OPPOSITION No B 2 405 903
Sopharma AD, 16, Iliensko shausse str., Sofia, Bulgaria (opponent), represented by Rumiana Hristova Peycheva, Sopharma AD, 16, Iliensko shausse, 1220 Sofia, Bulgaria (employee representative)
a g a i n s t
Sanboy Comercio de Productos Alimenticios S.L., c. Osca 18-20, 08830 Sant Boi de Llobregat, Spain (applicant), represented by Sugrañes Patentes y Marcas, Calle de Provenza 304, 08008 Barcelona, Spain (professional representative).
On 26/01/2017, the Opposition Division takes the following
1. Opposition No B 2 405 903 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
The opponent filed an opposition against all the goods of European Union trade mark application No 12 899 225 for the word mark ‘DHAVIT’. The opposition is based on the Bulgarian trade mark registrations No 21 905 for the word mark ‘DEAVIT’ and No 87 351 for the word mark . The opponent invoked Article 8(1)(b) EUTMR.
SUBSTANTIATION OF THE EARLIER BULGARIAN TRADE MARK No 87 351
According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.
It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.
According to Rule 19(1) EUTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.
According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party shall also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.
In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.
In the present case the notice of opposition was not accompanied by any evidence as regards the earlier trade mark on which the opposition is based.
On 15/10/2014 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 20/02/2015.
The opponent did not submit any evidence concerning the substantiation of the earlier trade mark as regards the Bulgarian trade mark registration No. 87 351. The opponent only submitted evidence with regard to earlier Bulgarian trade mark registration No 21 905.
According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition shall be rejected as unfounded.
The opposition must therefore be rejected as unfounded, as far as it is based on Bulgarian trade mark registration No 87 351.
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
According to the notice of opposition the opposition is based on ‘medicines’, however, the registration certificate mentions ‘medicinal products’. The Opposition Division considers both terms being synonyms and, thus, the same.
The goods on which the opposition is based are the following:
Class 5: Medicines.
The contested goods are the following (after limitation and partial refusal in parallel opposition proceedings No 2 413 410).
Class 29: Meat, fish, poultry and game; Meat extracts; Preserved, frozen, dried and cooked fruits and vegetables; Jellies, jams, compotes; Eggs; Milk and milk products; Edible oils and fats.
Class 30: Coffee, tea, cocoa and artificial coffee; Rice; Tapioca and sago; Flour and preparations made from cereals; Bread, pastry and confectionery; Ices and ice creams; Sugar, honey, treacle; Yeast, baking-powder; Salt; Mustard; Vinegar, sauces (condiments); Spices; Ice.
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.
The earlier goods are pharmaceutical products which are, in general, drugs or substances used for treating, preventing or alleviating the symptoms of diseases or injuries for human beings or animals. The contested goods are foodstuffs or food-related goods, such as ingredients for preparing food. The goods in question have different purposes (medical, curative, therapeutic versus nutritive) and are not likely to be manufactured by the same producers, marketed through the same distribution channels or placed on the same shelves in supermarkets; indeed, the opponent’s goods are mainly sold in pharmacies and specialist health care shops, in contrast to the applicant’s goods, which are sold in supermarkets and other food outlets. As a consequence, all the contested goods are dissimilar.
According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.
Given that the opposition is not well founded under Article 8(1)(b) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.
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
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.