OPPOSITION No B 2 530 759

Cancernova GmbH Onkologische Arzneimittel, Lil-Dagover-Ring 7, 82031 Grünwald, Germany (opponent), represented by Dr. Kunz-Hallstein Rechtsanwälte, Galeriestr. 6A, 80539 München, Germany (professional representative)

a g a i n s t

B. Braun Melsungen AG, Carl-Braun-Str. 1, 34212 Melsungen, Germay (holder), represented by Patentanwälte Ruff, Willhelm, Beier, Dauster & Partner mbB, Kronenstr. 30, 70174 Stuttgart, Germany (professional representative).

On 13/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 530 759 is upheld for all the contested goods.

2.        European Union trade mark application No 13 729 363 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 13 729 363. The opposition is based on, inter alia, international trade mark registration No 1 003 467 designating the European Union. The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK – PROOF OF USE

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based, namely, interalia, international trade mark registration No 1 003 467 designating the European Union.

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent shall furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition shall be rejected.

In the present case the relevant date for the contested international registration (that is, the date of publication pursuant to Article 152(2) EUTMR, which corresponds to the registration date) is 07/04/2011. The contested European Union trade mark application No 13 729 363 was published on 05/03/2015. As five years have not passed, the request for Proof of Use is inadmissible.

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 international trade mark registration No 1 003 467 designating the European Union.

1. The goods

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

Class 5:        Oncologic preparations.

The contested goods are the following:

Class 5:        Medical and pharmaceutical preparations for artificial feeding, other than for use in cancer treatment; Protein, fats, sugar, vitamins, proteins and dyes for dietetic substances for medical purposes, other than for use in cancer treatment; Parenteral preparations and nutrients, namely vitamin preparations; Infusion solutions, other than for use in cancer treatment.

Class 10:        Surgical, medical, dental and veterinary apparatus and instruments, namely devices and containers for artificial feeding, containers filled with nutrient solutions, in particular bag systems, the aforesaid goods other than for use in cancer treatment.

An interpretation of the wording of the list of is required to determine the scope of protection of these goods.

The term ‘namely’ used in the applicant’s list of goods to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

However, the term ‘in particular’ also used in the applicant’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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

In principle, specific pharmaceuticals are considered similar to other specific pharmaceuticals. In the present case, the opponent’s oncologic preparations are considered to be similar to the contested medical and pharmaceutical preparations for artificial feeding, other than for use in cancer treatment; infusion solutions, other than for use in cancer treatment because, although they have different therapeutic indications, they share the same nature both being specific chemical products; their purpose is, broadly speaking, to treat sick patients; they may share the same method of use; they share distribution channels; and they come from the same source, which is the pharmaceutical industry.

The contested protein, fats, sugar, vitamins, proteins and dyes for dietetic substances for medical purposes, other than for use in cancer treatment; parenteral preparations and nutrients, namely vitamin preparations  are substances prepared for special dietary requirements with the purpose of treating or preventing a disease. Bearing this in mind, their purpose is similar to those of oncologic preparations (substances used in the treatment of a disease) insofar as they are used to improve the patient’s health. The relevant public may coincide and these goods generally share the same distribution channels. For the above reasons, these goods are considered to be similar.

Contested goods in Class 10

The contested surgical, medical, dental and veterinary apparatus and instruments, namely devices and containers for artificial feeding, containers filled with nutrient solutions, in particular bag systems, the aforesaid goods other than for use in cancer treatment are similar to a low degree to the opponent’s oncologic preparations. Although their nature is different, their purpose is, broadly speaking, treating sick patients; they are often sold in the same places and they come from the same source, which is the pharmaceutical industry. The relevant public may also coincide as cancer patients may also need to be fed artificially not as part of the cancer treatment.

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 similar to varying degrees are specialised goods directed at medical professionals with specific professional knowledge and expertise and in some cases also at the public at large. In both cases the level of attention will be high.

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.

3. The signs

NAVIN	NAVI
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).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Both signs are word marks made up of single verbal elements, which have no meaning in relation to the goods at issue, and so are distinctive. However the contested sign ‘NAVI’ has an unrelated meaning in German (abbreviation for a GPS navigation system). Consequently, in order to avoid unnecessary reference to this meaning, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

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.

Visually and aurally, the signs coincide in the first four letters ‘N-A-V-I’ which is the contested sign in full, distinctive in relation to the goods at issue. They differ only in the last letter of the earlier mark ‘N’.  

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. This observation can also apply from an aural point of view, the sound at the beginning of the marks first catching the attention of the consumer. Both marks consist of two syllables, the first of which is identical, and share a similar rhythm and phonetic structure.

Given the minimal difference between the signs in the final letter of the earlier sign where it has less impact, it can be concluded that the signs are visually and aurally highly similar.

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

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

In the present case, the goods are similar or similar to a low degree and the signs are visually and aurally highly similar, the conceptual aspect having no influence. The earlier sign has a normal degree of distinctive character and the attention of the average consumer, both general and professional, is high given the type of medical goods in question.

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).

The contested sign is contained in its entirety in the earlier mark. The signs coincide in a distinctive element and the only differentiating feature is the last letter of the earlier sign, where its impact is reduced.

Considering all the above and the high degree of similarity between the signs, there is a likelihood of confusion on the part of the English-speaking section of the public, both general and professional, despite the high level of attention and even for those goods that are similar to a low degree. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 1 003 467 designating the European Union. It follows that the contested trade mark must be rejected for all the contested goods.

As this earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent for which Proof of Use was also requested (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Tobias KLEE

Lynn BURTCHAELL

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.