OPPOSITION No B 2 680 380

Bial Portela & Cª., S.A., Avenida da Siderurgia Nacional, Apartado 19, 4745-457 S. Mame de do Coronado, Portugal (opponent), represented by Durán – Corretjer, S.L.P., Còrsega 329 (Pº de Gracia/Diagonal), 08037 Barcelona, Spain (professional representative)

a g a i n s t

Aristo Pharma Iberia S.L., Solana 26, 28850 Torrejón de Ardoz, Madrid, Spain (applicant), represented by Ryo Rodriguez Oca S.L., Calle Juan Hurtado de Mendoza 9 Apto. 507, 28036 Madrid, Spain (professional representative).

On 03/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 680 380 is partially upheld, namely for the following contested goods:

Class 3:        Cosmetics.

Class 5:         Pharmaceutical preparations; sanitary preparations for medical purposes; oral contraceptives, chemical contraceptives, and contraceptive preparations and products; foods and dietetic substances adapted for medical use; food supplements for human being.

2.        European Union trade mark application No 14 872 675 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 872 675, namely against all the goods in Classes 3 and 5. The opposition is based on European Union trade mark registration No 8 468 571. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely European Union trade mark registration No 8 468 571 for the word mark ‘BIAL-ARISTEGUI’.

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The date of filing of the contested application is 02/12/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 02/12/2010 to 01/12/2015 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods and services on which the opposition is based, namely the following:

Class 3:        Bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices.

Class 5:        Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

Class 42:        Scientific and technological services and research and design relating thereto; industrial analysis and research services.

According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 20/10/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 20/12/2016 to submit evidence of use of the earlier trade marks. On 15/12/2016, within the time limit, the opponent submitted evidence of use.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

The evidence to be taken into account is the following:

• Annex 1: extracts from the handbook ‘Immunotherapy with Allergens’ from 2015, submitted in Portuguese with a partial translation. Bial-Aristegui is given as the publisher and the name of a laboratory in the table concerning allergenic vaccinations available in Portugal.

• Annex 2: a copy of a monograph, which is a summary of publications in various journals brought out by the Department of Research and Development of Bial-Aristegui, together with different entities from Spain and Portugal, in 2014, and a summary of communications on congresses in Brazil, Denmark, Portugal, Spain, the USA, carried out by Bial-Aristegui together with different entities from Spain and Portugal. The publications and communications concern scientific and technological research, tests and analysis in the field of allergens and immunotherapy. The company name ‘Bial-Aristegui’ appears throughout the monograph together with reference to its R&D department which is involved in conducting the abovementioned research. At the end of the monograph is a photograph of some goods together with the signs ‘ALLERGOVAC’ and ‘Bial-Aristegui’ in its figurative version (see Annex 4 below); according to the opponent, these goods are related to immunotherapy.

• Annex 3: copies of the cover pages of monographs, which contain summaries of publications and communications on congresses from 2013 and 2010.

• Annex 4: a copy of an undated catalogue, submitted in Portuguese with a partial translation. According to the catalogue, the company Bial-Aristegui specialises in the production and control of allergenic extracts and the treatment of allergic diseases, along with research into allergology and immunotherapy. The mark is on the labels on the pharmaceutical products shown in the catalogue in the following figurative form: .

• Annexes 5 and 6: numerous invoices, dated between 22/07/2010 and 02/12/2015, issued by the opponent to various entities in Spain and Portugal. Two invoices are dated outside the relevant period. The subjects of the invoices are single units of pharmaceutical preparations for the treatment of allergic diseases, presented in the opponent’s catalogue (see above). The price of the products varies from over EUR 100 to over EUR 200. The mark appears in the heading of the invoices in the figurative form presented above.

• Annex 7: eight undated photographs of the packaging of pharmaceutical preparations and other goods, the identity of which cannot be determined, bearing the mark in the figurative form presented above.

• Annexes 8-13: several copies of promotional pamphlets in Spanish, which, according to the opponent, are dated between 2010 and 2015. The subjects of the pamphlets are pharmaceutical preparations for the treatment of allergic diseases, some of which are shown in the catalogue (see Annex 4). Annex 11 also contains an undated catalogue in Spanish, showing pharmaceutical preparations for the treatment of allergic diseases. The mark appears on the covers of the pamphlets and the catalogue in the figurative form presented above or as follows: . The mark is also visible in the same form in some of the photographs of the products shown in the pamphlets and the catalogue.

• Annex 14: a copy of a catalogue dated 2012. The catalogue concerns pharmaceutical products related to allergies and immunotherapy. The mark appears in the figurative form  throughout the catalogue, mainly in the page headings.

• Annex 15: 15 invoices, 2 of which are dated 02/12/2014 and 03/12/2015, and were issued by Bial-Aristegui Italia to a client in Greece, and 13 of which were issued by the opponent to various entities in Italy, dated between 27/09/2013 and 02/12/2015. The subjects of the invoices are single units of pharmaceuticals shown in the opponent’s catalogue (see Annex 4). The price of the products varies from a few dozen euros to over EUR 200. The mark in the figurative form  appears in the headings of the invoices.

• Annex 16: several printouts of news items from the opponent’s website, dated between 21/06/2012 and 30/06/2014. The news items concern Bial-Aristegui’s contribution to the treatment of allergies and its research and vaccines.

Place of use

The monograph containing media and events references and the invoices, catalogues and pamphlets show that the place of use is the European Union, in particular Spain, Portugal and Italy. This can be inferred from the language of the documents (Spanish and Portuguese) and some addresses on the invoices in Spain, Portugal and Italy. Therefore, the evidence relates to the relevant territory.

Time of use

Most of the evidence is dated within the relevant period, including the numerous invoices, the catalogue from 2012 and the monograph containing media and events references dated 2014. This evidence, along with the covers of similar monographs from 2013 and 2010, show that the mark was used during the entire relevant period, in particular because this documentation deals with pharmaceutical preparations and scientific research which require lengthy testing, controls and approvals, etc.

Extent of use

The documents filed, in particular the invoices and the monograph containing media and events references, supported by the catalogues and pamphlets, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa.

In the present case, the opponent submitted numerous invoices dated within the relevant period. Although the quantity of products sold, as indicated on the invoices, is not high, the invoices show regular and continuous use of the mark in Spain and Portugal, along with supplementary use in Italy and Greece.

Nature of use

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 15(1), second subparagraph, point (a) EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, the use of the earlier mark ‘BIAL-ARISTEGUI’ on the market can be inferred from the product brochures, the packaging of the pharmaceutical products and the invoices on which the sign  or  appears, together with other signs often depicted in larger letters in more central positions (e.g. ‘Allergovac Sublingual Plus’, ‘Allergovac rapid’, ‘Allergovac Polimerizado’, ‘Allergovac duplo’, ‘Allergovac Depot’). The majority of the evidence submitted shows use of the opponent’s mark not on its own, but rather in combination with these other elements.

Consequently, it has to be assessed whether or not the use of the figurative signs ‘BIAL-ARISTEGUI’ together with those additional word elements, in the manner shown in particular in the product brochures, on the packaging and on the invoices, constitutes use of the sign as a trade mark in the form in which it was registered.

First, it has to be assessed whether or not the use of the figurative marks shown above constitutes an acceptable or unacceptable ‘variation’ of the registered word mark ‘BIAL-ARISTEGUI’.

The Opposition Division finds that the slight stylisation of the verbal element ‘BIAL’ does not affect the distinctive character of the mark in the form in which it was registered. The same applies to the additional element ‘AO SERVIÇO DA IMUNOTERAPIA’, which is smaller, placed on the bottom line and non-distinctive for the goods to which the opponent’s evidence relates, since the word ‘immunotherapy’ is similar in the majority of the languages of the European Union (e.g. ‘immunotherapy’ in English, ‘Immuntherapie’ in German, ‘inmunoterapia’ in Spanish, ‘immunoterapia’ in Polish and Slovak, ‘immunterápia’ in Hungarian, etc.). Account is taken of the fact that the additional figurative element (a sequence of green triangular shapes) is not dominant, and that 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). Therefore, the addition of a figurative element does not alter the distinctive character of the registered trade mark.

Second, it has to be evaluated whether or not the mark as used functions as an indication of the commercial origin of the goods at issue.

In this regard, the applicant argues that the invoices prove the sale of the products under another registered trade mark, namely ‘ALLERGOVAC’. The Opposition Division recognises that the additional indications, such as ‘Allergovac Sublingual Plus’ and ‘Allergovac rapid’, serve as trade marks indicating the goods offered by the opponent. However, it is quite common in some market areas for goods and services to bear not only their individual mark, but also the mark of the business or product group (‘house mark’). In these cases, the registered mark is not used in a different form but the two independent marks are used validly at the same time. There is no legal precept in the European Union trade mark system that obliges the opponent to provide evidence of the earlier mark alone when genuine use is required within the meaning of Article 42 EUTMR. Two or more trade marks may be used together in an autonomous way, or with the company name, without altering the distinctive character of the earlier registered trade mark (T-463/12, MB, EU:T:2014:935, § 43).

Since the mark at issue also appears on the invoices and it is clear from the submitted catalogue and pamphlets that the products bearing the mark ‘ALLERGOVAC’ have been sold under the house mark ‘Bial-Aristegui’ at the same time, the Opposition Division considers that the use of the earlier mark with the other trade marks in the way described above will be perceived by the relevant public as two signs being used validly as independent marks at the same time, because these signs are distinctive and equally capable of distinguishing the commercial origin of the relevant goods.

In view of the above, the use of the earlier mark in the manner described above constitutes use of the sign as a trade mark in the course of trade and in a form differing in elements that do not alter the distinctive character of the mark in the form in which it was registered.

Consequently, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR.

Conclusion

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods and services covered by the earlier trade mark.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

According to case-law, when applying the abovementioned provision the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories.

(14/07/2005, T-126/03, Aladin, EU:T:2005:288).

In the present case, the evidence mainly refers to pharmaceutical preparations related to immunotherapy and the treatment of allergic diseases. These goods can be considered to form an objective subcategory of pharmaceutical preparations in Class 5.

Furthermore, the opponent has not submitted any evidence as regards the remaining goods in Classes 3 and 5.

Finally, even though some of the documents concern research and development conducted by the pharmaceutical company ‘Bial-Aristegui’, they are not sufficient to prove use of the earlier mark for services in Class 42. The services for which the earlier mark is registered are scientific and technological services and research and design relating thereto and industrial analysis and research services, which are offered by one party to another and are not in-house services designed to enable a pharmaceutical company to develop and manufacture its own products.

The use must be public, that is to say, it must be external and apparent to actual or potential customers of the goods or services. Use in the private sphere or purely internal use within a company or a group of companies does not amount to genuine use (09/12/2008, C-442/07, Radetzky, EU:C:2008:696, § 22; 11/03/2003, C-40/01, Minimax, EU:C:2003:145, § 37; 09/09/2015, T-584/14, ZARA, EU:T:2015:604, § 33).

The evidence filed by the opponent does not demonstrate that the opponent has provided the abovementioned services to third parties during the relevant period and within the relevant territory. This could be proved, for example, by means of invoices or advertisements showing that the opponent has offered its research services to other companies.

Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for pharmaceutical preparations related to immunotherapy and treatment of allergic diseases in Class 5 and will consider only these goods in its further examination of the opposition.

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 and for which proof of use was shown are the following:

Class 5: Pharmaceutical preparations related to immunotherapy and treatment of allergic diseases.

The contested goods are the following:

Class 3: Perfumery, essential oils, cosmetics, hair lotions.

Class 5: Pharmaceutical preparations; Sanitary preparations for medical purposes; Oral contraceptives, chemical contraceptives, and contraceptive preparations and products; Foods and dietetic substances adapted for medical use; Food supplements for human beings.

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 3

The general categories pharmaceuticals and cosmetics are considered similar. Cosmetics include preparations used to enhance or protect the appearance or odour of the body. Pharmaceuticals on the other hand comprise products, such as skin and hair care preparations, with medical properties. They may have the same purpose as cosmetics. In the present case, the opponent’s goods are pharmaceutical preparations related to immunotherapy and treatment of allergic diseases; however, it is quite common for the use of certain cosmetics to be related to allergies, that is, related to supporting the treatment of the allergic reactions, such as creams that are used for alleviating the symptoms of allergies affecting the skin. To this extent, the goods have the same purpose. Moreover, they have the same distribution channels, since they can be found in pharmacies and other specialised shops. They target the same public and are often manufactured by the same companies. Therefore, they are similar to low degree.

The contested perfumery, essential oils, hair lotions are dissimilar to the opponent’s pharmaceutical preparations related to immunotherapy and treatment of allergic diseases. It cannot be excluded that a certain degree of similarity between the broad category of pharmaceutical preparations and the contested perfumery, hair lotions and essential oils exists; however, the opponent’s goods are specific pharmaceuticals related to immunotherapy and the treatment of allergic diseases. Due to this specification, the opponent’s pharmaceuticals have nothing relevant in common with any of the contested goods in Class 3.

Contested goods in Class 5

The contested pharmaceutical preparations include, as a broader category, the opponent’s pharmaceutical preparations related to immunotherapy and treatment of allergic diseases. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s good.

The contested sanitary preparations for medical purposes are similar to the opponent’s pharmaceutical preparations related to immunotherapy and treatment of allergic diseases. All of these goods are related to the protection of health and to this extent they have the same purpose. They also have the same distribution channels and producers, and target the same end users.

The contested oral contraceptives, chemical contraceptives, and contraceptive preparations and products are specific pharmaceuticals. In principle, specific pharmaceuticals are considered similar to other specific pharmaceuticals. This is because several, if not all, criteria for similarity are usually met: they have the same nature because they are specific chemical products; their purpose is, broadly speaking, healing and/or curing; they are sold in the same places, namely pharmacies; and they come from the same source, which is the pharmaceutical industry. This industry manufactures a wide variety of drugs with various therapeutic indications, something the general public is aware of. Furthermore, their method of use can be the same and they can be in competition with one another (17/11/2005, T-154/03, Alrex, EU:T:2005:401, § 48). However, the degree of similarity found between specific pharmaceuticals may vary depending on their specific therapeutic indications. In the present case, the opponent’s pharmaceutical preparations related to immunotherapy and treatment of allergic diseases are considered similar to the contested oral contraceptives, chemical contraceptives, and contraceptive preparations and products. It is true that their purposes are different and the goods are not in competition or complementary, but they do have the same nature, distribution channels, end users and providers, and they may also have the same method of use.

The contested foods and dietetic substances adapted for medical use and food supplements for human beings are similar to low degree to the opponent’s goods. Dietetic substances and food supplements adapted for medical use are substances prepared for special dietary requirements, very often related to allergies, and their purpose is to treat or prevent disease. Bearing this in mind, their purpose is similar to that of pharmaceutical products related to immunotherapy and treatment of allergic diseases 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. The same applies to supplements, which are taken in addition to food in order to promote health.

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 or similar are directed at the public at large.

Contrary to the opponent’s observations, 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).

Consequently, the degree of attention of the relevant public will vary from average for cosmetics to high for all the goods found to be identical or similar in Class 5, since they are all health-related products.

3. The signs

BIAL-ARISTEGUI	ARISTELY
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. For reasons of procedural economy, the Opposition Division finds it appropriate to focus the comparison of the signs on the Romanian-speaking part of the public, for which neither of the signs has any meaning.

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 a word mark composed of two verbal elements, ‘BIAL’ and ‘ARISTEGUI’, separated with a hyphen.

The contested sign is a word mark made up of a single word, ‘ARISTELY’.

Neither of the signs as a whole and neither of the elements of the earlier mark have a meaning for the relevant public and therefore they are distinctive. Furthermore, since both marks are word marks, they do not have any dominant elements.

Visually, the earlier mark is composed of 13 letters, arranged over 2 words separated by a hyphen, and the contested sign is made up of 8 letters. The signs coincide in the string of six letters ‘ARISTE’, placed at the beginning of the second word of the earlier mark and at the beginning of the contested sign. They differ in the endings (‘GUI’ in the earlier mark and ‘LY’ in the contested sign), and in the additional word ‘BIAL’ and the hyphen of the earlier mark.

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

Aurally, the signs coincide in three syllables, ‘A’, ‘RIS’ and ‘TE’. The sounds of the last letters (‘I’ in the earlier mark and ‘Y’ in the contested sign) are pronounced identically by the relevant public. However, the pronunciation differs in the additional element ‘BIAL’ at the beginning of the earlier mark and the sounds ‘GU’ versus ‘L’ in the last syllables of the signs.

Therefore, the signs are 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.

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. However, in its observations it argues that the earlier mark is highly distinctive because it constitutes an original sign with the ability to distinguish the goods from those of other undertakings.

It is Office practice, when an earlier mark is not descriptive (or is not otherwise non-distinctive), to consider it as having no more than a normal degree of inherent distinctiveness. As indicated above, this degree of distinctiveness can be further enhanced if appropriate evidence is submitted showing that a higher degree of distinctiveness of the earlier mark has been acquired through use or because it is highly original, unusual or unique (26/03/2015, T-581/13, Royal County of Berkshire POLO CLUB (fig.) / BEVERLEY HILLS POLO CLUB et al., EU:T:2015:192, § 49, last alternative).

In the present case, the opponent has not filed any evidence to prove that its mark is highly distinctive. Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Since 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, the Opposition Division finds that its distinctiveness must be seen as normal.

5. Global assessment, other arguments and conclusion

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.

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 goods are partly identical, partly similar to an average or low degree, and partly dissimilar. The signs are visually and aurally similar to an average degree with no conceptual meaning for the relevant Romanian-speaking part of the public.

The earlier mark enjoys a normal degree of distinctiveness and the degree of attention of the relevant public will vary from average to high. However, 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).

The coinciding part of the signs, ‘ARISTE’, is placed at the beginning of the second word of the earlier mark, the first and second words of which are separated with a hyphen. The difference in the endings, ‘GUI’ versus ‘LY’, may be easily overlooked by consumers, since they do not tend to focus on the ends of marks. Therefore, even though the first element of the earlier mark, ‘BIAL’, will not be overlooked, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Romanian-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 8 468 571. 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.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar, even to a low degree, to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Zuzanna STOJKOWICZ

Birgit Holst FILTENBORG

Ioana MOISESCU

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.