BYLTISSA | Decision 2589581 – Novartis AG v. STADA Arzneimittel AG

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OPPOSITION No B 2 589 581

Novartis AG., 4002 Basel, Switzerland (opponent), represented by Friedrich Graf von Westphalen & Partner mbB, Kaiser-Joseph-Str. 284, 79098 Freiburg i. Br., Germany (professional representative)

a g a i n s t

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

On 10/01/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 589 581 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 196 381, namely against some of the goods in Class 5. The opposition is based on international trade mark registration No 892 544 designating the European Union. The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK ON THE PROOF OF USE REQUEST

On 07/03/2016, the applicant requested that the opponent submit proof of use of the earlier right on which the opposition is based, namely international trade mark registration No 892 544 designating the European Union. Article 160 EUTMR provides that for the purposes of applying Article 42(2) EUTMR, the date of publication pursuant to Article 152(2) EUTMR shall take the place of the date of registration for the purpose of establishing the date as from which the mark which is the subject of an international registration designating the EU must be put into genuine use in the Union.

Pursuant to Article 152(2) EUTMR, the date of publication of the earlier trade mark at issue is 03/10/2012. Therefore, the request for proof of use was found to be inadmissible, as it concerned an earlier right that, at the time of publication of the contested sign, namely 07/07/2015, had not been registered for more than five years.

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, vaccines, pharmaceutical preparations for diagnostic purposes.

The contested goods are the following:

Class 5: Pharmaceutical preparations.

Pharmaceutical preparations are identically contained in both lists of goods.

  1. 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.

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 the goods are 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 quoted case-law).

In particular, medical professionals have a high degree of attention when prescribing medicines. Non-professionals also have a higher than average degree of attention, regardless of whether or not the pharmaceuticals are sold without prescription, as these goods affect their state of health.

In the present case, the goods found to be identical are directed at the public at large, as well as at a professional public with medical knowledge and expertise, namely pharmacists and medical professionals. As stated above, the degree of attention will be high, since the goods in question are pharmaceutical products and products related to human health.

  1. The signs

BILTRIS 

BYLTISSA

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 two signs are word marks, each consisting of a single verbal element, and neither has any element that could be considered clearly more distinctive or dominant than other elements.

Visually, the signs coincide in the letters ‘B*LT*IS*’. However, they differ in their second letters, namely ‘I’ in the earlier mark and ‘Y’ in the contested sign, as well as in the additional letter ‘R’ in the earlier mark and the additional letters ‘SA’ in the contested sign.

Furthermore, although the signs start with similar sequences of letters, account must be taken of the fact that the differences at the ends of the signs are clearly perceptible and will help to counteract the impact of their similar beginnings. Furthermore, although the beginning of a sign generally has more importance than the ending in the overall impression produced by that sign, this consideration cannot prevail in all cases and cannot, in any event, undermine the principle that an examination of the similarity of the signs must take account of the overall impression produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details (27/06/2012, T-344/09, Cosmobelleza, EU:T:2013:40, § 52). Furthermore, as pointed out above, the beginnings of the signs in the present case are not identical, as their second letters differ visually.

Therefore, bearing in mind the slightly different lengths of the signs, as well as the fact that the coinciding letters appear in between other letters, the signs are considered visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs may coincide in their first syllables, ‘BIL’ and ‘BYL’, as a part of the relevant public will pronounce the letters ‘I’ and ‘Y’ identically. However, the pronunciation will still differ in the signs’ remaining syllables, ‘TRIS’ in the earlier mark and ‘TIS-SA’ in the contested sign. Taking into consideration the different numbers of differing syllables, namely one in the earlier mark and two in the contested sign, and bearing in mind the different aural impact of the coinciding vowels and consonants caused by their differing positions in the signs, as well as the differences in the closed last syllable ‘TRIS’ versus the open last syllable ‘SA’, the signs are found to be aurally similar to a low degree.

Conceptually, neither of the signs has a meaning for the 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 to be similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

  1. 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.

  1. Global assessment, other arguments and conclusion

The goods in question are identical and the degree of attention will be high, for the reasons explained above in section b).

The signs are visually and aurally similar to the extent they coincide in the letters ‘B*LT*IS*’. However, as stated above, the signs also have significant differences, as demonstrated by the comparison carried out in section c).

As explained above, despite the coinciding letters at the beginnings of the signs, namely ‘B*LT’, the endings of the signs have entirely different structures from a visual and an aural point of view. While the ending of the earlier mark contains a complex syllable with three consonants, the contested sign consists of two syllables, the last of which ends in a vowel. Furthermore, when pronounced, the verbal elements convey completely different aural impressions, since the differing parts result in overall aural differences in terms of rhythm and intonation. Consequently, the similarities in the beginnings of the signs have a lesser impact, visually and aurally, than the differences in their endings.

Furthermore, as stated above, the degree of attention in relation to goods in Class 5 is high. Even though the goods may be available for purchase without prescription, the Opposition Division notes that even in cases where consumers themselves purchase health-related products, they often consult a specialist in the area at an earlier stage and the degree of attention will still be high than average with respect to goods that have a direct impact on human health.

Therefore, taking into account all the relevant factors explained above, the similarities between the signs are not sufficient to counteract the differences, especially taking into account the high degree of attention. Consequently, they cannot lead to a likelihood of confusion in this case.

The opponent refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the opponent are not relevant to the present proceedings, as either they concern goods and services in different classes (e.g. Classes 1, 18 or 25) in relation to which the degree of attention would be lower than that paid when purchasing goods in Class 5, or there are different factors that must be taken into consideration in the assessment of the signs. Therefore, bearing in mind the different circumstances in those cases, their findings may not be directly applied in the same way in the present case.

Considering all the above, even taking into account that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Steve HAUSER

Cristina CRESPO MOLTÓ

Julie GOUTARD

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.

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