OPPOSITION No B 2 342 965

JRX Biotechnology, Inc., 1401 Quail Street, Suite 115, Newport Beach CA 92660 United States (of America) (opponent), represented by Fieldfisher LLP, IP Protection Department, 8th Floor, Riverbank House 2 Swan Lane, London EC4R 3TT, United Kingdom (professional representative)

a g a i n s t

Impolin AB, Kanalvägen 15, 183 38 Täby, Sweden (applicant), represented by Vamo Varumärkesombudet AB, Kungsportsavenyen 3, 411 36 Göteborg, Sweden (professional representative).

On 27/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 342 965 is partially upheld, namely for the following contested goods and services:

Class 3:        Soaps; perfumery, essential oils, cosmetics, hair lotions; deodorants for personal use; deodorants and anti perspirants; antiperspirants (toiletries); anti-perspirant/deodorant; antiperspirants; anti-perspirants in the form of sprays; moist cloths; antiperspirant wet wipes; antiperspirant tissues for personal use; impregnated tissues for cleaning (non-medicated, for personal use); tissues impregnated with cosmetics and cosmetic lotions; perfumed tissues; creams; lotions; gel; antiperspirants for medical use.

Class 5:        Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; plasters, materials for dressings; disinfectants; preparations for destroying vermin; fungicides, impregnated antiseptic wipes; tissues impregnated with pharmaceutical lotions.

Class 44:        Hygienic and beauty care for human beings; Information, advice and consultancy relating to the aforesaid services.

2.        European Union trade mark application No 12 279 188 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 12 279 188. The opposition is based on international trade mark registration No 957 772 designating the European Union. The opponent invoked Article 8(1)(b) EUTMR. Initially, the opponent also invoked Article 8(5) EUTMR, as well as Article 8(4) EUTMR in relation to a non-registered trade mark, but in its submissions of 21/07/2016, it waived those grounds.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of international registration designating the EU No 957 772, on which the opposition is based.

In the present case the contested trade mark was published on 09/01/2014.

Earlier trade mark No 957 772 is an international registration designating the EU. Article 160 EUTMR provides that for the purposes of applying Article 42(2) EUTMR, the date of publication pursuant to Article 152(2) EUTMR will take the place of the date of registration for the purpose of establishing the date as from which the mark which is the subject of an international registration designating the EU must be put into genuine use in the Union.

The date of publication pursuant to Article 152(2) EUTMR for the earlier trade mark at issue is 25/05/2009. Therefore, the request for proof of use is inadmissible, as was notified to the parties on 10/06/2016.

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 and services

The goods on which the opposition is based are the following, after a limitation of the earlier trade mark:

Class 3:        Transdermal formulation for the application of cosmetic agents, namely, chemical preparations that facilitate the penetration of high molecular weight molecules into human skin.

Class 5:        Transdermal formulation for the application of pharmaceutical agents, namely, chemical preparations that facilitate the penetration of high molecular weight molecules into human skin.

The contested goods and services are the following:

Class 3:        Bleaching preparations and other substances for laundry use; Cleaning, polishing, scouring and abrasive preparations; Soaps; Perfumery, essential oils, cosmetics, hair lotions; Dentifrices; Deodorants for personal use; Deodorants and anti perspirants; Antiperspirants (toiletries); anti-perspirant/deodorant; Antiperspirants; Anti-perspirants in the form of sprays; Moist cloths; Antiperspirant wet wipes; Antiperspirant tissues for personal use; Impregnated tissues for cleaning (non-medicated, for personal use); Tissues impregnated with preparations for cleaning; Tissues impregnated with cosmetics and cosmetic lotions; Perfumed tissues; Creams; Lotions; Gel; Antiperspirants for medical use.

Class 5:        Pharmaceutical and veterinary preparations; Sanitary preparations for medical purposes; Dietetic food and substances adapted for medical or veterinary use, food for babies; Dietary supplements for humans and animals; Plasters, materials for dressings; Material for stopping teeth, dental wax; Disinfectants; Preparations for destroying vermin; Fungicides, herbicides; Impregnated antiseptic wipes; Tissues impregnated with pharmaceutical lotions.

Class 44:        Medical services; Veterinary services; Hygienic and beauty care for human beings or animals; Agriculture, horticulture and forestry services; Information, advice and consultancy relating to the aforesaid services.

The parties disagree about the scope of the opponent’s list of goods. Indeed, an interpretation of the wording of the list of the opponent’s goods in Classes 3 and 5 is required.

The same wording is used for both classes except for the fact that the specification in Class 3 mentions that the goods are ‘for the application of cosmetic agents’ whereas the specification in Class 5 refers to goods ‘for the application of pharmaceutical agents’.

Both specifications include the expression ‘chemical preparations’, which in this case will be taken to refer to end products of a chemical nature, that is to say cosmetics and pharmaceuticals, not the raw chemical products or ingredients used by the healthcare and cosmetics industry to make the latter. Indeed, Class 3 does not include chemical ‘ingredients’ but only finished cosmetics; all chemical compositions and materials for use in cosmetics are included in Class 1. There is no reason to interpret the goods in Class 5 otherwise, given that the wording is the same. Furthermore, the goods are also described as a ‘transdermal formulation’, in which ‘formulation’ refers to a mixture of ingredients or preparation and ‘transdermal’ indicates how the product is applied, namely ‘to the surface of the skin, typically in the form of an ointment, gel, or impregnated adhesive patch, so as to allow gradual absorption into the body’ (definition from the Oxford English Dictionary at www.oed.com on 08/03/2017).

In summary, the opponent’s goods are cosmetics and pharmaceuticals in transdermal dosage form, which encompasses creams, gels, ointments, patches, etc. It is noted that specifying the dosage form does not significantly reduce the scope of the cosmetic and pharmaceutical goods at issue because the dosage form concerned exists for cosmetics and pharmaceuticals with a very broad variety of applications. As regards cosmetics, there are, for instance, anti-ageing transdermal products, but also transdermal formulations for accelerating tanning, preventing hair loss, reducing cellulite, controlling sweat, etc. As regards pharmaceutical applications, there are transdermal formulations for alleviating pain and treating skin problems, but also for treating heart disease, asthma and menopause symptoms, and for stopping smoking, etc.

It is true, as the applicant argues, that the lists in both classes have been limited, by the expression namely chemical preparations that facilitate the penetration of high molecular weight molecules into human skin, in which the term ‘namely’ introduces a restriction. However, the restriction is that the transdermal formulations/chemical preparations at issue are only those that are based on large molecule active ingredients (as opposed to small molecule ones). The Opposition Division is of the opinion that such limitation does not affect the comparison as carried out below. The parties have not provided any arguments to the contrary.

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 3

The contested cosmetics include, as a broader category, the opponent’s transdermal formulation for the application of cosmetic agents, namely, chemical preparations that facilitate the penetration of high molecular weight molecules into human skin. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested creams; lotions; gel include, as broader categories, or overlap with, the opponent’s transdermal formulation for the application of cosmetic agents, namely, chemical preparations that facilitate the penetration of high molecular weight molecules into human skin. Therefore, they are identical.

The contested deodorants for personal use; deodorants and anti perspirants; antiperspirants (toiletries); anti-perspirant/deodorant; antiperspirants; anti-perspirants in the form of sprays; antiperspirants for medical use are for cosmetic purposes because cosmetics cover products intended not only to enhance appearance but also to hide or minimise unpleasant body smells, such as deodorants/antiperspirants. They are available in transdermal form such as patches or creams. Since these contested goods are included in, or overlap with, the opponent’s transdermal formulation for the application of cosmetic agents, namely, chemical preparations that facilitate the penetration of high molecular weight molecules into human skin, they are also identical.

The contested essential oils are intended for cosmetic purposes. They may be available in transdermal form. They are found in the same shops as the opponent’s cosmetic transdermal formulation and are intended for the same public. Therefore, they are similar.

The contested hair lotions are cosmetics for the hair. These goods and the opponent’s goods in Class 3 are found in the same shops and may have the same producers. They target the same public. Therefore, they are similar.

The contested tissues impregnated with cosmetics and cosmetic lotions; moist cloths; impregnated tissues for cleaning (non-medicated, for personal use); antiperspirant wet wipes; antiperspirant tissues for personal use differ in nature from the opponent’s transdermal formulation in Class 3. However, the goods at issue have the same cosmetic purpose and their manufacturers are often the same. They are sold in the same points of sales or side by side in the beauty sections of department stores. The intended public is the same. Therefore, they are similar to the opponent’s goods in Class 3.

The contested perfumery; perfumed tissues refer to goods for applying a pleasant smell to the skin. These goods are sold in the same points of sale as cosmetics and are often produced by the same companies. They are intended for the same public. Therefore, they are similar to a low degree.

The contested soaps are goods for hygiene purposes whereas the opponent’s goods in Class 3 are for beauty purposes. However, there are some relevant links between these goods: the opponent’s cosmetic goods may have an anti-ageing, moisturising, or drying action, as may also be the case with soaps, which often incorporate moisturising or drying agents. The goods at issue are usually found in the same or in nearby sections in stores and are intended for the same public. Therefore, they are similar to a low degree.

The contested dentifrices are toiletries for dental care. Their method of use, nature and intended purpose differ from those of the opponent’s transdermal formulation in either Class 3 or Class 5. The producers of these goods are not usually the same. The mere fact that the goods may be found in the same or nearby sections in shops and are intended for the same public is not enough to counteract the differences in nature, purpose, method of use and producers, or the fact that the goods are neither complementary nor in competition. Therefore, these goods are dissimilar.

The contested bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; tissues impregnated with preparations for cleaning are products for household cleaning and maintenance purposes, which share no relevant connections with the opponent’s goods in Classes 3 and 5 as regards their purpose, distribution channels and usual producers. The fact that they are chemical products is not enough to establish that they are of the same nature, as the goods clearly differ in purpose, distribution channels and usual producers, and are not complementary or in competition. These goods are dissimilar.

Contested goods in Class 5

The contested pharmaceutical preparations cover, as a broader category, the opponent’s transdermal formulation for the application of pharmaceutical agents, namely, chemical preparations that facilitate the penetration of high molecular weight molecules into human skin. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The fact that the opponent’s goods are used on humans, not animals, does not preclude the contested veterinary preparations and the opponent’s goods in Class 5 from having the same nature and being used for pharmaceutical purposes. Furthermore, they are found in pharmacies and their producers may be the same. Therefore, these goods are highly similar.

The contested tissues impregnated with pharmaceutical lotions are pharmaceuticals in a dosage form that differs from that of the opponent’s goods but also involves topical application of the product. These goods may serve the same therapeutical purposes and are in competition. They may have the same producers and are found in pharmacies. Therefore, they are highly similar.

The contested preparations for destroying vermin are intended for killing animal species representing a potential risk or nuisance to human health, for example a parasitic species. The contested fungicides are products for killing parasitic fungi. They are used to treat human fungal infections. Like the opponent’s goods in Class 5, they are health-related goods, sold in pharmacies and intended for the same public. Therefore, they are similar to a low degree.

The contested sanitary preparations for medical purposes are for cleaning thoroughly or sterilising. Similarly, the contested disinfectants; impregnated antiseptic wipes are used for eliminating germs and avoiding infections. The administration of pharmaceutical preparations, including those in transdermal dosage form, usually requires a high standard of hygiene and an antiseptic environment and therefore may be complemented by sanitary preparations. Furthermore, the goods at issue are usually found in pharmacies and are intended for the same public. Therefore, they are similar to a low degree.

The contested plasters, materials for dressings are for curing wounds. These goods differ in nature and method of use from the opponent’s transdermal products. However, plasters and dressings may incorporate active ingredients with properties to speed up healing, including transdermal products, or they may be applied on top of transdermal products to ensure their effectiveness. The goods at issue are found in pharmacies and are intended for the same public. Therefore, they are similar to a low degree.

However, there is no similarity between the contested dietetic food and substances adapted for medical or veterinary use; dietary supplements for humans and animals and any of the goods of the earlier mark. The contested goods are substances prepared for special dietary requirements with the purpose of treating or preventing disease, whereas the earlier goods are meant for external use only, do not serve any dietetic purposes and are not suitable for oral consumption. Since the goods differ in nature, purpose and method of use, the fact that they ultimately both serve medical purposes and are found in pharmacies is in itself insufficient to counteract the differences and establish any relevant similarity. Therefore, the contested dietetic food and substances adapted for medical or veterinary use; dietary supplements for humans and animals are dissimilar to the opponent’s goods in Classes 3 and 5.

The contested food for babies is food specially adapted to a baby’s condition because they are physically incapable of eating any type of food but also because they medically require this type of food. Along the same reasoning as in the previous paragraph, these goods are dissimilar to all of the opponent’s goods.

The contested herbicides are for protecting the environment against undesirable plants. These goods differ from the opponent’s earlier goods in Classes 3 and 5 as regards their purposes, distribution channels and producers. There is no link of complementarity or competition. Therefore, the contested herbicides are dissimilar.

Likewise, there are too many differences between, on the one hand, the contested material for stopping teeth, dental wax and, on the other hand, the opponent’s transdermal cosmetic and pharmaceutical products, as regards their nature, purpose and usual producers, for any level of similarity to be found between them. These goods are dissimilar.

Contested services in Class 44

As a preliminary remark, it should be noted that, by their very nature, services are generally dissimilar to goods. They can, however, be complementary or have the same purpose and thus be in competition with goods. It follows that under certain circumstances similarity between services and goods can be found.

The contested hygienic and beauty care for human beings; information, advice and consultancy relating to the aforesaid services are similar to the opponent’s goods in Class 3, as they have the same purpose, namely to improve people’s appearance and hygiene, and they target the same relevant public. Furthermore, the goods and services at issue may have the same distribution channels. The undertakings providing the contested services, such as wellness and beauty centres, may also offer ‘beauty products’ to their clients, independently of any beauty service, as it is common practice for these establishments to sell various products for further home treatments. Moreover, the goods and services are complementary to each other, as it may be necessary to use the opponent’s products to perform the contested services.

The above reasoning does not apply to the contested hygienic and beauty care for animals; information, advice and consultancy relating to the aforesaid services to the extent that the opponent’s goods in Classes 3 and 5 are intended for human use. These contested services differ from the opponent’s goods in nature, purpose, producers and distributions channels and are neither complementary nor in competition. Therefore, they are dissimilar.

The Office’s practice is reflected in its guidelines which are published on the Office’s website. According to the Office’s current Guidelines concerning the Comparison of Goods and Services (version of 01/02/2017), the contested medical services; veterinary services are dissimilar to the opponent’s pharmaceutical formulation in Class 5. As can be gleaned from the wording, the contested information, advice and consultancy relating to the aforesaid services relate to the services, not to pharmaceutical goods and are not provided in pharmacies or by pharmacists. Even though their common goal of treating disease means that a certain link between preparations for medical use and medical services cannot be denied, the differences in nature and method of use, as well as in the producers/providers and distribution channels, clearly outweigh the link as regards purpose. The relevant public does not expect a doctor to develop and market a drug. These services do not share any link with the opponent’s goods in Class 3 either.

The contested agriculture, horticulture and forestry services; Information, advice and consultancy relating to the aforesaid services and the opponent’s goods in Classes 3 and 5 have nothing in common. These goods and services are therefore also dissimilar.

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 and services found to be identical or similar to various degrees in Classes 3 and 44 are directed at the general public, whose degree of attention is average.

The relevant goods in Class 5 are intended for both the general public and professionals in the medical sector.

As regards the goods in Class 5, 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 Court confirmed that the degree of attention is also higher than average for all goods in Class 5 (10/02/2015, T-368/13, ANGIPAX,EU:T:2015:81, § 46).

Given that the general public is more prone to confusion, the examination will proceed on this basis.

3. The signs

DermX	DERMIX ABSOLUT TORR
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 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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The elements ‘ABSOLUT TORR’ of the contested trade mark mean ‘absolutely dry’ in Swedish.

The public will perceive the expression made up of these elements as indicating that the cosmetics and pharmaceutical goods, and the beauty services, are intended for treating problems of severely dry or, alternatively, excessively oily skin. As regards the anti-perspirants and deodorants, the expression will be interpreted as indicating that these goods prevent sweating. Even in relation to goods for which the meaning is not that obvious, the relevant public will construe a link with the goods and perceive the expression as a promotional slogan. For instance, the expression will be perceived as indicating that the contested plasters and dressings keep the wound absolutely dry, that the disinfectants, fungicides, etc. are not oily, that the perfumes incorporate dry scents, etc.

The elements ‘DermX’/’DERMIX’ of the signs include the prefix of Greek origin ‘DERM’, which is widely used in some languages, such as French or Spanish. However, it is not used in Swedish, and the majority of the Swedish-speaking public would not attribute any meaning to these elements of the signs. Account has been taken of the fact that the Swedish usually have a good command of English. However, English words with the prefix ‘DERM’ are not commonly used in Swedish, except by specialists in the medical sector.

Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Swedish-speaking part of the public, which does not attribute any meaning to the elements ‘DermX’ and ‘DERMIX’.

Visually, the obvious difference between the signs lies in the expression ‘ABSOLUT TORR’ of the contested sign. However, the difference is of little relevance if at all, because this expression clearly lacks distinctive character for the relevant goods and services.

The earlier mark ‘DermX’ and the first element of the contested sign ‘DERMIX’ differ only in the letter ‘I’ of the latter, which, given its narrowness (compared with the adjacent ‘M’ and ‘X’) and position, does not create a significant visual difference between those elements.

As previously mentioned, these elements do not have a meaning for the public taken into consideration. They are, thus, distinctive elements, and the element ‘DERMIX’ is the part of the contested sign that the relevant public will perceive as being the trade mark part.

The coinciding elements occur at the beginning of the contested sign. 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 reader’s attention.

In view of the above, and bearing in mind that, in word marks, it is the word itself that is protected and not how it is depicted (meaning that any difference in font or case is irrelevant for the visual comparison), the signs are deemed to be visually similar to an average degree.

Aurally, the coinciding elements of the signs will be pronounced as /DERM-EKS/ and /DER-MIKS/, in two syllables, thus differing in one sound (which is nevertheless pronounced similarly) and (almost imperceptibly) in the syllabic cut.

The difference in pronunciation of the additional elements of the contested mark, ‘ABSOLUT TORR’, is of reduced relevance given the mark’s non-distinctive character, and, for this reason, might not even be pronounced (03/07/2013, T-206/12, LIBERTE american blend, EU:T:2013:342, § 43-44 and 03/07/2013, T-243/12, Aloha 100% natural, EU:T:2013:344, § 34)

Therefore, the signs are aurally highly similar.

Conceptually, the coinciding elements of the marks are meaningless. The signs are not conceptually similar because of the meaningful expression ‘ABSOLUT TORR’ of the contested mark. However, the conceptual difference is of little or no relevance given that the expression is not distinctive.

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 initially claimed that its mark enjoyed reputation but it subsequently waived the grounds of Article 8(5) EUTMR. Furthermore, it did not submit any evidence in support of the reputation or enhanced distinctive character of the earlier mark.

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 has no meaning for the public taken into consideration; its distinctiveness is therefore average.

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).

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 signs are visually similar to an average degree and aurally similar to a high degree. The public will pay no attention to the concept conveyed by the expression ‘ABSOLUT TORR’ of the contested sign. The goods and services are partly identical and similar (to various degrees) and partly dissimilar. The earlier mark has average distinctive character.

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 relevant consumer is highly likely to perceive the contested mark as a variation of the earlier mark intended for designating a specific range of goods and services (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). Indeed, the earlier mark ‘DermX’ and the essential element ‘DERMIX’ of the contested sign are confusingly similar, and the additional element ‘ABSOLUT TORR’ could indicate a specific range of goods and services.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Swedish-speaking public, even where that public pays a higher-than-average level of attention.

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.

The Opposition Division notes that, even for the part of the Swedish-speaking public that perceives the earlier mark and the element ‘DERMIX’ of the contested sign as being weak because they evoke the skin, and hence the purpose or method of use of the relevant goods and services, the signs are still confusingly similar because the distinctiveness of the elements in question is achieved through the same pattern, namely the final ‘X’, and the differences between them are very limited. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one of several factors. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account of the similarity between the signs and between the goods (13/12/2007, T-134/06, ‘Pagesjaunes.com’, EU:T:2007:387, § 70).

Therefore the opposition is partly well-founded on the basis of the opponent’s international trade mark registration designating the European Union.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to those of the earlier mark.

The degree of similarity between the signs is sufficient for a likelihood of confusion also in relation to the goods and services, which are similar to a low degree.

The rest of the goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods and services cannot be successful.

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 shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Frédérique SULPICE

Catherine MEDINA

Begoña URIARTE VALIENTE

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.