OPPOSITION No B 2 382 268
Dicofarm S.P.A., Via Casale della Marcigliana, 29, 00138 Roma, Italy (opponent), represented by DR. Modiano & Associati S.P.A., Via Meravigli, 16, 20123 Milano, Italy (professional representative)
a g a i n s t
Laboratorios Cinfa S.A., Ctra. de Roncesvalles s/n Políg. Ind. de Ollokilanda, 31699 Olloki (Navarra), Spain (applicant), represented by AB Asesores, Calle Bravo Murillo 219 – 1º B, 28020 Madrid, Spain (professional representative).
On 16/06/2017, the Opposition Division takes the following
1. Opposition No B 2 382 268 is upheld for all the contested goods.
2. European Union trade mark application No 12 736 609 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
The opponent filed an opposition against all the goods of European Union trade mark application No 12 736 609. The opposition is based on Italian trade mark registration No 1 219 605. 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.
- The goods
The goods on which the opposition is based are the following:
Class 5: Milk powder for children.
The contested goods, following a limitation, are the following:
Class 5: Pharmaceutical preparations and dietary supplements with the express exclusion of milk powder for babies.
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.
The contested dietary supplements with the express exclusion of milk powder for babies are similar to the opponent’s goods, as they have the same distribution channels (they are all usually offered at pharmacies) and intended purpose and originate from the same or economically linked undertakings.
The contested pharmaceutical preparations with the express exclusion of milk powder for babies are similar to a low degree to the opponent’s goods, as they have the same distribution channels (they are all usually offered at pharmacies) and have the same intended purpose. The opponent’s goods consist of food intended for infants, not only because the infants are physically incapable of eating certain other types of food, but also because they require this type of food for medical reasons.
- 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 similar to varying degrees are directed at the public at large and at professionals in the medical sector 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.
The degree of attention is considered higher than average. The degree of attention is also higher than average for food for babies and dietary supplements in Class 5, considering that they may, to a lesser or greater extent, affect the state of human health (with regard to dietary supplements reference is made to 23/01/2014, T-221/12, Sun Fresh, EU:T:2014:25, § 64).
- The signs
Earlier trade mark
The relevant territory is Italy.
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 relevant public will perceive a reference to ‘formula’/‘formule’ (plural) (which means ‘composition(s)’ in Italian) in the initial parts of the marks and, therefore, will establish a link with the goods at issue. Moreover, as the applicant claims, part of the public might also associate the ending ‘LAT’ of the earlier sign with ‘LATTE’, which means ‘milk’ in Italian. In this case, this element will be considered non-distinctive in respect of the opponent’s goods. It needs to be also noted 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.
Visually and aurally, the signs coincide in the letters ‘FORMUL’, comprising six out of their eight sounds/letters. They differ in their endings, ‛AT’ in the earlier sign and ‘EX’ in the contested mark. Because they are of the same length, the signs have the same rhythm and intonation.
Therefore, the signs are visually and aurally similar to an average degree, despite the somewhat limited distinctiveness of the element ‘FORMUL’, as the coinciding letters make up the majority of both marks, which have the same length (eight letters) and number of syllables (three syllables).
Conceptually, as the signs will be associated with similar meanings on the basis of the elements ‘formula’/‘formule’, the signs are conceptually similar to a low degree.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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, considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all of the goods for the part of the public that would associate it with the concept of composition (‘FORMULA’) and milk (‘LATTE’). However, for the part of the public that will not perceive the concept of milk in the earlier sign, it will have a normal degree of distinctiveness.
- Global assessment, other arguments and conclusion
The Court has set out the essential principle that 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 the goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C39/97, Canon, EU:C:1998:442, § 17).
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 the present case, the goods are partly similar and partly similar to a low degree and the attentiveness of the public is higher than average. For at least a part of the relevant public, the signs are visually and aurally similar to an average degree and conceptually similar to a low degree and the earlier mark has a normal degree of distinctiveness for at least a part of the public.
Taking into account the interdependence principle and the fact that, even though the public will associate the marks with a weak meaning in relation to the goods in question, the perception of the marks as referring to a concept of lower than average distinctiveness is not sufficient to override the marks’ similar overall impressions, due to their significant visual and aural commonalities, it is likely that the relevant public, even with a high degree of attentiveness, will believe that the goods come from the same or economically linked undertakings.
The applicant argues that its EUTM has reputation and filed various pieces of evidence to substantiate this claim.
The right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings.
Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts which happened before the filing date of the EUTM are irrelevant because the right of the opponent, insofar as it predates the EUTM, is earlier than the applicant’s EUTM.
Considering all the above, there is a likelihood of confusion on the part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s Italian trade mark registration No 1 219 605. It follows that the contested trade mark must be rejected for all the contested goods.
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
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.