OPPOSITION No B 2 790 833

Davi II – Farmacêutica, S.A., Estrada Consigliero Pedroso, no. 71 Edificio D, 6º, Queluz de Baixo, 2730-055 Barcarena, Portugal (opponent), represented by J. Pereira da Cruz, S.A., Rua Victor Cordon, 14, 1249-103 Lisboa, Portugal (professional representative)

a g a i n s t

Novax Pharma Sarl, Le Coronado 20, Avenue de Fontvieille, 98000 Monaco, (applicant), represented by Inlex IP Expertise, Plaza San Cristobal, 14, 03002 Alicante, Spain (professional representative).

On 12/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 790 833 is upheld for all the contested goods.

2.        European Union trade mark application No 15 700 404 is rejected for all the contested goods. It may proceed for the remaining services.

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

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 700 404, namely against all the goods in Class 5. The opposition is based on Portuguese trade mark registration No 127 400. 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

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

Class 5: Pharmaceutical products, pharmaceutical preparations for humans and animals.

The contested goods are the following:

Class 5: Ophthalmic pharmaceutical and ophthalmic veterinary preparations; sanitary preparations for ophthalmic purposes; plasters and materials for dressings specifically for use in connection with ophthalmic conditions and their treatment.

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 ophthalmic pharmaceutical and ophthalmic veterinary preparations are included in the broad category, or overlap with the opponent’s pharmaceutical preparations for humans and animals. Therefore, they are identical.

The contested sanitary preparations for ophthalmic purposes are similar to a high degree to the opponent’s, pharmaceutical preparations for humans and animals as they have the same purpose, and can coincide in producer, relevant public and distribution channels.

The contested plasters and materials for dressings specifically for use in connection with ophthalmic conditions and their treatment and the opponent’s pharmaceutical products can coincide in their general purpose, namely to cure diseases, disabilities or injuries, and they coincide in their consumers and distribution channels. Therefore, they are similar.

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, highly similar and similar are directed at the public at large as well as at business customers with specific professional knowledge or expertise. The degree of attention is high. Indeed, 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 quoted case law).

In particular, medical professionals have a high degree of attentiveness when prescribing medicines. With regard to non-professionals, they also show a higher degree of attention, regardless of whether or not the pharmaceuticals are sold on prescription, as these goods affect their state of health.

3. The signs

DAVI
Earlier trade mark	Contested sign

The relevant territory is Portugal.

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 marks are composed of one distinctive verbal element that has no meaning for the relevant public.

The earlier sign is a word mark. The contested sign is figurative and consists of the verbal element ‘NAVI’, portrayed in stylised blue letters.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. 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; decisions of 19/12/2011, R 233/2011 4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011 5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Visually, both signs consist of four letters. The signs are similar to the extent that they both contain the sequence of letters ‘-AVI’. The marks differ in the stylisation and blue colour of the letters of the contested sign. However, as previously mentioned, the figurative elements have less impact on consumers than the verbal elements. They further differ in their first letters, namely ‘D’ in the earlier sign versus ‘N’ in the contested mark. Although the beginnings of signs generally have more importance than the ends, based on the assumption that the relevant consumers read from left to the right, since three out of four letters of the signs are identical and follow each other in the same order, the signs are considered similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘*-A-V-I’, placed identically in the marks, as their second, third and fourth sounds respectively. The signs are also similar insofar as both marks are pronounced as two syllables containing the same vowel sequence (‘da-vi’ for the earlier sign and ‘na-vi’ for the contested mark); therefore, they have the same rhythm and intonation. The pronunciation differs in the sound of their first letters, namely ‘D’ in the earlier sign and ‘N’ in the contested mark. However, this difference in the pronunciation is not striking, as the differing letters ‘D’ and ‘N’ belong to the same phonetic group, namely the group of alveolar consonants, which are pronounced by putting the tongue against the hard place behind the top front teeth. Therefore, the signs are similar to an average degree from an aural point of view.

Conceptually, as neither of the signs has a meaning for the public in the relevant territory, a conceptual comparison is not possible and the conceptual aspect does not influence the assessment of the similarity of the signs.

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

In the present case, the goods at issue are identical, highly similar and similar and the distinctiveness of the earlier mark is normal.

The signs are visually similar to the extent that they are the same length and both contain the sequence of letters ‘-AVI’. This similarity also determines an overall average degree of aural similarity, resulting not only from the sound of these identical letters, but also from the pronunciation of both signs as two syllables containing the same vowel sequence, which contributes to the signs having the same rhythm and intonation. Apart from the contested sign’s blue, slightly stylized font, the only difference between the marks is confined to a single letter in each sign and, even if these different letters are placed in the first positions of the signs, this is not sufficient to counteract their overall visual and aural similarities.

In this regard, although the beginning of a sign generally has more importance than the end, with regard to the overall impression produced by that sign, this consideration cannot prevail in all cases and cannot, in any event, undermine the principle that an examination of the similarity of the signs must take into account the overall impression produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details (27/06/2012, T-344/09, Cosmobelleza, EU:T:2013:40, § 52).

In addition, neither of the signs conveys a specific meaning that could assist the consumers in distinguishing the signs from each other conceptually.

Finally, account must be 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). This is particularly relevant in the present case considering that there is no conceptual difference between the signs that could deflect the consumer’s attention away from the similar elements of the signs and from their similar overall impression. Furthermore, it is important to note that even consumers with a high level of attention need to rely on their imperfect recollection of trade marks (judgment of 21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

Considering all the above, there is a likelihood of confusion on the part of the relevant public even where a higher than average degree of attention is paid.

Therefore, the opposition is well founded on the basis of the opponent’s Portuguese trade mark registration. It follows that the contested trade mark must be rejected for all the contested goods.

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

Gueorgui IVANOV

Alexandra APOSTOLAKIS

Martina GALLE

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.