OPPOSITION No B 2 694 308

Biofarma, société par actions simplifiée, 50, rue Carnot, 92284 Suresnes cedex, France (opponent), represented by Cabinet Plasseraud, 66, rue de la Chaussée d'Antin, 75440 Paris Cedex 09, France (professional representative)

a g a i n s t

Unifarco S.p.A., Via Cal Longa 62, 32035 Santa Giustina BL, Italy (applicant), represented by Perani & Partners S.p.A., Piazza San Babila 5, 20122 Milano, Italy (professional representative).

On 25/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 694 308 is upheld for all the contested goods, namely: 

Class 5:  Pharmaceutical preparations for skin and hair care; cosmetic preparations with medicinal properties for skin and hair care; diet supplements.

2.        European Union trade mark application No 15 060 676 is rejected for all the contested goods. It may proceed for the remaining non-contested goods.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 060 676 for ‘CERAPSOR’, namely against all the goods in Class 5. The opposition is based on European Union trade mark registration No 10 689 156 for ‘PERASCOR’. 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 for human use; dietetic substances adapted for medical use.

The contested goods are the following:

Class 5:         Pharmaceutical preparations for skin and hair care; cosmetic preparations with medicinal properties for skin and hair care; diet supplements.

Contested goods in Class 5

The contested pharmaceutical preparations for skin and hair care; cosmetic preparations with medicinal properties for skin and hair care, the latter being medical preparations due to its classification in Class 5, are included in, or overlap with, the broad category of the opponent’s pharmaceutical preparations for human use in Class 5. Therefore, they are identical.

The contested diet supplements are products that are intended to be included in body modification diets and preparations intended to boost the nutritional content of a diet and provide nutrients, such as vitamins, minerals and acids that may be missing from a person’s diet (or diet of an animal). Their main purpose is to enhance health and prevent diseases in human beings or animals along with their nutritional value. These goods are included in the broad category of, or overlap with, the opponent’s dietetic substances adapted for medical use, which includes substances prepared for special dietary requirements with the purpose of treating or preventing a disease. Therefore, the goods are identical.

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 target both the public at large and professionals in the medical and healthcare field (26/04/2007, C-412/05 P, ‘TRAVATAN’). Some of the contested goods, such as the broad category of the applicant’s pharmaceutical preparations for skin and hair care, and the opponent’s pharmaceutical preparations for human use can include preparations that are relatively cheap and are sold directly to the consumer without prescription, while it can also include other goods that are more specialised drugs for treating serious health problems. 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. This high level of attention is also applied to dietetic products, since these goods have a direct effect on the proper functioning of the intestinal transit and, finally, having a healthy physical appearance (15/12/2009, T-412/08, Trubion, EU:T:2009:507, § 28).

Considering all the above, the level of attention is rather high.

3. The signs

PERASCOR	CERAPSOR
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 word ‘PERASCOR’ of the earlier mark and ‘CERAPSOR’ of the contested sign are both meaningless terms and are normally distinctive for the goods at stake.

Visually, the signs coincide in the sequence of letters ‘*-E-R-A-(*)-S-(*)-O-R’ and both have the same length, namely eight letters. Furthermore, both marks also contain the letters ‘P’ and ‘C’, albeit in other positions. On the other hand, they differ in the position of the first letter ‘P’ of the earlier mark which is in fifth position in the contested sign and the letter ‘C’ in sixth position in the earlier mark, while it is the first letter of the contested sign. Therefore, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters /‘*-E-R-A-(*)-S-(*)-O-R’/, present identically in both signs. Furthermore, they are both pronounced in three syllables /PE-RA-SCOR/ or /PE-RAS-COR/, depending on the respective language, versus /CE-RAP-SOR/. The pronunciation differs in the sound of the first letters ‘P’ versus ‘C’ and in the middle letters ‘C’ versus ‘P’, respectively in the earlier mark and contested sign. Therefore, the signs are aurally similar to an average 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 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.

In its submissions, the opponent claims that the distinctiveness of the earlier mark is above average on account of the fact that it is a fanciful term which does not refer to any particular concept in the pharmaceutical field. Regarding this argument, first of all it should be noted that it is Office practice, when an earlier mark is not descriptive (or is not otherwise non-distinctive), to consider it as having no more than a normal degree of inherent distinctiveness. However, this degree of distinctiveness can be further enhanced if appropriate evidence is submitted showing that a higher degree of distinctiveness of the earlier mark has been acquired through use or because it is highly original, unusual or unique (26/03/2015, T-581/13, Royal County of Berkshire POLO CLUB (fig.)/BEVERLEY HILLS POLO CLUB et al., EU:T:2015:192, § 49, last alternative). It should, however, be recalled that a mark will not necessarily have a higher degree of distinctive character just because there is no conceptual link to the relevant goods and services (order of 16/05/2013, C-379/12 P, H/Eich, EU:C:2013:317, § 71). In the present case, the opponent did not submit any further argumentation or evidence in order to prove its claim. Therefore, this claim must be set aside as unfounded.

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

A likelihood of confusion (including a likelihood of association) 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.

The goods at issue have been found identical and the level of attention is rather high. The earlier mark has a normal degree of distinctiveness.

The marks have been found visually and aurally similar to an average degree and the conceptual aspect does not influence the assessment of the similarity of the signs.

In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers with a high degree of attention need to rely on the their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

Therefore, also in case of the goods where the attention of the relevant public may be higher than average, given the visual and aural similarities between the signs, likelihood of confusion cannot safely be excluded in respect of the goods that have been found to be identical.

In view of all the relevant factors in the present case and the principle of interdependence between them, i.e. the principle that a lesser degree of similarity between the marks may be offset by a greater degree of similarity between the goods, in this case the identity of the goods offsets the lesser degree of similarity between the signs.

The applicant, in its observations of 22/02/2017, also refers to previous decisions of the Office to support its arguments. However, it must be noted that 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.

The applicant refers to previous decisions of the Office to support its arguments of no likelihood of confusion, namely ‘GENCYDO’ versus ‘SENSIDO’ (B 1 369 885), ‘DOLOTEC’ versus ‘SOFOTEC’ (B 1 129 941), ‘CERAMOL’ versus ‘VERAPOL’ (B 1 861 668), ‘FAMOXIN’ versus ‘LANOXIN’ (R 10/2007-1). The previous cases referred to by the applicant are not that relevant to the present proceedings for the following reasons: Regarding B 1 369 885, not only the first letters are different, but also the letters ‘CY’ versus ‘SI’, the same letters are not contained in both marks and they give the marks overall a different impression, while in the case at hand the same letters are contained in both marks, only two letters have different positions. Regarding B 1 129 941 and B 1 861 668, not only the first letters are different, but also the letters ‘L’ versus ‘F’ or ‘M’ versus ‘P’, respectively, while in the present case all the letters are contained in both marks. Moreover, in R10/2007-1, not only the first and third letters ‘F’ and ‘M’ are different from ‘L’ and ‘N’, but also the endings ‘OXIN’ are not that striking in the field of pharmaceuticals and the emphasis lies on the beginnings. For all the aforementioned reasons, the Opposition Divisions finds that the marks are not comparable with the case at hand.

Furthermore, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same. While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

Regarding the applicant’s submission that the beginning of a sign has generally more importance than the ending in the overall impression produced by a sign, the following must be pointed out. It is true that it is an established practice according to which the consumers pay more attention to the beginning of the mark. However, 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, the initial part usually entails more than just the first letter. In the case at hand, all the remaining letters are identical (-ERA-).

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 10 689 156. 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

Martin MITURA

Chantal VAN RIEL

Saida CRABBE

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.