OPPOSITION DIVISION
OPPOSITION No B 2 812 751
Chinoin Gyógyszer és Vegyészeti Termékek Gyára Zrt., Tó utca 1-5, 1045
Budapest, Hungary (opponent), represented by Danubia Szabadalmi és Jogi Iroda
Kft., Bajcsy-Zsilinszky út 16., 1051 Budapest, Hungary (professional representative)
a g a i n s t
Tianyin Biotechnology Co., Ltd., Sanying Road, Technology Industrial Zone, Zibo
City, Shandong Province, People’s Republic of China (applicant), represented by
Zhaoffice SPRL, rue de Bedauwe 13, 5030 Gembloux, Belgium (professional
representative).
On 23/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 812 751 is upheld for all the contested goods.
2. European Union trade mark application No 15 534 613 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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 15 534 613 for the word mark ‘LUTEXIN’, namely against all the
goods in Class 5. The opposition is based on Hungarian trade mark registration
No 115 748 for the word mark ‘LIBEXIN’, registered for goods in Class 5. 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 2 812 751 page: 2 of 5
a) The goods
The goods on which the opposition is based are the following:
Class 5: Anti-cough medicines.
The contested goods are the following:
Class 5: Dietetic substances adapted for medical use; dietetic foods adapted for
medical purposes; nutritional supplements; protein supplements for animals; albumin
dietary supplements; dietetic beverages adapted for medical purposes; medicinal
tea; vitamin preparations; fibre (dietary -); mineral food supplements.
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 medicinal tea and the opponent’s anti-cough medicines may have to
some extent the same methods of use and relevant purpose as hot drink
preparations used as a common cough remedy. To that extent, these goods are
highly similar. They may have the same relevant publics, distribution channels and
producers.
In principle, dietetic substances and food supplements adapted for medical use are
substances prepared for special dietary requirements, with the purpose of treating or
preventing disease. Bearing this in mind and contrary to what the applicant states,
their purpose is similar to that of pharmaceutical products (substances used to treat
disease) insofar as they are used to improve a patient’s medical condition. The
relevant public is the same and the goods generally have the same distribution
channels. Therefore, the contested dietetic substances adapted for medical use;
dietetic foods adapted for medical purposes; nutritional supplements; albumin dietary
supplements; dietetic beverages adapted for medical purposes; fibre (dietary -) and
mineral food supplements are considered similar to a low degree to the opponent’s
anti-cough medicines, deemed to be medicines for curing or preventing coughs.
Likewise, the contested vitamin preparations are also considered similar to a low
degree to the opponent’s goods, since they may contain substances for improvement
of a medical condition such as a cough and, therefore, may be used as medical
preparations, which have the same distribution channels and relevant publics.
Taking into account the above findings, as well as the fact that the opponent’s goods
are not exclusively limited to the treatment of human diseases and disorders, they
may also have some degree of similarity to the contested protein supplements for
animals. Even though the goods may differ in their relevant publics and distribution
channels, they still may have some commonalities in their natures, methods of use
and relevant purposes. Therefore, they are similar to a low degree.
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.
Decision on Opposition No B 2 812 751 page: 3 of 5
In the present case, the goods found to be similar to different degrees are directed at
the public at large, as well as at a professional public with specific professional
knowledge or expertise in the medical and veterinary fields.
It is apparent from the case-law that, insofar as pharmaceutical preparations,
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
LIBEXIN
Earlier trade mark Contested sign
The relevant territory is Hungary.
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).
Both verbal elements ‘LIBEXIN’ and ‘LUTEXIN’ have no meaning for the relevant
public and are, therefore, distinctive.
Visually and aurally, the signs coincide in the string of letters/sounds ‘L*EXIN’. They
differ in their second and third letters/sounds, namely ‘IB’ in the earlier mark and ‘UT’
in the contested sign. However, account must be taken of the fact that the earlier
mark, a word mark, and the contested sign, a figurative mark with minor stylisation,
both have with the same number of letters in total (seven). Furthermore, they have
identical first letters, ‘L’, and endings, ‘EXIN’. With regard to their endings, it has to be
borne in mind that the Hungarian consumer will perceive the letter ‘X’, contained in
the endings of the signs, as rather unusual and striking. Therefore, although placed
in a less prominent position in the signs (at the end), these visual and aural
commonalities will still have a significant impact on the overall visual and aural
perception of the signs. Therefore, for all the reasons given above, the signs are
considered visually and aurally similar to an average degree.
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.
Decision on Opposition No B 2 812 751 page: 4 of 5
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 goods are similar to various degrees and the degree of attention is considered
rather high, as products that affect human or animal health are concerned. The
earlier mark enjoys a normal degree of distinctiveness.
As established above, the signs are visually and aurally similar to an average degree
to the extent that they coincide in five out of a total of seven letters, namely ‘L*EXIN’.
Furthermore, as has been previously stated, the letter ‘X’ in the endings of the signs
will specifically catch consumers’ attention because it is uncommon in Hungarian.
Although this letter is contained in the endings, ‘EXIN’, it cannot be excluded that
these coinciding strings may be remembered more clearly than other parts of the
signs. Furthermore, 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). In the present case, it also has to be borne in mind that both
signs exclusively consist of verbal elements (with minor stylisation of the contested
sign) with no particular meaning that will help the relevant consumer differentiate
between them.
In addition, 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
principle of interdependence also applies to the goods found to be similar to a low
degree, as the visual and aural similarities between the signs in question are still
overwhelming.
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 Hungarian
trade mark registration No 115 748. It follows that the contested trade mark must be
rejected for all the contested goods.
Decision on Opposition No B 2 812 751 page: 5 of 5
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
Judit NÉMETH Manuela RUSEVA Marzena MACIAK
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.