class 44: Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.

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 3

The contested cosmetics are similar to the opponent’s pharmaceutical preparations for skin treatment, since these products may have the same purpose, namely to treat skin for medical or non-medical purposes. These goods also target the same relevant public, are sold through the same distribution channels and may be produced by the same companies.

The contested essential oils are similar to the opponent’s pharmaceutical preparations for skin treatment, since the contested goods can be used for skin treatment. Therefore, the conflicting goods may have the same purpose and method of use and target the same relevant public.

The contested hair lotions are similar to the opponent’s pharmaceutical preparations for skin treatment, since the contested goods are applied to the skin and can treat, for example, dandruff on the scalp. These goods have, therefore, a similar purpose and method of use and may target the same relevant public.

The contested cleaning preparations are, inter alia, preparations for the personal care of humans or animals, such as body cleaning preparations. These goods are similar to a low degree to the opponent’s pharmaceutical preparations for skin treatment, since the contested goods can be used to clean one’s body, while the opponent’s goods can be used to treat acne and other skin-related diseases (and, therefore, they have a similar purpose). Moreover, these goods have a similar method of use and may be sold through the same distribution channels.

The contested soaps are similar to a low degree to the opponent’s pharmaceutical preparations for skin treatment, since the purpose of these goods is similar: soaps are used to clean the skin and the opponent’s goods are used to medically treat the skin. These goods have, therefore, a similar method of use and are sold through the same distribution channels.

The remaining contested goods in Class 3, namely bleaching preparations and other substances for laundry use; polishing, scouring and abrasive preparations; perfumery; dentifrices, have different purposes from the opponent’s pharmaceutical preparations for skin treatment (i.e. they are not used to treat one’s skin) and differ in nature and method of use from the opponent’s goods. These goods are neither in competition nor complementary. Therefore, they are dissimilar.

Contested goods in Class 5

The opponent’s pharmaceutical preparations for skin treatment are considered identical to the contested pharmaceutical preparations. This is because pharmaceutical preparations for skin treatment are included in the broader category of pharmaceutical preparations.

A pharmaceutical preparation refers to any kind of medicine, that is, a substance or combination of substances for treating or preventing disease in people or animals. The contested veterinary preparations are included in the broader term pharmaceutical preparations. Since the opponent’s pharmaceutical preparations for skin treatment can also be used for skin treatment in animals, these goods overlap with the contested veterinary preparations. Therefore, they are identical.

The contested sanitary preparations for medical purposes are highly similar to the opponent’s pharmaceutical preparations for skin treatment, as these goods may have the same purpose, they target the same relevant public, they can be sold through the same distribution channels and they are produced by the same companies.

Dietetic substances and food supplements adapted for medical use are substances prepared for special dietary requirements, with the purpose of treating or preventing disease. Bearing this in mind, their purpose is similar to that of pharmaceutical products (substances used to treat disease) insofar as they are used to improve a patient’s medical condition. The relevant public coincides and the goods generally have the same distribution channels. Therefore, the contested dietetic food and substances adapted for medical or veterinary use; dietary supplements for humans and animals are considered similar to the opponent’s pharmaceutical preparations for skin treatment.

The contested food for babies is dissimilar to the opponent’s pharmaceutical preparations for skin treatment. These goods have different purposes: the latter are used to treat the skin and the former is used to make sure that babies get proper nutrition. These goods also differ in nature and method of use, and they are neither in competition nor complementary. They target different relevant publics, are sold through different distribution channels and are produced by different companies.

The contested plasters, materials for dressings are similar to the opponent’s pharmaceutical preparations for skin treatment, since these goods have the same purpose, target the same relevant public and are sold through the same distribution channels.

The contested disinfectants are similar to the opponent’s pharmaceutical preparations for skin treatment, since these goods have the same purpose and distribution channels and are produced by the same companies. They also target the same relevant public.

The contested material for stopping teeth, dental wax are dissimilar to the opponent’s pharmaceutical preparations for skin treatment because, although they may be sold in the same outlets, they differ in nature, purpose and method of use and are not in competition or complementary.

The contested preparations for destroying vermin are used to kill organisms such as fleas and bed bugs, which can cause bites and (consequently) medical skin irritations and other problems for human beings and animals. Such goods are therefore similar to a low degree to the opponent’s pharmaceutical preparations for skin treatment, since these goods have the same general medical purpose of improving health. In addition, the use of the contested goods may be complementary to that of the opponent’s skin-treating pharmaceuticals, since the latter may be used to treat ailments of the skin caused by the presence of, or contact with, vermin. Furthermore, the goods under comparison may be sold through the same distribution channels (e.g. pharmacies).

The contested fungicides, herbicides are dissimilar to the opponent’s pharmaceutical preparations for skin treatment, since these goods differ in nature, purpose and method of use, are not in competition and are not complementary. Moreover, they target different relevant publics, are sold in different outlets and are produced by different companies.

Contested services in Class 44

The contested medical services consist of medical treatment activities that provide direct benefits to individuals, that is, they involve the actual care provided by medical professionals. These services are dissimilar to the opponent’s pharmaceutical preparations for skin treatment in Class 5. Although the opponent’s goods may have the same purpose as medical services related to skin care, and may be used for medical skin care treatment, these goods and services have different natures and methods of use, they are not in competition or complementary, they are not distributed through the same distribution channels and they are not produced or provided by the same undertakings. It is unlikely that the professional providing the relevant services will also develop and market the opponent’s goods.

The contested hygienic and beauty care for human beings or animals is dissimilar to the opponent’s pharmaceutical preparations for skin treatment in Class 5. Although these goods and services have, to a certain extent, the same purpose (to treat skin), the opponent’s goods have a medical purpose and differ from the contested goods in relevant public, distribution channels and origin. Moreover, they have different natures and methods of use and are neither in competition nor complementary.

The contested agriculture, horticulture and forestry services have a completely different nature, purpose and method of use from the opponent’s pharmaceutical preparations for skin treatment in Class 5. These goods and services are, furthermore, not in competition or complementary, they target different relevant publics, they are not sold through the same distribution channels and they are not produced or offered by the same companies. Therefore, they are 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 identical or similar to various degrees are directed at the public at large and at a more specialised public with specific knowledge and expertise, such as medical professionals and pharmacists.

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 Court has confirmed that the degree of attention is also higher than average for all goods in Class 5, including food for babies and nutritional supplements (10/02/2015, T-368/15, EU:T:2015:81, § 46).

The degree of attention is considered average for the relevant goods in Class 3.

3. The signs

DESPIGMENTAL	Pigmentol
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).

Both signs are word marks.

The signs will be perceived by the Spanish public as alluding to ‘pigment’ (‘pigmento’ in Spanish), which is weak for the relevant goods, which can, for example, be used to treat skin pigmentation disorders. Nevertheless, considered as a whole, the signs are of normal distinctiveness, although they both contain a weak element.

Visually, the signs coincide in the sequence of letters ‘pigment’, which is placed in between the letters ‘DES’ and ‘AL’ in the earlier mark and at the beginning, as the first seven (out of a total of nine) letters, of the contested sign. Nevertheless, the sequence of letters that the signs have in common will be perceived as a weak element, which has a limited impact on consumers’ perception of the signs. Reference is also made to the fact that the public reads from left to right, which makes the first part of the sign (the initial part) the one that first attracts the attention of the reader. The differences in the signs’ beginnings are therefore evident and will immediately draw the attention of the consumer. Finally, the signs’ penultimate letters (which are vowels) are different. Therefore, the Opposition Division finds the signs to be visually similar to a low degree.

Aurally, the earlier mark will be pronounced in a total of four syllables and the contested sign in three (‘/des/pig/men/tal/‘ and ‘/pig/men/tol/‘). Although the second and third syllables of the earlier mark and the first and second syllables of the contested sign are identical, the signs differ in the earlier mark’s first syllable and in the signs’ penultimate letters. Because of their different beginnings and numbers of syllables, as well as the limited distinctiveness of the elements they have in common, the signs are aurally similar to a low degree.

Conceptually, both signs allude to the weak concept of ‘pigment’. Since the signs coincide in a weak element, the signs are at most conceptually similar to a low degree.

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 a weak element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings constitutes a likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 16).

In the present case, the goods and services are partly identical, partly similar (to various degrees) and partly dissimilar. It is true that the global assessment of the risk of confusion entails a certain interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and the similarity of the goods covered. Accordingly, a low degree of similarity between those goods may be offset by a high degree of similarity between the marks, and vice versa (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 25). However, in the present case, the signs are visually and aurally similar to only a low degree and conceptually similar to (at most) a low degree because they allude to a weak concept.

Therefore, decision of 19/09/2016, R 2031/2015-5, GENTIS, referred to by the opponent, is not relevant in the present case, since the highly similar word element in the abovementioned case did not have any known meaning for the majority of the relevant public. This does not apply to the coinciding element ‘pigment’ in the present case.

In view of the foregoing, the Opposition Division is of the opinion that the differences between the signs offset their similarities, which lie in elements of limited distinctiveness. Therefore, the differences between the signs will enable the relevant consumers to safely distinguish between them and will not lead consumers to associate the goods, even those that are identical, with the same undertaking or economically linked undertakings.

Consequently, there is no likelihood of confusion on the part of the public in the relevant territory. Therefore, 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.

Since the opponent is the losing party, it must bear the costs incurred by the holder 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 holder are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Boyana NAYDENOVA

Christian RUUD

Begoña URIARTE VALIENTE

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.