OPPOSITION No B 2 795 287

Stada Arzneimittel AG, Stadastr. 2-18, 61118 Bad Vilbel, Germany (opponent), represented by Harmsen Utescher, Neuer Wall 80, 20354 Hamburg, Germany (professional representative)

a g a i n s t

Natiris – Centro Dietético S.A., Centro Empresarial Sintra-Estoril VIII, fracções A/B

Estrada de Albarraque – Linhó, 2710-297 Sintra, Portugal (applicant), represented by Ricardo Rodrigues, Rua da Moeda 1, 1º, sala 9, 1200-275 Lisboa, Portugal (professional representative).

On 14/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 795 287 is upheld for all the contested goods.

2.        European Union trade mark application No 15 603 541 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 15 603 541 for the word mark ‘BRONCHONAT’. The opposition is based on German trade mark registration No 752 110 for the word mark ‘Bronchostad’. 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, chemical products for healing purposes and care of health, pharmaceutical drugs.

The contested goods are the following:

Class 5:        Dietary and nutritional supplements; Nutritional supplements; Medicated food supplements; Food supplements; Dietary supplements for humans; Medicine; Pharmaceutical drugs; Medicines for human purposes; Pharmaceuticals.

The contested pharmaceutical drugs are identically included in the opponent’s specification.

The contested medicines for human purposes are identical to the opponent’s pharmaceutical preparations.

The contested medicine, pharmaceuticals are identical to the opponent’s pharmaceutical drugs because they are synonyms.

The contested medicated food supplements overlap with 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 remaining contested dietary and nutritional supplements; nutritional supplements; food supplements; dietary supplements for humans are similar to the opponent’s pharmaceutical preparations as these goods may coincide in purpose, distribution channels and end users.

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 and similar are directed at the public at large and at the medical professionals with specific professional knowledge or expertise.

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.

Given that the general public is more prone to confusion, the examination will proceed on this basis. Taking into account the abovementioned facts, the attention of this part of the public will vary from average (e.g. for food supplements) to high.  

3. The signs

Bronchostad	BRONCHONAT
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 composed of one word, namely ‘Bronchostad’ in case of the earlier mark and ‘Bronchonat’, in case of the contested sign. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether the signs are represented in upper or lower case characters.

The signs as a whole are meaningless for the relevant public in the relevant territory.

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, the fact remains that, when perceiving a word sign, he will break it down into elements which, for him, suggest a specific meaning or which resemble words known to him (06/10/2004, T-356/02, Vitakraft, EU:T:2004:292, § 51). Therefore, the relevant public will perceive the element ‘Broncho’ in both signs with their respective endings ‘stad’ of the earlier mark and ‘nat’ of the contested sign.

The common element ‘Broncho’ will be perceived by the relevant public in the relevant territory as referring to the bronchus, ‘Bronchia’, ‘Bronchien’ in German, meaning  bifurcated part of the air tube in the lungs (definition extracted from Duden online on 30/08/2017). In the context of the relevant goods, which serve to treat or prevent diseases in human beings or animals, this element is weak. The endings ‘stad’ of the earlier mark and ‘nat’ of the contested sign are meaningless for the relevant public in the relevant territory and, therefore, normally distinctive for the goods in question.

Since the signs under dispute are word marks, they have no elements that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the string of the letters ‘Broncho’, which is placed in the initial part of each of the signs and constitutes 7 out of 10/11 letters respectively. That factor will be of a significant importance for the relevant consumers although the inherent distinctiveness of this element is limited. 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, which makes the part placed at the left of the signs (the initial part) the one that first catches the attention of the reader.

The endings ‘stad’ of the earlier mark and ‘nat’ of the contested sign are normally distinctive in relation to the goods at issue and share the same vowel ‘a’, placed in the same position within the signs. The little differences arising from the remaining letters forming their endings, namely, ‘s-t-d’ in case of the earlier mark and ‘n-t’ in case of the contested sign can be easily overlooked by the relevant public. Therefore, also their impact on the overall impression conveyed by both marks is limited. Consequently, the degree of visual similarity must, therefore, be considered average.

Aurally, the signs coincide in the sound of the letters forming the element ‘Broncho’ placed at their beginning. Although the inherent distinctiveness of this element in both signs is limited due to its weak character it still plays a leading role in them from a phonetic perspective. As mentioned above, the little phonetic difference arising from their final letters can be easily overlooked by the relevant public taking into account the common, longer beginning ‘Broncho’. Furthermore, both signs are built of three syllables (‘BRON-CHO-STAD’) and (‘BRON-CHO-NAT’), what makes their rhythm and intonation also similar.  Therefore, from the aural point of view, the signs are similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. They will be associated with the same concept, albeit is weak for the goods in question. Consequently, 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.

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, despite the presence of a weak element in the mark as stated above in section c) of this decision.

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).

The contested goods are partly identical and partly similar to the goods covered by the earlier mark.

The distinctiveness per se of the earlier mark is normal.

The signs under comparison are visually, aurally and conceptually similar to an average degree on the account of their common initial element ‘Broncho’. As explained above, the final letters present in both signs ‘stad’ versus ‘nat’, due to their position in the signs, have a reduced impact on the assessment of the likelihood of confusion in the present case. Although, the common element ‘Broncho’ is weak in relation to the relevant goods, its importance cannot be downplayed, because it constitutes the beginning of the signs. Furthermore, the endings ‘stad’ of the earlier mark and ‘nat’ of the contested sign are shorter than their initial part ‘Broncho’ and, as mentioned above, display also some similarity from a visual and aural perspective.

Likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa. This principle applies to the present case because the goods in question are identical and similar.

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).

The Opposition Division considers that the visual, aural and conceptual similarities between the signs are sufficient to lead to a likelihood of confusion between the marks in the relevant territory for identical and similar goods, even considering that the degree of attention of the relevant consumers in relation to the goods at issue may be higher than average.

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 well founded on the basis of the opponent’s German trade mark registration No 752 110. 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

Ewelina ŚLIWIŃSKA

Monika CISZEWSKA

Gueorgui IVANOV

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.