OPPOSITION No B 2 145 335

Dolorgiet GmbH & Co. KG, Otto-von-Guericke-Straße 1, 53757 Sankt Augustin, Germany (opponent), represented by Dompatent von Kreisler Selting Werner – Partnerschaft von Patentanwälten und Rechtsanwälten mbB, Deichmannhaus am Dom, Bahnhofsvorplatz 1, 50667 Köln, Germany (professional representative)

a g a i n s t

Laboratoires Bailleul International SA, Rue de Lyon 109, 1203 Genève, Switzerland (applicant), represented by Cabinet Beau de Lomenie, 158, rue de L'Université, 75340 Paris Cédex 07, France (professional representative).

On 08/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 145 335 is partially upheld, namely for the following contested goods:

Class 3:        Soaps; perfumery, cosmetics, hair lotions; dentifrices; depilatories; make-up removing preparations; lipsticks; beauty masks; shaving preparations.

Class 5:        Pharmaceutical preparations, namely anti-acne preparations based on tetracycline.

2.        European Union trade mark application No 11 279 775 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 11 279 775. The opposition is based on European Union trade mark registration No 11 025 244. The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK:

The opposition was originally also based on European Union trade mark registration No 11 025 194 (word mark “ACTIDOL”) which was withdrawn on 08.07.2014.

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 3:        Cosmetics, namely for the prevention and care of skin diseases.

Class 5:        Pharmaceutical and veterinary preparations for the treatment, prevention and care of skin diseases.

Class 10:        Surgical, medical, dental and veterinary apparatus and instruments.

The contested goods are the following:

Class 3:        Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, cosmetics, hair lotions; dentifrices; depilatories; make-up removing preparations; lipsticks; beauty masks; shaving preparations.

Class 5:        Pharmaceutical preparations, namely anti-acne preparations based on tetracycline.

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

The term ‘namely’, used in the applicant as well as in the opponent’s list of goods 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.

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 include, as a broader category the opponent’s cosmetics, namely for the prevention and care of skin diseases. 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 soaps are similar to the opponent’s cosmetics, namely for the prevention and care of skin diseases because they coincide in distribution channels, targeted public and producers. In addition, the purpose, that is to keep the skin clean (also as a means for preventing skin diseases), may coincide.

The contested perfumery, hair lotions; depilatories; make-up removing preparations; lipsticks; beauty masks; shaving preparations are at least similar to the opponent’s cosmetics, namely for the prevention and care of skin diseases. These goods have the same producers and target the same public via the same distribution channels.

The contested dentifrices are similar to a low degree to the earlier mark’s goods cosmetics, namely for the prevention and care of skin diseases because they coincide in distribution channels and relevant public.

The remaining contested bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations are dissimilar to the opponent's goods in Classes 3, 5 and 10.

Bleaching preparations and other substances for laundry use are aimed at cleaning and whitening clothes. Polishing preparations are used to make a product smooth and shiny by rubbing, especially with wax or an abrasive. Scouring preparations are used to clean or polish (a surface) by washing and rubbing, as with an abrasive cloth. Finally, abrasive preparations are substances or materials such as sandpaper, pumice, or emery, used for cleaning, grinding, smoothing, or polishing. All of these products are agents used for cleaning. The opponent’s goods, however, are cosmetics (Class 3) and pharmaceutical and veterinary preparations for the treatment, prevention and care of skin diseases (Class 5) and surgical, medical, dental and veterinary apparatus and instruments in Class 10. Therefore, the aforementioned goods neither coincide in their purpose or nature, nor in the targeted public, distribution channels, sales outlets or producers. In addition they are neither complementary nor are they in competition.

Contested goods in Class 5

The contested pharmaceutical preparations, namely anti-acne preparations based on tetracycline are included in the broad category of, or overlap with, the opponent’s pharmaceutical and veterinary preparations for the treatment, prevention and care of skin diseases. Therefore, they are identical.

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 are directed at the public at large and at a (medical) professional public (the latter mainly in case of the goods in Class 5).

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

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

3. The signs

ACTISOL	ACTIDOX
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 conflicting marks are both word marks made up of single verbal elements neither of which have any meaning in relation to the goods at issue. The signs have no elements that could be considered clearly more dominant than other elements.

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 as well as aurally, the signs coincide in ‘ACTI*O*’ and have therefore the same vowel structure. However, they differ in (the sound of) their respective fifth and seventh letter, namely ‘S’ and ‘L’ in the earlier mark and ‘D’ and ‘X’ in the contested sign. Both are composed of three syllables and have the same rhythm and intonation.

Therefore, the signs are visually and aurally similar to a high 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.

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).

Due to the visual and aural high similarity and the absence of any dominant or non-distinctive elements in the signs, a likelihood of confusion exists for the identical and similar goods.

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 especially applies to the present case of two rather long signs with the only difference found in their respective fifth and seventh letter, namely ‘S’ and ‘L’ in the earlier mark and ‘D’ and ‘X’ in the contested sign. Consumers when confronted with signs made up of long words are less likely to spot small differences.

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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to various degrees to those of the earlier trade mark.

The rest of the contested goods 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 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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Lynn BURTCHAELL

Swetlana BRAUN

Julia SCHRADER

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.