OPPOSITION No B 2 674 359

Terapia S.A., Str. Fabricii no.124, 400632 Cluj-Napoca, Romania (opponent)

a g a i n s t

ViiV Healthcare UK (No.3) Limited, 980 Great West Road, Brentford TW8 9GS, United Kingdom (applicant), represented by CSY London, 10 Fetter Lane, London EC4A 1BR, United Kingdom (professional representative).

On 22/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 674 359 is upheld for all the contested goods.

2.        European Union trade mark application No 15 029 317 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 350.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 029 317. The opposition is based on Romanian trade mark registration No 139 605. 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 and services

The goods and services on which the opposition is based are the following:

Class 5:        Pharmaceutical and veterinary products, nutritive supplements; hygienic products for medical use; dietetic substances adapted for medical use, food for babies; plasters and dressing materials; materials for stopping teeth and dental molds; disinfectants; products for vermin, fungicides, herbicide.

Class 35:        Advertising; publicity; business management; business administration; office functions.

The contested goods are the following:

Class 5:        Pharmaceutical and medicinal preparations and substances.

The contested pharmaceutical and medicinal preparations and substances include, as a broader category, the opponent’s pharmaceutical and veterinary products. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

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 business consumers with specific professional knowledge or expertise, such as medical professionals and pharmacists.

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. Therefore, the relevant public’s degree of attention is considered relatively high in relation to all the goods at issue.

3. The signs

DOZZEX	DOZECCO
Earlier trade mark	Contested sign

The relevant territory is Romania.

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).

Since the earlier mark, ‘DOZZEX’, and the contested sign, ‘DOZECCO’, are word marks, neither of them has any element that could be considered more dominant (visually eye-catching) than other elements.

In its observations, the opponent claims that part of the public will perceive the coinciding letters, ‘DOZ(Z)E’, as the Romanian noun ‘doză’/‘doze’, meaning ‘dose’/‘doses’ in English (an amount of a substance; the amount of a medicine, drug or vitamin that is taken at one time; an amount of something that a person experiences). While average consumers may break a word 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, the letter sequence ‘CCO’ of the contested mark, ‘DOZECCO’, does not have any meaning; the ending ‘X’ and the letters ‘ZZ’ will make it difficult to perceive any meaningful word in the earlier mark, ‘DOZZEX’. While it cannot be completely excluded that a small part of the relevant public might perceive the meaning indicated by the opponent, the ending ‘CCO’ of the contested sign is not a stand-alone word but forms a fanciful combination with the letters ‘DOZE’. Similarly, the ending ‘X’ and the letters ‘ZZ’, which are unusual in Romanian, mean that the earlier mark is a single meaningless, fanciful word and does not have the meaning indicated by the opponent. Therefore, the Opposition Division considers that both the earlier mark, ‘DOZZEX’, and the contested sign, ‘DOZECCO’, will be perceived as single meaningless words by the Romanian-speaking consumers.

In relation to the relevant goods, the word ‘DOZZEX’ of the earlier mark and the word ‘DOZECCO’ of the contested sign are deemed distinctive to an average degree.

Visually, the signs coincide in the letters ‘DOZ*E’, which constitute the first five letters (out of six) of the earlier mark (including the repeated letter ‘Z’) and the first four letters (out of seven) of the contested sign. The signs differ in the last letter, ‘X’, of the earlier mark and the ending ‘CCO’ of the contested sign.

The earlier mark, ‘DOZZEX’, and the contested sign, ‘DOZECCO’, have similar lengths, namely six and seven letters, respectively. Contrary to the applicant’s argument, the one-letter difference in length cannot be considered a factor that will distinguish between the marks, since the public, which is not, in general, aware of the exact number of letters in a word mark, will not notice significant differences (if any) in the lengths of the words ‘DOZZEX’ and ‘DOZECCO’.

The Opposition Division agrees with the applicant that, since the alphabet is made up of a limited number of letters, 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. However, in the present case, the visual similarities between the signs lie not in the fact that they have similar lengths or some letters in common, but in the fact that they coincide in the majority of their letters, which are in the same order at the beginnings of the signs.

Although, as correctly stated by the applicant, the letters ‘ZZ’ in the earlier mark create some visual differences between this mark and the first part of the contested sign, ‘DOZE’, the fact that this is a simple repetition of the letter ‘Z’ will not go unnoticed by the relevant consumers. The same applies to the letters ‘CC’ of the contested sign, which are nothing more than a repetition of the letter ‘C’. Although these duplications are quite unusual and therefore create some visual differences, they are not able to counteract the similarities arising from the abovementioned commonalities at the beginnings of the signs.

Therefore, the signs are considered visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters /DOZE/ at the beginning of both signs (because the letters ‘ZZ’ in the earlier mark and ‘Z’ in the contested sign will be pronounced in the same way, namely as the sound /Z/). The pronunciation differs in the sounds of the letter /X/ at the end of the earlier mark and the letters /CO/ at the end of the contested sign.

As correctly stated by the applicant, the signs will be pronounced with different numbers of syllables: the earlier mark will be pronounced in two syllables, /do-zeks/, whereas the contested sign will be pronounced in three syllables, /do-ze-ko/. However, since the double letters ‘ZZ’ in the earlier mark, ‘DOZZEX’, and ‘CC’ in the contested sign, ‘DOZECCO’, will both be pronounced as one sound and the letters ‘X’ and ‘CO’ will be pronounced as /ks/ and /ko/ at the end of the earlier mark and the contested sign, respectively, the differences in pronunciation between marks are limited to the last sounds, namely /s/ at the end of the earlier mark versus /o/ at the end of the contested sign. Although the vowel ‘O’ at the end of the contested sign will result in an additional syllable, the fact that the preceding part will be pronounced identically, namely as /DOZEK/, in both signs will create significant aural similarities between the earlier mark and the contested sign.

Therefore, the signs are considered aurally similar to a high degree.

Conceptually, neither of the signs has a meaning for the 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.

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

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).

As concluded above, the contested goods are identical to the opponent’s goods and they target the public at large and business consumers, which have a higher than average degree of attention. The degree of distinctiveness of the earlier mark is average.

The signs are visually similar to an average degree and aurally highly similar. The conceptual aspect does not influence the assessment of likelihood of confusion between the signs, as both signs are meaningless. As detailed in section c) the signs coincide in their beginnings, which usually have higher impacts in terms of likelihood of confusion in the mind of the consumer, and differ in their endings and the repetition of the letters ‘ZZ’ in the earlier mark and ‘CC’ in the contested sign. However, although these differences reduce the visual similarity to average, their impact on aural similarity is quite low. Since verbal communication in respect of the relevant goods and the signs under comparison cannot be excluded, the relevant consumer could be confused by the fact that the earlier mark and the contested sign are composed to a great extent of the same letters in the same order and may not even recall repetitions of the abovementioned letters.

Therefore, considering 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) and that 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 abovementioned visual and aural similarities result in a likelihood of confusion between the signs, especially considering that the relevant goods are identical. Since neither of the marks under comparison conveys any concept that could differentiate them from each other, it cannot be safely excluded that the relevant consumer will confuse the marks or alternatively perceive the contested mark as a sub-brand or variation of the earlier mark (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Therefore, the opposition is well founded on the basis of the opponent’s Romanian trade mark registration No 139 605. It follows that the contested trade mark must be rejected for all the contested goods.

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein. In the present case the opponent did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Janja FELC

Rasa BARAKAUSKIENE

Judit NÉMETH

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.