ILLUMINA | Decision 187/2016-4

ol{list-style-type: lower-alpha}ol li{font-weight: bold !important;font-family: arial !important}ol > li:before {content: “) “;position: relative;left: -22px;top: -1px;background: #fff}

DECISION

of the Fourth Board of Appeal

of 11 January 2017

In Case R 1187/2016-4

Novartis AG

4002 Basel

Switzerland

Opponent / Appellant

represented by BOEHMERT & BOEHMERT  ANWALTSPARTNERSCHAFT MBB – PATENTANWÄLTE RECHTSANWÄLTE, Kurfürstendamm 185, 10707 Berlin, Germany

v

CRISTALFARMA S.r.l.

Via S. G. Cottolengo, 15

20143 Milano

Italy

Applicant / Respondent

represented by CON LOR SPA, Via Renato Fucini, 5, 20133 Milano, Italy

APPEAL relating to Opposition Proceedings No B 2 269 226 (European Union trade mark application No 11 934 239)

THE FOURTH BOARD OF APPEAL

composed of D. Schennen (Chairperson), S. Martin (Rapporteur) and C. Bartos (Member)

Registrar: H. Dijkema

gives the following


Decision

Summary of the facts

  1. By an application filed on 26 June 2013, the respondent sought to register the word mark

ILLUMINA

for the following goods:

Class 5 – Dietetic substances for the treatment of the cognitive and cerebral system.

  1. On 12 November 2013, the appellant filed an opposition against the application based on the grounds of Article 8(1)(b) EUTMR and earlier German trade mark No 30 750 928

ILLINA

registered on 24 September 2007 and renewed until 31 August 2017 for the following goods:

Class 5 – Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use; plasters, materials for dressings.

  1. By decision of 5 May 2016 (‘the contested decision’), the Opposition Division rejected the opposition in its entirety, reasoning that the goods were identical and the signs visually and aurally similar, but that due to the clear and perceptible concept of ‘light’ in the contested sign the conflicting signs gave a different overall impression and hence no likelihood of confusion existed for the consumer who was attentive to a more than average degree.
  2. On 28 June 2016, the appellant filed an appeal against the contested decision, followed by the statement of grounds, requesting that the decision be annulled and the opposition upheld because a likelihood of confusion existed due to the similarity between the signs and the identity between the goods.
  3. The respondent did not submit observations in reply to the statement of grounds.

Reasons

  1. The appeal is admissible and well founded. A likelihood of confusion exists within the meaning of Article 8(1)(b) EUTMR for the reasons outlined below.

Article 8(1)(b) EUTMR

  1. According to Article 8(1)(b) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for 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; a likelihood of confusion includes a likelihood of association with the earlier trade mark.
  2. Since the earlier mark is a German trade mark, the relevant territory for analysing a likelihood of confusion is that of Germany.

Comparison of the goods

  1. The respondent’s ‘dietetic substances for the treatment of the cognitive and cerebral system’ in Class 5 are identical to the appellant’s ‘dietetic substances adapted for medical use’ in Class 5. The treatment of the cognitive and cerebral system is medical use and hence the dietetic substances for such treatment fall in the broader category of dietetic substances adapted for medical use.

Comparison of the signs

  1. The global appreciation of the similarity between the signs includes an examination of whether the two signs concerned are visually, aurally or conceptually similar, which must be carried out on the basis of the overall impression created by them and bearing in mind, in particular, their distinctive and dominant components (22/06/1999, C342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25 and 27; 06/10/2005, C120/04, Thomson Life, EU:C:2005:594, § 28).
  2. Both marks are word marks, each consisting of a single word. The beginnings ‘ILL’ and the endings ‘INA’ of the words are identical. The only difference between the signs consists in the additional two letters ‘UM’ which are inserted in the middle of the contested sign.
  3. Visually, the signs are similar to a more than average degree due to their common structure as one-word signs, their common beginnings ‘ILL’ and their common endings ‘INA’.
  4. Aurally, the addition of the two letters ‘UM’ leads to a certain difference in the pronunciation of the contested sign in comparison to the earlier mark. However, due to their common beginnings and endings, the signs are still aurally similar to an average degree.  
  5. Conceptually, neither of the signs has a meaning per se for the relevant public since neither sign is a German word. The contested sign ‘ILLUMINA’ may be reminiscent of the German word ‘Illumination’. However, in Germany ‘Illumination’ is a rarely-used word for exterior lightning which has no relationship with the goods in issue. The average consumer for the goods in issue will not see any conceptual similarity between the signs.

Overall assessment of the likelihood of confusion

  1. According to the case-law of the Court of Justice, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion. It follows from the very wording of Article 8(1)(b) EUTMR that the concept of a likelihood of association is not an alternative to that of a likelihood of confusion, but serves to define its scope (29/09/1998, C39/97, Canon, EU:C:1998:442, § 29; 22/06/1999, C342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17).
  2. In the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of products concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (13/02/2007, T-256/04, ‘Respicur’, EU:T:2007:46, § 42).
  3. In the case at hand, the relevant public for the conflicting goods is the public at large and specialists such as nutritionist with medical knowledge. The degree of attention of the average consumer of the conflicting goods will range between average and high.
  4. The degree of inherent distinctive character of the earlier mark is average. Increased distinctive character has not been claimed.
  5. As regards the Opposition Division’s assessment considering the signs to produce different overall impressions due to ‘the clear and perceptible concept for the relevant public of “light” in the contested sign’, the Board recalls that according to established case-law where marks are phonetically and visually similar, they are similar overall, unless there are significant conceptual differences. Such differences may counteract aural and visual similarities, provided that, for the relevant public, the meaning of at least one of the signs is clear and specific, so that the public is capable of grasping it immediately (14/10/2003, T-292/01, BASS / PASH, EU:T:2003:264, § 54). In the present case, neither of the marks has a clear and specific meaning. The allusion of the contested mark to a rarely-used German word will not be grasped immediately by the relevant public. It follows that there is no conceptual difference between the signs which could counteract the aural and visual similarities between the signs.
  6. Considering the identity of the conflicting goods, and the visual and aural similarities between the conflicting signs at least to an average degree, the Board finds that a likelihood of confusion exists on that part of the relevant public for all the contested goods.
  7. It follows that the contested decision must be annulled and the opposition upheld in its entirety.

Costs

  1. As the respondent is the losing party within the meaning of Article 85(1) EUTMR, it must be ordered to bear the costs of the opposition and the appeal proceedings.

Fixing of costs

  1. In accordance with Article 85(6) EUTMR and Rule 94(7)(d)(i) and (vi) CTMIR, the Board fixes the amount of representation costs to be paid by the respondent to the appellant at EUR 550 for the appeal proceeding and at EUR 300 for the opposition proceedings. To this, the opposition fee of EUR 350 and the appeal fee of EUR 720 incurred by the appellant must be added, in total EUR 1920.

Order

On those grounds,

THE BOARD

hereby:

  1. Annuls the contested decision;
  2. Upholds the opposition in its entirety;
  3. Orders the respondent to bear the costs of the opposition and appeal proceedings;
  4. Fixes the total amount of costs to be paid by the respondent to the appellant at EUR 1920.

Signed

D. Schennen

Signed

S. Martin

Signed

C. Bartos

Registrar:

Signed

H.Dijkema

11/01/2017, R 1187/2016-4, ILLUMINA / ILLINA

Leave Comment