OPPOSITION No B 2 650 433

Laboratorios Bial Sociedad Anonima, Parque Cientifico y Tecnologico de Vizcaya, edificio 401, 48170 Zamudio (Bizkaia), Spain (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

Froximun AG, Neue Str. 2a, 38838 Schlanstedt, Germany (applicant), represented by Sperling, Fischer & Heyner Patentanwälte, Tolkewitzer Str. 22, 01277 Dresden, Germany (professional representative).

On 17/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 650 433 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 and services of European Union trade mark application No 14 656 037, namely against all the goods in Class 5 and some of the services in Class 42. The opposition is based on Spanish trade mark registration No 2 830 723. 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 and services

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

Class 5: Pharmaceutical and veterinary products; hygiene products for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressing; materials for stopping teeth and for dental impressions; disinfectants; products for destroying vermin; fungicides, herbicides.

Following a limitation, the contested goods and services are the following:

Class 5: Pharmaceutical and sanitary preparations, Namely pharmaceutical preparations and medical preparations based on zeolite; Pharmaceutical preparations for skin care; Ointments for pharmaceutical purposes; Medicines for human purposes; Dietetic preparations adapted for medical use; Dietetic substances and dietary supplements in non-medicinal form, namely based on minerals (zeolites); Mineral waters and mineral salts for medical purposes; Infant formula; Material for stopping teeth, dental wax; Herbal compounds for medical use; Medicinal infusions; Mineral dietary supplements based on zeolite.

Class 42: Scientific research relating to chemistry, biochemistry, pharmacy, medicine.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘namely’, used in the applicant’s list of goods in Class 5 to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

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 pharmaceutical and sanitary preparations, namely pharmaceutical preparations and medical preparations based on zeolite; pharmaceutical preparations for skin care; ointments for pharmaceutical purposes; medicines for human purposes are included in the broad category of the opponent’s pharmaceutical products. Therefore, they are identical.

The contested dietetic preparations adapted for medical use; dietetic substances and dietary supplements in non-medicinal form, namely based on minerals (zeolites); mineral waters and mineral salts for medical purposes; herbal compounds for medical use; medicinal infusions; mineral dietary supplements based on zeolite are identical to the opponent’s dietetic substances adapted for medical use, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, or overlap with, the contested goods. 

The contested infant formula is identical to the opponent’s food for babies, although worded differently.  

Material for stopping teeth is identically contained in both lists of goods in Class 5, although worded slightly differently.

The contested dental wax overlaps with the opponent’s materials for dental impressions. Therefore, they are identical.

Contested services in Class 42

As to the contested services of scientific research relating to chemistry, biochemistry, pharmacy, medicine, although pharmaceutical companies are heavily involved in research activities, they usually do not provide such services to third parties. The contested services differ from the earlier goods in terms of their nature, purpose and method of use. They do not have the same usual origins, distribution channels and are not in competition. Therefore, they are dissimilar.

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 are directed at the public at large and professionals in the medical sector with specific professional knowledge or expertise.

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.

The degree of attention is considered higher than average also in relation to the remaining relevant goods which may, to a lesser or greater extent, affect the state of human health (10/02/2015, T-368/13, ANGIPAX, EU:T:2015:81, § 46 and 23/01/2014, T-221/12, Sun Fresh, EU:T:2014:25, § 64).

3. The signs

NATIMED	Navomed
Earlier trade mark	Contested sign

The relevant territory is Spain.

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).

Conceptually, even though the marks as a whole are invented terms which evoke no clear concept they both contain the element ‘MED’ which is allusive of the medical character or purpose of the goods in question. Therefore, conceptually the marks are similar. However, in view of the weakness of this element, the degree of this conceptual similarity is low.

Visually and aurally, the marks are similar to a low degree as the coincidence in the element ‘MED’ cannot be given much weight and the remaining coincidences are limited to two letters (sounds) while the other two letters (sounds) are different.

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 weak element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The low degree of similarity of the signs is not sufficient lead to a likelihood of confusion, even in relation to identical goods, as the elements of difference between the signs are clearly perceivable by the consumers with a heightened degree of attention.  

This finding is not called into question by the various cases referred to by the opponent. These cases concerned other signs, none of which appear to be entirely comparable to the conflicting signs in the present case. The comparison of the signs rests on the specific appearance, pronunciation and, eventually, meaning of the signs in relation to the goods and/or services. The mere fact that conflicting signs may resemble one another in certain aspects, in itself, is insufficient to render them similar overall. In particular, as explained in detail by the applicant, as far as the decision of 20/01/2012, B 1 784 605 is concerned, the vowels and consonants of the signs ‘Rispamed’ and ‘RespoMed’ as well as their arrangements do not entirely correspond to those of the present case. Furthermore, the similarity in pronunciation of the initial vowels of those signs was also taken into consideration for the outcome of that case. The decision of 18/06/2007, No B 808 743 concerns signs ‘MEDIFON’ and ‘MEDIFLOR’ which have five initial letters in common and the arrangement of particular vowels and consonants also has an impact of pronunciation of those signs. The similarity in pronunciation of visually different consonants was also taken into account in the decision of 05/07/2012, B 1 904 922 concerning the signs ‘Sebapharma’ and ‘DEVAPHARMA’. Finally, unlike the signs in the present case, the other cases put forward by the opponent do not concern marks with a less distinctive element.

Considering all the above, there is no likelihood of confusion on the part of the public.

Therefore, the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.

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

Anna BAKALARZ

Justyna GBYL

Pedro JURADO MONTEJANO

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.