OPPOSITION No B 2 629 999

Laboratoires Arkopharma, 1ère Avenue 2709M Lid de Carros Le Broc, 06510 Carros, France (opponent), represented by Murgitroyd & Company, Scotland House, 165-169 Scotland Street, Glasgow G5 8PL, United Kingdom (professional representative)

a g a i n s t

SUNtekna sagl, Cozzera 12, 6720 Ghirone-Blenio, Switzerland (applicant), represented by Interpatent, Via Caboto, 35, 10129 Torino, Italy (professional representative).

On 28/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 629 999 is upheld for all the contested goods.

2.        European Union trade mark application No 14 664 627 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 664 627. The opposition is based on, inter alia, European Union trade mark registration No 9 218 355. 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 European Union trade mark registration No 9 218 355.

1. The goods

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

Class 5:        Nutritional additives for pharmaceutical purposes for the throat; spray preparations for the throat; tablets for medical purposes for treatment by inhalation; camphor, menthol, eucalyptus, extracts of pine for medical purposes; syrups for pharmaceutical purposes.

The contested goods, after a limitation requested by the applicant on 29/07/2016 and accepted by the Office, 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; Infant formula; Dietary supplements for animals; Nutritional additives to foodstuffs for animals, for medical purposes; Nutritional supplements; Albuminous foodstuffs for medical purposes; Dietary supplements for humans; Dietetic foods for use in clinical nutrition; Dietetic foods adapted for medical use; Food for diabetics; Food for medically restricted diets; Starch for dietetic use; Nutritional supplement meal replacement bars for boosting energy; Dietary supplemental drinks; Dietetic beverages adapted for medical purposes; Vitamin drinks; Cod-liver oil capsules; Diet capsules; Calcium fortified candy; Cereals prepared for use as invalids’ foods; Albumin dietary supplements; Effervescent vitamin tablets; Vitamin tablets; Dietetic confectionery adapted for medical purposes; Artificial sweeteners adapted for diabetics; Ground flaxseed fiber for use as a dietary supplement; Powdered milk foods for infants; Dietetic foods adapted for infants; Dietetic foods adapted for invalids; Beverages for infants; Lacteal flour for babies; Colostrum supplements; Powdered milk for babies; Milk powders [foodstuff for babies]; Lactose free infant’s formula; none of the mentioned goods for the throat.

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.

The contested medical and veterinary preparations and articles; none of the mentioned goods for the throat overlap with the opponent’s camphor, menthol, eucalyptus, extracts of pine for medical purposes, insofar as both categories include pharmaceutical/veterinary preparations consisting of camphor, menthol, etc., or medical/veterinary articles, such as swabs, tissues and poultices that are impregnated with those substances. Therefore, they are identical.

The contested dietary supplements and dietetic preparations; dietary supplements for animals; nutritional additives to foodstuffs for animals, for medical purposes; nutritional supplements; albuminous foodstuffs for medical purposes; dietary supplements for humans; dietetic foods for use in clinical nutrition; dietetic foods adapted for medical use; food for diabetics; food for medically restricted diets; starch for dietetic use; nutritional supplement meal replacement bars for boosting energy; dietary supplemental drinks; dietetic beverages adapted for medical purposes; vitamin drinks; cod-liver oil capsules; diet capsules; calcium fortified candy; cereals prepared for use as invalids’ foods; albumin dietary supplements; effervescent vitamin tablets; vitamin tablets; dietetic confectionery adapted for medical purposes; artificial sweeteners adapted for diabetics; ground flaxseed fiber for use as a dietary supplement; dietetic foods adapted for invalids; none of the mentioned goods for the throat are substances prepared for special dietary requirements with the purpose of treating or preventing a disease in humans or animals. Bearing this in mind, their nature is very similar to the opponent’s nutritional additives for pharmaceutical purposes for the throat. Notwithstanding the fact that the contested goods have been limited by the applicant so that they do not include those used for the throat, contrary to the applicant’s arguments, the Opposition Division is of the view that these contested goods have the same general purpose, namely to improve a patient’s health, target the same relevant public, have the same distribution channels (e.g. pharmacies) and are produced by the same undertakings as the opponent’s goods. Therefore, the goods at issue are highly similar.

The contested infant formula; powdered milk foods for infants; dietetic foods adapted for infants; beverages for infants; lacteal flour for babies; colostrum supplements; powdered milk for babies; milk powders [foodstuff for babies]; lactose free infant’s formula; none of the mentioned goods for the throat refer to foodstuffs that are eaten by babies because they are physically incapable of eating any other type of food or because it is medically required that they eat these particular types of food. The contested goods and the opponent’s nutritional additives for pharmaceutical purposes for the throat have the same general purpose of improving the health and are manufactured under the control of the same entities dealing in pharmaceutical and nutritional preparations. Furthermore, they are available from the same sales outlets (e.g. pharmacies, chemists). Therefore, they are similar.

The contested hygienic preparations and articles; none of the mentioned goods for the throat encompass various bandages, pads and napkins for personal hygiene. They relate to conditions affecting health, especially with regard to cleanliness and helping to prevent diseases. These contested goods are similar to the opponent’s camphor for medical purposes, which is applied to the skin as an antimicrobial substance, for example. These goods have the same purpose and the same distribution channels and target the same relevant public.

The contested pest control preparations and articles; none of the mentioned goods for the throat are used to prevent the risks to human or animal health posed by the species whose elimination is sought. As such, these goods and the opponent’s camphor, menthol, eucalyptus, extracts of pine for medical purposes may have the same general medical purpose of improving human or animal health and well-being. In addition, the goods under comparison may be sold through the same distribution channels (e.g. veterinary pharmacies) and target the same relevant public. Therefore, they are similar to a low degree.

The contested dental preparations and articles; none of the mentioned goods for the throat are similar to a low degree to the opponent’s camphor, menthol, eucalyptus, extracts of pine for medical purposes, as they target the same relevant public and have the same distribution channels (e.g. healthcare supplies sales channels).

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 to various degrees are directed at the public at large and at healthcare professionals.

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 same considerations apply to dietary supplements and foods.

Therefore, the degree of attention is likely to vary from average (e.g. for hygienic preparations and articles) to higher than average (e.g. for medical and veterinary preparations and articles).

Given that the general public is more prone to confusion, the examination will proceed on this basis.

3. The signs

ACTIVOX	ACTIBOX
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).

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.

In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the relevant public, for which the marks are aurally identical, for the reasons given below.

Neither the word ‘ACTIVOX’ nor the word ‘ACTIBOX’ exists as such in Spanish. However, 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 (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).

The letter string ‘ACTI’, present at the beginning of both signs, will be perceived as referring to, for example, ‘active’ or ‘activity’ (‘activo’, ‘actividad’ in Spanish). It evokes the concept of active properties of ingredients/materials in the context of the relevant goods and is therefore weak.

Although the earlier mark contains the letter string ‘VOX’, which may be associated with ‘voice’ given that the Spanish word ‘voz’ is derived from the Latin word ‘vox’, because it is not commonly used as a suffix, the link to the opponent’s goods, being medical and dietetic preparations for the throat, is not direct or obvious from the perspective of the general public. As regards the contested sign, the applicant argues that it evokes the concept of a ‘box’ that can produce an effect or action over something.

It can be reasonably assumed that for a significant part of the general public in the relevant language area, the signs will not convey any specific semantic content other than the concept underlying the element ‘ACTI’, as set out above. Account must be taken of the fact that neither ‘vox’ nor ‘box’ exists in Spanish and the general public cannot be expected to discern these foreign meanings (from Latin or English, respectively). Therefore, it is considered that the two expressions, ‘ACTIVOX’ and ‘ACTIBOX’, taken as a whole, are endowed with an average degree of distinctiveness.

Being word marks, the signs have no element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the sequence of letters ‘ACTI*OX’, where six letters out of seven of the signs are identical. However, they differ in their fifth letters, ‘V’ in the earlier mark and ‘B’ in the contested sign. Importantly, the signs coincide in their beginnings, to which consumers tend to pay more attention, and they have identical endings, ‘-OX’. Furthermore, the letter ‘X’ at the end of a word is quite striking in Spanish.

Therefore, the signs are visually highly similar.

Aurally, the differing letters, namely ‘V’ in the earlier mark and ‘B’ in the contested sign, are pronounced identically in Spanish.

Therefore, the signs are aurally identical.

In relation to the comparisons on the visual and aural levels, the above findings are not called into question by the weak distinctiveness of the element ‘ACTI’, since the coincidences are overwhelming.

Conceptually, although the signs as a whole do not have any clear meaning for a substantial part of the public in the relevant territory, the element ‘ACTI’, which the signs have in common, alludes to a concept, as set out above. As the coincidence lies in a weak element, the signs are 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 clear meaning for any of the goods in question from the perspective of a substantial part 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, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

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 contested goods are identical or similar to varying degrees to the opponent’s goods. From the perspective of the Spanish-speaking part of the general public in the relevant territory, the signs are visually highly similar, aurally identical and conceptually similar to a low degree. The degree of attention may vary from average to high.

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). This applies particularly to the present case, as the signs are visually similar on account of the letter sequence ‘ACTI*OX’, with the only difference being in their fifth letters, namely ‘V’ in the earlier mark and ‘B’ in the contested sign, and aurally identical due to the differing letters having the same pronunciation.

Although the element ‘ACTI’ is weak for the goods at issue from the perspective of the relevant public, a finding that an element that marks have in common has a low degree of distinctive character does not automatically prevent a likelihood of confusion. Although the distinctive character of the earlier mark and the elements that the marks have in common must be taken into account when assessing the likelihood of confusion, these are only individual factors involved in that assessment. Therefore, even in a case involving a coinciding element with a weak distinctive character, there may be a likelihood of confusion on account, in particular, of the similarity between the signs and the identity or similarity between the goods in question.

When encountering the signs at issue, even for the goods that are similar to a low degree, the public may confuse them on account of the identity on the aural level and the high similarity on the visual level, including when the degree of attention is enhanced. 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).

In its observations, the applicant argues that a large number of trade marks include the element ‘ACTI’. In support of this argument, the applicant refers to a list of hits showing the results of a search conducted on the TMView database for registered word trade marks in Class 5 beginning with the prefix ‘ACTI’.

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 applicant’s argument does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the prefix ‘ACTI’. Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the Spanish-speaking part of the general public and therefore the opposition is well-founded on the basis of the opponent’s European Union trade mark registration No 9 218 355.

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, and there is no need to analyse the remaining part of the public.

It follows from the above that the contested trade mark must be rejected for all the contested goods.

As the earlier right, European Union trade mark registration No 9 218 355, 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 rights 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

Solveiga BIEZA

Jorge ZARAGOZA GOMEZ

Vita VORONECKAITE

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.