OPPOSITION No B 2 581 273
Terapia S.A., Str. Fabricii no.124, Cluj-Napoca, jud. Cluj, Romania, 400632 Cluj-Napoca, Romania (opponent)
a g a i n s t
Aspen Pharmacare Holdings Limited, Building 8, Healthcare Park, Woodlands Drive, Woodmead, Sandton, Gauteng, South Africa (applicant), represented by Dennemeyer & Associates, 55 rue des Bruyères, 1274 Howald, Luxembourg (professional representative).
On 10/03/2017, the Opposition Division takes the following
1. Opposition No B 2 581 273 is partially upheld, namely for the following contested goods:
Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides.
2. European Union trade mark application No 14 366 116 is rejected for all the above goods. It may proceed for the remaining goods.
3. Each party bears its own costs.
The opponent filed an opposition against all the goods of European Union trade mark application No 14 366 116. The opposition is based on Romanian trade mark registration No 47 195. The opponent invoked Article 8(1)(b) and 8(5) 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 and services on which the opposition is based are the following:
Class 5: Pharmaceutical products; medicinal products under (sic) the form of tablets.
Class 35: Advertising and business.
The contested goods are the following:
Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.
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 preparations are identically contained in both lists of goods (including synonyms).
The contested veterinary preparations overlap with the opponent’s pharmaceutical products in Class 5, since the latter can also be for veterinary purposes. These goods are identical.
The contested sanitary preparations for medical purposes are similar to a high degree to the opponent’s pharmaceutical products in Class 5. These goods have the same purpose, distribution channels, target the same public and are normally manufactured by the same kind of companies.
The contested dietetic food and substances adapted for medical or veterinary use; dietary supplements for humans and animals; plasters, materials for dressings are similar to the opponent’s pharmaceutical products in Class 5. These goods have the same purpose, distribution channels and target the same public.
The contested disinfectants are similar to the opponent’s pharmaceutical products in Class 5. These goods have the same purpose, distribution channels, target the same public and are usually produced by the same kind of undertakings.
The contested preparations for destroying vermin are similar to the opponent’s pharmaceutical products in Class 5. These goods have the same purpose, are complementary and have the same distribution channels.
The contested food for babies is similar to a low degree to the opponent’s pharmaceutical products in Class 5. These goods have the same purpose and distribution channels.
The contested material for stopping teeth, dental wax are similar to a low degree to the opponent’s pharmaceutical products in Class 5. These goods have the same distribution channels and target the same public.
The contested fungicides are similar to a low degree to the opponent’s pharmaceutical products in Class 5. These goods have the same purpose, distribution channels and are complementary.
When comparing the contested herbicides with the opponent’s goods in Class 5, which mainly include pharmaceuticals, and in Class 35, which mainly include services rendered by persons or organizations principally with the object of help in the working or management of a commercial undertaking, or help in the management of the business affairs or commercial functions of an industrial or commercial enterprise, as well as services rendered by advertising establishments primarily undertaking communications to the public, these are dissimilar. They have a different nature and purpose. These goods and services are not complementary nor in competition, they have different distribution channels and target a different public. Furthermore, these goods and services are normally not provided or produced by the same kind of undertakings.
- 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) target both the public at large and professionals in the medical and healthcare field (26/04/2007, C-412/05 P, ‘TRAVATAN’). Some of the contested goods, materials for dressings, for example, but also the broad category of the opponent’s and applicant’s pharmaceutical products can include preparations that are relatively cheap and are sold directly to the consumer without prescription, as well as highly specialised drugs for treating serious health problems. 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 signs
Earlier trade mark
The relevant territory is Romania.
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 mark is a word mark consisting of the word ‘ASPENTER’. This means not only that it does not claim any particular figurative element or appearance, but also that differences in the use of lower or upper case letters are immaterial.
The contested sign is a figurative mark composed of the word ‘aspen’, written in a slightly fancy blue lowercase typeface. On the left side appears a figurative element of a blue curved line with inside a red dot.
The earlier mark and the contested sign have no elements which could be considered clearly more dominant (visually eye-catching) than others.
According to the applicant, in its observations of 01/07/2016, the mark ‘ASPENTER’ is descriptive of the goods concerned, as it is used for a medicine that possesses as sole active agent ‘acetylsalicylic acid’ (also known as ‘aspirin’). It is formed by the prefix ‘asp’ or ‘as’, which is an abbreviation of the term ‘acetylsalicylic’ or refers to the mark ‘aspirin’ and the suffix ‘enter’, which is also an abbreviation of the term ‘enteric’, meaning that the pills have an enteric coating that prevents its dissolution or disintegration in the gastric environment. However, the Opposition Division does not agree with the applicant’s argument, as the prefix ‘asp’ or ‘as’ is not an official abbreviation of ‘aspirin’, which is known by the public. The same applies to the suffix ‘enter’. The applicant’s argument has, therefore, to be set aside.
Neither of the two signs has a meaning for a significant part of the public in the relevant territory. There is, however, a possibility that a part of the public would perceive the word ‘aspen’ in the contested sign as referring to ‘a city in central Colorado’ (see Collins English Dictionary online), which is famous for its skiing resort. However, regarding the contested goods this word is distinctive. Consequently, the earlier mark and the contested sign have no element which is clearly more distinctive.
Visually, the signs coincide in the sequence of letters ‘A-S-P-E-N-’, the only difference being the slightly fancy typeface in which these letters are written in the contested sign. The whole verbal element of the contested sign is entirely contained at the beginning of the earlier mark. On the other hand, they differ in the three final letters of the earlier mark ‘T-E-R’ and the figurative element of the contested sign, as described above.
When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). This is also applicable in the case at hand with respect to the device in the contested sign.
Regarding the slightly fancy typeface in which the verbal element of the contested sign is written, this stylisation must be considered not that elaborate or sophisticated and it will not lead the consumer’s attention away from the element it seems to embellish.
Furthermore, the first parts of the verbal elements of the conflicting marks coincide. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right or from top to bottom, which makes the part placed at the left or on top of the sign (the initial part) the one that first catches the attention of the reader.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters /A-S-P-E-N-*-*-*/, present identically in both signs. The marks differ in the sound of the final letters /-T-E-R/ of the earlier mark, which have no counterpart in the contested sign. The different letters fall at the end of the earlier mark, where the consumer usually focuses less. The marks are aurally similar to a high degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For a part of the relevant public, neither of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for this part of the relevant public. For another part of the public, the contested sign will be perceived as having the meaning as explained above, while the earlier mark is meaningless. Since one of the signs will not be associated with any meaning, the signs are not conceptually 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.
According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).
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 and services 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
A likelihood of confusion (including a likelihood of association) 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.
The goods at issue have been found to be partly identical or similar (to various degrees) and partly dissimilar and the level of attention is relatively high. The earlier mark has a normal degree of distinctiveness.
The marks have been found visually similar to an average degree and aurally to a high degree, without this impression being altered by any conceptual perception for a part of the public. The difference in the figurative element of the contested sign has less impact, as the consumer focuses more on the verbal element, and the difference in the letters of the verbal elements falls at the end of the earlier mark, where the consumer also focuses less.
In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers with a high degree of attention need to rely on the 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 Romanian trade mark registration No 47 195.
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, including the goods found similar to a low degree, according to the interdependence principle explained below.
In view of all the relevant factors in the present case and also the principle of interdependence between them, i.e. the principle that a lesser degree of similarity between the goods/services may be offset by a greater degree of similarity between the marks, the relevant public could be mistaken as to the origin of those goods that are similar even only to a low degree.
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.
Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use/reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.
Since the opposition is not entirely successful on the ground of Article 8(1)(b) EUTMR, the Opposition Division will now proceed with the examination on the ground of Article 8(5) EUTMR.
REPUTATION – ARTICLE 8(5) EUTMR
According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.
- The signs must be either identical or similar.
- The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.
- Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.
The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.
- Reputation of the earlier trade mark
According to the opponent, the earlier trade mark has a reputation in Romania.
Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.
In the present case the contested trade mark was filed on 15/07/2015. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in Romania prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely
Class 5: Pharmaceutical products; medicinal products under (sic) the form of tablets.
Class 35: Advertising and business.
In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.
On 14/09/2015, together with the notice of opposition, the opponent submitted, in particular, the following evidence:
- An extract from a market research by the company ‘CEGEDIM’, dated 10/08/2015, regarding the situation of Romanian OTC (over the counter) market from 2010 to 2014, demonstrating that the product sold under the earlier mark was the best-sold OTC in Romania in volume of sales, during this period. According to this research the products under the mark ‘ASPENTER’ that were sold in 2010 are 151.197.000, in 2011 are 189.091.200, in 2012 are 191.591.880, in 2013 are 188.854.830 and in 2014 are 207.490.380. According to the opponent, the data regarding the product ‘ASPENTER’ on the Romanian market, results from the Pharma & Hospital Report study, which is an audit of the nationwide consumption of medicinal products, based on a panel of pharmacies (both hospital and retail pharmacies).
- An undated article published by the Romanian financial publication ‘Ziarul Financiar’, showing that the brand ‘ASPENTER’ occupies a second place in value of sales of all medicines and of all OTC’s manufactured or commercialised in Romania. It mentions that the sales have been over 11.97 million of euros in July 2013 until June 2014. Furthermore, the following is mentioned: ‘On the other hand, in the category of products dispensed without prescription (the so-called OTCs), first in the top is Nurofen, which has been the undisputed leader for years. The list is completed by Aspenter and Parasinus, and the first two have a total market share of over 12%, i.e. over 150 million RON worth of sales’.
The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade mark has acquired a reputation through its use.
The evidence provides insufficient information, for example, on the extent of use. The material that has been submitted indicates that the trade mark, together with another brand, has 12% of the market share. It could even be that the other mark has 10% and the opponent’s mark ‘ASPENTER’ only 2%. Anyway, this number of 12% is not particularly a high number. The opponent did not give any indication or information that would allow the Opposition Division to conclude otherwise. They could, for example, have explained how the market is divided or organised and may be then it would have appeared that a market share of 12% is an important feature. As well, regarding the origin, scope and reliability of the source from which this market research comes, namely ‘Pharma & Hospital Report’, is also unknown.
Furthermore, the Opposition Division agrees with the applicant, in its observations of 01/07/2016, where it states the following: ‘From the market research documents, it is not extractable when the subject market research was conducted and on what number of pharmacies or whether this research was conducted over the whole territory of Romania or only in some of the areas. …Moreover, even if the date of August 10, 2015 was deemed to be true, the market study would have been appraised only after the filing of the challenged application, which was recorded in the register on July 15, 2015’. The same as regarding this date is applicable with respect to the news paper article, as it is undated and the Opposition Division cannot know whether it was published before 15/07/2015.
Consequently, from the above mentioned evidence it cannot be deduced that the mark has a reputation. There are no indications from a reliable source concerning the volume of sales during some years, the market share mentioned is not particularly impressive, even less as it is the market share of two brands and there are no indications at all of the extent to which it has been promoted. As a result, the evidence in its totality does not show the degree of recognition of the trade mark among the relevant public. Under these circumstances, the absence of any reliable and objective indicators as to whether or not the mark has reputation, the Opposition Division concludes that the opponent failed to prove that its trade mark has a reputation.
As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that it has, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected insofar as it is based on this ground.
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 shall 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
Chantal VAN RIEL
Inés GARCÍA LLEDÓ
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.