OPPOSITION No B 2 685 439

Johnson & Johnson, One Johnson & Johnson Plaza, New Brunswick, New Jersey 08933, United States of America (opponent), represented by Siebeke – Lange – Wilbert, Cecilienallee 42, 40474 Düsseldorf, Germany (professional representative)

a g a i n s t

Erbagil, Via Luigi Settembrini 13, 82037 Telese Terme, Italy (applicant), represented by Dimitri Russo S.r.L., Via G. Bozzi 47 A, 70121 Bari, Italy (professional representative).

On 11/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 685 439 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 15 028 616, namely against some of the goods in Class 5. The opposition is based on German trade mark registration No 258 774. 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: Medicaments, pharmaceutical drugs and preparations.

The contested goods are the following:

Class 5: Medical preparations and articles.

The contested medical preparations and articles are identically included in both lists of goods (including synonyms).

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 are directed at the public at large and at professionals in the medical field.

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.

3. The signs

DOLORMIN	DOLAREN
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).

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 the origin due to similarities that pertain solely to non-distinctive elements.

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 (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).

In the present case, neither of the signs as such has a meaning for the relevant public and are, therefore, distinctive. The Opposition Division concurs with the applicant that the element ‘DOLOR-’, and accordingly the prefix ‘DOL-’, might be associated with the Latin word ‘dolor’, referring to physical pain. Thus, if this is the case, these elements are non-distinctive or at least weak for the relevant goods as they indicate the purpose. However, this holds true only for professionals in the medical field who are acquainted with Latin terminology and not necessarily for the members of the general public. For the majority of the general public the elements ’DOLOR-’ of the earlier mark and prefix ‘DOL-’ in the contested sign have no meaning.

Therefore, in line with the opponent’s arguments, the part of the public concerned will perceive the signs as a whole, since the components of the signs under comparison do not suggest a specific meaning or resemble words known to them. For this part of the public the elements ‘DOLORMIN’ and ‘DOLAREN’, which form the marks under comparison, have a normal degree of distinctiveness.

Consequently, 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 parts ‘DOLOR-’ and ‘-MIN’ of the earlier mark and ‘DOL-’ of the contested sign are distinctive.

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.

Visually, the signs coincide in the sequence of letters ‘DOL-R–N’ and to that extent they are similar. However, they differ partially in the string ‘O-MI’ of the earlier mark versus ‘A-E’ of the contested sign. Furthermore, it should be highlighted that the marks differ in the additional letter of the earlier mark (eight letters vs seven letters) which has no counterpart in the contested sign. The different fourth letter significantly influences the visual perception of the marks, so an identical string of only three letters in 7, 8 letter words has a limited impact on visual impression. Thus, the marks are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of letters ‘DOL-R–N’. However, the signs differ in the sound of the fourth letter of the marks, namely ‘O’ vs ‘A’ and the letters ‘MI’ vs ‘E’ constituting the last syllable of the marks at stake together with the common letter ‘N’. Even though there is some commonality in the pronunciation of the differentiating string, namely ‘ORMI’ vs ‘ARE’ respectively, due to the common letter ‘R’ (as highlighted by the opponent in its observations dated 23/05/2017), the differences are nevertheless clearly audible, in particular because of the additional sound of the letter ‘M’ in the earlier mark, this changing the intonation and slightly the length of the marks. In light of the above, the signs are aurally 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.

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 (general public) in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The contested goods are identical 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 the visual and aural point of view, the signs are similar only to a low degree. The distinctiveness of the earlier mark must be seen as normal.

In any event, 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 on a medical prescription, which weighs against a likelihood of confusion. Taking into account the low visual and aural similarity between the signs, while the conceptual comparison remains neutral, the overall conclusion must be that the high level of attention will avoid that the relevant general public will be led to believe that goods bearing the word mark ‘DOLAREN’ come from undertakings which hold the earlier word mark ‘DOLORMIN’ or from an undertaking economically linked to them.

Moreover, the opponent refers to a previous national decision to support its arguments concerning the alleged similarity of the marks. However, it must be noted that decisions of national courts and national offices regarding conflicts between identical or similar trade marks on the national level do not have a binding effect on the Office since the European Union trade mark regime is an autonomous system which applies independently of any national system (13/09/2010, T-292/08, Often, EU:T:2010:399).

Even though previous national decisions are not binding, their reasoning and outcome should be duly considered, particularly when the decision has been taken in the Member State that is relevant to the proceedings.

The previous decision issued by the German Federal Patent Court on 28/11/2008 referred to by the opponent, rules on a likelihood of confusion between ‘DOLORMIN’ vs ‘DOLORFEN’. This cannot apply per analogy to the present case, in particular considering that the marks under former comparison share six letters out of eight, including the first element ‘DOLOR-‘ being distinctive for at least a part of the relevant public, as set forth above.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

This absence of a likelihood of confusion equally applies to the part of the public for which the elements ‘DOLOR-’ and ‘DOL-’ are non-distinctive/weak. This is because, as a result of the non-distinctive/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 as it will focus on the distinctive parts of the mark which are different.

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

Chantal VAN RIEL

Klaudia MISZTAL

Saida CRABBE

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.