OPPOSITION No B 2 226 598
Omega Pharma Innovation & Development NV, Venecoweg 26, 9810 Nazareth, Belgium (opponent), represented by Altius, Avenue du Port 86 C B414, 1000 Brussels, Belgium (professional representative)
a g a i n s t
Eveline Cosmetics Brand Concept Development Sp. z o.o., ul. Wierzbowa nr 18 90-245 Łódź, Poland (applicant), represented by Kancelaria Patentowa Aleksandra Marcińska, ul. J. Słowackiego 5/149, 01-592 Warsaw, Poland (professional representative)
On 27/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 226 598 is upheld for all the contested goods, namely
Class 3: Creams for washing; cleansing creams; creams for protecting human skin from external factors (barrier creams).
Class 5: Creams for medical purposes; medicinal creams for protection of the skin; feminine hygienic products.
2. European Union trade mark application No 11 700 861 is rejected for all the contested goods. It may proceed for the remaining goods and 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 11 700 861, namely against some of the goods in Classes 3 and 5. The opposition is based on, inter alia, Cyprus trade mark registration No 29 333 and Cyprus trade mark registration No 29 334. The opponent invoked Article 8(1)(a) and (b) and Article 8(5) EUTMR.
Preliminary remark
On 15/09/2014 the Opposition Division rendered a decision which resulted in the rejection of the contested European Union trade mark application No 11 700 861 in due to the likelihood of confusion with the opponent’s Polish trade mark registration No 151 784.
The decision was appealed and the Board of Appeal decided in case R R 2908/2014-5 on 16/09/2015. The Board’s decision annulled the contested decision and remitted the case to the Opposition Division for further prosecution. The Board considered that there was an issue as to the ownership of the earlier right on which the contested decision was based, namely Polish trade mark registration No 151 784. At the time of the opposition, the opponent was not the owner of this registration. As regards this earlier right, the opponent has failed to demonstrate that, at the moment of the filing of the opposition, it was the proprietor of the earlier mark or a licensee authorised by the proprietor.
However, the opponent based its opposition on a number of earlier rights, where entitlement appears to have been established as set out above. These were not considered by the Opposition Division, who based the contested decision solely on Polish national registration No 151 784. Given that the applicant pointed out in submissions its concerns as to the opponent’s eligibility in respect of the latter, which the contested decision even ignores when those shortcomings should have been detected by the Opposition Division, a serious procedural error, breaching the applicant’s right to be heard, seems to have taken place.
In view of the fact that the contested decision was in breach of Article 73, second sentence, the Board deemed it appropriate, as already pointed out, to remit the case to the Opposition Division for further prosecution in view of the parties’ legitimate interest that their case be decided by the Office’s two instances.
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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Cyprus trade mark registration No 29 333 and Cyprus trade mark registration No 29 334.
- The goods
The goods on which the opposition is based are the following:
Cyprus trade mark registration No 29 333
Class 3: Skin care products in liquid or solid form.
Cyprus trade mark registration No 29 334
Class 5: Pharmaceutical and sanitary products for dermatological and gynaecological use.
The contested goods are the following:
Class 3: Creams for washing; cleansing creams; creams for protecting human skin from external factors (barrier creams).
Class 5: Creams for medical purposes; medicinal creams for protection of the skin; feminine hygienic products.
Contested goods in Class 3
The contested creams for washing; cleansing creams; creams for protecting human skin from external factors (barrier creams) are included in the broad category of, or overlap with, the opponent’s skin care products in liquid or solid form. Therefore, they are identical.
Contested goods in Class 5
The contested creams for medical purposes; medicinal creams for protection of the skin; feminine hygienic products are included in the broad categories of, or overlap with, the opponent’s pharmaceutical and sanitary products for dermatological and gynaecological use. Therefore, they are identical.
- 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 also at business customers with specific professional knowledge or expertise.
The degree of attention will vary from average (for daily consumption goods such as creams for washing) to high insofar as pharmaceutical products are concerned’.
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 signs
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LACTACYD
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LACTAFITT
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Earlier trade marks |
Contested sign |
The relevant territory is Cyprus.
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 word marks ‘LACTACYD’ and ‘LACTAFITT’ have no meaning for the relevant public and are, therefore, distinctive.
Account must be taken on the fact 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, the signs coincide in the letters ‘L-A-C-T-A’ placed at the beginning of both signs. On the other hand, they differ in the last three letters of the earlier sign, namely ‘-C-Y-D’ and in the last four letters of the contested sign, namely ‘-F-I-T-T’.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the two syllables ‛LAC-TA’, present identically in both signs, and to that extent the signs are aurally similar. Also, the signs are similar to the extent that they share the letters ‘Y’ of the earlier mark and ‘I’, which will be pronounced in an identical manner. The pronunciation differs in the sound of the letters ‘C’ and ‘D’ of the earlier sign and in the sound of the letters ‘F’ and ‘T’ of the contested mark. The last letter ‘T’ of the contested sign will be pronounced together with the first ‘T’, not adding any additional sound to the contested mark.
Consequently, the signs are aurally similar to an average degree.
Conceptually, neither of the signs has a meaning for the public in the relevant territory. 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.
- Distinctiveness of the earlier marks
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 marks have been extensively used and enjoy an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).
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.
Global assessment, other arguments and conclusion
The goods in Classes 3 and 5 covered by the trade marks in dispute have been found identical.
The marks are similar from a visual and aural point of view, since they both contain the sequence of letters ‘L-A-C-T-A’. They lack any meaning in the relevant territory. It has to be noticed that the first parts of the conflicting marks, namely their first five letters, are identical. As already pointed out in section c) of the present decision, consumers generally tend to focus on the beginning of a sign when being confronted with a trade mark. Consequently, the identical beginnings of the marks at issue have to be taken into account when assessing the likelihood of confusion between the marks.
The differences between the marks lie in the last three letters ‘C-Y-D’ of the earlier marks and the last four letters ‘-F-I-T-T’ of the contested mark. Although it is true that these letters are not visually similar, it must be pointed out that from an aural perspective the endings of the marks show some similarities. In particular the only vowels contained in these parts, namely ‘I’ and ‘Y’, are aurally identical, thus rendering the whole aural structure of the signs in dispute overall similar, in particular as regards their rhythm and intonation.
It is the opinion of the Opposition Division that the aforementioned differences between the signs are not enough to outweigh the significant similarities found between them. Account is 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, it cannot be obliterated 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 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).
As the goods are identical, the signs are similar to an average degree and considering the absence of any dominant or non-distinctive elements in the signs, a likelihood of confusion exists.
Indeed, it is conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).
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 Cyprus trade mark registration No 29 333 and Cyprus trade mark registration No 29 334. It follows that the contested trade mark must be rejected for all the contested goods.
Since the opposition is successful on the basis of the inherent distinctiveness of the earlier marks, there is no need to assess the enhanced degree of distinctiveness of the opposing marks due to their reputation as claimed by the opponent. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.
As the earlier Cyprus trade mark registration No 29 333 and Cyprus trade mark registration No 29 334 lead to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(1)(a) and Article 8(5) EUTMR.
Also, in its observations of 19/09/2016 and 20/10/2016, the applicant argues that the earlier trade mark has a low distinctive character given that there are many trade marks that include the elements ‘LAC, LACT or LACTA’. In support of its argument the applicant refers to several trade mark registrations in jurisdictions such as the Benelux, Bulgaria, Cyprus, Estonia or Finland.
The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘LACTA’. Under these circumstances, the applicant’s claims must be set aside.
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
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Angela DI BLASIO |
Andrea VALISA |
Francesca CANGERI SERRANO |
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.