OPPOSITION DIVISION
OPPOSITION No B 2 795 824
Merck Sante (société par actions simplifiée), 37, rue Saint Romain, 69008 Lyon,
France (opponent), represented by Best Rechtsanwälte PartmbB, Hostatostr.26,
65929 Frankfurt am Main, Germany (professional representative)
a g a i n s t
Willingsford Ltd., NFEC, Rushington Business Park Chapel Lane, Southampton
SO40 9LA, United Kingdom (applicant).
On 14/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 795 824 is upheld for all the contested goods.
2. European Union trade mark application No 15 693 013 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
Preliminary remark
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against all the goods of European Union trade mark
application No 15 693 013 ‘ACAPSIL’. The opposition is based on European trade
mark registration No 1 164 870 ‘APAISYL’. 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.
Decision on Opposition No B 2 795 824 page: 2 of 6
a) The goods
The goods on which the opposition is based are the following:
Class 3: Soaps; essential oils, cosmetics.
Class 5: Pharmaceutical products.
The contested goods are, after limitation, the following:
Class 5: Wound care product for the treatment of or use in the treatment of acute
and chronic wounds, ulcers and burns with the product being a wound dressing
which removes or reduces, or supports the body and the immune system in
reducing, wound exudate, necrosis, slough, pus, pain, oedema, inflammation,
maceration, odour and infection and critical colonisation caused, among others, by
fungi, viruses and bacteria, including antibiotic resistant strains; which disrupts
biofilm; and which actions support wound cleaning and wound healing.
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 goods consist on a piece of material used to cover or protect a wound.
It is intended for the treatment and the healing of wounds (anti-infective, anti-
inflammatory and antibacterial) which have their origin on bacteria or viruses.
A pharmaceutical product, generally speaking, refers to any kind of medicine, that is
to say, a substance or combination of substances for treating or preventing diseases
in human beings or animals.
In its observations, the applicant states that the earlier goods are drugs whereas the
contested goods are medical devices. There are implications for the types of disease
and conditions that can be addressed by these product classes and for their
requirement for regulatory approval. Therefore, the goods are different since their
therapeutic sub-categories are not interchangeable and the goods are not in
competition. It adds that the earlier products are liquids, creams and gels. In support
of its arguments, the applicant filed some extracts.
First of all, it has to be noted that the comparison of the goods and services must be
based on the wording indicated in the respective lists of goods/services. Any actual
or intended use not stipulated in the list of goods/services is not relevant for this
comparison since it is part of the assessment of likelihood of confusion in relation to
the goods/services on which the opposition is based and against which it is directed;
it is not an assessment of actual confusion or infringement (judgment of 16/06/2010,
T-487/08, Kremezin, EU:T:2010:237, § 71).
In support of its arguments, the applicant quotes a judgement of the General Court,
namely, judgement 18/06/2008, T-331/09, 15/12/2010, T-331/09, Tolposan,
EU:T:2010:520, § 36, 38, 41. This previous case referred to by the applicant is not
relevant to the present proceedings since the judgement compared specific
pharmaceutical products such as analgesics for soothing pain, in particular
headaches covered by the earlier mark with products to treat muscle aches by
relaxing muscles for which registration was applied for. However, in the present case,
the goods under comparison refer, on one hand, to the broad category of
Decision on Opposition No B 2 795 824 page: 3 of 6
pharmaceutical products (earlier mark) and, on the other, to specific wound care
products (contested goods). Therefore the situation as regards the goods is not
comparable.
Moreover, although the Court concluded that the goods at issue came within different
sub-categories of medicines and that they were not in competition with each other
(interchangeable), the judgement stated that the Boards of Appeal did not err in
holding that the goods at issue were at most slightly similar.
In the present case, the contested wound care product for the treatment of or use in
the treatment of acute and chronic wounds, ulcers and burns with the product being
a wound dressing which removes or reduces, or supports the body and the immune
system in reducing, wound exudate, necrosis, slough, pus, pain, oedema,
inflammation, maceration, odour and infection and critical colonisation caused,
among others, by fungi, viruses and bacteria, including antibiotic resistant strains;
which disrupts biofilm; and which actions support wound cleaning and wound healing
is similar to the opponent’s pharmaceutical products since they have the same
purpose, are distributed through the same channels and are addressed at the same
relevant public. Even if they are not interchangeable or in competition, there are other
factors (i.e. curing and healing) that render the goods under comparison similar.
Therefore, the applicant’s claim must be rejected as unfounded.
b) 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 are directed at the public at large
and at business customers with specific professional knowledge or expertise.
It is apparent from the case-law that, insofar as pharmaceutical preparations,
including wound care products, whether or not issued on prescription, are concerned,
the relevant public’s degree of attention is relatively high (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.
c) The signs
APAISYL ACAPSIL
Earlier trade mark Contested sign
The relevant territory is the European Union.
Decision on Opposition No B 2 795 824 page: 4 of 6
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.
The elements ‘APAISYL’ and ‘ACAPSIL’ included in both signs respectively are not
meaningful in certain territories, for example, in those countries where Spanish and
English is understood. Consequently, the Opposition Division finds it appropriate to
focus the comparison of the signs on the Spanish and English-speaking part of the
public.
Both marks are word signs which consist of one single element, ‘APAISYL’ in the
case of the earlier mark and ‘ACAPSIL’ in the contested sign. Neither ‘APAISYL’ nor
‘ACAPSIL’ included in the earlier and in the contested sign respectively has a
meaning for the relevant public and they are, therefore, distinctive.
None of the marks has any element that could be considered clearly more dominant
or more distinctive than other elements.
Visually, the signs coincide in their sequence of letters ‘A*A*S*L’ however, they differ
in their second letters ‘P’ and ‘C’, ‘ fourth letters ‘I’ versus ‘P’ and in their sixth letters
‘Y’ and ‘I’. Therefore, the signs are visually similar to an average degree.
Aurally, irrespective of the different pronunciation rules in different parts of the
relevant territory, the pronunciation of the signs coincides in the sound of the
letters /A*A*SY(I)L/ since the letters ‘Y’ and ‘I’ are pronounced identically. The
pronunciation differs in the sound of their second letters /p/ and /c/ and in their fourth
letters /i/ versus /p/. Both marks contain seven letters, of which five ‛A*A*SY(I)L’ are
placed in the same position and following the same sequence. Therefore, their
rhythm and intonation is the same. Consequently, the signs 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.
In its observations, the applicant states that the ending ‘-SYL’ of the earlier mark
originates from the medical vocabulary meaning together. However, it is highly
unlikely that the relevant public, including doctors, will artificially split the earlier mark
into ‘APAI’ and ‘SYL’ and recognise the ending ‘SYL’ as meaning together.
Moreover, the applicant also argues that the contested sign ‘ACAPSIL’ refers to
Absorption and Capillary action and the main component SILica. However, it is very
unlikely that the relevant public will immediately make this connection and attribute
those meanings to the contested sign. The applicant’s claims are therefore rejected
as unfounded.
Decision on Opposition No B 2 795 824 page: 5 of 6
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) 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.
e) Global assessment, other arguments and conclusion
The Court has set out the essential principle that evaluating likelihood of confusion
implies some interdependence between the relevant factors and, in particular, a
similarity between the marks and between the goods. Therefore, a lesser degree of
similarity between the goods 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).
The goods are similar and the earlier mark has as a normal degree of distinctive
character.
Taking into account especially the fact that the signs coincide in the sequence of
letters ‘A*A*SY(I)L’ placed in the same order, producing the same rhythm and
intonation when pronounced, it is considered that the visual and phonetic similarities
between the signs are enough to counteract the dissimilarities. The mere presence of
the middle letters in each sign is not sufficient to counteract that the signs are similar
and that there is a likelihood of confusion even for the public with a high degree of
attention.
In addition, the Opposition Division notes that the likelihood of confusion includes the
likelihood of association, in the sense that the public may, if not confuse the two signs
directly, believe that they come from the same undertaking or from economically
related ones (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 16). In the present
case, the consumer may easily conclude that the goods labelled and offered under
the contested sign come from the same or from an economically-linked undertaking
as the earlier mark.
Considering all the above, there is a likelihood of confusion on the part of the
Spanish and English-speaking part of the public. 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 European
Union trade mark registration No 1 164 870. It follows that the contested trade mark
must be rejected for all the contested goods.
Decision on Opposition No B 2 795 824 page: 6 of 6
COSTS
According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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
Ana MUÑIZ RODRIGUEZ Carmen SANCHEZ
PALOMARES
Elisa ZAERA CUADRADO
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been 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 Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.