OPPOSITION No B 2 464 736

Fidia Farmaceutici S.p.A., Via Ponte della Fabbrica, 3/A, 35031 Abano Terme (PD), Italy (opponent), represented by Dr. Kunz-Hallstein Rechtsanwälte, Galeriestr. 6A, 80539 München, Germany (professional representative)

a g a i n s t

Yal Art Xcelens S.R.L., Corso San Gottardo n. 22, 20136 Milano, Italy (applicant), represented by PGA S.p.A., Via Mascheroni, 31, 20145 Milano, Italy (professional representative).

On 21/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 464 736 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 13 308 473, namely against some of the goods in Class 3, all the goods in Class 5 and all the services in Class 44. The opposition is based on Italian trade mark registration No 1 292 590 ‘HYALART’, Greek trade mark registration No 99 101 ‘HYALART’ and international trade mark registration No 504 942 ‘HYALART’, designating Germany. 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 and services

The goods on which the opposition is based are the following:

Italian trade mark registration No 1 292 590, ‘HYALART’

Class 5:        Pharmaceutical products, medical-surgical devices and biomaterials for medical and sanitary use.

Greek trade mark registration No 99 101, ‘HYALART’

Class 5:        Pharmaceutical preparations.

International trade mark registration No 504 942, designating Germany, ‘HYALART’

Class 5:        Pharmaceutical products.

The contested goods and services are the following:

Class 3:        Cosmetics; dermo-cosmetics; cosmetic preparations for the maintenance of the skin; cosmetics kits; creams (cosmetic -); cosmetic gels; cosmetics for skin replenishment, oils and lotions for cosmetic purposes.

Class 5:        Pharmaceutical preparations for cosmetics purposes; skin care (pharmaceutical preparations for -); injectable gels for medical purposes; medical devices in the form of filler gels based on hyaluronic acid for intradermal or subcutaneous injections, for purchase and use by doctors and professional operators specialising in the medical sector; injectable gels with hyaluronic acid for dermal replenishment; pharmaceutical gels for dermal replenishment; pharmaceutical gels for skin care; pharmaceutical gels with hyaluronic acid; pharmaceutical creams; pharmaceutical oils and lotions for skincare; pharmaceutical preparations for the treatment of cellulite; pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; foods and dietetic substances adapted for medical use; diet supplements; biological preparations for medical use; chemical preparations for pharmaceutical, medical or veterinary use; depurative preparations; laxative products; adjuvants for medical use; food for babies; adhesive bands for medical purposes; surgical dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides; herbicides.

Class 44:        Medical services; hygienic and beauty care for human beings.

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 3

Cosmetics include a list of preparations used to enhance or protect the appearance or improve the odour of the human body. Pharmaceuticals, on the other hand, comprise products, such as skin or hair care preparations, with medical properties. The contested cosmetics; dermo-cosmetics; cosmetic preparations for the maintenance of the skin; creams (cosmetic -); cosmetic gels; cosmetics for skin replenishment, oils and lotions for cosmetic purposes are considered similar to the opponent’s pharmaceutical products. They may coincide in purpose. Moreover, they have the same distribution channels, since they can be found in pharmacies or other specialised shops. They target the same public and are often manufactured by the same companies.

However, the contested cosmetics kits are more focused on containing make-up and the like, not necessarily related to pharmaceuticals or the opponent’s other goods. They have a different nature, purpose and method of use. Moreover, they can have different producers. However, they can be complementary and coincide in distribution channels and relevant public. Therefore, they are considered similar to a low degree.

Contested goods in Class 5

The contested pharmaceutical preparations are included in the broad category of the opponent’s pharmaceutical products. Therefore, they are identical.

Pharmaceutical products refer to any kind of medicine, that is, a substance or combination of substances for treating or preventing diseases in human beings or animals. From its definition, it can already be concluded that veterinary preparations are identically included in the broader category of pharmaceutical products. Therefore, they are identical.

The contested pharmaceutical preparations for cosmetics purposes; skin care (pharmaceutical preparations for -); injectable gels for medical purposes; medical devices in the form of filler gels based on hyaluronic acid for intradermal or subcutaneous injections, for purchase and use by doctors and professional operators specialising in the medical sector; injectable gels with hyaluronic acid for dermal replenishment; pharmaceutical gels for dermal replenishment; pharmaceutical gels for skin care; pharmaceutical gels with hyaluronic acid; pharmaceutical creams; pharmaceutical oils and lotions for skincare; pharmaceutical preparations for the treatment of cellulite; sanitary preparations for medical purposes; foods and dietetic substances adapted for medical use; diet supplements; biological preparations for medical use; chemical preparations for pharmaceutical, medical or veterinary use; depurative preparations; laxative products; adjuvants for medical use are included in the opponent’s pharmaceutical products. Therefore, they are identical.

The contested disinfectants are similar to the opponent’s pharmaceutical products. They coincide in purpose, producers, distribution channels and relevant public.

Preparations for destroying vermin are similar to the opponent’s pharmaceutical products. They can have the same purpose and distribution channels and can be complementary.

The contested food for babies is similar to a low degree to the opponent’s pharmaceutical products. They can coincide in purpose and distribution channels.

The contested adhesive bands for medical purposes; surgical dressings are similar to a low degree to the opponent’s pharmaceutical products. They can have the same distribution channels and relevant public and can be complementary.

The contested material for stopping teeth; dental wax are similar to a low degree to the opponent’s pharmaceutical products. They can have the same distribution channels and relevant public.

The contested fungicides are similar to a low degree to the opponent’s pharmaceutical products. They may have the same purpose and distribution channels and may be complementary.

However, the contested herbicides (which are chemicals used to destroy plants, especially weeds) are dissimilar to all the opponent’s goods. The goods belong to different areas of activity, are of different natures, have different primary purposes and are neither complementary nor in competition.

Contested services in Class 44

The contested medical services; hygienic and beauty care for human beings are dissimilar to all the opponent’s goods. Even though a certain link cannot be denied because they have the goal of treating diseases or care in common, the differences in nature and especially in usual origin clearly outweigh any similarities. The relevant public does not expect a doctor or beautician to develop and market a drug. Furthermore, they are not complementary or in competition.

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 to various degrees are directed at the public at large and at specialists 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

HYALART	JENYALART
Earlier trade marks	Contested sign

The relevant territories are Italy, Greece and 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 earlier marks, ‘HYALART’, have no meaning for the relevant public and are, therefore, distinctive. However, part of the public may associate the verbal element ‘HYAL’ with hyaluronic acid, which is a common ingredient in skin-care products and, inter alia, used as dermal filler in cosmetic surgery. Bearing in mind that the relevant goods are related to pharmaceuticals, this element is weak for these goods, namely pharmaceutical products and preparations, medical-surgical devices and biomaterials for medical and sanitary use.

The contested mark, ‘JENYALART’, has no meaning for the relevant public and is, therefore, also distinctive. However, part of the public may dissect the mark and perceive the female name Jen/Jen(n)y in the beginning of the mark. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.

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, the signs coincide in the last letters, ‘YALART’. However, they differ in the first letter ‘H’ of the earlier marks and the first three letters ‘JEN’ of the contested sign. Even though the endings are identical, the public will focus its attention on the different beginnings of the signs.

Therefore, the signs are visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in the different parts of the relevant territories, the pronunciation of the signs coincides in the sound of the last letters, ‛YALART’, present identically in both signs. The pronunciation differs in the sound of the first letter ‛H’ of the earlier marks and the first three letters ‘JEN’ of the contested sign, which have no counterparts in the earlier marks. Moreover, the signs are pronounced with three or four syllables respectively (HY-A-LART versus JE-NY-A-LART). Therefore, the words are of different lengths and have different beginnings, which attract the public’s primary attention, and are pronounced with different rhythms.

Therefore, the signs are aurally similar to a low degree.

Conceptually, reference is made to the statements made above concerning the semantic content conveyed by the marks. As the signs will be associated with dissimilar meanings, they are not conceptually similar.

Part of the public may perceive a meaning in only one of the signs, as explained above. Since in that case one of the signs will not be associated with any meaning, they are not conceptually similar for this part of the public.

For another part of the public, neither of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 marks

The distinctiveness of the earlier marks 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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks 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).

The goods are partly identical, partly similar to various degrees and partly dissimilar. They target the public at large and professionals. The degree of attention will vary from average to high.

The signs are visually and aurally similar to a low degree insofar as they coincide in their last sequence of letters, ‘YALART’, which means that they have most of their letters in common. However, they differ in their first letters, ‘H’ and ‘JEN’, which give the words different visual impressions and aural rhythms. In addition, the signs have no concept in common.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. Therefore, although the signs coincide in their last letters, the different beginnings of the marks are clearly perceptible and sufficient to exclude any likelihood of confusion or association between the signs.

Considering all the above, and even assuming that the goods are identical or similar, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

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

André Gerd Günther BOSSE

Lena FRANKENBERG GLANTZ

Plamen IVANOV

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.