OPPOSITION No B 2 727 140
Biofarm SA, Str. Logofătul Tăutu nr. 99, 031212 Bucharest, Romania (opponent), represented by Doina Țuluca, Bd. Lacul Tei 56, bl. 19, sc. B, ap, 52, sector 2, 020392 Bucharest, Romania (professional representative)
a g a i n s t
Alfasan Nederland B.V., Kuipersweg 9, 3449 JA Woerden, The Netherlands (applicant).
On 25/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 727 140 is upheld for all the contested goods.
2. European Union trade mark application No 14 188 221 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 14 188 221. The opposition is based on Romanian trade mark registration No 113 350. 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 goods
The goods on which the opposition is based are the following:
Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; plasters and materials bandaged; disinfectants.
The contested goods are the following:
Class 5: Medical and veterinary preparations and articles; hygienic preparations and articles.
Veterinary preparations are identically included in both lists.
The contested medical preparations include, as a broader category, the opponent’s pharmaceutical preparations. 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 medical and veterinary articles include, as a broader category, the opponent’s plasters and materials bandaged. 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 hygienic preparations and articles overlap with the opponent’s sanitary preparations for medical purposes, insofar as both categories include absorbent sanitary articles for medical purposes, for instance. Therefore, they are identical.
- 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 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 veterinary preparations.
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 preparations).
- The signs
| AUDISAN
|
|
|
Earlier trade mark |
Contested sign |
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 consists of the word ‘AUDISAN’.
The contested figurative sign comprises a verbal element containing the words ‘EAR SPRAY’ in upper case white letters, the word ‘AUDISAN’ in a smaller, light-green typeface in the upper part of the sign, and an element consisting of the words ‘Spray Auditivo/Spray Auriculaire/Spray Auricolare/Ohrspray/Oorspray’ in a much smaller white typeface in the lower part of the sign, all against a blue background. In addition, there are two green leaves to the top right of the word ‘SPRAY’ and a very thin vertical red line in the left-hand side of the sign.
Notwithstanding that the element ‘EAR SPRAY’, on account of its size and central position, can be considered the most eye-catching component of the contested sign, it is weak for the goods at issue in the perception of a part of the relevant public. Although the word ‘EAR’ is meaningless for the general public without any knowledge of English, for most of the healthcare professionals in the relevant territory and the part of the general public that is familiar with English as a foreign language, it will be understood as the organ of hearing. The term ‘SPRAY’ has entered the Romanian language and will be understood as referring to an aerosol or atomiser for discharging liquids. Therefore, in the context of pharmaceutical preparations and articles (including those for veterinary purposes), the element ‘EAR SPRAY’ will be associated with preparations for treating, or preventing, ear conditions in an aerosol or atomiser form. Furthermore, in relation to sanitary/hygienic preparations and articles, this element has limited distinctiveness, as it is allusive of the fact that such goods can be used for ear care (e.g. cotton plugs for use after administering the medication).
In the same vein, the element consisting of the words ‘Spray Auditivo/Spray Auriculaire/Spray Auricolare/Ohrspray/Oorspray’ are the translations of the English words ‘EAR SPRAY’ into Spanish, French, Italian, German and Dutch, respectively, and will be perceived as such by part of the public, due to the presence of the term ‘Spray’ in all of them and the prefixes ‘Auri-’ and ‘Audi-’, which will be linked with the concept of hearing. Therefore, this element is also weak for the relevant goods. Moreover, on account of its subordinate position and small size, this element has a very limited impact on the overall impression of the contested sign.
In principle, if a significant part of the relevant public for the goods at issue may be confused as to the origin of the goods, this 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.
In the present case, the examination of the opposition proceeds in relation to that part of the relevant public for which the elements ‘EAR SPRAY’ and ‘Spray Auditivo/Spray Auriculaire/Spray Auricolare/Ohrspray/Oorspray’ are weak.
The word ‘AUDISAN’, present in both signs, does not exist as such in Romanian. Admittedly, it may be perceived as a coalescence of the prefix ‘AUDI’, being synonymous with ‘AUDIO’ and referring to ‘hearing’, and the term ‘SAN’, which alludes to ‘health’ but is not commonly used as a suffix. However, although the relevant public may perceive the abovementioned concepts in this coined expression, taken as a whole it is unusual and enjoys an average degree of distinctiveness in the context of the relevant goods.
As regards the visual impact of the ‘AUDISAN’ element in the contested sign, given its position at the top and bright-green colour, this word is readily perceptible despite the prominent depiction of the element ‘EAR SPRAY’.
Some of the figurative elements of the contested sign, namely the blue background and the red line, are basic shapes that are commonly used on labels of goods and are purely decorative. Consequently, it is considered that these elements are non-distinctive for the goods and their impact is very limited. The figurative element depicting the two green leaves may be associated with greenery and thus evoke the idea that the goods have herbal ingredients or a natural origin. Therefore, this element also has little capacity to indicate commercial origin.
Visually, the signs coincide in the distinctive element ‘AUDISAN’, which forms the entirety of the earlier mark and is included as a readily perceptible component in the contested sign. Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right and from top to bottom, which makes the part placed at the top left of the sign (the initial part) the one that first catches the attention of the reader. In that regard, the position of the element ‘AUDISAN’ at the top of the contested sign must be taken into consideration.
Although the contested sign differs in its other verbal and figurative components, among which the element ‘EAR SPRAY’ is visually prominent, their limited distinctiveness for the goods at issue must be taken into consideration.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciations coincide in the sound of the word ‘AUDISAN’, present identically in both signs, and differ in the rest of the verbal elements of the contested sign. However, it can be reasonably assumed that the secondary element ‘Spray Auditivo/Spray Auriculaire/Spray Auricolare/Ohrspray/Oorspray’ is likely to be omitted from the pronunciation of the contested sign.
Given the limited distinctiveness of the contested sign’s aurally relevant element, ‘EAR SPRAY’, the signs are aurally similar to a high degree.
Conceptually, reference is made to the statements made above regarding the meanings of the signs and the elements of which they are composed. Both signs convey the unusual and distinctive combination of the concepts underlying the element that they have in common, ‘AUDISAN’. Although the contested sign bears the meanings of the additional verbal elements, the impact of these weak elements in the assessment of conceptual similarity between the signs is low. The same applies to the semantic content of the green leaves, while the rest of the figurative elements are incapable of establishing any conceptual difference between the signs.
Therefore, the signs are conceptually similar to an average degree.
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.
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 is fanciful for 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, despite the fact that it may be perceived as composed of meaningful terms, as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods covered are from the same or economically linked undertakings.
In the present case, the contested goods are identical to the opponent’s goods. The signs are aurally similar to a high degree and visually and conceptually similar to an average degree. The differences identified between the signs, confined to the additional elements of the contested sign, which have a limited impact on the perception of the public, are not sufficient to outweigh the visual, aural and conceptual similarities to the extent that a likelihood of confusion on the part of the public can safely be excluded.
Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates. For example, the contested sign may be interpreted as a stylised depiction of the earlier mark used to denote pharmaceutical preparations for the treatment of the ear in ‘spray’ form, or for sanitary/hygienic articles used in close connection thereto.
Bearing in mind the foregoing, the Opposition Division considers that even consumers paying a higher than average degree of attention are likely to believe that the identical goods originate from the same undertaking or related undertakings.
Considering all the above, there is a likelihood of confusion on the part of the relevant public for which the contested sign’s element ‘EAR SPRAY’ has weak distinctiveness. Given that a likelihood of confusion for only part of the public in the pertinent territory 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 Romanian trade mark registration No 113 350. It follows that the contested trade mark must be rejected for all the contested goods.
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 | Ana María MUÑIZ RODRÍGUEZ |
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.