OPPOSITION No B 2 756 883
Farminveste-Investimentos, Participações e Gestão, S.A., Travessa de Santa Catarina, 8, 1200-403 Lisboa, Portugal (opponent), represented by J. Pereira da Cruz, S.A., Rua Victor Cordon, 14, 1249-103 Lisbon, Portugal (professional representative)
a g a i n s t
Fundación para la Investigación Biomédica del Hospital Clínico San Carlos, C/Prof. Martín Lagos, s/n 4ª SUR-28040, Madrid, Spain (applicant).
On 19/06/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 756 883 is partially upheld, namely for the following contested goods and services:
Class 9: Software.
Class 42: Computer software design.
2. European Union trade mark application No 15 133 796 is rejected for all the above goods and services. It may proceed for the remaining services.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 133 796. The opposition is based on, inter alia, Portuguese trade mark registration No 329 060. 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 Portuguese trade mark registration No 329 060.
- The goods and services
The goods and services on which the opposition is based are the following:
Class 9: Computer software program.
The contested goods and services are the following:
Class 9: Software.
Class 42: Computer software design.
Class 44: Pharmacy advice.
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 9
The contested software and the opponent’s computer software program are identical, as they are synonyms.
Contested services in Class 42
The contested computer software design is similar to the opponent’s goods, as they can have the same producers and end users. Furthermore, they are complementary.
Contested services in Class 44
Pharmacy advice services do not have any connection with the opponent’s goods. The opponent’s goods in Class 9 have a different nature and purpose and target a different public. They are produced/provided by different undertakings and do not have the same distribution channels. Furthermore, they are not complementary or in competition. Therefore, they are considered to be dissimilar.
- 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, as regards the goods and services in Classes 9 and 42, the relevant consumer, who is a member of the general public, will decide to purchase certain goods and services covered by the marks in question – in particular, those that are expensive or target a particular technological need, such as the design and development of computer software – on the basis of previously gathered information. In those circumstances, the degree of attention of the relevant consumer will be higher than average for those goods and services.
- The signs
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SIFARMA |
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Earlier trade mark |
Contested sign |
The relevant territory is Portugal.
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).
Neither ‘SIFARMA’ nor ‘SysPharma’ has a meaning in Portuguese. However, although signs cannot be artificially dissected, it must be taken into account that, when a sign contains sequences of letters that constitute words, prefixes or suffixes that are known to the public perceiving it, it is likely that the consumers will mentally divide the mark into the recognised terms or familiar parts forming it (e.g. prefixes or suffixes). Furthermore, in the present case, the elements ‘Sys’ and ‘Pharma’ are clearly distinguishable as separate elements because the letter ‘P’ is in upper case. In the contested sign, the element ‘SYS’ will not have any meaning for the Portuguese consumers and ‘PHARMA’ will be associated with ‘pharmacy’, ‘pharmaceuticals’ or pharmacist’ for the majority of the public in the relevant territory, since ‘PHARMA’ is a common English term that has an equivalent word in Portuguese: ‘farmacêutico’.
When signs contain both word and figurative components, the word 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 most readily refer to a sign by its verbal component. Therefore, in the contested sign, although the verbal element ‘SysPharma’ and the figurative element depicting the letters ‘S’ and ‘P’ are both striking in the visual impression, the verbal element is the most important element in the mark.
Therefore, neither of the signs contains elements that could be considered clearly more dominant (visually eye-catching) than other elements.
Visually, the signs coincide in the letters ‘S*ARMA’ and differ in the rest of their letters, ‘IF’ of the earlier mark and ‘YSPH’ of the contested sign. Other differences result from the stylisation, colours and additional elements of the contested figurative mark (the letters ‘SP’ depicted in rather stylised characters).
Therefore, the signs are visually similar to a low degree.
Aurally, the earlier mark will be pronounced as [si-far-ma] and the contested sign as [sis-far-ma], as the letters ‘SP’ in the figurative element will not be pronounced. The second syllables, ‘fa’ versus ‘pha’, will be pronounced identically, as it is reasonable to assume that the Portuguese consumers will understand the English word ‘PHARMA’. The letter ‘Y’ will be pronounced as [i]. The pronunciation of the signs coincides in the sound of the letters ‘SI’/‘SY’ at the beginning and in the sound of the letters ‘FARMA’/‘PHARMA’ at the end of the marks, differing only in the additional ‘S’ of the contested sign.
Therefore, the signs are aurally highly similar.
Conceptually, although the public in the relevant territory will perceive the meaning of the element ‘PHARMA’ of the contested sign, as explained above, the other sign has no meaning in that territory. 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 in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
The goods are identical and the services are partly similar and partly dissimilar.
The aural similarities are overwhelming. The marks both consist of three syllables of which the last two are identical.
It is also well established case-law that the average consumer normally perceives a sign as a whole, and does not examine its individual details (27/06/2012, T-344/09, Cosmobelleza, EU:T:2013:40, § 52) and that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (16/07/2014, T-324/13, Femivia, EU:T:2014:672, § 48).
The differences in the stylistic and figurative effects in the contested sign, although they should not be ignored in the global comparison, are not sufficiently strong to prevent the finding of similarity between the signs.
Even a high degree of attention for some of the goods and services would not eliminate the likelihood that the consumer will think that the contested mark is in some way economically linked to the earlier mark, because of the abovementioned similarities and because the products and services all belong to the same specific field. In this respect, account should be taken of the fact that even consumers with 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), given that they rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and, therefore, the opposition is partly well founded on the basis of the opponent’s Portuguese trade mark registration.
It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical and similar to those of the earlier trade mark. The contested pharmacy advice in Class 44 was 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 services cannot be successful.
The opponent has also based its opposition on the following earlier trade marks: European Union trade mark No 15 127 194 for the figurative mark and European Union trade mark No 15 127 137 for the figurative mark . Both protect the following goods and services in Class 9: recorded computer programs; computer programs for accessing and using the internet; computer programs for webpage design; application software; computer software for document creation, production, conversion, recording, indexing, archiving, printing, displaying, viewing, publishing, transmission, encryption, management, typography and distribution; computer software for database management; computer software for the collection, editing, organizing, modifying, book marking, transmission storage and sharing of data and information; hand-held computer system consisting of operating systems, network software and utility programs; and the following services in Class 42: development of programmes for data processing; computer hardware, software and program design; design, maintenance and updating of computer software; providing information, advice and consultancy services in the field of computer software; project studies (technical -); rental of computers and computer software; rental of web servers; creation and maintenance of websites, for others; design of homepages and websites; designing and creation, creation, customisation, implementation and maintenance of websites for others.
These two earlier rights invoked by the opponent are registered for goods and services that are clearly different from pharmacy advice in Class 44. The opponent’s goods in Class 9 have a different nature and purpose and target a different public. They are produced/provided by different undertakings and do not have the same distribution channels. Furthermore, they are not complementary or in competition. Therefore, the outcome cannot be different with respect to services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those services.
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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
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Erkki MÜNTER |
Birgit FILTENBORG |
Loreto URRACA LUQUE |
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.