OPPOSITION No B 2 723 305

Biofarma, société par actions simplifiée, 50, rue Carnot, 92284 Suresnes cedex, France (opponent), represented by Cabinet Plasseraud, 66, rue de la Chaussée d'Antin, 75440 Paris Cedex 09, France ( (professional representative)

a g a i n s t

Serana Europe GmbH, Hollerbach 20, 94501 Aidenbach, Germany (applicant), represented by Jörg Plöhn Olympische, Str. 10, 14052 Berlin, Germany (professional representative).

On 23/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 723 305 is upheld for the all the contested goods and services.

2.        European Union trade mark application No 15 227 051 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods and services of the European Union trade mark application No 15 227 051. The opposition is based on French trade mark registration No 41 04 010. 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 and services

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

Class 5: Pharmaceuticals and veterinary preparations; Sanitary preparations for medical purposes.

Class 10: Surgical and medical apparatus and instruments.

The contested goods and services are the following:

Class 5: Pharmaceutical and veterinary preparations derived from animal and human by-products and man-made formulations.

Class 35: Retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies; distribution of goods (not being transport services) (agent, wholesale, representative services, by any means) all of the aforementioned provided in relation to pharmaceutical and veterinary preparations derived from animal and human by products as well as man-made formulations.

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

The contested pharmaceutical and veterinary preparations derived from animal and human by-products and man-made formulations are included in the broad category of the opponent’s pharmaceuticals and veterinary preparations. Therefore, they are identical.

Contested services in class 35

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

The principles set out above apply to the services rendered in connection with different forms exclusively consisting of activities around the actual sale of goods, such as retail store services, wholesale services, internet shopping etc.

Therefore, the contested retail or wholesale services for pharmaceutical, veterinary and sanitary preparations are similar to a low degree to the opponent’s pharmaceuticals and veterinary preparations; sanitary preparations for medical purposes in Class 5.

The contested retail or wholesale services for medical supplies are considered similar to a low degree to the opponent’s surgical and medical apparatus and instruments in Class 10, taking into account that medical supplies are identical to the above mentioned opponent’s goods since they are included in the broad category of, or overlap with, the opponent’s surgical and medical apparatus and instruments in Class 10.

The contested distribution of goods (not being transport services) (agent, wholesale, representative services, by any means) all of the aforementioned provided in relation to pharmaceutical and veterinary preparations derived from animal and human by products as well as man-made formulations has to be understood as a service offered by a distributor, that in general is authorized by the producer through a distribution agreement, consisting in the sale of the producer’s goods, normally, at wholesale in a particular area. The words in brackets ‘agent, wholesale, representative services, by any means’ are considered as examples of how the distribution can be performed given that the applicant used the wording ‘by any means’ at the end. As seen before, the principles according to which retail services concerning the sale of particular goods are similar to a low degree to those particular goods can apply also to wholesale services. Therefore, this contested service is considered similar to a low degree to the opponent’s pharmaceuticals and veterinary preparations in Class 5.

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 and the services found to be similar to a low degree to the opponent’s goods are directed at both the public at large and professional public.

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

3. The signs

CEDRANA
Earlier trade mark	Contested sign

The relevant territory is France.

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 earlier mark is the word mark ‘CEDRANA’ which has no meaning for the relevant public and is distinctive for the relevant goods. Being a word mark it has no element that could be considered clearly more dominant (visually eye-catching) than other elements.

The contested sign is a figurative mark comprising the verbal element ‘SERANA’ in slightly stylised upper case blue letters, which has no meaning for the relevant public and is, therefore, distinctive for the relevant goods and services. Above the word ‘SERANA’, on the left side, there is a figurative element composed of blue dots of different sizes converging in one central dot that can be perceived by a part of the public as a star shape and by another part just as an abstract composition of dots. It is considered distinctive, being not descriptive or allusive in relation to the relevant goods and services. 

Below the verbal element, there is the word ‘Europe’ in standard title case yellow letters, which due to its small size, is overshadowed by the word ‘SERANA’ and the figurative element of the contested sign. The relevant public will associate the word ‘Europe’ to the English name of the geographical area of Europe, given its identity with the equivalent French word ‘Europe’. In relation to the relevant goods and services this element is not distinctive since it will be perceived by the relevant public as the geographical origin of the goods and services or as the market where the goods and the services are sold/offered.

The contested sign includes, also, the registered trade mark symbol, ®. This is an informative indication that the sign is purportedly registered and is not part of the trade mark as such. Consequently, this will not be taken into consideration for the purposes of comparison.

Visually, the signs coincide in the sequence of letters ‘*E*RANA’, present in the same order in both marks. They differ in their first letters (‘C’ versus ‘S’) and in the additional third letter ‘D’ of the earlier mark. In total, the earlier sign and the contested sign have five out of seven and six letters, respectively, in common. They also differ in the slight stylisation of the letters, in the verbal element “Europe“ and in the figurative element of the contested sign, none of which has any counterparts in the earlier mark. However, the stylisation of the letters is minimal and the verbal element has a very limited impact given its lack of distinctiveness and limited size.

With regard to the abovementioned figurative element account must be taken of the fact that in signs that include verbal and figurative elements, as the contested sign does, the word component will usually have a stronger impact on consumers. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘*E*RANA’, present identically in both signs and in the sound of the first letters, ‛C/S’, of the earlier mark and the contested sign, respectively, since both these consonants have the same pronunciation in French when placed before a vowel. The pronunciation only differs in the sound of the third letter ‘D’ of the earlier sign, which has no counterpart in the contested mark, and in the sound of the word ‘Europe’ of the contested sign, that probably will not be pronounced by the public for its small size and that, in any case, will have a very limited impact due to its lack of distinctiveness.

Therefore, the signs are aurally similar to a high degree.

Conceptually, bearing in mind the above considerations regarding the meanings attributed by the relevant consumers to the elements of the marks, one of the signs (the earlier sign) will not be associated with any meaning, while the contested sign will be associated with the concepts related to the figurative element (for that part of the public that will perceive it as a star shape), and to the word ‘EUROPE’. Therefore 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.

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 goods at issue have been found to be identical. The services have been found to be similar to low degree the opponent’s goods. The signs are visually similar to an average degree and aurally similar to a high degree. The signs are not conceptually similar, but this latter aspect needs to be put in the context of the elements creating the differences being less dominant, non-distinctive or less relevant. The degree of attention is relatively high.

Because the signs coincide in the sequence of letters ‘*E*RANA’, present in the same order in both marks and their differing first letters ‘C’/‘S’ have the same sound, the signs create a similar overall impression.

The signs also differ in the third letter ‘D’ of the earlier mark and in the slight stylisation of the letters, the verbal (Europe) and the figurative element of the contested sign. However, as explained in the section c), these elements of the contested sign play a lesser role in the overall assessment of the similarity, and the fact that the signs are not conceptually similar due to these elements should be put into this context, as explained above.

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) and that 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).

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.

It follows that the similar overall impressions created by the marks is likely to lead  consumers, even those displaying a relatively high degree of attention, to confuse the signs and believe mistakenly that the identical goods marketed under the signs come from the same undertaking or from economically linked undertakings.

This is also true for the contested services which have been found to be similar to a low degree to the earlier goods. In this regard, it should be mentioned that a lesser degree of similarity between the goods and/or services may be offset by a greater degree of similarity between the signs and vice versa. Therefore the average degree of visual similarity and the high degree of aural similarity between the signs is sufficient to offset the low similarity of the contested services and to find a likelihood of confusion on the part of the public with regard to these as well.

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 well founded on the basis of the opponent’s French trade mark registration no 41 04 010.

It follows from the above that the contested trade mark must be rejected for all the contested goods and 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.

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

María Belén IBARRA DE DIEGO

Angela DI BLASIO

Michele M. BENEDETTI – ALOISI

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.