OPPOSITION No B 2 708 363

Boehringer Ingelheim International GmbH, 55218 Ingelheim, Germany (opponent)

a g a i n s t

Bayer Intellectual Property GmbH, Alfred-Nobel-Str. 10, 40789 Monheim am Rhein, Germany (applicant), represented by Bomhard IP, S.L., C/Bilbao, 1, 5º, 03001 Alicante, Spain (professional representative).

On 21/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 708 363 is upheld for all the contested goods.

2.        European Union trade mark application No 15 071 186 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 320.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 071 186 for the word mark ‘ELOVIDE’. The opposition is based on international trade mark registration No 1 120 768 for the word mark ‘ESOVIND’ designating the European Union. 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:        Pharmaceutical preparations.

The contested goods are the following:

Class 5:        Pharmaceutical preparations; Preparations for treating pulmonary hypertension through inhalation.

Class 10:        Medical instruments; Inhalers for treating pulmonary hypertension.

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 5

Pharmaceutical preparations are identically contained in both lists of goods.

The contested preparations for treating pulmonary hypertension through inhalation are included in the broad category of the opponent’s pharmaceutical preparations. Therefore, they are identical. 

Contested goods in Class 10

Both parties submitted arguments in respect of the comparison of the goods in Classes 5 and 10. Indeed, as the applicant argues, the Office’s practice is to deem these goods lowly similar as these goods coincide in the relevant public, distribution channels and are complementary. This is the same criteria which the opponent argues in case of the goods at issue. As the arguments submitted by the opponent largely coincide with the practice of the Office, the Opposition Division considers the contested medical instruments; inhalers for treating pulmonary hypertension to be no more than similar to a low degree to the opponent’s pharmaceutical preparations in Class 5.

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 or similar to a low degree are directed at the public at large and at professionals in medical and healthcare fields.  

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 same is applicable to the goods in Class 10, regardless of whether they are inhalers that could be bought over the counter by the end consumer or more sophisticated medical equipment purchased by knowledgeable professionals.

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

3. The signs

ESOVIND	ELOVIDE
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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Neither mark has an evident meaning or discernible elements, nor did the parties claim so. Accordingly, a conceptual comparison is not possible and the conceptual aspect does not influence the assessment of the similarity of the signs.

Furthermore, as both ‘ESOVIND’ and ‘ELOVIDE’ are meaningless for the relevant public, their distinctiveness is average.

Visually, the signs coincide in the number of letters (seven), several identical letters in the same positions, namely ‘E_OVI__’, as well as the letter ‘D’, which is however in a slightly different position (last vs. second last). The signs differ in their second letters, ‘S’ and ‘L’, respectively and, in the letter ‘N’ in the second last position of the earlier mark and the final letter ‘E’ of the contested sign. Overall, this results in a similarity which is somewhat below average degree, but yet perceptible.

As regards the aural comparison, the Opposition Division notes that due to phonetic rules of the languages of the EU, the pronunciation of the same letters might be considerably different depending on, for example sequence of letters or their position (e.g. last letter not being pronounced or pronounced differently than if it is not at the end). For example, the final letter ‘e’ of the contested sign might not be pronounced in English and French, the pronunciation of the letter ‘I’, included in both signs, in French may sound considerably different due to it being coupled with different consonants, in Lithuanian the letter ‘D’ at the end of the earlier mark will be pronounced as ‘t’.

The Opposition Division considers that due to the pronunciation rules of the English language, the aural similarity between the conflicting signs in English is higher than in many other languages of the EU. Consequently, the Opposition Division finds it appropriate to further focus the comparison of the signs on the English-speaking part of the public.

The English speakers would pronounce both marks in three syllables, namely /E/SO/VIND/ and /E/LO/VIDE/, where the first one is identical (/E/), the second one has the same vowel, but different consonant (/SO/ vs /LO/) and the last one is highly similar (/VIND/ vs /VIDE/), as the sound ‘n’ would not be prominent and the final letter ‘e’ would not be pronounced. As regards the pronunciation of the letter ‘I’ in both marks, it might be pronounced as [ai] or as [i] as both marks lack meaning and a clear rule to be applied to, however, in any case, the sounds are fairly similar. The sounds of the consonants ‘S’ and ‘L’ at the beginning of the second syllables make a certain impact, however, overall the rhythm of the signs remains the same and results in an overall average degree of similarity for the English-speaking part of the public.

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

The goods at issue are identical or similar to a low degree and are aimed at both the general public and professionals. Due to the fact that the similarities between the signs are possibly highest for the English-speaking part of the public and that the general public is more prone to confusion, the Opposition Division focused the examination of the opposition on this part of the public (English-speaking non-professionals). The level of attention paid by this public is high.

As the signs have no concepts, the conceptual perception of the signs does not take place and has no influence on similarity of the signs. The Opposition Divisions must therefore decide whether the relevant public of the goods at issue could safely distinguish between the signs upon perceiving them visually and aurally.

Based on the detailed examination of the signs and their similarities/differences on visual and aural levels, the Opposition Division considers that for the English-speaking part of the general public the signs are similar to a significant degree, especially on the aural level. Aurally, the main difference between the signs is in the sound of the second letters (‘S’ vs ‘L’), however the remaining sounds are identical or highly similar. The length and rhythm of the signs is the same. The visual differences, although certainly more notable, also do not create a substantially different impressions; four out of seven letters in both signs are the same and three of them in the same order in the first part of the signs.

The differences between the signs might be more likely to be sufficient to exclude the likelihood of confusion when comparing the two signs next to each other; however such side-by-side examination is not likely to occur in reality. In fact, the 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). Furthermore, 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).

In those circumstances, the Opposition Division considers that the elements that differentiate the signs at issue are not capable of nullifying the common features that they possess and that the likelihood of confusion cannot be safely excluded for the relevant English-speaking members of the general public. This is in particular true in case of the identical goods in Class 5 where the identity of the goods is an additional factor to consider when examining the likelihood of confusion. As regards the contested goods in Class 10, which are similar, albeit to a low degree, to the opponent’s goods in Class 5, the Opposition Division considers that differences between the signs are also not sufficient to safely exclude the likelihood of confusion. This is especially true in the light of the fact that the goods are complementary.  

The applicant does not agree with the opponent that the initial identical letters result in a meaningful similarity as there are thousands of marks that start with ‘E’ or ‘E[1 consonant]O’ and this beginning is ‘not sufficiently distinctive’. In support of its argument the applicant refers to a list of 100 EU trade marks with such a combination of letters. The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘E_O’ or that it is ‘not sufficiently distinctive’ for any other reason. Under these circumstances, the applicant’s claims must be set aside.

The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

Furthermore, some cases referred to by the applicant can be clearly differentiated from the present case as they relate to marks containing a coincidence in, inter alia, an element of lower distinctiveness (RETISAN/RENASAN, where ‘SAN’ was weak, CYTONET/CYTORED, where CYTO was non-distinctive) while in the present case there are no issues with distinctiveness.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking non-professional part of the public. 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. As regards the focus on the general public, since a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public (i.e. professionals in medical and healthcare field).

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 1 120 768 designating the EU. 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

Martin MITURA

Vita VORONECKAITE

Vít MAHELKA

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.