OPPOSITION No B 2 720 921

Boehringer Ingelheim International GmbH, Intellectual Property Rights & Unfair Competition, Binger Str. 173, 55216 Ingelheim, Germany (opponent)

a g a i n s t

CLSHV, Chemin de l'Eglise, 14640 St Vaast en Auge, France (applicant), represented by Sodema Conseils S.A., 16 rue du Général Foy, 75008 Paris, France (professional representative).

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

DECISION:

1.        Opposition No B 2 720 921 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 15 360 423 for the word mark DELBIASE, namely against all of the goods in Class 5. The opposition is based on international trade mark registration No 232 206A designating Germany, FRUBIASE (a word mark). 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 and sanitary preparations for personal hygiene.

The contested goods are the following:

Class 5: Food supplements; Pharmaceuticals.

The contested pharmaceuticals are identical to the opponent’s pharmaceutical preparations, as these terms are synonyms (information extracted from Oxford English Dictionary on 29/08/2017 at http://www.oed.com/view/Entry/142229?redirectedFrom=pharmaceutical%20-%20
eid).

The contested food supplements are similar to the opponent’s pharmaceutical preparations, as they may have the same purpose, namely to affect the human health in a positive way. Further, these goods can coincide in their distribution channels, and target the same public.

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 directed at the public at large, but also at customers with specific professional knowledge or expertise in the medical field.

It is apparent from the case-law that, insofar as pharmaceuticals and 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 health.

The same considerations are given regarding food supplements also, due to their potential effect on human health.

3. The signs

FRUBIASE	DELBIASE
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).

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, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (judgment of 13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).

In the present case, the signs as a whole have no meaning.

The applicant’s argument that the beginning of the earlier mark ‘FRU’ might be understood as a reference to fruit, based on the German word ‘Frucht’ and that the beginning of the contested mark ‘DEL’ has no meaning in German, cannot be followed. In fact, neither the letter sequence ‘FRU’, nor the letters ‘DEL’ have a meaning in German, and the letter sequence ´FRU´ is not used as a common abbreviation of ´Frucht´ in connection with the relevant goods either.

Further, the applicant argues that the element ‘ASE’ of the signs will be perceived as a suffix referring to enzymes, and preceded by the letters ’BI’ meaning ’two’, the letters ’BIASE’ present identically in both marks may indicate the presence of two enzymes in the composition of the goods concerned. It is true that the ending ‘ASE’ is a suffix in English language, taken from the ending of diastase (noun), and used in naming enzymes, for example lactase, maltase, pectase etc. (information extracted from Oxford English Dictionary on 10/08/2017 at http://www.oed.com/view/Entry/11412?redirectedFrom=ase#eid). Since the medical jargon and specific endings used in chemistry are rather international, it is indeed likely that the professional public will perceive such reference and this part of the signs is therefore weak for that public in relation to the relevant goods, which may all contain enzymes as active ingredients.

However, the public at large will perceive the signs as a whole since the components of the signs do not suggest a specific meaning or resemble words known to them.

In order to assess the case in the light which is more favourable to the opponent (while, as will be seen below, not harming the interests of the applicant), the Opposition Division will first examine the opposition in relation to the general public, for which the part ‘BIASE’ of the signs is not weak. For this part of the public, the element ‘FRUBIASE’ which forms the earlier mark has a normal degree of distinctiveness. This is also the case of the element ‘DELBIASE’ of the contested sign.

It should be also noted that the opponent’s argument that the word portion ‘BIASE’ is used exclusively by it in the European Union and therefore that  it is a very distinctive string of letters is not corroborated by any evidence on file and, consequently, must be set aside.

Visually, the signs coincide in the sequence of the letters ‘BIASE’ of both signs. However, they differ in the first part, namely ‘FRU’ of the earlier mark versus ‘DEL’ of the contested mark.

It is important to note the fact that the signs do not coincide in none of the first letters. Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Therefore, the signs are visually similar to lower than average degree.

Aurally, the pronunciation of the signs coincides in the letters ‘BIASE’, present identically at the end of both signs. However, the beginning of the signs ‘FRU’ and ‘DEL’ are pronounced differently by the relevant public. The letter sequence ‘D-E-L’ of the contested sign is a consonant – vowel – consonant combination, while the earlier mark starts with ‘F-R-U’, two consonants followed by a vowel. Further, the sound of the vowels is completely different in the beginning of the signs.    

Therefore, the signs are aurally similar to lower than average degree.

Conceptually, as previously established, the public considered will not perceive any meaning in the signs. Therefore, neither of the signs has a meaning for the general 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 goods in question from the perspective of the public at large in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

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, C342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C251/95, Sabèl, EU:C:1997:528, § 22).

The contested goods were found to be identical or similar to those of the earlier mark and they are directed, inter alia, at the public at large whose degree of attention is relatively high.

For this part of the public, the conceptual aspect is neutral as neither of the signs has a meaning and, from a visual and aural point of view, the signs are similar but only to a lower than average degree. The distinctiveness of the earlier mark must be seen as normal.

Account should be taken of the relatively high level of attention of consumers with regard to the goods in Class 5, independently of whether or not they are issued with a medical prescription, which weighs against a likelihood of confusion.

Having regard to the overall impression conveyed by the marks at issue, conclusion must be that there is no risk that the public will be led to believe that goods bearing the word mark DELBIASE come from an undertaking which holds the earlier word mark FRUBIASE or from an undertaking economically linked to them.

This absence of a likelihood of confusion equally applies to the part of the public for which the element ‘BIASE’ is weak. This is because, as a result of the weak character of that coinciding component, that part of the public, which also displays a high or relatively high degree of attention in relation to the goods at issue, will perceive the signs as being even less similar.

Considering all the above, 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

Denitza STOYANOVA-VALCHANOVA

Alexandra APOSTOLAKIS

Claudia MARTINI

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.