OPPOSITION No B 2 749 425

Biofarm SA, Str. Logofătul Tăutu nr. 99, 031212 Bucuresti, Romania (opponent), represented by Doina Țuluca, Bd. Lacul Tei 56, bl. 19, sc. B, ap, 52, sector 2, 020392 Bucuresti, Romania (professional representative)

a g a i n s t

Welcare Research S.r.l., Via San Giovanni sul Muro 18, 20121 Milano, Italy (applicant), represented by Società Italiana Brevetti S.p.A., Piazza di Pietra, 39, 00186 Roma, Italy (professional representative).

On 29/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 749 425 is upheld for all the contested goods, namely

Class 5: Dietetic substances adapted for medical use; Food for babies; Adhesive bands for medical purposes; Surgical dressings; Material for stopping teeth and for dental impressions; Disinfectants; Preparations for destroying vermin; Fungicides; Herbicides; Absorbent cotton; Adhesive tapes, for medical purposes; Plasters, materials for dressings; Adhesive bands for medical purposes; Sanitary wear; Bandages for dressings; Disinfectants for hygiene purposes; Gauze for dressings; Adhesive bands for medical purposes; Sanitary pants; Napkins; Sanitary pads; Pharmaceutical skin care preparations; Surgical tissues; Surgical dressings, in particular dressings based on calcium alginate and sodium.

2.        European Union trade mark application No 15 365 901 is rejected for all the contested goods. It may proceed for the remaining goods.

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

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 365 901, namely against all the goods in Class 5. The opposition was maintained invariably directed against all the goods in Class 5 following the limitations of the list of goods in Class 5 requested by the applicant on 22/08/2016 and 23/08/2016. The opposition is based on Romanian trade mark registration No 134 022. The opponent invoked Article 8(1)(a) and (b) EUTMR.

DOUBLE IDENTITY — ARTICLE 8(1)(a) EUTMR

Pursuant to Article 8(1)(a) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for will not be registered if it is identical to the earlier trade mark and the goods or services for which registration is applied for are identical to the goods or services for which the earlier trade mark is protected.

Pursuant to Article 8(1)(a) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for will not be registered if it is identical to the earlier trade mark and the goods or services for which registration is applied for are identical to the goods or services for which the earlier trade mark is protected.

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 substances adapted for medical use, food for babies; Dietary supplements, plasters, materials bandaged; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

The contested goods are the following:

Class 5: Dietetic substances adapted for medical use; Food for babies; Adhesive bands for medical purposes; Surgical dressings; Material for stopping teeth and for dental impressions; Disinfectants; Preparations for destroying vermin; Fungicides; Herbicides; Absorbent cotton; Adhesive tapes, for medical purposes; Plasters, materials for dressings; Adhesive bands for medical purposes; Sanitary wear; Bandages for dressings; Disinfectants for hygiene purposes; Gauze for dressings; Adhesive bands for medical purposes; Sanitary pants; Napkins; Sanitary pads; Pharmaceutical skin care preparations; Surgical tissues; Surgical dressings, in particular dressings based on calcium alginate and sodium.

Dietetic substances adapted for medical use, food for babies, material for stopping teeth, disinfectants; preparations for destroying vermin; fungicides, herbicides and plasters are identically contained in both lists of goods.

The contested adhesive bands for medical purposes (indicated three times identically in the English version of the list of goods, listed as ‘impiastri’ two times and ‘bende adhesive per la medicina’ once in the original Italian version) and adhesive tapes, for medical purposes are identical with the opponent’s plasters. Originally, by definition, a plaster was some solid medicinal or emollient substance spread on a bandage or dressing and applied to the skin, often becoming adhesive at body temperature. In later use, the term ’plaster(s)’ refer to adhesive material, especially tape, used to fix bandages or dressings in place; a piece or strip of this. Further, the term may also refer to a small dressing consisting of an absorbent pad attached to a piece of adhesive material, used to cover a superficial wound (information extracted from the Oxford English Dictionary online on 13/06/2017 at http://www.oed.com/view/Entry/
145274?rskey=pUKrI8&result=1&isAdvanced=false#eid).

The contested surgical dressings; absorbent cotton; materials for dressings; bandages for dressings; gauze for dressings; surgical tissues; surgical dressings, in particular dressings based on calcium alginate and sodium overlap with the opponent’s materials bandaged. Therefore, these goods are considered identical.

The contested material for dental impressions overlap with the opponent’s dental wax. Therefore, they are identical.

The contested disinfectants for hygiene purposes are included in the broad category of the opponent’s disinfectants. Therefore, they are identical.

The contested sanitary wear; sanitary pants; napkins and sanitary pads are included in the broad category of the opponent’s sanitary preparations for medical purposes. Therefore, they are identical.

The contested pharmaceutical skin care preparations are included in the broad category of the opponent’s pharmaceutical preparations. Therefore, they are identical.

2. The signs

SINAQUA	SINAQUA
Earlier trade mark	Contested sign

The signs are identical.

3. Conclusion

The signs were found to be identical and the contested goods are identical. Therefore, the opposition must be upheld under Article 8(1)(a) EUTMR for all the contested goods.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(a) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(b) EUTMR.

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 applicant 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

Denitza STOYANOVA-VALCHANOVA

Alexandra APOSTOLAKIS

Martin EBERL

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.