OPPOSITION No B 2 650 235

Biofarma, société par actions simplifiée, 50, rue Carnot, 92284 Suresnes cedex, France (opponent), represented by Cabinet Plasseraud, 66, rue de la Chaussée d'Antin, 75440 Paris Cedex 09, France (professional representative)

a g a i n s t

Lotos pharma, SIA, Pērnavas iela 1—39, Riga, 1012, Latvia (applicant), represented by Agency Tria Robit, Vilandes iela 5, Riga, 1010, Latvia (professional representative).

On 15/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 650 235 is upheld for all the contested goods.

2.        European Union trade mark application No 14 784 813 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 14 784 813. The opposition is based on French trade mark registration No 154 173 553. 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 on which the opposition is based are the following:

Class 5:        Pharmaceutical preparations; dietetic substances for medical use; food supplements and dietetic preparations.

The contested goods are the following:

Class 5:        Dietary supplements for humans; cholesterol reducers.

The contested dietary supplements for humans are products that are intended to be included in body modification diets and preparations intended to boost the nutritional content of a diet and provide nutrients, such as vitamins, minerals and acids, that may be missing from a person’s diet. Their main purpose is to enhance health and prevent diseases in human beings along with their nutritional value. These goods are included in the broad category of, or overlap with, the opponent’s food supplements. Therefore, they are identical.

The contested cholesterol reducers are goods intended to reduce cholesterol. Such goods can be offered in the form of pharmaceutical preparations or natural cholesterol reducers. Therefore, and to this extent, they are included in, or overlap with, the broad category of the opponent’s pharmaceutical preparations which include any kind of medicine, that is, a substance or a combination of substances for treating or preventing disease in people or animals. 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 are directed at the public at large and at professionals with a specific knowledge or expertise in the pharmaceutical or medical field.

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.

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).

Furthermore, this high level of attention is also applied to dietary supplements, since these goods have a direct effect on the proper functioning of the intestinal transit and, finally, having a healthy physical appearance (15/12/2009, T-412/08, Trubion, EU:T:2009:507, § 28).

Considering all the above, the degree of attention of the relevant public is deemed to be high, as these goods relate to health, and even average consumers pay a higher than average degree of attention when such goods are involved.

In the present case, the Opposition Division finds it appropriate to limit its examination to the part of the relevant public that is more prone to confusion, that is, the public at large (general public), which is assumed to have no specific medical knowledge. If a significant part of the relevant public for the goods at issue may be confused about the origin of the goods, that will be sufficient to establish a likelihood of confusion. It is not necessary to establish that all actual or potential consumers of the relevant goods are likely to be confused.

3. The signs

ACEOLIP	ATEROLIP
Earlier trade mark	Contested sign

The relevant territory is France.

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 under comparison are word marks, each of which is composed of one verbal element. The earlier mark consists of the word ‘ACEOLIP’ and the contested sign consists of the word ‘ATEROLIP’.

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, 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 applicant argues, in its observations, that the verbal element ‘LIP’ that the signs have in common may be perceived, especially by professionals, as a reference to ‘lipids’ which has a direct connection with the goods in question. However, the Opposition Division is of the opinion that even if this might be true in the case of medical professionals or pharmacists, it is rather unlikely that the general public in the relevant territory (i.e. consumers without any specific knowledge or expertise in the medical field) will discern any particular meaning in the conflicting signs. Consequently, the verbal elements of the signs, ‘ACEOLIP’ and ‘ATEROLIP’, will be taken by the general public in their entirety as invented words, with an average degree of distinctiveness for the relevant goods.

Visually and aurally, the signs coincide in the letters/sounds ‘A*E*OLIP’. They have a similar length (7 letters in the earlier mark versus 8 letters in the contested sign) and the same vowels in the same order, A – E – O – I. Aurally, both consist of four syllables, /A-CE-O-LIP/ and /A-TE-RO-LIP/.

However, the signs differ in their second letters/sounds, ‘C’ of the earlier mark and ‘T’ of the contested sign, and in the additional fourth letter/sound, ‘R’, present in the contested sign.

Therefore, the signs are visually and aurally similar to an average degree.

Conceptually, neither of the signs has a meaning for the general 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 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.

However, in its submissions, it claims that the distinctiveness of the earlier mark is above average on account of the fact that it is a fanciful term which does not refer to any particular concept in the pharmaceutical field. As regards this argument, first of all it should be noted that it is Office practice, when an earlier mark is not descriptive (or is not otherwise non-distinctive), to consider it as having no more than a normal degree of inherent distinctiveness. However, this degree of distinctiveness can be further enhanced if appropriate evidence is submitted showing that a higher degree of distinctiveness of the earlier mark has been acquired through use or because it is highly original, unusual or unique (26/03/2015, T-581/13, Royal County of Berkshire POLO CLUB (fig.)/BEVERLEY HILLS POLO CLUB et al., EU:T:2015:192, § 49, last alternative). It should, however, be recalled that a mark will not necessarily have a higher degree of distinctive character just because there is no conceptual link to the relevant goods and services (order of 16/05/2013, C-379/12 P, H/Eich, EU:C:2013:317, § 71). In the present case, the opponent did not submit any further argumentation or evidence in order to prove its claim. Therefore, this claim must be set aside as unfounded.

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 relevant goods from the perspective of the general public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Accordingly, a greater degree of similarity between the goods and services may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

Account must also be 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). Even consumers with 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).

The present assessment of likelihood of confusion considers the perception of the part of the public that is more prone to confusion, namely the general public; the degree of attention is high and the earlier mark enjoys a normal degree of inherent distinctiveness for the relevant goods.

As concluded above, the contested goods are identical to the opponent’s goods.

The signs in conflict are visually and aurally similar to an average degree, as explained in detail above in section c) of this decision. A conceptual comparison is not possible in the present case. The differences between the signs are confined to their second letters/sounds and additional fourth letter/sound in the contested sign. However, these differences are, in the Opposition Division’s opinion, not sufficient to counteract the similarities between the signs which result in similar visual and aural impressions given by the signs. Even the general public with a high degree of attention may be confused as to the origin of the goods in question.

 

Based on an overall assessment, and taking into account the principle of imperfect recollection and the interdependence principle mentioned above, the Opposition Division concludes that 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 of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

Therefore, the opposition is well-founded on the basis of the opponent’s French trade mark registration No 154 173 553. It follows from the above that the contested sign must be rejected in its entirety.

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

Chantal VAN RIEL

Martin MITURA

Ric WASLEY

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.