OPPOSITION No B 2 638 594

Frank Nedder, Am Pellerbruch 30, 21271 Hanstedt, Germany  (opponent), represented by Uexküll & Stolberg Partnerschaft Von Patent- Und Rechtsanwälten Mbb, Beselerstr. 4, 22607 Hamburg, Germany  (professional representative)

a g a i n s t

Axon Neuroscience Se, Dvorákovo nábrezie 10, 811 02 Bratislava, Slovakia  (applicant).

On 15/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 638 594 is partially upheld, namely for the following contested goods and services:

Class 5:         Pharmaceutical products; vaccines; medicines for human medicine; isotopes for medical use; biological preparations for medical use; chemical preparations for medical use; amino acids for medical use.

Class 44:         Pharmacy advice; pharmacists' services (preparing prescriptions).

2.        International registration No 1 250 379 is refused protection in respect of the European Union for all of the above goods and services. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of international registration designating the European Union No 1 250 379. The opposition is based on, inter alia, international trade mark registration No 1 179 399 designating the European Union. 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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s international trade mark registration No 1 179 399 designating the European Union.

1. The goods and services

The goods and services on which the opposition is based are the following:

Class 5:         Chemico-pharmaceutical preparations, chemical preparations for medical, pharmaceutical and veterinary purposes, biological preparations for medical and veterinary purposes; pharmaceutical preparations; serums; antigens.

Class 35:         Retail and wholesale services in the field of chemico-pharmaceutical preparations, chemical preparations for medical, pharmaceutical and veterinary purposes, biological preparations for medical and veterinary purposes, pharmaceutical preparations, serums, antigens.

The contested goods and services are the following:

Class 5:         Pharmaceutical products; vaccines; medicines for human medicine; isotopes for medical use; biological preparations for medical use; chemical preparations for medical use; amino acids for medical use.

Class 42:         Chemical analysis; scientific laboratory services; scientific research; clinical trials.

Class 44:         Pharmacy advice; medical services; pharmacists' services (preparing prescriptions); medical equipment rental; hospital services; rental of sanitation facilities; health counseling services; health care services.

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

Pharmaceutical products; medicines for human medicine; chemical preparations for medical use; biological preparations for medical use are identically contained in both lists of goods (including synonyms).

The contested vaccines overlap with the opponent’s antigens as both are substances which induce an immune response in the body. Therefore, they are identical.

The contested isotopes for medical use; amino acids for medical use are included in the broad category of, or overlap with, the opponent’s biological preparations for medical purposes. Therefore, they are identical.

Contested services in Class 42

The contested Chemical analysis; scientific laboratory services; scientific research; clinical trials are research and chemical analytical services. The opponent’s goods in class 5 are chemical and/or pharmaceutical preparations. The opponent’s services are retail and wholesale services of chemical and/or pharmaceutical preparations. The contested services have different nature, purpose and methods of use compared to all the goods and services of the opponent. They have different origins, are not complementary nor in competition and do not coincide in the relevant consumer. It is not reasonable to assume that a consumer would expect a pharmacist to provide scientific services for a fee or that a scientist would sell pharmaceutical drugs.  The services are dissimilar.

Contested services in Class 44

The contested Pharmacy advice; pharmacists' services (preparing prescriptions) are similar to a low degree to pharmaceutical preparations as they can coincide in user and distribution channels. Furthermore they are complementary.

The remaining medical services; health counseling services; hospital services; health care services and also medical equipment rental; rental of sanitation facilities have different nature, purpose and methods of use compared to all the goods and services of the opponent. Even though a certain link cannot be denied due to the common goal of treating diseases, the differences in nature and especially in the usual origin clearly outweigh any similarities. The relevant public does not expect a doctor to develop and market a drug or do the same with a medical device. They have different origins, are not complementary nor in competition and do not coincide in the relevant consumer. These services also differ from the retail and wholesale services of  chemical and/or pharmaceutical preparations for all the abovementioned reasons. The services are dissimilar.

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 and services found to be identical or similar to a low degree are directed at the public at large and at customers with specific professional knowledge or expertise.

The degree of attention varies from average to high depending on the nature of the health related goods/services.

3. The signs

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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. The Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The marks are figurative marks.

The earlier mark contains a word AXXO, whereas the letter X, on a third position, is placed against a vertical black rectangle. The mark has no meaning, is distinctive, and also has no elements that could be considered clearly more dominant than other elements.

The contested sign contains words AXON and NEUROSCIENCE. In the word AXON, the third letter O is placed against a background of a device element which is formed of four lines originating from the center and facing different directions.

The element AXON will be understood, by part of the public with specific knowledge, such as medically trained personnel, as ‘a long threadlike extension of a nerve cell that conducts nerve impulses from the cell body’ (Collins English dictionary). Bearing in mind that the relevant goods and services are pharmaceutical products and pharmaceutical services, this element is weak for these goods and services for the specialized  public that understands the meaning of the word.

The element NEUROSCIENCE will be understood as ‘the study of the anatomy, physiology, biochemistry, and pharmacology of the nervous system’ (Collins English dictionary). Bearing in mind that the relevant goods and services are pharmaceutical products and pharmaceutical services, this element is weak for these goods and services.

The element NEUROSCIENCE in the contested sign is the less dominant element due to its secondary position and smaller size.

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).

Visually, the signs coincide in the letters AX_O_. This coincidence is in the first element of the contested sign. However, they differ in the remaining letters, a double X in the earlier mark, and N in the contested sign, and in the stylisation elements of the signs. The marks also differ in the word NEUROSCIENCE, found weak.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters AXO, since the presence of the double ‘X’ in the earlier mark has no effect at all on the phonetic comparison (15/10/2008, T-305/06 – T-307/06, Ferromix, Inomix, Alumix, EU:T:2008:444, § 52, confirmed by 15/01/2010, C-579/08 P, Ferromix, Inomix, Alumix, EU:C:2010:18). The fact that the contested mark contains the additional letter ‘N’ at the end is insufficient to rule out any phonetic similarity between the elements AXXO/AXON.

The pronunciation differs in the word NEUROSCIENCE, found weak, which has no counterpart in the earlier sign.

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

Conceptually, although the public in the relevant territory will perceive the meanings of one or all of the word elements of the contested sign, as explained above, the other sign has no meaning in that territory. 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.

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 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.

5. Global assessment, other arguments and conclusion

The goods and services have been found to be partially identical, partially similar to a low degree and partially dissimilar. The similarities and dissimilarities of the marks have been established.

The marks share the same letters AX_O in their beginnings. Consumers generally tend to focus on the beginning of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right and top to bottom, which makes the part placed at the left or top of the sign (the initial part) the one that first catches the attention of the reader. Consequently, the identical beginnings of the marks at issue have to be taken into account when assessing the likelihood of confusion between the marks. Furthermore, the words AXXO and AXON have also a similar vowel sequence A-O. On the aural level, the marks coincide in their first syllables AX, moreover there is a degree of assonance between the endings of the marks since they both feature the sound of the letters “SO”. The additional letter “N” is placed at the end of the first word element in the contested mark and, since it forms the end of a syllable, it will tend to be somewhat swallowed in speech. Although the first element AXON of the contested mark has a meaning, it is such a specific, scientific medical term that it is perceived only by the highly trained professionals and not by the general public. The second element NEUROSCIENCE is perceived by all types of public, but as it is considered weak, it will not most probably be read or memorised.

The device elements in the marks have no clear meaning and will be seen as a mere embellishment. The dissimilar letters and elements will tend to be overlooked and do not deflect attention from the word elements upon which attention will be concentrated. Moreover, the two signs, in view of the coinciding element, could be perceived as two different product or service lines coming from the same undertaking or economically-linked undertakings.

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). 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).

There is a likelihood of confusion because the differences between the signs are confined to non-distinctive or secondary elements and aspects.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s international trade mark registration No 1 179 399 designating the European Union. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to a low degree (since the similarity between the sign is sufficiently high) to those of the earlier trade mark.

The rest of the contested  services 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 services cannot be successful.

The opponent has also based its opposition on the earlier German trade mark No 30 2013 018 602 , for goods and services in classes 5, 35.

Since this mark is identical to the one which has been compared and covers the same scope of goods and services, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those services.

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 shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Francesca DINU

Erkki MÜNTER

Janja FELC

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.