OPPOSITION No B 2 661 729

Teva Santé, 110 Esplanade du Général de Gaulle, 92931 La Défense Cedex, France (opponent), represented by Ladas & Parry LLP, Temple Chambers, 3-7 Temple Avenue, London  EC4Y 0DA, United Kingdom (professional representative)

a g a i n s t

Ferrer Internacional, S.A., Gran Vía Carlos III, 94, 08028 Barcelona, Spain (applicant), represented by Curell Suñol S.L.P., Via Augusta 21, 08006 Barcelona, Spain (professional representative).

On 16/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 661 729 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 817 324. The opposition is based on European Union trade mark registration No 5 925 111. The opponent invoked Article 8(1)(b) and 8(5) 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:        Fentanyl citrate pharmaceutical preparations for the treatment of pain dispensed on medical prescription.

The contested goods are the following:

Class 5:        Pharmaceuticals for the prevention and relief of chronic pain.

The contested pharmaceuticals for the prevention and relief of chronic pain include, as a broader category, or overlap with, the opponent’s fentanyl citrate pharmaceutical preparations for the treatment of pain dispensed on medical prescription. 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 medical professionals with specific professional knowledge or expertise.

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

EFFENTORA	FENTIL
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).

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

According to the opponent the marks are similar because they both contain the element ‘FENT’ deriving from ‘fentanyl citrate pharmaceutical preparations’. ‘Fentanyl’ is a powerful synthetic opioid analgesic, similar to morphine but much more potent. However, it is considered that ‘FENT’ as such does not exist and may only allude to ‘Fentanyl’ in the contested sign because it is placed in its initial part. However, it is unlikely that the public will distinguish the element ‘FENT’ in the earlier mark, because the division of the earlier mark would require an artificial mental exercise as this element is placed in the middle of the sign and the additional letters before and after this component do not have any meaning. Only as regards the contested sign, it cannot be excluded that part of the relevant public, mainly medical professionals, will be able to make such association. For this part of the public, this element is considered weak as it may evoke one of the components of the goods. However, for the other part of the public, mainly the public at large, it has no meaning and is distinctive.

The Opposition Division will first examine the opposition in relation to the part of the public for which ‘FENT’ has no meaning in any of the signs and has a normal degree of distinctiveness since this part of the public is more likely to confuse the marks and therefore this analysis constitutes the best case scenario for the opponent to assess its case.

Visually and aurally, the signs coincide in the sequence of letters ‘FENT’ and their sounds, although placed in the middle of the earlier mark and at the beginning of the contested sign. The signs differ in their additional letters, namely the first two letters and last three letters of the earlier mark, namely ‘EF(*)ORA, as well as the last two letters ‘IL’ of the contested sign and in their respective sounds. It must be pointed out that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. In the present case, the coinciding letters are placed in a different position in each sign, the initial part and the length of the signs are different as well as the number of their syllables (four in the earlier mark and two in the contested sign).

It is concluded that the signs are visually and aurally similar but only to a very low degree.

Conceptually, neither of the signs has a meaning for the part of the public under analysis. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for those consumers.

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.

According to the opponent the earlier trade mark has a substantial reputation in the European Union in connection with all the goods for which it is registered, namely Fentanyl citrate pharmaceutical preparations for the treatment of pain dispensed on medical prescription in Class 5. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted evidence to support this claim. As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. The evidence consists of the following documents:

• Brochure in English giving information on the ‘EFFENTORA’ goods, namely explanations on the characteristics of a fentanyl buccal table indicated for the treatment of breakthrough cancer pain dated in May 2015;

• Prescribing information of the ‘EFFENTORA’ goods for United Kingdom dated in April 2015;

• Leaflets in Italian and in German. The opponent’s mark appears but those documents are not translated in the language of proceedings;

• Examples of packaging in Italian and in German of ‘EFFENTORA’ goods;

• Information about IMS Health extracted on 02/09/2016 from the encyclopaedia Wikipedia;

• Spreadsheet setting out for the years 2011 to 2015 the unit sales of EFFENTORA goods in Spain, France, Germany, Italy, The Netherlands, United Kingdom and Austria. In the years 2013 to 2015. This document also shows market shares enjoyed by ‘EFFENTORA’ goods in comparison with other competing marks in several Member States of the European Union. According to the opponent, this document comes from ‘IMS Health’ which is an American company that provides information to the healthcare industry.

The principal item of evidence filed by the opponent is the spreadsheet showing unit sales in the relevant territory and market shares enjoyed by ‘EFFENTORA’ goods. However, as such, the documents provided by the opponent do not give any sufficient information to draw solid conclusions about the degree of recognition of the earlier mark by the relevant public, the market share held by the mark, the position it occupies in the relevant markets in relation to competitors’ goods, the extent of its use or the extent to which it was promoted.

The opponent alleges that this document has been elaborated by the independent company ‘IMS Health’. However, the source of the data does not appear in the document itself. The requirement of evidence of reputation always raises the question of the probative value of the submitted material. The evidence must at least have a certain degree of reliability. As a general rule, the Office considers material produced by third parties as being of a higher probative value than material produced by the owner himself or by its representative. Reference by the opponent to internal print-outs is particularly problematic. When no evidence has been provided that this material has been subject to certain official verification and the other evidence does not confirm the internal documents, its probative value must be considered very low.

As such, these documents cannot prove reputation. In principle, market share figures can lead to the conclusion that there is a reputation but not in this case because the documents do not appear sound and reliable at first sight. There is no document enabling the Opposition Division to assess with reliability the degree of knowledge or recognition of the mark amongst the relevant public. In particular, packaging, brochures or leaflets, by themselves, do not reveal any market knowledge of the products and do not even suffice to show genuine use of the product on the market.

The evidence does not provide any indication of the degree of recognition of the trade mark by the relevant public. Neither does it provide reliable sales volumes nor market shares of the trade mark nor the extent to which the trade mark has been promoted. In the absence of surveys on the mark’s recognition or independent evidence showing the market share held by the mark or the size of the investment made by the undertaking in promoting/advertising the mark or statements from chambers of commerce and industry or other trade and professional associations, etc. (this list is not exhaustive), it is held that the opponent failed to prove that its trade mark has acquired a reputation and/or a high degree of distinctiveness through use.

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 question. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C251/95, Sabèl, EU:C:1997:528, § 22).

The goods are identical and are directed at the public at large and medical professionals whose degree of attention is high.

For the consumers taken into account, the conceptual aspect is neutral as neither of the signs has a meaning. From the visual and aural points of view, the signs are similar but only to a very low degree. The opponent failed to prove that its trade mark has a high degree of distinctiveness through use. Therefore, its distinctiveness per se must be seen as normal.

The strong visual and aural differences between the signs, some of them placed in the initial part of the earlier mark which is the one that first catches the attention of the consumer, are sufficient to counteract the few similarities, all the more so as the high attentiveness on the part of the relevant public also dispel confusion.

Although the goods are considered identical, considering the high degree of attentiveness of the public and also all the above factors, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

It must be added that, even though the Opposition Division does not agree that the element ‘FENT’ will be perceived in the earlier mark as referring to ‘Fentanyl’, even if it does, this would make the signs even less similar as a result of the weak character of that element in both signs. Therefore, in such a case, the absence of a likelihood of confusion would equally apply.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient.

Reputation of the earlier trade mark

The evidence submitted by the opponent to prove the reputation and high distinctive character of the earlier trade marks has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

It was concluded that the evidence submitted by the opponent does not demonstrate that the earlier trade marks acquired a reputation.

Therefore, the opponent failed to prove that the earlier trade mark has a reputation. As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade marks have a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected on this ground.

In any case, the Opposition Division also notes that the opponent did not provide any facts, arguments or evidence which could support the conclusion that the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute 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 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

Adriana VAN ROODEN

Benoit VLEMINCQ

Martina GALLE

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.