OPPOSITION No B 2 676 719
Stada Arzneimittel AG, Stadastr. 2-18, 61118 Bad Vilbel, Germany (opponent), represented by Harmsen Utescher, Neuer Wall 80, 20354 Hamburg, Germany (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 03/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 676 719 is partially upheld, namely for the following contested goods and services:
Class 3: 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.
Class 35: Retailing, wholesaling, and sale via global computer networks of pharmaceutical preparations, sanitary preparations for medical purposes, oral contraceptives, chemical contraceptives, contraceptive preparations and products, dietetic food and substances adapted for medical use, and dietary supplements for humans; Exclusive sale and business representations in connection with pharmaceutical preparations, sanitary preparations for medical purposes, oral contraceptives, chemical contraceptives, contraceptive preparations and products, dietetic food and substances adapted for medical use, and dietary supplements for humans.
2. European Union trade mark application No 14 872 592 is rejected for all the above goods and services. It may proceed for the remaining goods and services.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 872 592. The opposition is based on Bulgarian trade mark registration No 83 281. 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 goods and services
The goods on which the opposition is based are the following:
Class 5: Pharmaceutical and veterinary preparations with the exception of preparations for the prevention and treatment of osteoporosis, sanitary preparations for medical use; dietetic substances adapted for medical use, food for babies, plasters, materials for dressings, material for stopping teeth, dental wax, modeling wax for dentists, wax for teeth.
The contested goods and services 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.
Class 35: Advertising; Business management; Business administration; Office functions; Retailing, wholesaling, and sale via global computer networks of perfumery, essential oils, cosmetics, hair lotions, pharmaceutical preparations, sanitary preparations for medical purposes, oral contraceptives, chemical contraceptives, contraceptive preparations and products, dietetic food and substances adapted for medical use, and dietary supplements for humans; Exclusive sale and business representations in connection with perfumery, essential oils, cosmetics, hair lotions, pharmaceutical preparations, sanitary preparations for medical purposes, oral contraceptives, chemical contraceptives, contraceptive preparations and products, dietetic food and substances adapted for medical use, and dietary supplements for humans.
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 3
The contested cosmetics are similar to the opponent’s pharmaceutical preparations with the exception of preparations for the prevention and treatment of osteoporosis in Class 5, as they have the same purpose. They can coincide in producers, end users and distribution channels.
The contested hair lotions are similar to a low degree to the opponent’s pharmaceutical preparations with the exception of preparations for the prevention and treatment of osteoporosis in Class 5. They use the same distribution channels, such as pharmacies, they target the same public and they are often manufactured by the same companies.
The contested essential oils are similar to a low degree to the opponent’s pharmaceutical preparations with the exception of preparations for the prevention and treatment of osteoporosis in Class 5, as they have the same purpose. They can coincide in end users and distribution channels.
The contested perfumery is dissimilar to all of the opponent’s goods, as they differ in nature and purpose, they are not usually manufactured or marketed by the same undertakings and they are not in competition with each other.
Contested goods in Class 5
Dietetic substances adapted for medical use are identically contained in both lists of goods.
Sanitary preparations for medical purposes are identically contained in both lists of goods, albeit with slightly different wording.
The contested foods adapted for medical use is included in the broad category of the opponent’s dietetic substances adapted for medical use. Therefore, they are identical.
The contested pharmaceutical preparations include, as a broader category, the opponent’s pharmaceutical preparations with the exception of preparations for the prevention and treatment of osteoporosis. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
The contested oral contraceptives, chemical contraceptives, and contraceptive preparations and products are included in the broad category of the opponent’s pharmaceutical preparations with the exception of preparations for the prevention and treatment of osteoporosis. Therefore, they are identical.
The contested food supplements for human beings overlap with the opponent’s dietetic substances adapted for medical use. Therefore, they are identical.
Contested services in Class 35
Retailing, wholesaling, and sale via global computer networks, exclusive sale and business representations concerning the sale of particular goods are different forms of services consisting of activities around the actual sale of goods. They are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.
Therefore, the contested retailing, wholesaling, and sale via global computer networks of pharmaceutical preparations, sanitary preparations for medical purposes, oral contraceptives, chemical contraceptives, contraceptive preparations and products, dietetic food and substances adapted for medical use, and dietary supplements for humans; exclusive sale and business representations in connection with pharmaceutical preparations, sanitary preparations for medical purposes, oral contraceptives, chemical contraceptives, contraceptive preparations and products, dietetic food and substances adapted for medical use, and dietary supplements for humans are similar to a low degree to the opponent’s pharmaceutical preparations with the exception of preparations for the prevention and treatment of osteoporosis, sanitary preparations for medical use and dietetic substances adapted for medical use.
Retailing, wholesaling, and sale via global computer networks of perfumery, essential oils, cosmetics, hair lotions; exclusive sale and business representations in connection with perfumery, essential oils, cosmetics, hair lotions are not similar to the opponent’s goods. Apart from being different in nature, since services are intangible whereas goods are tangible, they meet different needs. Retail services, wholesaling, and sale via global computer networks, exclusive sale consist of bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.
Similarity between retail services (or similar services around the sale of goods) of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are not identical.
Advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc.
Advertising services are fundamentally different in nature and purpose from the manufacture of goods. The fact that some goods or services may appear in advertisements is insufficient for finding similarity. Therefore, the contested advertising is dissimilar to the opponent’s goods in Class 5.
The contested business management; business administration; office functions are also dissimilar to the opponent’s goods, since they have different natures, purposes and methods of use, as well as different producers/providers and distribution channels. They are neither complementary nor in competition.
- 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 and services found to be identical or similar to different degrees are directed at the general public as well as at professional consumers with specific professional knowledge or expertise, namely professionals in the medical and pharmaceutical field.
The degree of attention is average for the goods in Class 3 and the services in Class 35.
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 Court has confirmed that the degree of attention is also higher than average for all goods in Class 5, including food supplements (10/02/2015, T-368/13, Angipax, EU:T:2015:81, § 46).
Given that the general public is more prone to confusion, the examination will proceed on this basis.
- The signs
| ARISTA | ARISTILA |
|
Earlier trade mark |
Contested sign |
The relevant territory is Bulgaria.
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 signs are both words marks made up of a single verbal element, neither of which has any meaning in the language of the relevant territory. Therefore, they are distinctive.
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.
Visually and aurally, the signs coincide in the letters ‘ARIST**A’. They differ only in the additional letters ‘IL’ placed towards the end of the contested sign, which makes them less likely to be perceived by the relevant public.
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. Given this fact and that the signs coincide in six out of eight letters and that the two additional letters are hidden towards the end of the contested sign, the signs are visually and aurally highly similar.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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.
- 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 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 its observations, the applicant argues that the earlier trade mark has a low distinctive character given that there are many trade marks that include the element ‘ARISTA’. In support of its argument, the applicant refers to a few trade mark registrations in the European Union for Class 5.
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 ‘ARISTA’. Under these circumstances, the applicant’s claims must be set aside.
The applicant also points out that the opponent did not file oppositions to European Union trade mark registrations No 3 364 627 for the word mark ‘ARISTA’ and No 11 834 496 for the word mark ‘ARISTA DIRECT’.
With regard to European Union trade mark registration No 3 364 627, published on 22/11/2004, the opponent did not have the right to file an opposition, since the opponent’s mark was filed on 06/12/2010 and, furthermore, on 22/11/2004 Bulgaria was not in the European Union.
Moreover, the opponent decides whether or not to file an opposition because it has the right to file an opposition to trade mark applications but has no obligation. Therefore, it is not relevant in the present case why the opponent did not file an opposition against European Union trade mark registration No 11 834 496.
In the present case, the goods and services at issue are partly identical, partly similar to different degrees and partly dissimilar. The signs are visually and aurally similar to a high degree. They target, inter alia, the public at large, whose degree of attention varies from average to high. Furthermore, the earlier mark has a normal degree of distinctiveness.
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). Furthermore, a high degree of attention does not automatically lead to a finding of no likelihood of confusion. All other factors have to be taken into account. A likelihood of confusion can exist despite a high degree of attention. For example, when there is a strong likelihood of confusion created by other factors, such as identity or close overall similarity of the marks and the identity of the goods, the attention of the relevant public alone cannot be relied upon to prevent confusion (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 53-56; 06/09/2010, R 1419/2009-4, Hasi).
Considering all the above, there is a likelihood of confusion on the part of the general public. Given that a likelihood of confusion for only part of the relevant public is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.
Therefore, the opposition is partly well founded on the basis of the opponent’s Bulgarian trade mark registration No 83 281. It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar (to various degrees) to those of the earlier trade mark. This is because the similarity between the signs is significant enough to lead to a likelihood of confusion also in relation to the goods and services which have only a low degree of similarity.
The rest of the contested goods and services 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 and services 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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
| Steve HAUSER | Alexandra APOSTOLAKIS | Boyana NAYDENOVA |
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.