OPPOSITION No B 2 688 870

Biofarma, société par actions simplifiée, 50, rue Carnot, 92284 Suresnes cedex, France (opponent), represented by Cabinet Germain & Maureau, 31-33 Rue de la Baume, 75008 Paris, France (professional representative)

a g a i n s t

Stada Arzneimittel AG, Stadastr. 2-18, 61118 Bad Vilbel, Germany (applicant), represented by Harmsen Utescher, Neuer Wall 80, 20354 Hamburg, Germany (professional representative).

On 06/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 688 870 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 941 678, namely against all the goods in Classes 5 and 10. The opposition is based on, inter alia, European Union trade mark registration No 10 689 099. 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 10 689 099.

1. The goods

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

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.

The contested goods are the following:

Class 5: Pharmaceutical preparations; veterinary preparations; medicine; sanitary preparations for medical purposes; dietary supplements and dietetic preparations; dietary supplements for humans; dietary supplements for animals; medical and veterinary preparations and articles; infant formula; diagnostic preparations; plasters, materials for dressings; dressings, medical; teeth filling material; dental impression materials; disinfectants; preparations for destroying vermin; fungicides; herbicides.

Class 10: Surgical instruments; medical and veterinary apparatus and instruments; dental apparatus and instruments; medical instruments for application on animal bodies; applicators for medications; medical apparatus for introducing pharmaceutical preparations into the human body; diagnostic apparatus for medical purposes; artificial limbs; artificial eyes; artificial teeth; orthopaedic articles.

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

Pharmaceutical preparations; veterinary preparations; medicine; sanitary preparations for medical purposes; dietary supplements for humans; dietary supplements for animals; medical and veterinary preparations; plasters, materials for dressings are identically contained in both lists of goods (including synonyms).

The contested dietary supplements and dietetic preparations are included in the broad category of the opponent’s dietetic substances adapted for medical or veterinary use. Therefore, they are identical.

The contested infant formula is included in the broad category of the opponent’s food for babies. Therefore, they are identical.

The contested dressings, medical are included in the broad category of the opponent’s materials for dressings. Therefore, they are identical.

The contested diagnostic preparations; medical and veterinary articles are included in or overlap with the opponent’s pharmaceutical preparations and are, therefore, identical.

The contested teeth filling material and the opponent’s material for stopping teeth are synonyms. Therefore, they are identical.

The contested disinfectants; fungicides are similar to a high degree to the opponent’s sanitary preparations for medical purposes, since they have the same purpose, distribution channels, relevant public and producers.

The contested dental impression materials are similar to the opponent’s material for stopping teeth, since they have the same distribution channels, relevant public and producers.

The contested preparations for destroying vermin are similar to the opponent’s pharmaceutical preparations, since they have the same purpose and distribution channels and are complementary.

The contested herbicides are chemicals that are used to destroy plants, especially weeds (information extracted from Collins free online dictionary on 15/05/2017 at https://www.collinsdictionary.com/dictionary/english/herbicide). They do not have the same nature, purpose, producers, distribution channels or relevant public as any of the opponent’s goods and are not complementary to them. Therefore, the contested herbicides are dissimilar to any of the opponent’s goods.

Contested goods in Class 10

The contested dental apparatus and instruments; medical and veterinary apparatus and instruments are highly similar to the opponent’s material for stopping teeth, since they are complementary and have the same purpose, distribution channels, relevant public and producers.

The contested applicators for medications; medical apparatus for introducing pharmaceutical preparations into the human body; medical instruments for application on animal bodies are similar to the opponent’s pharmaceutical preparations, since they can be complementary and have the same producers, distribution channels and relevant public.

The contested artificial teeth are similar to the opponent’s material for stopping teeth, since they can be complementary and have the same producers, distribution channels and relevant public.

The contested surgical instruments; diagnostic apparatus for medical purposes are similar to a low degree to the opponent’s pharmaceutical preparations, since they can be complementary and have the same distribution channels and relevant public.

The contested orthopaedic articles are similar to a low degree to the opponent’s materials for dressings, since they can be complementary and have the same distribution channels and relevant public.

The contested artificial limbs; artificial eyes are prosthetic devices or prostheses that serve as an artificial substitute or replacement for a part of the body. A prosthesis is designed for medical functional or cosmetic reasons or both. The contested artificial limbs; artificial eyes are dissimilar to any of the opponent’s goods, since they are different in nature, purpose, method of use, distribution channels and producers, and they are not complementary to each other.

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.

The goods at issue are directed both at the public at large and at customers with specific professional knowledge or expertise.

It is apparent from the case-law that, insofar as medical, dietary or dental preparations or articles in Class 5 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 preparations. Non-professionals also have a higher degree of attention, regardless of whether the pharmaceuticals or other preparations are sold without prescription, as these goods affect people’s state of health.

A similar reasoning applies for pest control preparations: although they are not issued on medical prescription, they do often require certain certifications to be handed out or are used only by specialised professionals such as exterminators.

With respect to the goods in Class 10, medical professionals have a high degree of attentiveness when selecting or handling medical devices or instruments. Non-professionals using these goods also apply a higher degree of attention, regardless of whether these goods are sold without prescription, as these goods affect their state of health.

3. The signs

SCALIANT	TAVLIANT
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).

For the relevant public of the European Union, neither of the signs has a meaning and the signs are distinctive.

Visually, both signs consist of eight letters, of which the final string, ‘LIANT’, coincides. However, although both signs have ‘A’ among their first three letters, the signs differ in its position and in the other two letters, namely ‘S’ and ‘C’ in the earlier mark and ‘T’ and ‘V’ in the contested sign.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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 the present case, there is no visual resemblance between the differing letters at the beginning of the signs. Contrary to the opponent’s arguments (backed by case-law quotations), this principle is not applicable only in cases where the elements following the beginning of the sign are weak but is rather a general principle in established case-law (15/12/2009, T-412/08, Trubion, EU:T:2009:507, § 40; 25/03/2009 T-109/07, Spa Therapy, EU:T:2009:81, § 30).

Therefore, the signs are visually similar to a below average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in sound of the final string of letters, ‘LIANT’, present identically in both signs. The pronunciation differs, however, in the sounds of their first strings of three letters, namely ‘SCA’ in the earlier mark and ‘TAV’ in the contested sign. The sounds of the string of consonants ‘SC’, on the one hand, and ‘T’ and ‘V’, on the other, create entirely different aural experiences. While ‘SCA’ may be pronounced as /sha/, /ska/ or /sa/, depending on the language of the relevant territory, ‘TAV’ may be pronounced as /taf/, /tab/ or /taw/.

Since ‘SCA’ in the earlier mark and ‘TAV’ in the contested sign will each be the first string of three letters to be heard, they will leave a stronger impression on the listener than the two identical syllables following. Therefore, it is concluded that the signs are aurally similar only to a below average degree.

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. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

In the present case, some of the goods are identical, some are similar to different degrees and some are dissimilar, the signs are visually and aurally similar to a below average degree, and neither of the signs has a meaning for the public in the relevant territory. The attention of the relevant consumer is high and the earlier mark has a normal degree of distinctive character.

Although the signs coincide in their final string of letters, ‘LIANT’, a likelihood of confusion does not exist for consumers, since the signs differ in their first three letters, ‘SCA’ in the earlier mark and ‘TAV’ in the contested sign, where the focus of the attention of the relevant public lies. Both signs are also distinctive and their differences are clearly perceptible. The overall verbal and aural impression caused by the beginning of each sign is such that it eclipses the similarity that comes at the end of the signs, where it has a lower impact.

Considering all the above, and in particular the high degree of attention of the relevant public, there is no likelihood of confusion even where the goods are identical.

With regard to the goods found to be dissimilar, as similarity of goods and services 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.

The opponent has also based its opposition on earlier French trade mark registration No 3 894 753 for the word mark ‘SCALIANT’. Since this trade mark registration is identical to the one which has been compared and covers the same goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

The opponent 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).

In the present case, the previous cases referred to by the opponent, namely Opposition Division decisions 05/07/2016, B 2 544 420, VALDOURO / AZDOURO, and 19/12/2013, B 2 286 162, SUNCLEAR / FINCLEAR, are not relevant to the present proceedings, because they concern different goods and services and in neither case did the Opposition Division establish that there was a heightened degree of attention.

The same holds true for the General Court Judgment cited by the opponent in this respect, 23/01/2014, T-551/12, Rebella, EU:T:2014:30, § 57-58.

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 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 EBERL

Frank MANTEY

Denitza STOYANOVA-VALCHANOVA

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.