OPPOSITION No B 2 782 764

Almirall S.A., Ronda General Mitre, 151, 08022 Barcelona, Spain (opponent), represented by Isern Patentes y Marcas, S.L, Avenida Diagonal, 463 bis, 2° piso, 08036 Barcelona, Spain (professional representative)

a g a i n s t

Drugs Minerals and Generics Italia S.R.L. in forma abbreviata D.M.G. Italia S.R.L., Via Laurentina Km 26.700, 00071 Pomezia, Italy (applicant), represented by Hoffmann Eitle Patent- und Rechtsanwälte PartmbB, Arabellastr. 30, 81925 München, Germany (professional representative).

On 21/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 782 764 is partially upheld, namely for the following contested goods:

Class 5:        Pharmaceuticals and medical preparations; Sanitary preparations for medical purposes; Dietetic food and substances adapted for medical use, food for babies; Dietary supplements for humans; Dietetic preparations for medical purposes; Saprophytic bacterial flora supplements in the ORL (ear, nose and throat) area with antagonistic activity against pathogens; Dietary food supplements; Homeopathic supplements; Mineral supplements; Vitamin supplements; Nutritional supplements; Cultures of microorganisms for medical use; Cultures of Saprophytic bacteria for medical use; Preparations of microorganisms for medical use; Preparations of Saprophytic bacteria cultures for medical use; Food and nutritional supplements not for medical purposes; Dietary food supplements not for medical purposes; Homeopathic supplements not for medical purposes; Mineral supplements not for medical use; Vitamin supplements not for medical use; Nutritional supplements not for medical use.

2.        European Union trade mark application No 15 406 333 is rejected for all the above. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 406 333. The opposition is based on Spanish trade mark registration No 3 082 013. 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 3:          Cosmetics; cosmetic creams; moisturising creams; non-medicated skin creams; skin care products; gels, lotions and creams for external use, other than for medical purposes, for relieving skin inflammation; soaps; essential oils.

Class 5:          Pharmaceutical preparations and products; skin care creams, gels,                       lotions, liquids and solutions for application to the skin for medical use.        

The contested goods are the following: Class 1:        Cultures of microorganisms not for medical use; Cultures of Saprophytic bacteria not for medical use; Preparations of microorganisms not for medical use; Preparations of Saprophytic bacteria cultures not for medical use. Class 5:        Pharmaceuticals and medical preparations; Sanitary preparations for medical purposes; Dietetic food and substances adapted for medical use, food for babies; Dietary supplements for humans; Dietetic preparations for medical purposes; Saprophytic bacterial flora supplements in the ORL (ear, nose and throat) area with antagonistic activity against pathogens; Dietary food supplements; Homeopathic supplements; Mineral supplements; Vitamin supplements; Nutritional supplements; Cultures of microorganisms for medical use; Cultures of Saprophytic bacteria for medical use; Preparations of microorganisms for medical use; Preparations of Saprophytic bacteria cultures for medical use; Food and nutritional supplements not for medical purposes; Dietary food supplements not for medical purposes; Homeopathic supplements not for medical purposes; Mineral supplements not for medical use; Vitamin supplements not for medical use; Nutritional supplements not for medical use.

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.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

Contested goods in Class 1

The contested cultures of microorganisms not for medical use; cultures of Saprophytic bacteria not for medical use; preparations of microorganisms not for medical use; preparations of Saprophytic bacteria cultures not for medical use are for indicative use in a laboratory (for example), for science or research purposes. They are dissimilar to the opponent’s pharmaceutical preparations and products in class 5 as the latter are finished products used for medical purposes. Accordingly, they target a different public and do not share the same distribution channels.

They are also dissimilar to the contested skin care creams, gels, lotions, liquids and solutions for application to the skin for medical use in Class 3, which are, again, all finished products which target a different public and do not share the same distribution purposes. They are practical goods aimed at medically treating and protecting the skin of consumers.

They are further dissimilar to the opponent’s cosmetics; cosmetic creams; moisturising creams; non-medicated skin creams; skin care products; gels, lotions and creams for external use, other than for medical purposes, for relieving skin inflammation; soaps; essential oils in Class 3, since, again, the former are unfinished products which are used in industry or science, while the latter are finished products used for cosmetic purposes, toiletry and cleaning purposes or for the purpose of protection. They target a different public, and do not share the same distribution channels, nature or method of use. They are neither complementary nor in competition.

Contested goods in Class 5

The contested pharmaceuticals and medical preparations overlap with the opponent’s pharmaceutical preparations and products. 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 dietetic preparations for medical purposes overlap with the opponent’s pharmaceutical preparations and products. 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 sanitary preparations for medical purposes are similar to a high degree to the opponent’s pharmaceutical preparations, as they have the same purpose, and can coincide in producer, relevant public and distribution channels.

The contested dietetic food and substances adapted for medical use are substances prepared for special dietary requirements, with the purpose of treating or preventing disease. Bearing this in mind, their purpose is similar to that of pharmaceutical preparations and products, insofar as they are used to improve a patient’s medical condition. The relevant public coincides and these goods generally share the same distribution channels. Therefore, these goods are considered similar. The same reasoning extends to the contested saprophytic bacterial flora supplements in the ORL (ear, nose and throat) area with antagonistic activity against pathogens.

The contested dietary supplements for humans and dietary food supplements are similar in purpose to the opponent’s pharmaceutical preparations and products, as they also aim to prevent or cure medical problems in the broadest sense, or to balance nutritional deficiencies. To this extent, they also share the same distribution channels and target the same relevant public. The same reasoning applies by analogy to the contested homeopathic supplements, mineral supplements; vitamin supplements; nutritional supplements.

The contested food and nutritional supplements not for medical purposes and dietary food supplements not for medical purposes are also similar to the opponent´s pharmaceutical preparations and products, as they also aim to prevent or cure medical problems in the broadest sense, or to balance nutritional deficiencies. To this extent, they also share the same distribution channels and target the same relevant public. The same reasoning applies to homeopathic supplements not for medical purposes; mineral supplements not for medical use; vitamin supplements not for medical use and nutritional supplements not for medical use.

The contested food for babies is similar to a low degree to the opponent´s pharmaceutical preparations, as they share the same purpose and coincide in distribution channels. 

The contested cultures of microorganisms for medical use refer to the propagation of micro-organisms- which are microscopic, living, single-celled organisms such as bacteria- in a growth medium. Cultures of micro-organisms can be used, for example, to influence the balance of the various bacterial strains in the intestines, and to improve the composition of the intestinal flora. They have the same general purpose as the opponent’s pharmaceutical preparations, namely to improve human well-being and prevent illnesses, may target the same consumers and may have the same producers. Therefore, they are considered similar to a low degree. The same reasoning applies to the contested cultures of Saprophytic bacteria for medical use; preparations of microorganisms for medical use; preparations of Saprophytic bacteria cultures for medical use.

 

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 which are identical or similar to various degrees are directed at the public at large and at professionals in the field of health or medicine.

Insofar as pharmaceutical preparations are concerned, medical professionals have a high degree of attention. Furthermore, with regard to end consumers, it is apparent from case-law that, even in cases where pharmaceutical products are sold without prescription, such goods will be of concern to consumers because they affect their state of health. Therefore, pharmaceutical products, whether or not issued on prescription, receive a heightened degree of attentiveness by consumers(15/12/2010, T-331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T-288/08, Zydus, EU:T:2012:124, § 36).

The consumer’s level of attention is considered to be higher than average in respect of health- related goods in general.

Given that the general public is more prone to confusion, the examination will proceed on this basis.

3. The signs

	Bactofilm
Earlier trade mark	Contested sign

The relevant territory is Spain.

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).

Both marks are word marks. Although composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58).

The earlier mark will be perceived as a conjunction made up of two separate components “Blasto” and “Film”, due to familiarity with the English word “film” in at least a cinematic or photographic context. This latter element does not have a meaning for the relevant public in relation to the goods at issue, and is therefore distinctive. The word element “Blasto” will not be understood by the public and is also distinctive. The contested mark will also be perceived as having two separate components “BACTO” and “FILM”. The first alludes to bacteria, and is therefore weak for goods directed at optimising the health of consumers or even at feeding babies, since babies require particular protection from germs. The latter element does not have a meaning for the relevant public in relation to the goods at issue and is therefore distinctive.

There are no dominant elements.

Visually, the signs coincide in eight letters. In respect of their first component, they share an initial letter “B” together with a common “a” and “o”. Their last six letters form the exact same letter string and include the same four letter component ‘FILM’, a distinctive element in both marks. However, they differ in that the earlier mark is a figurative mark depicted in a stylised font, while the contested mark is a word mark. Also, the first component of the earlier mark contains the letters “l” and “s” , which have no counterparts in the earlier mark. Furthermore, the contested sign contains the letter “c”, which has no counterpart in the earlier trade mark.

Therefore, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛B_A_TO’, and in the sound of the letters forming the component ‛FILM’, which latter element is present identically in both signs and which is distinctive. The pronunciation differs in the sound of the letters ‛l’ and ‛s’ of the earlier sign which have no counterparts in the contested mark, and in the sound of the letter “c” of the contested sign, which has no counterpart in the earlier sign.

Therefore, the signs are similar to an average degree.

Conceptually, reference is made to the above considerations on the meanings of the signs. There is, therefore, a link as consumers will grasp the concept of the word ‘film’ in both signs and to that extent the degree of conceptual similarity is deemed as average.

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 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

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

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).

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/services covered are from the same or economically linked undertakings.

The general public (more prone to confusion) is likely to confuse the marks in relation to the goods which are similar, even to a low degree, since the similarity between the signs is clearly sufficient to offset the low degree of similarity between those goods.

Due to the conceptual, visual and aural similarity between the signs to an average degree, and the identity and similarity of the goods, a likelihood of confusion exists on the part of the Spanish general public, even displaying a higher level of attention.

Considering all the above, 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 partially well founded on the basis of the opponent’s Spanish trade mark registration No 3 082 013. It follows that the contested trade mark must be rejected for part of the contested goods.

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, including to a low degree, to those of the earlier trade mark.

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)(b) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

For the sake of completeness, as regards the dissimilar goods, the Opposition Division points out that there is no need to proceed further to the comparison of the signs for the Spanish public, as the outcome of the present decision would still be the same.

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 will 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

Oana-Alina STURZA

Keeva DOHERTY

Judith NEMETH

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.