OPPOSITION No B 2 635 459

Dermofarm, S.A., Leonardo Da Vinci, 16-22 – Parc Can Sant Joan, 08191 Rubi (Barcelona), Spain (opponent), represented by Oficina Ponti, SLP, Consell de Cent, 322, 08007 Barcelona, Spain (professional representative)

a g a i n s t

Pierre Fabre Dermo-Cosmétique, 45 place Abel Gance, 92100 Boulogne, France (holder), represented by Durán-Corretjer S.L.P., Còrsega 329 (Pº de Gracia/Diagonal), 08037 Barcelona, Spain (professional representative).

On 07/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 635 459 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of international registration designating the European Union No 1 241 794, namely against all the goods in Classes 3 and 5. The opposition is based on European Union trade mark registration No 11 817 301. 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 signs

AGE LAB	DENSIAGE
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 earlier mark is a word mark consisting of two verbal elements, ‘AGE’ and ‘LAB’. The verbal element ‘AGE’ is an English word that means ‘the length of time that a person has lived or a thing has existed (usually defined in years)’. This word is also very similar to the French word ‘âge’, and will therefore be understood by French-speaking consumers. The rest of the public will not recognise this word, so it will be a distinctive element.

The element ‘LAB’ in the earlier mark will be perceived as a shortened form of ‘laboratory’ by part of the relevant public, such as the English-speaking part of the public. Bearing in mind that the relevant goods in Class 3 are often produced and/or tested in laboratories, it is considered that this element is weak. However, for the rest of the public, such as Spanish speakers, it has no meaning and is distinctive.

The contested sign is the word mark ‘DENSIAGE’, which will be perceived as a whole as an indivisible unit. Since it is meaningless, it is distinctive.

Visually, the signs coincide in the letters ‘AGE’, placed in different positions in the signs. In the earlier mark these are the first three letters forming the first element of the sign, while in the contested sign these are the last three letters of the element ‘DENSIAGE’. The signs differ in the second element, ‘LAB’, of the earlier mark versus the letters ‘DENSI’ placed at the beginning of the contested sign. The first parts of the conflicting marks do not coincide (the earlier mark starts with the letters ‘AGE’, while the contested sign begins with the letters ‘DEN’). Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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.

The signs also differ in their lengths (six letters versus eight letters) and in the number of elements (two elements versus one element). Therefore, although the signs have in common the string of letters ‘AGE’, these letters are placed in different positions and this commonality does not render the signs visually similar. The General Court has held that the same number of letters in two marks is not, as such, of any particular significance for the relevant public, even for a specialised public. Since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar (25/03/2009, T-402/07, ARCOL / CAPOL, EU:T:2009:85, § 81-82, confirmed by 04/03/2010, C-193/09 P, ARCOL / CAPOL, EU:C:2010:121). Therefore, taken as a whole, it is concluded that the signs are not visually similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sounds of the letters ‘AGE’. However, these letters are placed in different positions in the marks; in the earlier mark they are at the beginning, whereas in the contested sign they are placed at the end. As the signs coincide in only irrelevant aspects, since the coinciding letters are aurally not perceptible as separate elements, but hidden in the contested sign, it is concluded that the signs are not aurally similar.

Conceptually, although part of the public in the relevant territory will perceive the meaning of at least one element of the earlier mark, as explained above, the contested sign has no meaning. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

For part of the public, neither of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs merely coincide in irrelevant aspects, namely three letters placed in different positions in the signs, they are overall dissimilar.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and 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 holder 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 holder are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Anna BAKALARZ

Alexandra APOSTOLAKIS

Frédérique SULPICE

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.