OPPOSITION No B 2 405 325

Visufarma S.p.A., Via Canino, 21, 00191 Rome, Italy (opponent), represented by Società Italiana Brevetti S.p.A., Piazza di Pietra, 39, 00186 Rome, Italy (professional representative)

a g a i n s t

Stöpler Instrumenten en Apparaten B.V., Middenwetering 1, 3543 AR Utrecht, the Netherlands, (applicant), represented by Kantoor Dreef Advocatuur & Bemiddeling, Deventerstraat 474, 7325 XW Apeldoorn, the Netherlands (professional representative).

On 20/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 405 325 is partially upheld, namely for the following contested goods:

Class 5:        Sanitary preparations

Class 10:        Medical apparatus and instruments

2.        European Union trade mark application No 12 775 326 is rejected for all the above goods. 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 12 775 326 (figurative). The opposition is based on, inter alia, European Union trade mark registration No 4 637 831 ‘CoQUN’ (word). 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.

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 4 637 831.

1. The goods

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

Class 5: Eye-drops and ophthalmic products.

The contested goods are the following:

Class 5: Sanitary preparations

Class 10: Medical apparatus and instruments

Class 21: Wiping cloths; Cleaning preparations and materials made of non-woven fabrics, cotton or microfibres; cleaning preparations and material including disposable cloths.

An interpretation of the wording of the list of goods of Class 21 of the contested sign is required to determine the scope of protection of these goods. In particular, the used term ‘including’ 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 (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

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 5

The goods of the earlier sign eye-drops and ophthalmic products are pharmaceutical ophthalmological preparations and are considered highly similar to the contested sanitary preparations, which as a broader category includes all types of sanitary preparations used specifically or, among others, in ophthalmology (e.g. contact lenses cleaning preparations, solutions for contact lenses, sterilising preparations, etc.) They coincide in their purpose – healing, relieving and preventing specific medical conditions – and often have the same producer. These goods coincide in their distribution channels – they are sold in pharmacies and opticians, and depending on the legal regulations and specific characteristics of the goods – some of them may also be sold at drugstores or even supermarkets. The goods further have the same relevant public and may have a complementary relationship (e.g. contact lenses cleaning preparations are used to clean contact lenses, which are an ophthalmic product).

The Opposition Division has carefully reviewed the arguments of the applicant on the comparison of these goods, but does not accept them for the following reasons. The applicant contends that the contested goods have a different purpose, which is ‘cleaning and caring for the body’. This purpose may rather be qualified as pertaining to the goods of Class 3 and not to those of Class 5. The goods of Class 5 serve medical or veterinary purposes. ‘Medicine’ is the science or practice of the diagnosis, treatment and prevention of disease (Oxford English Dictionary) and ‘veterinary medicine’ has as its subject animals and pets. Therefore, the purposes of the goods of Class 5 are to diagnose, treat and prevent diseases, while the goods of Class 3 are intended among others for general care of the body. Therefore, if the intended purpose of the applicant’s goods were the contended one, then the goods should have been applied for in Class 3. As for the complementarity factor, it is true that as the applicant has noted, it is not necessary that the compared goods are used at all times together. However, as evident from the above example, a complementary relationship does exist in certain cases. Further, it is to be noted that the actual or intended way of distribution of a product is irrelevant in the present assessment. The fact that the applicant has chosen to use specific distribution channels is not reflected in any way in the list of its goods of Class 5, which refers to the general category of sanitary preparations, commonly distributed in pharmacies, opticians, drugstores and even supermarkets. The latter reasoning also applies to the criteria for determining the relevant public.

Contested goods in Class 10

The contested goods medical apparatus and instruments are a broad category, including among others ophthalmic apparatus and instruments. In view of the goods sharing the same purpose – healing, relieving and preventing specific medical conditions – the complementary relationship (treatment with medical apparatus and instruments is usually accompanied by application of pharmaceutical preparations) and the fact that the same producer may often manufacture these goods, they are considered similar to a low degree.

In view of the above reasoning and findings, the arguments of the applicant on lack of similarity between these goods are considered not founded. As already mentioned above, the actual state of things or the intentions of the applicant with respect to the goods at issue are irrelevant and it is the goods, as applied for that are subject to examination. Medical apparatus and instruments is a broad category that includes apparatus and instruments to be used in the medical field. The purpose of cleaning and caring for the body may not therefore be attributed to apparatus of class 10.

Contested goods in Class 21

The contested goods of Class 21 wiping cloths; cleaning preparations and materials made of non-woven fabrics, cotton or microfibres; cleaning preparations and material including disposable cloths fall under the broad category of cleaning articles. Given the scope of this class of goods, these are goods for cleaning objects, while goods for cleaning the body fall under Class 3 or 5, depending on whether a medical or veterinary use is intended or general hygiene. To the extent any cleaning preparations fall under the opponent’s pharmaceutical preparations they are intended for medical or veterinary use. The opponent’s observations that the goods of the applicant cover items such as cleaning pads and cloths for eyes are not correct. These items would fall under either Class 5 or Class 3, depending on whether they are intended for medical or veterinary use or for general care of the body, respectively. The goods do not coincide in their distribution channels because such cleaning items are not sold at pharmacies or opticians, but primarily at supermarkets, specialised shops for household essentials and possibly at drugstores. To the extent pharmaceutical preparations are sold at drugstores and supermarkets, they are in completely different sections of the stores. Further, the opponent blankly states that there is a complementary relationship between the compared goods but does not adduce any evidence and the Opposition Division finds no reasons justifying the existence of such relationship. None of the remaining factors leading to a degree of similarity between the goods at issue is present, either.

In view of the foregoing, all goods of Class 21 of the applicant are considered dissimilar to those of Class 5 of the earlier mark.

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.

The relevant public for pharmaceutical and sanitary preparations is considered to be composed of the public at large and professional public. 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. The same reasoning applies to part of the sanitary preparations, which require a higher degree of care and attention when they are selected and used (e.g. contact lenses cleaning preparations, solutions for contact lenses, sterilising preparations, antiseptics, etc.). Hence the relevant public of the goods of Class 5 of the contested sign and of the earlier mark is the general public and the professional public with high degree of attention.

Further, the medicinal apparatus and instruments of the contested goods of Class 10 are targeted mainly at professional public, with specific professional knowledge or expertise. The degree of attention is considered to be high given that the medical apparatus and instruments are technically highly sophisticated and their technical characteristics are of relevance for high-risk activities related to human life and health.

3. The signs

CoQUN
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 single word element ‘CoQUN’ constituting the earlier mark and the word element of the contested sign ‘COCUNE” have no meaning in the relevant territory and are therefore distinctive with respect to the goods at issue. The statement of the applicant that the word element of the contested sign ‘COCUNE’ is derived from the English word ‘cocoon’ is noted, however even if this is the case, the word as it appears in the mark does not convey such a concept.

The figurative device of the contested sign, representing an ellipse form in purple, with two concentric white ellipses inside it, does not convey any concept and is also distinctive. The applicant claims that this element evokes the concept of a butterfly cocoon without adducing any arguments or evidence in support. However, this concept is not conveyed by the contested sign as the figurative element appears as a pure abstract device element.

It is to be noted that 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). This premise fully applies to the contested sign, since the figurative element is not specifically attractive due to its originality or level of detail. Therefore, it will rather be perceived as a decorative element, which will have a minor influence on the overall impression.

Furthermore, the word and figurative element of the mark in purple represent the whole sign and do not take the larger part of it, as stated by the applicant. On the contrary, it is ‘COCUN’ that takes a bigger portion of the whole sign. Upon taking into account that both elements are clearly perceptible and none of them is specifically more eye-catching, the sign does not have an element that is more dominant than the other.

Visually, the signs coincide in ‘CO*UN(*)’. In other words, they coincide in 4 letters out of 5 in the earlier sign and 6 in the contested one, whose letters are represented in the same sequence and have the same place in both words (1st, 2nd, 4th, and 5th letter). The word elements of the signs differ in their 3rd letter which is ‘Q’ in the earlier sign and ‘C’ in the contested one and in the 6th letter ‘E” in the contested one, which has no counterpart in the earlier. Moreover, both letters ‘Q” and ‘C’ have the same round forms and having also in mind they are in the middle of the words, it is not even excluded at a quick glance that they are seen as the same letter. The figurative element of the contested sign has no counterpart in the earlier one, but as noted above has a lesser impact in the overall perception of the sign.

The identified different middle letter and additional letter at the end of the contested sign in the compared word elements, and the figurative element of the contested mark, not being specifically eye-catching, do not outweigh the identified identical letters, positioned in the same place, two of which represent the beginning of the word elements. Therefore, the signs are similar at least 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 [KOK(J)UN], since ‘Q’ and ‘C’ in the signs will be pronounced identically as ‘K’. It is possible that part of the public pronounces the ‘E” in the contested sign, in which case there will be difference in this last sound of the contested sign, which will have no counterpart in the earlier mark. It is not clear why the applicant considers that the stress in the earlier mark will be on the first syllable, while the one in the contested mark – on the second one. Instead, at least for the cases where the words are pronounced as two-syllable words, it is more likely that the stress falls on the same syllable, either first or second, depending on the pronunciation rules of the specific language.

Therefore, the signs are aurally identical for part of the public and at least similar to an average degree for another part.

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.

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 good 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) and even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54).

The comparison has found that the earlier mark and the contested sign are visually similar at least to an average degree, aurally identical for part of the public and similar at least to an average degree for another part, and that conceptual comparison is not possible. The contested goods have been found to be partially similar to a high degree, partially similar to a low degree and partially – dissimilar. The earlier mark has a normal degree of distinctiveness and the relevant public is composed of the public at large and professionals, who show high degree of attention with respect to the identified similar goods.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public with respect to the contested goods of classes 5 and 10, found to be similar to those of the earlier mark. Therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No. 4 637 831. With respect to the goods of Class 10, it is true that low degree of similarity exists and the attention of the public is high (for Class 5 average attention is taken into account, since the part of the public more prone to confusion is measured). However, given the signs have been found to be visually similar at least to an average degree and aurally identical or similar at least to an average degree, the higher attention of the public and the low similarity of the goods are not sufficient to exclude the existence of likelihood of confusion on the part of the public.

It follows from the above that the contested trade mark must be rejected for the goods of Classes 5 and 10.

The rest of the contested goods, namely those of Class 21 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. The opponent has also based its opposition on the Italian trade mark registration No. 1 143 333. Since this mark is identical to the one which has been compared and covers the same goods, the outcome cannot be different with respect to goods for which the opposition has already been 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. 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

Lucinda CARNEY

Teodora TSENOVA-PETROVA

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.