OPPOSITION No B 2 535 626

Mabo Farma, S.A., Camino de Carriles s/n, Coslada (Madrid), Spain (opponent), represented by Ryo Rodriguez Oca, S.L., Calle Juan Hurtado de Mendoza 9, Apto. 507, 28036 Madrid, Spain (professional representative)

a g a i n s t

Flexion Therapeutics Inc., 10 Mall Road, Suite 301, Burlington Massachusetts 01803

Unites States of America (applicant), represented by Bird & Bird (International) LLP, Calle Jorge Juan 8 ,1ª Planta, 28001 Madrid, Spain (professional representative).

On 03/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 535 626 is upheld for all the contested goods, namely 

Class 5:        Pharmaceutical preparations; pharmaceutical preparations for use in the treatment of musculoskeletal conditions, soft tissue conditions, and arthritis; analgesic and anti-inflammatory pharmaceutical preparations; pharmaceutical preparations for injection for medical purposes; diagnostic reagents for in vivo use; medicines for human purposes; nutritional supplements.

2.        European Union trade mark application No 13 786 439 is rejected for all the contested goods. It may proceed for the remaining services.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 13 786 439, namely against all the goods in Class 5. The opposition is based on Spanish trade mark registration No 2 941 336. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent shall furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years. The same provision states that, in the absence of such proof, the opposition shall be rejected.

The applicant requested that the opponent submits proof of use of the trade mark on which the opposition is based, namely Spanish trade mark No 2 941 336.

In the present case the contested trade mark was published on 10/03/2015.

The earlier Spanish trade mark No 2 941 336 was registered on 12/11/2010.

As the earlier trade mark had not been registered for at least five years at the date of publication of the contested mark the request for proof of use is inadmissible.

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 products.

The contested goods are the following:

Class 5:        Pharmaceutical preparations; pharmaceutical preparations for use in the treatment of musculoskeletal conditions, soft tissue conditions, and arthritis; analgesic and anti-inflammatory pharmaceutical preparations; pharmaceutical preparations for injection for medical purposes; diagnostic reagents for in vivo use; medicines for human purposes; 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.

Contested goods in Class 5

The contested pharmaceutical preparations; pharmaceutical preparations for use in the treatment of musculoskeletal conditions, soft tissue conditions, and arthritis; analgesic and anti-inflammatory pharmaceutical preparations; pharmaceutical preparations for injection for medical purposes; diagnostic reagents for in vivo use; medicines for human purposes are included in the broad category of the opponent’s pharmaceutical products. Therefore, they are identical.

The contested nutritional supplements are similar to the opponent´s pharmaceutical products as they have the same purpose and can coincide in end user and distribution channels.

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 general public as well as at professional consumers with specific professional knowledge or expertise, namely 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.

Given that the non-professional general public is more prone to confusion, the examination will proceed on this basis. Taking into account the abovementioned facts, the attention of this part of the public will be higher than average.

3. The signs

FEXION	FLEXION
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 earlier mark has no meaning for the relevant public and is, therefore, distinctive.

The contested sign will, despite a missing accent on the letter “O”, be understood by the relevant public as the Spanish word “flexión”, meaning the act or effect of bending the body or a limb (flexión, Acción y efecto de doblar el cuerpo o algún miembro; Diccionario Real Academia Española). Whilst in some cases the presence or omission of an accent may change the meaning of a word, this is not the case here. The Spanish-speaking consumer will therefore immediately recognize the aforesaid meaning.  As it is not descriptive, allusive or otherwise weak for the relevant goods and services, it is distinctive.

Visually and aurally, the signs coincide in all but one of their letters, namely the second letter “L” of the contested sign, which has no counterpart in the earlier mark. Though this letter is located rather in the beginning of the signs it has only very little impact overall. It neither affects the overall visual impression of the signs nor does it lead to a considerable difference in their pronunciation.

Therefore, the signs are visually and aurally highly similar.

Conceptually, while the public in the relevant territory will perceive the meaning of the contested sign as explained above, 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.

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).

In the present case the goods are identical or similar and the signs are visually and aurally highly similar. The distinctiveness of the earlier mark is normal and the level of attention of the relevant public will be higher than average.

The only difference between the signs, namely the second letter “L” of the contested sign, has very little impact overall and can easily be overlooked, even though the attention of the relevant consumers will be higher than average here.

In that respect account must be 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).

Furthermore, a high degree of attention does not automatically lead to a finding of no likelihood of confusion. All other factors have to be taken into account. A likelihood of confusion can exist despite a high degree of attention. For example, when there is a strong likelihood of confusion created by other factors, such as identity or close overall similarity of the marks and the identity of the goods, the attention of the relevant public alone cannot be relied upon to prevent confusion (21/11/2013, T 443/12, ancotel, EU:T:2013:605, § 53-56, decision of 06/09/2010, R 1419/2009-4, ‘Hasi’).

Given that in the present case the signs are visually and aurally highly similar and the goods are almost entirely identical and, in one case, similar, the contested sign does not keep a sufficient distance to the earlier mark.

Finally, the fact that only the contested sign will be associated with a meaning is not sufficient to safely exclude the likelihood of confusion, as the earlier mark lacks any meaning that might help the relevant public to clearly differentiate between the signs in spite of their visual and aural similarities.

Considering all the above, there is a likelihood of confusion on the part of the general public. Given that 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.

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 2 941 336. 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.

The Opposition Division

Lars HELBERT

Tobias KLEE

Sigrid DICKMANNS

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.