OPPOSITION No B 2 690 397

Novartis AG, 4002 Basel, Switzerland (opponent), represented by Akran Intellectual Property SrL, Via del Tritone 169, 00187 Rome, Italy (professional representative)

a g a i n s t

Erbagil, Via Luigi Settembrini 13, 82037 Telese Terme, Italy (applicant), represented by Dimitri Russo S.r.L., Via G. Bozzi 47°, 70121 Bari, Italy (professional representative).

On 12/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 690 397 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 028 616, namely against all the goods in Classes 5 and 10. The opposition is based on, inter alia, European Union trade mark registration No 5 308 200. The opponent invoked Article 8(1)(b) EUTMR.

SUBSTANTIATION – earlier international trade mark registration No 807 364 designating Ireland, Bulgaria, Slovakia, Denmark, Estonia, Hungary, Croatia, France, Slovenia for the word mark ‘VOLTAREN DOLO’.

According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party shall also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

In the present case, the notice of opposition was not accompanied by any evidence as regards the earlier international trade mark registration No 807 364 designating Ireland, Bulgaria, Slovakia, Denmark, Estonia, Hungary, Croatia, France, Slovenia, on which the opposition is based.

On 03/05/2016 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired, after an extension, on 08/11/2016.

The opponent did not submit any evidence concerning the substantiation of the mentioned earlier right.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition shall be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on this earlier right.

In light of the above, the Opposition Division will now proceed with its examination on the basis of European Union trade mark registration No 5 308 200.

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 preparations.

The contested goods are the following:

Class 5:         Dietary supplements and dietetic preparations; pest control preparations and articles; dental preparations and articles; medical and veterinary preparations and articles; hygienic preparations and articles.

Class 10:         Medical clothing; medical and veterinary apparatus and instruments; feeding aids and pacifiers; physical therapy equipment; hearing protection devices; medical furniture and bedding, equipment for moving patients; prosthetics and artificial implants; orthopedic and mobility aids; sex aids.

Some of the contested goods are identical to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark.

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.

The goods at issue are directed both at the public at large and at customers with specific professional knowledge or expertise.

It is apparent from the case-law that, insofar as medical, dietary or dental preparations or articles in Class 5 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 preparations. Non-professionals also have a higher degree of attention, regardless of whether the pharmaceuticals or other preparations are sold without prescription, as these goods affect the people’s state of health.

A similar reasoning applies for pest control preparations; they do often require certain certifications to be handed out or are used only by specialised professionals such as exterminators.

With respect to the goods in Class 10, medical professionals have a high degree of attentiveness when selecting or handling medical devices or instruments. Non-professionals using these goods usually also apply a higher degree of attention, regardless of whether these goods are sold without prescription, as these goods affect their state of health.

3. The signs

VOLTAREN	DOLAREN
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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about the origin due to similarities that pertain solely to non-distinctive elements.

The Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (judgment of 13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).

In the present case, neither of the signs as such has a meaning for the relevant public and are, therefore, distinctive. However, the opponent argues that the element ‘DOLA-’ of the contested sign will be perceived as the common prefix referring to physical pain. To this extent, the Opposition Division concurs with the opponent that said prefix will be understood by part of the relevant public as it is close to the equivalent of the Italian word dolore, French word douleur and Spanish word dolor. Therefore, it is indeed likely that the professional public and part of the general public will perceive such reference and this part of the sign is, therefore, weak for that public, at least in relation to some of the goods, such as medical preparations, because it indicates the condition to be treated, namely pain. Nonetheless, the same does not hold true necessarily for the entire general public, especially those speaking non Latin-based languages. Therefore, this part of the public will perceive the sign as a whole, since the components of the sign do not suggest a specific meaning or resemble words known to them. For this part of the public the word ‘DOLAREN’ which forms the contested sign will not be dissected and has a normal degree of distinctiveness.

Consequently, in order to assess the case in the light which is more favourable to the opponent (while, as will be seen below, not harming the interests of the applicant), the Opposition Division will first examine the opposition in relation to the part of the general public, for which the part ‘DOLA-’ of the contested sign is not weak.

Conceptually, as previously established, the public considered will not perceive any meaning in the signs. Therefore, neither of the signs has a meaning for this part of the general 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.

Visually, the signs coincide in the sequence of letters ‘-OL-AREN’. However, they differ partially in the first part, namely ‘VOLT-’ of the earlier mark versus ‘DOL-’ of the contested mark. It is important to remark the fact that the signs start with an entirely different letter which usually attracts the primary attention of the relevant public and significantly influences the perception of the marks. Furthermore, it should be highlighted that the marks differ in the additional fourth letter of the earlier mark which has no counterpart in the contested sign. Therefore, insofar as the beginning of the marks are concerned, they differ in the amount of letter and the first letter, i.e. ‘V’ vs ‘D’ which creates a different overall impression of the marks.

Therefore, the signs are visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the syllable ‘REN’, present identically at the end of both signs. The signs differ consequently partially in the sound of the first two syllables, i.e. ‘VOL-TA-’ vs ‘DO-LA-’. Even though there is some commonality in the pronunciation of ‘OL’ at the end of the first syllable of the earlier mark and the last letter of the first syllable and the first letter of the second syllable of the contested sign respectively, the differences are nevertheless clearly audible, in particular because of the entirely different first letters ‘V’ (a voiced labio-dental fricative) versus ‘D’ (a voiced alveolar stop) and the additional sound of the letters ‘T’ in the earlier mark, these changing the intonation. In light of the above, the signs are aurally similar to a low degree.

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 claimed that the earlier trade mark enjoys enhanced distinctiveness and filed the following evidence in order to substantiate its claim:

• A print out containing information concerning the opponent’s product sales worldwide in 2015. According to this print out, all the information was obtained by extracting data from the opponent’s sources.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use.

Despite mentioning the turnover figures, there is no information at all about the degree of recognition of the mark ‘VOLTAREN’ in the European Union and its position in the market. The opponent has not provided any material with an indication of figures such as the economic growth in the form of, for example, official annual reports for the trade mark ‘VOLTAREN’ nor is there any objective indication concerning the volume of sales, the market share of the trade mark or the extent to which the mark has been promoted.

The opponent has mentioned that the trade mark is one of the most broadly used and widely studied drugs in the world, but this has never been attested by any evidence at all. As a result the evidence does not show the degree of recognition of the trade mark ‘VOLTAREN’ among the relevant public; nor does it show that the trade mark is known by a significant part of the relevant public in the European Union. Under these circumstances, the Opposition Division concludes that the opponent has failed to prove that its trade mark has a higher degree of distinctiveness through its use.

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.

For the sake of completeness, it should be mentioned that the opponent refers to a previous national decision to support its arguments concerning the enhanced distinctiveness. However, it must be noted that decisions of national courts and national offices regarding conflicts between identical or similar trade marks on the national level do not have a binding effect on the Office since the European Union trade mark regime is an autonomous system which applies independently of any national system (13/09/2010, T-292/08, Often, EU:T:2010:399).

Even though previous national decisions are not binding, their reasoning and outcome should be duly considered, particularly when the decision has been taken in the Member State that is relevant to the proceedings.

In the present case, the previous decision issued by the Italian patent and trade mark office (UIBM) referred to by the opponent acknowledges the enhanced distinctiveness of the mark ‘VOLTAREN’. Following the excerpt quoted by the opponent in its writ, the UIBM stated that the opponent has proven with proper documentation the enhanced distinctiveness of its mark. To this extent, the Opposition Division would like to draw the opponent’s attention that this is not the case here, since the latter did not file sufficient evidence which would allow the Opposition Division to assess the acquired distinctiveness.

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, C342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C251/95, Sabèl, EU:C:1997:528, § 22).

The contested goods have been assumed to be identical to those of the earlier mark and they are directed, inter alia, at the public at large whose degree of attention is relatively high.

For this part of the public, the conceptual aspect is neutral as neither of the signs has a meaning and, from the visual and aural point of view, the signs are similar, but only to a low degree. The distinctiveness of the earlier mark must be seen as normal.

It should be taken into account that the relatively high level of attention of consumers with regard to the goods in Classes 5 and 10, independently of whether or not they are issued on a medical prescription, weighs against a likelihood of confusion. Indeed, bearing in mind the higher degree of attention and the fact that the signs are visually and aurally similar to only a low degree, the overall conclusion must be that there is no risk that the public will be led to believe that goods bearing the word mark ‘DOLAREN’ come from undertakings which hold the earlier word mark ‘VOLTAREN’ or from an undertaking economically linked to them.

On a separate note, it remains necessary to consider the opponent’s argument that the earlier trade mark is characterised by the presence of the word component ‘VOLTAREN’ that constitutes a ‘family of marks’ or ‘marks in a series’. In its view, such a circumstance is liable to give rise to an objective likelihood of confusion insofar as the consumer, when confronted with the contested mark which contains the same word component as the earlier marks, will be led to believe that the goods identified by that mark may also come from the opponent.

In fact, the concept of the family of marks was exhaustively analysed by the General Court in its judgment of 23/02/2006, T-194/03, Bainbridge, EU:T:2006:65.

When the opposition to a European Union trade mark is based on several earlier marks and those marks display characteristics which give grounds for regarding them as forming part of a single ‘series’ or ‘family’ a likelihood of confusion may be created by the possibility of association between the contested trade mark and the earlier marks forming part of the series. However, the likelihood of association described above may be invoked only if two conditions are cumulatively satisfied.

Firstly, the proprietor of a series of earlier registrations must furnish proof of use of all the marks belonging to the series or, at the very least, of a number of marks capable of constituting a ‘series’.

In the present case, the opponent failed to prove that it uses a family of ‘VOLTAREN’ marks, and, moreover, that it uses such a family in the same fields as those covered by the contested trade mark. The opposition has been based on two earlier marks, one of which has not been substantiated, as referred to above. There is nothing on file which could allow the Opposition Division to examine said claim. In light of the foregoing, the sole indications of the alleged earlier marks containing the term ‘VOLTAREN’ not being accompanied by any evidence are not sufficient to prove the family of the marks.

Moreover, the opponent refers to the decision issued by the UIBM, in which the latter has found the likelihood of confusion between the earlier mark ‘VOLTAREN’ and the Italian trade mark application for the word mark ‘VOLTASPORT’. This cannot apply per analogy to the present case either, in particular considering that the Italian application contains an allusive element ‘SPORT’ and that the beginning (the first five letters) are entirely the same, which is not the case here. For the reasons set forth above, this decision is not relevant to the present proceedings.

Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

This absence of a likelihood of confusion equally applies to the part of the public for which the element ‘DOL’ or ‘DOLA’ is weak. This is because, as a result of the weak character of that coinciding component, that part of the public, which also displays a high or relatively high degree of attention in relation to the goods at issue, will perceive the signs as being even less similar.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Chantal VAN RIEL

Klaudia MISZTAL

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.