OPPOSITION No B 2 769 175

mibe GmbH Arzneimittel, Münchener Str. 15, 06796 Brehna, Germany (opponent), represented by Dr. Kunz-Hallstein Rechtsanwälte, Galeriestr. 6A, 80539 München, Germany (professional representative)

a g a i n s t

Stanislav Kameníček, V Cibulkách 359/52, 15000 Praha 5, Czech Republic (applicant), represented by Lukáš Jansa, Sokola Tůmy 16, 709 00 Ostrava, Czech Republic (professional representative).

On 07/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 769 175 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 15 276 884 for the figurative mark , namely against all the goods in Class 5. The opposition is based on German trade mark registration No 302 011 028 266 and on international trade mark registration No 1 100 370 designating Austria and Poland, all for the word mark ‘Azedil’. 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

The goods, identically covered by all earlier marks, on which the opposition is based, are the following:

Class 5:        Pharmaceutical products and medicines.

The contested goods are the following:

Class 5:        Pharmaceutical preparations included in this class; Pharmaceutical drugs; Sanitary preparations for medical purposes; Special dietary foodstuffs adapted for medical purposes; Pharmaceutical drugs; Food supplements adapted for medical use; Vitamin and mineral food supplements; Dietetic foods adapted for medical purposes; Dietetic foods adapted for medical use; Nutritional supplements other than for medical purposes, included in this class; Food supplements; Food supplements for dietetic use; Special food supplements and dietary supplements included in this class, containing substances of plant origin; Dietetic food preparations adapted for medical use; Dietetic foods adapted for medical use; Pregnancy testing preparations; Diagnostic reagents for medical use; Reagents for use in diagnostic pregnancy tests; Diagnostic testing materials for medical use; Pregnancy (Chemical preparations for the diagnosis of -); Ovulation test kits; Preparations for detecting mutation in prion genes for medical purposes; Preparations for detecting genetic predispositions for medical purposes; Preparations for the diagnosis of ovulation; Cord blood; Cord blood for medical purposes.

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

A pharmaceutical preparation refers to any kind of medicine, that is to say, a substance or combination of substances for treating or preventing diseases in human beings or animals. Thus, the contested pharmaceutical preparations included in this class and pharmaceutical drugs (mentioned twice in the applicant´s list) are identically covered by the opponent´s medicines.

Testing preparations, that is to say, chemical reagents for medical purposes, fall under the general indication of pharmaceutical preparations. Consequently, the contested pregnancy testing preparations; diagnostic reagents for medical use; reagents for use in diagnostic pregnancy tests; diagnostic testing materials for medical use; pregnancy (chemical preparations for the diagnosis of -); ovulation test kits; preparations for detecting mutation in prion genes for medical purposes; preparations for detecting genetic predispositions for medical purposes; preparations for the diagnosis of ovulation are included in the broad category of the opponent’s pharmaceutical products. Therefore, they are identical.

The contested cord blood and cord blood for medical purposes are included in the broad category of the opponent’s medicines (the latter being any drug or remedy for use in treating, preventing, or alleviating the symptoms of disease). Therefore, they are identical.

The contested sanitary preparations for medical purposes are highly similar to the opponent´s pharmaceutical products as they have the same purpose. They can coincide in producer, end user and distribution channels.

The contested special dietary foodstuffs adapted for medical purposes; food supplements adapted for medical use; vitamin and mineral food supplements; dietetic foods adapted for medical purposes; dietetic foods adapted for medical use; nutritional supplements other than for medical purposes, included in this class; food supplements; food supplements for dietetic use; special food supplements and dietary supplements included in this class, containing substances of plant origin; dietetic food preparations adapted for medical use and dietetic foods adapted for medical use are substances prepared for special dietary requirements and/or 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 the medical condition of patients. The relevant public coincides and these 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 identical or similar goods are directed at the public at large and at professionals.

It is apparent from the case-law that, insofar as pharmaceutical preparations/medicines are concerned, whether or not issued on prescription, the relevant public’s degree of attention is relatively high (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 demonstrate a high degree of attentiveness when prescribing medicines. Non-professionals also pay 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 as regards the contested goods falling in the category of dietary and nutritional supplements is also considered to be heightened due to the potential impact of the goods on the consumers’ health.

3. The signs

Azedil
Earlier trade marks	Contested sign

The relevant territories are Austria, Germany and 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 marks consist of the word ‘Azedil’ which is meaningless in all the relevant territories and, therefore, normally distinctive. As the opponent points out, the earlier marks are word marks and in the case of word marks, it is the word as such that is protected and not the individual graphic or stylistic characteristics which that mark might possess (judgment of 22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is irrelevant whether the word mark is depicted in lower or upper case letters.

The contested sign is a figurative mark comprising the letters ‘A’ (in pink) and ‘DIEL’ (in black) and a curved line thereunder (the latter being of purely decorative nature and, consequently, non-distinctive). Neither the elements ‘A’ and ‘DIEL’ (in which the verbal element of the contested mark is visually broken down through the use of different colours) nor their combination will be associated with a meaning by the relevant public. Therefore, the verbal elements of the contested sign are normally distinctive.

The contested sign has no element that could be considered clearly more dominant than other elements.

Visually, the opponent is correct in noting that all letters of the contested sign are included in the earlier marks and that the conflicting signs have the same letters at the beginning and at the end (‘A’ and ‘L’, respectively).

However, the General Court has held that since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same (or, as in the present case, a similar) number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar.

Furthermore, the comparison must cover the signs in their entirety and be based on the overall impression given by the marks.

Therefore, the coinciding first and last letters of the conflicting signs are largely counterbalanced by the specific visual stylisation of the contested sign and, in particular, by the visual separation on account of the use of the colours pink and black, resulting into the distinction of the two elements ‘A’ and ‘DIEL’. Furthermore, the remaining shared letters are in different positions in the signs and this, as well as the further differing elements (that is, the additional letter ‘Z’ in the earlier marks and the additional figurative device in the contested sign which, although non-distinctive, cannot be completely disregarded) will not go unnoticed by the relevant public.

Therefore, the signs are similar to a lower than average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the earlier marks will be pronounced in three syllables, ‘A-ZE-DIL’. The contested sign, however, may be pronounced either in three syllables, ‘A-DI-EL’, or (for example, by a part of the German-speaking public), ‘A-DIL’, with a long /i:/ sound. Consequently, the signs coincide to the extent that they have an identical first syllable. However, the additional one or possibly two syllables of the contested sign do not coincide with the second and third syllables of the earlier marks and the similarities of the other shared letters are diluted by the presence of the differing letter ‘Z’ and the differing order of the letters the signs have in common.

Therefore, the signs are similar to a lower than average degree.

Conceptually, contrary to the rather farfetched argument of the applicant that the contested mark might evoke the English term ’idea’ the Opposition Division holds that 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.

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 marks

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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal.

5. Global assessment, other arguments and conclusion

In the present case, the contested goods were found to be party identical and partly similar to the opponent’s goods.

The signs coincide in their first and last letters and all letters of the contested sign are also included in the earlier marks, the order being, however, different. Nevertheless, the differing elements between the signs (the different order of the coinciding letters, the additional letter in the earlier marks and the additional figurative elements and colouring of the contested sign) are clearly perceptible, both visually and aurally, for the relevant public. All these differences offset the similarities between the marks and make the signs sufficiently distinguishable in the relevant public’s perception.

Furthermore, the signs have no concept in common that would assist the relevant public in making an association between them.

The inherent distinctiveness of the earlier marks is normal. The opponent has neither claimed nor provided any evidence of an enhanced distinctive character of its earlier marks.

Whilst the relevant public only rarely has the chance to make a direct comparison between the different signs and must rely on an ‘imperfect recollection’ of them, a higher level of attention of the relevant public may lead to conclude that it will not confuse the marks, despite the lack of direct comparison between the trade marks (22/03/2011, T-486/07, CA, EU:T:2011:104, § 95).

In view of the overall impression produced by the signs at issue and the established higher degree of attention paid by the relevant public, it must be held that, despite the identity of some of the goods and a certain (lower than average) visual and phonetic similarity, the clear visual and aural differences between the signs are sufficient grounds to rule out the existence of a likelihood of confusion on the part of the relevant public (even the non-professionals).

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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

Alexandra APOSTOLAKIS

Denitza STOYANOVA-VALCHANOVA

Claudia MARTINI

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.