OPPOSITION No B 2 716 416
Dr. August Wolff GmbH & Co. KG Arzneimittel, Sudbrackstr. 56, 33611 Bielefeld, Germany (opponent), represented by Loesenbeck · Specht · Dantz, Am Zwinger 2, 33602 Bielefeld, Germany (professional representative)
a g a i n s t
Faes Farma, S.A., Calle Máximo Aguirre, 14, 48940 Lamiaco-Leioa (Vizcaya), Spain (applicant), represented by Sonia Álvarez López, Núñez de Balboa 31, 28001 Madrid
Spain (professional representative).
On 12/06/2017, the Opposition Division takes the following
1. Opposition No B 2 716 416 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
The opponent filed an opposition against some of the goods of European Union trade mark application No 15 069 453, namely against some of the goods in Class 1 and against all of the goods in Classes 3 and 5. The opposition is based on European Union trade mark registration No 5 440 111. 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 goods
The goods on which the opposition is based are the following:
Class 3: Soaps; perfumery, essential oils, cosmetics, hair lotions.
Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; disinfectants; fungicides.
The contested goods are the following:
Class 1: Chemical preparations for cosmetics.
Class 3: Perfumery, including cosmetics, soaps, lotions, essential oils, dentifrices, washing preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations.
Class 5: Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use; baby food; plasters, materials for dressings; materials for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not 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 preparations for cosmetics are similar to a low degree to the opponent's cosmetics in Class 3 as they can coincide in nature and in producer.
Contested goods in Class 3
Perfumery, cosmetics, soaps, essential oils are identically contained in both lists of goods.
The contested lotions include, as a broader category the opponent’s hair lotions. 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 washing preparations and other substances for laundry use; cleaning preparations overlap with the opponent’s soap in Class 3. Indeed, soap is a cleaning or emulsifying agent made by reacting animal or vegetable fats or oils with potassium or sodium hydroxide. Soaps often contain colouring matter and perfume and act by emulsifying grease and lowering the surface tension of water, so that it more readily penetrates open materials such as textiles. Since soap is used for cleaning purposes, it is identical to the contested washing preparations and other substances for laundry use; cleaning preparations.
The contested dentifrices are similar to the opponent’s pharmaceutical preparations in Class 5 as they have the same purpose. They can coincide in producer, end user and distribution channels.
The contested polishing, scouring and abrasive preparations are similar to the opponent’s soap in Class 3. Polishing preparations are used to make a product smooth and shiny by rubbing, especially with wax or an abrasive. Scouring preparations are used to clean or polish (a surface) by washing and rubbing, as with an abrasive cloth. Finally, abrasive preparations are substances or materials such as sandpaper, pumice, or emery, used for cleaning, grinding, smoothing, or polishing. All of these products are agents used for cleaning. To that extent, their nature and purpose are similar to those of soap. Furthermore, they target the same consumers and are sold in the same retail outlets and in the same section in supermarkets.
Contested goods in Class 5
Pharmaceutical and veterinary preparations; dietetic substances adapted for medical use, food for babies (or their synonym baby food); plasters, materials for dressings; disinfectants; fungicides are identically contained in both lists of goods.
The contested sanitary preparations include, as a broader category, the opponent’s sanitary preparations for medical purposes in Class 5. 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 preparations for destroying vermin; herbicides are similar to a high degree to the opponent’s fungicides in Class 5 as they have the same purpose. They can coincide in producer, consumers and distribution channels.
The contested dental wax is similar to the opponent’s pharmaceutical preparations in Class 5 as they have the same purpose. They can coincide in producer, consumers and distribution channels.
The contested materials for stopping teeth are similar to a low degree to the opponent’s pharmaceutical preparations in Class 5 as they can coincide in consumers and distribution channels.
- 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 in question.
In the present case, the goods found to be identical or similar (to various degrees) are directed at both qualified professionals (in particular, the goods in Class 1 and part of the goods in Class 5) and the general public at large, without any specific chemical or pharmaceutical knowledge (in particular, the goods in Class 3 and part of the goods in Class 5).
As regards the goods at issue covered in Class 1 as well as materials for stopping teeth in Class 5, these goods exclusively target the professional public. Therefore, the relevant public for assessing likelihood of confusion will be the professional public only (14/07/2005, T-126/03, Aladin, EU:T:2005:288, § 81).
As regards the goods in Class 5 that may target both the professional and the general public, the likelihood of confusion will be assessed against the perception of the general public, as it is a significant part of the public that will be more prone to confusion. Indeed, if a significant part of the relevant public for the goods at issue may be confused as regards the origin of the goods, this will be sufficient to establish a likelihood of confusion. It is not necessary to establish that all actual or potential consumers of the relevant goods are likely to be confused. This is also the best light in which the opponent's case can be considered.
As regards the remaining goods in Class 3 and 5 that target the general public, the likelihood of confusion must be assessed against the perception of the general public.
Furthermore, 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). 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.
Consequently, the degree of attention for the goods that are found identical or similar will vary from average to high, mainly depending on whether they affect the state of health and on the specialised nature of the goods.
- The signs
Earlier 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 earlier mark is a word mark composed of the single word element, made up of eight letters, ‘Dermowas’.
The contested sign is a word mark composed of the verbal element ‘DermoSca' followed by the verbal element 'Complex'.
Both signs are word marks. Therefore, the words as such are protected, not their written form. Indeed, according to the case-law, a word mark is a mark consisting entirely of letters, of words or of associations of words, written in printed characters in normal font, without any specific graphic element (20/04/2005, T-211/03, Faber, EU:T:2005:135, § 33; 13/02/2007, T-353/04, Curon, EU:T:2007:47, § 74). Consequently, the protection offered by the registration of a word mark applies to the word(s) stated in the application for registration, i.e. ‘DERMOWAS’ and ‘DERMOSCA COMPLEX’, respectively, not to the individual graphic characteristics which that mark might possess (22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is irrelevant whether the word marks are depicted in a mixture of lower and upper case letters.
In addition, since both signs are word marks, they have no elements that could be considered clearly more dominant than other elements.
When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive or weakly distinctive elements. Therefore, the Opposition Division will first examine the opposition in relation to the part of the public for which 'WAS' (of the earlier mark) and 'SCA' (of the contested mark) are meaningless and have a normal degree of distinctiveness.
The elements 'WAS' (of the earlier mark) and 'SCA' (of the contested mark) are not meaningful in certain territories, for example, in Italy and Lithuania. Consequently, the Opposition Division finds it appropriate to focus the analysis of the decision on the Italian- and Lithuanian- speaking part of the public. This is also the best light in which the opponent's case can be considered.
Throughout the European Union, the common element ‘DERM(O)-’ evokes the term ‘DERM-’ (with the Greek root ‘DERMA’) which refers to a connective tissue that, together with the epidermis and the hypodermis, forms the skin, and is the root of many words related to skin, such as ‘dermatologia’ and ‘dermatologie’ (dermatology), in Italian and Lithuanian language, respectively. Consequently, this element has weaker distinctiveness in respect of the goods at issue.
As detailed above, the verbal elements 'WAS' (of the earlier mark) and 'SCA' (of the contested mark) have no meaning for the relevant (general and professional) public; consequently, they have normal distinctiveness.
The second verbal element in the contested sign, 'COMPLEX', is a common English word that will be understood in most of the European Union Member States while in others, this word will in any event evoke equivalent similar terms, such as 'COMPLESSO’ and ‘KOMPLEKSAS’, respectively, meaning, inter alia, ‘made up of various interconnected parts; composite’ (extracted from online English Dictionary Collins https://www.collinsdictionary.com/ on 07/06/2017); therefore, it has limited distinctiveness in relation to the goods.
Visually, the signs coincide in seven letters, that is, the initial string of five letters ‘DERMO’ that has weaker distinctiveness and the letters ‘A’ and ‘S’; however, these last letters are placed in different positions and order. The signs differ in the letter ‘W’ in the earlier mark that has no counterpart in the contested sign and in the letter ‘C’ in the contested sign, in addition to the additional verbal element ‘COMPLEX’, with limited distinctiveness, in the contested sign.
While it is acknowledged that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark, in substance the signs only coincide in this first element ‘DERMO’ with weaker distinctiveness in relation to the goods.
Therefore, to the extent that they have this initial string of letters with weaker distinctiveness in common, the earlier mark and the contested sign are similar to a low degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‘DERMO’, present identically in both signs, as well as in the letters ‘A’ and ‘S’ – although the last in a different order. The pronunciation differs in the sound of the normally distinctive string of letters ‘WAS’ in the earlier mark, on the one hand, and of the normally distinctive string of letters ‘SCA’, as well as in the second verbal element ‘COMPLEX’ (albeit of limited distinctiveness), in the contested sign. The pronunciation of the letter ‘C’, and in particular in combination with the letter ‘S’ that precedes it and the fact that the vowel ‘A’ is in another position in the first verbal element of the contested sign, results in a different rhythm and intonation that will certainly not go unnoticed by the relevant consumer.
Therefore, the signs are aurally similar to a low degree.
Conceptually, the semantic content of the conflicting signs and their elements is discussed above. Both signs will evoke the concepts of ‘skin’ with the relevant public (both general and professional) which however has weaker distinctiveness in relation to the goods. In addition, the contested sign will evoke the concept of a composite (which however has limited distinctiveness in relation to the goods).
Consequently, the signs are conceptually similar to a low degree.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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 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, despite the presence of a weaker element in the mark as stated above in section c) of this decision.
- 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).
In spite of the coincidence in the initial string of letters ‘DERMO’, and the letters ‘A’ and ‘S’, taking into account that the common element is of weaker distinctiveness in relation to the goods for the relevant public and considering the different order and position of the shared letters ‘A’ and ‘S’ in addition to the additional elements, in the view of the Opposition Division the similarities in the present case are not sufficient to lead to a likelihood of confusion.
The more distinctive elements in the signs in dispute, ‘WAS’ versus ‘SCA’ have both three letters; both are, consequently, short elements and it is considered that the fact that they differ in one letter, in addition to the fact that the letters are in a different order, are relevant factors to consider when evaluating the likelihood of confusion between the conflicting signs.
The length of the elements may indeed influence the effect of the differences between them. The shorter an element, the more easily the public is able to perceive all of its single aspects. Therefore, in short words small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between longer elements.
In addition, the signs are visually, aurally and conceptually similar to only a low degree, while the attention of the relevant public vary from not lower than average, to high.
In light of all the foregoing, when assessing the marks as a whole, it is considered that the coincidences are not sufficient for finding that there is a likelihood of confusion on the part of the Italian- and Lithuanian- public (which is the best-case scenario for the opponent’s case), not even in relation to the goods that are identical and for which consumers’ level of attention will be not more than average as the differences are perceivable and sufficient to exclude any likelihood of confusion between the marks. This absence of a likelihood of confusion equally applies to the part of the public in the rest of the European Union, where the differing elements ‘WAS’/’SCA’ will be linked with different meanings (e.g. in Germany, where the term ‘was’ means ‘what’ and in France, where ‘sca’ is the common abbreviation of ‘société en commandite par action’, i.e. ‘partnership limited by share’, etc.), which will render the signs even less conceptually similar.
Consequently, even considering the best-case scenario for the opponent’s case, taking into account all the above factors cumulatively, and in the absence of any evidence of enhanced distinctiveness of the earlier mark, the Opposition Division considers that the differences between the signs outweigh their similarities, even considering that some of the goods are identical.
Therefore, the opposition must be rejected.
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
VAN DEN EEDE
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.