OPPOSITION No B 2 710 609

Cristalfarma S.r.l., Via S. G. Cottolengo, 15, 20143 Milan, Italy (opponent), represented by Con Lor S.P.A., Avda Aguilera, 19 – 1ºB, 03007 Alicante, Spain (professional representative)

a g a i n s t

PharmaFGP GmbH, Am Haag 14, 82166 Gräfelfing, Germany (holder), represented by Boehmert & Boehmert Anwaltspartnerschaft mbB – Patentanwälte Rechtsanwälte, Hollerallee 32, 28209 Bremen, Germany (professional representative).

On 29/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 710 609 is upheld for all the contested goods.

2.        International registration No 1 266 601 is entirely refused protection in respect of the European Union.

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

REASONS:

The opponent filed an opposition against all the goods of international registration designating the European Union No 1 266 601 for the word mark ‘Rubax’. The opposition is based on European Union trade mark registration No 7 244 957 for the word mark ‘RUBIS’. 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, inter alia, the following:

Class 5:        Dietary supplements.

The contested goods are the following:

Class 5:        Pharmaceutical and veterinary medical preparations; healthcare products; dietary and nutritional supplements for medical purposes; baby food.

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.

Dietary and nutritional supplements for medical purposes are identically contained in both lists of goods (including synonyms).

The contested healthcare products cover a wide range of goods aimed at maintaining or improving health. To that extent, they include, as a broader category, the opponent’s dietary supplements. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested pharmaceutical and veterinary medical preparations are any kind of medicine, that is, a substance or combination of substances for treating or preventing disease in humans or animals. The opponent’s dietary supplements are substances prepared for special dietary requirements with the purpose of treating or preventing disease in human beings or animals. Bearing in mind that the purposes of these goods are similar insofar as they are used to improve a (human or animal) patient’s medical condition, they have the same relevant public and generally have the same distribution channels; therefore, they are similar.

The contested baby food and the opponent’s dietary supplements have the same main purpose, which is to supply various nutritional substances for growth, maintenance and/or improving babies’ health. Therefore, as they can have identical functions, they are often distributed through the same outlets, such as pharmacies, para-pharmacies and special sections in supermarkets, and they can have the same producers, they are considered 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, most of the goods are directed at the public at large and at business consumers with specific professional knowledge and expertise, such as medical professionals, pharmacists and nutritionists. Others, such as food for babies, are, in principle, everyday consumer products aimed mainly at the general public (13/05/2015, T-169/14, Koragel / CHORAGON, EU:T:2015:280, § 26).

Taking into account that all the relevant goods may have some impact on health, the degree of attention of the relevant public is higher than average. Furthermore, 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

RUBIS	RUBAX
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 earlier sign, ‘RUBIS’, may be perceived as meaningless by part of the relevant public (e.g. the Dutch-speaking public); However, for another part of the public, such as the Spanish and French-speaking (rubis) parts, this word could be perceived as referring to several meanings: a precious stone, an intense purplish-red colour or even a female name. This is because the word ‘rubis’ exists in French and the similar word rubí’ exists in Spanish. Nonetheless, this element has no direct connection with the relevant goods and remains distinctive.

In its observations, the holder argues that the earlier mark has a low degree of distinctiveness because the word ‘RUBIS’ describes the colour of the main ingredient of the goods for which it is registered (i.e. cranberry extract). The Opposition Division does not agree with this argument, as the relationship between the word ‘RUBIS’ and the colour of the main ingredient is not sufficiently immediate and direct.

Several mental steps are required for the association to be made between the word ‘RUBIS’ and the ingredients of the goods for which the mark is registered. Therefore, the holder’s argument regarding the low degree of distinctiveness of the earlier mark must be set aside.

The contested sign, ‘RUBAX’, is meaningless in the relevant territory and has an average degree of distinctive character.

Visually, the signs coincide in the sequence of letters ‘RUB**’ and differ in their fourth and fifth letters, namely ‘I’ and ‘S’ in the earlier mark versus ‘A’ and ‘X’ in the contested sign. Bearing in mind that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark (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) and that the signs have an identical length of five letters, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in the different parts of the relevant territory, the signs coincide in the sound of the letters ‘/RUB**/’, present identically in both signs. The signs have the same number of syllables, two, and they coincide in the first syllable, ‘/RU/’; therefore, their rhythms and intonations are similar. The pronunciation differs in the sound of the signs’ fourth and fifth letters, namely ‛IS’ in the earlier sign versus ‘AX’ in the contested sign. However, the impact of the sound of the letter ‘/X/’ in the contested mark, as opposed to the sound of the letter ‘/S/’ in the earlier mark, is not very significant because these letters are at the ends of the signs and will be pronounced in similar ways in some of the languages of the relevant territory, such as Italian and Spanish.

Therefore, the signs are similar to an average degree.

Conceptually, for the part of the relevant public that does not associate the word ‘RUBIS’ with a meaning, a conceptual comparison is not possible and, therefore, the conceptual aspect does not influence the assessment of the similarity of the signs.

For the part of the public that perceives the earlier mark as having any of the possible meanings given above, as the other sign has no meaning, 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 appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

It has been established in the previous sections of this decision that the contested goods are partly identical and partly similar to the opponent’s goods. They target both the public at large and professionals, with a high degree of attention.

It has also been concluded that the signs are visually and aurally similar to an average degree, whereas the conceptual aspect does not influence the assessment of the similarity of the signs for a part of the relevant public. However, for the part of the relevant public for which the earlier mark has a meaning, the signs are conceptually not similar. 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).

Therefore, for at least the part of the relevant public that perceives both signs as meaningless, the Opposition Division considers that the only difference between the signs, resulting from their last two letters, is not sufficient to counterbalance the overall degree of similarity between them. Therefore, at least part of the relevant public, even with a higher than average degree of attention, may believe that the identical or similar goods come from the same undertaking or at least economically-linked undertakings.

The holder refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the holder are not relevant to the present proceedings. The Opposition Division is of the opinion that the cases referred to by the holder relate to the comparison of signs that had a lower degree of similarity than those in the present case. In particular, the holder refers to two decisions (B 986 960 and B 1 124 272) regarding earlier rights that are national trade marks, whereas, in the present case, the earlier mark is a European Union trade mark. Furthermore, the marks under comparison in the cases referred to by the opponent had differing sequences of last two letters that were more easily distinguishable from a visual and an aural perspective than the sequences of last two letters in the current decision (‘IS’ versus ‘AX’).

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 7 244 957. It follows that the contested international registration No 1 266 601 designating the European Union 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 holder 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

Alexandra APOSTOLAKIS

Carlos MATEO PÉREZ

Saida CRABBE

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.