OPPOSITION No B 2 685 272

Pierre Fabre Medicament, 45, place Abel Gance, 92100 Boulogne Billancourt, France (opponent), represented by Deprez Guignot & Associes, 21, rue Clément Marot, 75008 Paris, France (professional representative)

a g a i n s t

Gravis Pharma GmbH, Westhafenstrasse 1, 133-53 Berlin, Germany (applicant), represented by Justyna Pawłowska, ul. Wincentonga Witosa 25/18, 80-809 Gdańsk, Poland (professional representative).

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

DECISION:

1.        Opposition No B 2 685 272 is upheld for all the contested goods.

2.        European Union trade mark application No 14 463 251 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 463 251. The opposition is based on, inter alia, Polish trade mark registration No 81 189. 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Polish trade mark registration No 81 189.

1. The goods

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

Class 5:        Pharmaceutical products.

The contested goods are the following:

Class 5:        Diet supplements.

Class 29:        Food supplements prepared on the basis of edible fats and gelatine.

Class 30:        Food supplements prepared on the basis of carbohydrate components.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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 5

The contested diet supplements include both medicated and non-medicated diet supplements. Diet supplements adapted for medicated use are substances prepared for special dietary requirements, with the purpose of treating or preventing disease. Bearing this in mind, their purpose is similar to that of the opponent’s pharmaceutical products (substances used to treat disease), insofar as they are used to improve a patient’s medical condition. The relevant public coincides and the goods generally have the same distribution channels. Therefore, these goods are considered similar.

Contested goods in Class 29

As a preliminary remark, the Opposition Division notes that the contested food supplements prepared on the basis of edible fats and gelatine, included in the list of goods in Class 29, were wrongly classified, as these goods belong to Class 5. Nevertheless, the erroneous classification does not change their nature and therefore does not affect the comparison.

The contested food supplements prepared on the basis of edible fats and gelatine include both medicated and non-medicated food supplements. Food supplements adapted for medicated use are substances prepared for special dietary requirements, with the purpose of treating or preventing disease. Bearing this in mind, their purpose is similar to that of the opponent’s pharmaceutical products (substances used to treat disease), insofar as they are used to improve a patient’s medical condition. The relevant public coincides and the goods generally have the same distribution channels. Therefore, these goods are considered similar.

The applicant’s argument that dietary supplements are not pharmaceutical products according to the United States Food and Drug Administration is not relevant to the proceedings in question, as the Office cannot take foreign legislation into account.

Furthermore, Directive 2002/46/EC, referred to by the applicant, concerns food supplements that are marketed as foodstuffs and presented as such; see Article 1(1). The directive does not apply to medicinal products; see Article 1(2). Therefore, it cannot be concluded from the directive that food supplements cannot be adapted for medicinal purposes.

Contested goods in Class 30

As a preliminary remark, the Opposition Division notes that the contested food supplements prepared on the basis of carbohydrate components, included in the list of goods in Class 30, were wrongly classified, as these goods belong to Class 5. Nevertheless, the erroneous classification does not change their nature and therefore does not affect the comparison.

The contested food supplements prepared on the basis of carbohydrate components include both medicated and non-medicated food supplements. Food supplements adapted for medicated use are substances prepared for special dietary requirements, with the purpose of treating or preventing disease. Bearing this in mind, their purpose is similar to that of the opponent’s pharmaceutical products (substances used to treat disease), insofar as they are used to improve a patient’s medical condition. The relevant public coincides and the goods generally have the same distribution channels. Therefore, these goods 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, the goods found to be similar are directed at the public at large and at business customers with specific professional knowledge or expertise, such as medical professionals and pharmacists.

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. This high degree of attention also applies to food supplements and diet supplements, since these goods have a direct effect on the proper functioning of the intestinal system and, finally, on health (15/12/2009, T-412/08, Trubion, EU:T:2009:507, § 28). The degree of attention is rather high.

3. The signs

CYCLO 3
Earlier trade mark	Contested sign

The relevant territory is Poland.

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 consisting of the verbal elements ‘CYCLO’ and ‘3’. Contrary to the applicant’s argument, the relevant public will perceive the element ‘CYCLO’ as a fanciful word with no meaning in relation to the goods in question and therefore with an average degree of distinctiveness. The Opposition Division finds that the Polish word for ‘cyclo’, namely ‘cykliczny’, differs too much from the English word to be associated with it. The number ‘3’ will be perceived as non-distinctive, as it may indicate, inter alia, that the pharmaceuticals are sold in packages of three.

The contested sign is a figurative mark, consisting of the verbal elements ‘Cyclo’, ‘4’ and ‘Dios’ written in bold title case letters and in a standard font. The elements ‘Cyclo’ and ‘Dios’ are written in orange and the number ‘4’ is in blue with an orange outline. The element ‘Cyclo’ has an average degree of distinctiveness and the number ‘4’ is non-distinctive in relation to the relevant goods, as explained above (e.g. it may refer to packages of four). Contrary to the applicant’s argument, the number ‘4’ will not be perceived as the preposition ‘for’ in the relevant territory. The element ‘Dios’ has no meaning for the relevant public, and in relation to the goods in question this element has an average degree of distinctiveness. The number ‘4’ could be perceived as slightly dominant, due to its central position and its size.

Contrary to the applicant’s argument, it can reasonably be assumed that the element ‘Cyclo’ in the contested sign will be perceived as an individual element of the sign, as the number ‘4’ clearly separates the two verbal elements ‘Cyclo’ and ‘Dios’. Furthermore, both elements are written in title case.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is 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.

Visually and aurally, the signs coincide in (the sound of) the letters ‘CYCLO’, which constitute the first verbal element of both signs and make up five out of six characters in the earlier mark and out of 10 in the contested sign. The coinciding letters also constitute the only distinctive element in the earlier mark. The signs differ in the number ‘3’ in the earlier mark and the number ‘4’ in the contested sign; however, these numbers are non-distinctive. The signs also differ in the final verbal element, ‘Dios’, of the contested sign, and, visually, in its stylisation and colours. However, the signs also have similar structures, to the extent that they both have the verbal element ‘Cyclo’ at the beginning, followed by a number.

Therefore, and taking into account the importance of the beginnings of signs, the signs are visually and aurally similar to an average degree.

Conceptually, neither of the signs has a meaning as a whole. However, the elements ‘3’ in the earlier mark and ‘4’ in the contested sign evoke the concepts of one-digit numbers, namely three and four respectively, and it can reasonably be assumed that both these numbers will, inter alia, be associated with the amount the products are sold in or, if seen in association with the preceding verbal element (‘CYCLO’), as indicating the specific version of the ‘CYCLO’ product line in question. To this extent, but taking into consideration the facts that the numbers are not the same and that they are non-distinctive, the signs are considered conceptually 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 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, despite the presence of a non-distinctive element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, account should be taken of the fact that average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323). Even for goods for which the degree of attention is high, as it is for the goods in this case, consumers need to rely on their imperfect recollection of the trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

The goods are similar, and the distinctiveness of the earlier mark is normal. The relevant public’s degree of attention is rather high.

Although the signs differ in the final element in the contested sign and, to some extent, in the non-distinctive numbers in both signs, the Opposition Division found in section c) of this decision that the signs are visually and aurally similar to an average degree and that they are to some extent conceptually similar, albeit only to a low degree; considering the consumer’s imperfect recollection, and taking into account the importance of the beginnings of signs, the differences between the marks are not sufficient to outweigh the similarities between them and to exclude any likelihood of confusion, even taking into consideration the high degree of attention.

In addition, the Opposition Division notes that the likelihood of confusion includes likelihood of association, in the sense that the public may, if not confuse the two signs directly, believe that they come from the same undertaking or from economically related ones (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 16). In the present case, consumers may easily conclude that the goods labelled with the contested sign come from the same undertaking or economically linked undertakings as those labelled with the earlier mark and that they are all offered under the ‘CYCLO’ brand. For example, the public may think that the contested sign, ‘Cyclo4Dios’, denotes a product line that is called ‘Dios’ and that is sold in packages of four rather than three or that the number ‘4’, being the next number after three, indicates a new product or a new version of a product in the ‘CYCLO’ product line.

In this regard, it has to be pointed out that It is common practice, in the relevant market, for manufacturers to make variations of their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them, in order to denote new product lines, or to endow their trade marks with a new, fashionable image. Moreover, consumers are well accustomed to word marks being stylised and embellished with logotypes and other devices. Therefore, when encountering the conflicting signs, the relevant public, which only rarely has the chance to directly compare two trade marks and must rely on its imperfect recollection, is likely to mentally register the fact that they have in common the element ‘CYCLO’, and perceive the contested sign as a variation of the earlier mark, or vice versa. Consequently, the public may attribute the same (or an economically linked) commercial origin to the similar goods.

In its observations, the applicant argues that the earlier trade mark has a low degree of distinctive character given that there are many trade marks that include the element ‘CYCLO’. In support of its argument, the applicant refers to several trade mark registrations in the European Union.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element ‘cyclo’. Under these circumstances, the applicant’s claims must be set aside.

The applicant refers to a previous national decision to support its arguments. 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.

However, in the present case, the previous decision referred to by the applicant has not been submitted to the Office, and its relevance to the present proceedings can therefore not be determined.

For the sake of completeness, the Opposition Division notes that the judgment of 01/06/2016, T-292/12 (RENV), MAGNEXT / MAGNET 4 et al., EU:T:2016:329, referred to by the applicant, is not comparable to the present case, as these signs in the previous case merely coincided in some letters, in contrast to the present case, in which the coincidence stems from the entirety of the first element, which has an independent role in the signs.

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 Polish trade mark registration No 81 189. It follows that the contested trade mark must be rejected for all the contested goods.

As earlier Polish trade mark registration No 81 189 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Birgit FILTENBORG

Cecilie Leth BOCKHOFF

Michele M. BENEDETTI-ALOISI

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.