OPPOSITION No B 2 676 891

Chiesi Farmaceutici S.P.A., Via Palermo, 26 A, 43122 Parma, Italy (opponent), represented by Giambrocono & C. S.P.A., Via Rosolino Pilo, 19/b 20129 Milano, Italy (professional representative)

a g a i n s t

Apeiron Biologics AG, Campus-vienna-biocenter 5, 1030 Wien, Austria (holder), represented by Sonn & Partner Patentanwälte, Riemergasse 14, 1010 Wien, Austria (professional representative).

On 20/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 676 891 is upheld for all the contested goods.

2.        International registration No 1 252 785 is entirely refused protection in respect of the European Union.

3.        The holder bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods of international registration designating the European Union No 1 252 785. The opposition is based on European Union trade mark registration No 11 559 011. 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:         Pharmaceutical preparations and medicinal preparations; dietetic substances adapted for medical use; sanitary preparations for medical purposes; food for babies; plasters, materials for dressings; disinfectants.

The contested goods are the following:

Class 5:         Pharmaceutical and veterinary preparations; diagnostic preparations for medical purposes; sanitary preparations for medical purposes; dietetic substances adapted for medical use.

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 pharmaceutical preparations; sanitary preparations for medical purposes and dietetic substances adapted for medical use are identically contained in both lists of goods.

The contested diagnostic preparations for medical purposes, veterinary preparations are included in the broad category of the opponent’s pharmaceutical preparations. Therefore, they are identical.

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 are directed at the public at large and at professionals of the medical or nutritional fields.

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 or dietetic substances are sold without prescription, as these goods affect their state of health.

3. The signs

INFINIA	INZIMYA
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).

It should be pointed out that an examination of the similarity of the signs must take account of the overall impression produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details (27/06/2012, T-344/09, EU:T:2012:324, Cosmobelleza, §52)

Neither of the signs has a meaning for the relevant public and are, therefore, distinctive.

Visually, in the first place, it must be pointed out that those signs are word signs consisting of a single word. Each of the words consists of seven letters and the same number of syllables, ‘IN’, ‘FI’, ‘NIA’ and ‘IN’, ‘ZI’, ‘MYA’ respectively. Four of the seven letters of which the signs consist are identical and appear in the same order, i.e. ‘IN*I**A’. The elements of similarity between the signs at issue prevail over the elements of dissimilarity arising from the middle letter, namely ‘F’ vs ‘Z’ and the two first letters in the last syllable ‘NI-’ vs ‘MY-’. Due to the same length of the signs, the consumers are less likely to notice differences in the middle and indeed the identical letters give way to a similar overall impression meaning that different letters are not as clearly perceived. This is even more true, as correctly mentioned by the opponent, the letters ‘m’ and ‘n’ look rather alike (02/12/2014, T-75/13, Momarid, EU:T:2014:1017, § 81).

Therefore, the signs are visually similar at least to an average degree.

Aurally, the signs are characterised by the same number of letters, the same number of syllables, the same coinciding vowel sequence ‘I’, ‘I’ and ‘A’ and at least for a majority of the relevant public, the sound of the sixth letter ‘I’ vs ‘Y’ will be similar. It must also be added that their fifth letters ‘N’ and ‘M’ have in common a nasal sound which is not easily distinguished. In light of the foregoing, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the first and the last syllable, the latter for a majority of the relevant public being virtually identical. The pronunciation differs in the sound of the middle letter ‘F’ vs ‘Z’ where the consumer usually focuses less. Therefore, the signs are highly similar in their rhythms and intonations, only differing in the sound of middle letter, they are aurally highly similar.

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 contested goods are identical to the opponent’s goods.

The signs are visually similar to at least an average degree and aurally highly similar. As has been mentioned above in section c) of this decision, the signs have the same length and highly similar rhythms and intonations. The coinciding letters of the signs are placed in the exact same positions. The differences between the signs are not sufficient to differentiate the marks and this is the case for the entire relevant public, even where a higher than average degree of attention is paid. In addition, contrary to the holder’s far-fetched allegations, the Opposition Division considers it reasonable to assume that neither of the signs conveys a specific meaning (or evokes a specific meaning) that could distinguish the signs from each other conceptually.

To sum up, and taking into account the normal degree of distinctiveness of the earlier mark, the differences between the signs are not striking and are not capable of counteracting the strong similarities between them, with the result that the relevant public may believe that the similar goods come from the same undertaking or economically linked undertakings.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay 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).

Considering all the above, there is a likelihood of confusion on the part of the public. Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 11 559 011. It follows that the contested trade mark must be rejected for all the contested goods.

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 holder is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Vanessa PAGE

Klaudia MISZTAL

Saida CRABBE

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.