OPPOSITION No B 2 597 113

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

Chemnovatic Ławecki Gęca, Spółka Jawna, ul. Dobrzańskiego 3, lok. BS002, 20262 Lublin, Poland (applicant), represented by Ewelina Pijewska, ul. Chopina 31/11, 20-023 Lublin, Poland (professional representative).

On 18/01/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 597 113 is upheld for all the contested goods, namely:

Class 1:        Chemical substances for use in manufacture; Chemical substances for analysis in laboratories; Inorganic chemical for use in science; Chemical substances for use in the manufacture of perfumes; Chemical substances for use in the production of drugs; Chemical substances for use in the biochemical industry; Chemical substances for use in the manufacture of scented cosmetics; Chemical substances for use in the manufacture of scented detergents; Chemical substances for use in the manufacture of shock-absorbing backings; Chemical substances for use as food ingredients; Chemical substances, chemical materials and chemical preparations, and natural elements; Chemicals for use as ingredients in the course of manufacture; Chemicals for use in scientific research [other than medical or veterinary]; Chemical substances for analyses in laboratories, other than for medical or veterinary purposes; Chemical substances for analyses in laboratories, other than for medical or veterinary purposes; Chemical compositions for use in the manufacture of colours; Chemical compositions for use in the civil engineering industry; Chemical compositions and materials for use in science; Chemical compositions and materials for use in cosmetics; Chemical compositions for water treatment; Chemical compositions for use in construction; Botanical extracts for use in making cosmetics.

Class 3:        Essential oils and aromatic extracts; Aromatics; Cake flavorings [essential oils]; Flavourings for beverages [essential oils]; Aromatherapy preparations; Oils for perfumes and scents; Extracts of perfumes; Essential oils and aromatic extracts.

Class 5:        Tobacco-free cigarettes for medical purposes; Smoking herbs for medical purposes; Tobacco extracts [insecticides]; Plant extracts for pharmaceutical use; Plant extracts for pharmaceutical use.

2.        European Union trade mark application No 14 058 192 is rejected for all the contested goods. It may proceed for the remaining goods and services.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 058 192, namely against all the goods in Classes 1, 3 and 5. The opposition is based on, inter alia, European Union trade mark registration No 304 857. The opponent invoked Article 8(1)(b) and Article 8(5) 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 European Union trade mark registration No 304 857.

1. The goods

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

Class 1:         Chemicals and chemical preparations and substances used in industry, science, photography, agriculture, horticulture, forestry or for preserving foodstuffs; resins in particular unprocessed artificial resins; unprocessed plastics; manures; adhesives.

Class 5:        Pharmaceutical and veterinary preparations and substances, including preparations for healthcare; chemicals and chemical preparations and substances used for medical and pharmaceutical purposes and in medicines; dietetic substances for medical purposes; foods and beverages for babies, infants or invalids; vitamins; preparations for destroying vermin; herbicides, pesticides, fungicides; insecticides.

Class 9:        Optical apparatus and instruments, including optical lenses, parts of all the aforementioned products.

Class 10:        Medical, surgical, dental or veterinary apparatus and instruments; artificial limbs, eyes and teeth; orthopedic articles; suture materials; parts of all the aforesaid goods.

The contested goods are the following:

Class 1:        Chemical substances for use in manufacture; Chemical substances for analysis in laboratories; Inorganic chemical for use in science; Chemical substances for use in the manufacture of perfumes; Chemical substances for use in the production of drugs; Chemical substances for use in the biochemical industry; Chemical substances for use in the manufacture of scented cosmetics; Chemical substances for use in the manufacture of scented detergents; Chemical substances for use in the manufacture of shock-absorbing backings; Chemical substances for use as food ingredients; Chemical substances, chemical materials and chemical preparations, and natural elements; Chemicals for use as ingredients in the course of manufacture; Chemicals for use in scientific research [other than medical or veterinary]; Chemical substances for analyses in laboratories, other than for medical or veterinary purposes; Chemical substances for analyses in laboratories, other than for medical or veterinary purposes; Chemical compositions for use in the manufacture of colours; Chemical compositions for use in the civil engineering industry; Chemical compositions and materials for use in science; Chemical compositions and materials for use in cosmetics; Chemical compositions for water treatment; Chemical compositions for use in construction; Botanical extracts for use in making cosmetics.        

Class 3:        Essential oils and aromatic extracts; Aromatics; Cake flavorings [essential oils]; Flavourings for beverages [essential oils]; Aromatherapy preparations; Oils for perfumes and scents; Extracts of perfumes; Essential oils and aromatic extracts.

Class 5:        Tobacco-free cigarettes for medical purposes; Smoking herbs for medical purposes; Tobacco extracts [insecticides]; Plant extracts for pharmaceutical use; Plant extracts for pharmaceutical use.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘including’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be 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.

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 1

The contested chemical substances for use in manufacture; chemical substances for analysis in laboratories; inorganic chemical for use in science; chemical substances for use in the manufacture of perfumes; chemical substances for use in the production of drugs; chemical substances for use in the biochemical industry; chemical substances for use in the manufacture of scented cosmetics; chemical substances for use in the manufacture of scented detergents; chemical substances for use in the manufacture of shock-absorbing backings; chemical substances for use as food ingredients; chemical substances, chemical materials and chemical preparations, and natural elements; chemicals for use as ingredients in the course of manufacture; chemicals for use in scientific research [other than medical or veterinary]; chemical substances for analyses in laboratories, other than for medical or veterinary purposes; chemical substances for analyses in laboratories, other than for medical or veterinary purposes; chemical compositions for use in the manufacture of colours; chemical compositions for use in the civil engineering industry; chemical compositions and materials for use in science; chemical compositions and materials for use in cosmetics; chemical compositions for water treatment; chemical compositions for use in construction; botanical extracts for use in making cosmetics are included in the broad category of, or overlap with, the opponent’s chemicals and chemical preparations and substances used in industry, science, photography, agriculture, horticulture, forestry or for preserving foodstuffs. Therefore, they are identical.

Contested goods in Class 3

The contested essential oils and aromatic extracts; aromatics; cake flavorings [essential oils]; flavourings for beverages [essential oils]; aromatherapy preparations; oils for perfumes and scents; extracts of perfumes; essential oils and aromatic extract are similar to a low degree to the opponent’s pharmaceutical preparations and substances, including preparations for healthcare. They may have the same purpose, distribution channels and relevant public.

Contested goods in Class 5

The contested tobacco-free cigarettes for medical purposes; smoking herbs for medical purposes; plant extracts for pharmaceutical use; plant extracts for pharmaceutical use are included in the broad category of, or overlap with, the opponent’s chemicals and chemical preparations and substances used for medical and pharmaceutical purposes and in medicines. Therefore, they are identical.

The contested tobacco extracts [insecticides] are included in the broad category of, or overlap with, the opponent’s insecticides. Therefore, they 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 or similar are specialised goods directed at professional customers with professional knowledge or expertise and/or the public at large. The degree of attention may vary from average to high, considering the complexity of the goods and/or the importance given to health matters.

3. The signs

NOVARTIS
Earlier trade mark	Contested trade mark

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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

The earlier mark is a word mark, ‘NOVARTIS’.

The contested sign is a figurative mark, consisting of the letters ‘CHEM’ and ‘NOVATIC’ written in upper case letters. The smaller letters ‘CHEM’, at the bottom left-hand side of the sign, are depicted in black, with an orange line underneath. The larger letters ‘NOVATIC’, at the bottom right-hand side of the sign, are depicted in orange. Above these letters is a figurative element of a hexagon, drawn with black lines and with one open side on the right. Inside the hexagon is an expanded letter ‘N’, the right-hand upward stroke of which replaces the open side of the hexagon.

The earlier mark has no elements that could be considered clearly more distinctive or dominant (visually eye-catching) than other elements.

The element ‘CHEM’ of the contested sign will be associated with chemicals, as it is a common abbreviation of the word ‘chemicals’ or ‘chemistry’. Bearing in mind that some of the relevant goods are chemical substances, this element is non-distinctive for these goods, namely for all the contested goods in Class 1. This element is also considered weak for the rest of the relevant goods, namely for the relevant goods in Classes 3 and 5, since these goods usually come from the chemical industry.

Visually, the signs coincide in the letters ‘NOVA’ and ‘TI’. However, they differ in the letter ‘R’ and the final letter, ‘S’, of the earlier mark and in the figurative element containing the letter ‘N’, the non-distinctive or weak word element ‘CHEM’ and the final letter, ‘C’, of the contested mark, as well as in the depiction of the contested mark.

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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘NOVA’ and ‘TI’, present identically in both signs. The pronunciation differs in the sound of the letters ‘****R**S’ of the earlier mark and in the sounds of the non-distinctive or weak verbal component ‘CHEM’ and the final letter, ‘C’, of the contested mark, which have no counterparts in the earlier sign. The contested mark also differs in the sounds of the letter ‘N’ inside the figurative element of the contested sign, in the event that this letter is pronounced.

Therefore, the signs are aurally highly similar.

Conceptually, the public in the relevant territory will perceive the letters ‘CHEM’ in the contested mark as referring to chemicals or chemistry, the hexagon and the letter ‘N’, whereas the other sign has no meaning in that territory. Since one of the signs will have no 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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

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.

In the present case, the contested goods are partly identical and partly similar to a low degree. The signs are visually similar to an average degree and aurally highly similar. They target the public at large and professionals, and the degree of attention is average to high.

The earlier mark is a word mark, ‘NOVARTIS’, and, although the contested mark has several elements, the word ‘NOVATIC’ is one of its distinctive elements. The other word element, ‘CHEM’, is non-distinctive or weak for the relevant goods. The letter ‘N’ in the hexagon and the other figurative elements are secondary in the mark. The earlier mark ‘NOVARTIS’ and the distinctive word element ‘NOVATIC’ in the contested mark coincide in six out of eight letters of the earlier mark and out of seven letters of the contested sign. They differ only in the letter ‘R’ in the middle part of the earlier sign, in its last letter, ‘S’, and in the letter ‘C’ and the slight stylisation of the contested mark.

Therefore, and given that average consumers only rarely have the chance to make a direct comparison between different marks but must trust in their imperfect recollection of them, the Opposition Division considers that, despite the high degree of attention of the general and professional public, the visual and aural commonalities between the signs are sufficient to lead to a likelihood of confusion between the marks in the relevant territory.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. 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 found to be identical or similar to those of the earlier trade mark.

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). Given in particular the average degree of visual similarity and high degree of aural similarity between the signs, there is also a likelihood of confusion for those goods that are similar to a low degree.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 304 857. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use/reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier right European Union trade mark registration No 304 857, ‘NOVARTIS’, leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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

Victoria DAFAUCE MENÉNDEZ

Lena FRANKENBERG GLANTZ

Richard BIANCHI

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.