OPPOSITION No B 2 796 459

esparma GmbH, Seepark 7, 39116 Magdeburg, Germany (opponent), represented by Einsel & Kollegen, Jasperallee 1a, 38102 Braunschweig, Germany (professional representative)

a g a i n s t

Arafarma Group, S.A., Calle Fray Gabriel de San Antonio 6-10, Polígono Industrial El Henares, 19180 Marchamalo, Spain (applicant).

On 29/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 796 459 is upheld for all the contested goods.

2.        European Union trade mark application No 15 691 851 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 691 851. The opposition is based on German trade mark registration No 416 470. 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:        Pharmaceuticals against vomiting.

The contested goods are the following:

Class 5:        Pharmaceuticals; veterinary preparations and substances; pharmaceutical preparations for veterinary use; nutritional supplements; food supplements; dietary and nutritional supplements.

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.

A pharmaceutical refers to any kind of medicine, that is, a substance or combination of substances for treating or preventing disease in people or animals.

Therefore, the contested pharmaceuticals include, as a broader category, the opponent’s pharmaceuticals against vomiting. 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 veterinary preparations and substances; pharmaceutical preparations for veterinary use overlap with the opponent’s pharmaceuticals against vomiting, considering that these contested goods can be used against vomiting. Therefore, they are identical.

The contested nutritional supplements; food supplements; dietary and nutritional supplements are substances prepared for special dietary requirements, with the purpose of treating or preventing disease. Bearing this in mind, their purpose is similar to that of pharmaceutical products (substances used to treat disease) insofar as they are used to improve a patient’s medical condition. The relevant public of the contested goods coincides with that of the opponent’s goods, and these goods generally have the same distribution channels. Therefore, these contested goods are considered similar to the opponent’s pharmaceuticals against vomiting.

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

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 degree of attention of the relevant public will also be higher than average in relation to the other goods in Class 5, insofar as they have an impact on health (24/01/2017, T-258/08, Diacor, EU:T:2017:22, § 50).

3. The signs

EMESAN	EMESOL
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).

The contested sign is the single-word mark ‘EMESOL’. It has no dominant element. As the word is meaningless, it has an average degree of distinctiveness.

The earlier mark is the single-word mark ‘EMESAN’. It also has no element that can be considered dominant.

The word ‘EMESAN’, as such, conveys no concept. Although consumers normally perceive a mark as a whole and do not proceed to analyse its various details (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25), the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a concrete meaning or which resemble words known to them (13/06/2012, T-342/10, Mesilette, EU:T:2012:290, § 33).

In the present case, part of the relevant public will understand the element ‘SAN’ in the earlier trade mark. ‘SAN’ is an abbreviated form of the Latin words ‘sanitas, sanus’ (‘health, healthy’) which is often used with healthcare products, and has a highly descriptive allusion for the relevant public in connection with the goods in question (14/10/2011, R 2178/2010-4, ALPINSAN / ALPIFRESH § 19). Therefore, the most distinctive part of the earlier mark is the element ‘EME’.

For the other part of the public, which will not dissect the element ‘SAN’ from the rest of the earlier mark, this mark, as a whole, has an average degree of distinctiveness.

Visually and aurally, the marks are similar inasmuch as they have in common the sequence of letters (and the sound of these letters) ‘EMES’. Moreover, they are the same length, have the same rhythm and have the same number of letters. The signs differ in their final letters, ‘OL’ in the contested mark and ‘AN’ in the earlier mark.

Taking into account the fact that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark, and given that the most distinctive part of the earlier mark is entirely included in the contested mark, the signs are considered visually and aurally similar to an average degree.

Conceptually, part of the public in the relevant territory will perceive the meaning of the element ‘SAN’ of the earlier mark, as explained above, while the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar for this part of the public.

For the remaining part of the public, both signs are meaningless and, to that extent, the conceptual comparison has no influence in the present assessment.

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, despite the presence, for part of the public, of a weak element in the mark as stated above in section c) of this decision.

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).

In the present case, the conflicting signs are visually and aurally similar to an average degree and, for part of the public, are not conceptually similar while, for the remaining part of the public, the conceptual comparison has no influence on the assessment. The contested goods are partly identical and partly similar.

Moreover, account is taken of 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). 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).

Article 8(1)(b) EUTMR states that, upon opposition, an EUTM shall not be registered if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark. In the present case, consumers may legitimately believe that the contested sign denotes a new brand line of products provided under the opponent’s mark.

It follows from the above that there is a likelihood of confusion on the part of the public. Therefore, the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

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.

The Opposition Division

Gueorgui IVANOV

Patricia LOPEZ FERNANDEZ DE CORRES

Sandra KASPERIŪNAITĖ

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.