OPPOSITION No B 2 505 181

Hexal Aktiengesellschaft, Industriestr. 25, 83607 Holzkirchen, Germany (opponent), represented by Boehmert & Boehmert Anwaltspartnerschaft mbB – Patentanwälte Rechtsanwälte, Kurfürstendamm 185, 10707 Berlin, Germany (professional representative)

a g a i n s t

Irati International, 32 rue de Lourmel, 75015 Paris, France (applicant), represented by Cabinet Sabatier, 83, avenue Foch, 75116 Paris, France (professional representative).

On 09/12/2016, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 505 181 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 of European Union trade mark application No 13 557 095, namely against all the goods in Class 5. The opposition is based on German trade mark registration No 39 943 653. 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.

PROOF OF USE

Proof of use of the earlier mark was requested by the applicant. However, at this point, the Opposition Division considers it appropriate not to undertake an assessment of the evidence of use submitted. The examination of the opposition will proceed as if genuine use of the earlier mark had been proven for all the goods on which the opposition is based, which is the best light in which the opponent’s case can be considered.

1. The goods

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

Class 5:        Pharmaceutical preparations, namely preparations containing loratadine.

The contested goods are the following:

Class 5:        Dermal dressings, in particular in the form of patches for application to targeted areas of the body; Goods in the form of transdermal patches and plasters not for medical purposes; Transdermal patches, plasters, bandages, poultices and/or dressings impregnated with plant and/or herb extracts, not for medical purposes, having pain-relief effects.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘in particular’, used in the applicant’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

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

Even though the opponent’s pharmaceutical preparations, namely pharmaceuticals containing loratadine are limited to certain pharmaceuticals and the contested dermal dressings, in particular in the form of patches for application to targeted areas of the body; goods in the form of transdermal patches and plasters not for medical purposes; transdermal patches, plasters, bandages, poultices and/or dressings impregnated with plant and/or herb extracts, not for medical purposes, having pain-relief effects are not intended for medical use, these goods are considered similar. Contrary to the opponent’s argument, the fact that the applicant’s goods can be used together with the active ingredient of the opponent’s goods does not make the goods identical. However, they can still have the same general purpose, for example relieving uncomfortable or painful physical conditions; this is evident from the wording of the applicant’s list of goods, which states that the goods relieve pain. The goods in question are also sold in the same places and target the same public.

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 similar are directed at both the public at large and healthcare professionals.

It is apparent from the case law that, insofar as pharmaceutical products are concerned, the relevant public’s degree of attention is relatively high, whether or not the goods are 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 the case law cited therein).

In particular, healthcare professionals have a high degree of attention when prescribing pharmaceutical goods. The public at large also shows a higher than average degree of attention, regardless of whether or not the pharmaceuticals are sold on prescription, as these goods affect their state of health.

3. The signs

Lorano	LARUNE DOLO PATCH
Earlier trade mark	Contested sign

The relevant territory is 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).

Considering the specification of the opponent’s goods, the Opposition Division finds that even though, as a whole, ‘LORANO’ will be perceived as an invented word, the beginning of the earlier mark, ‘LORA’, will be associated by the professional part of the public with the medical compound loratadine and will be perceived as allusive. For the general public, the earlier mark will be meaningless and will therefore have a normal degree of distinctiveness.

The contested sign is a word mark containing three words, ‘LARUNE’, ‘DOLO’ and ‘PATCH’. The first word of the sign has no meaning in the relevant territory and has a normal degree of distinctiveness. The second word, ‘DOLO’, may be perceived by the professional part of the public as deriving from the Latin word ‘dolor’, which means ‘pain’. Considering the relevant goods, this element must be considered weak for the professional public; however, its distinctiveness is normal for the general public.

The last word in the contested sign, ‘PATCH’, will probably be understood in the relevant territory with its English meaning, that is, as ‘a piece of material (such as adhesive plaster) used medically’ (information extracted from Duden on 09/12/2016 http://www.duden.de/rechtschreibung/Patch_Hautstueck). Therefore, in relation to the relevant goods, this element is non-distinctive.

Visually, the earlier mark and the first word of the contested sign coincide in the letters ‘L*R*N*’. However, they differ in the vowels that constitute the second, fourth and sixth letters of the signs. The contested sign also contains two other words, ‘DOLO’ and ‘PATCH’, which further distances the signs from each other visually. Although, as stated above, these two elements of the sign are weak or lack distinctiveness for the professional public, for this part of the public the beginning of the earlier mark, ‘LORA’, is also allusive.

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

Aurally, the pronunciation of the earlier mark and the first word of the contested sign coincides in the sound of the letters ‛L*R*N*’; however, since the signs contain different vowels, the overall pronunciation is different. Furthermore, the contested sign also contains two other words, which have no counterparts in the earlier sign.

Bearing in mind the considerations with regard to the distinctiveness of the earlier mark and the elements of the contested mark set out above, it is concluded that the signs are aurally similar to a low degree.

Conceptually, as explained above, the professional part of the public will associate the conflicting marks with different meanings. From the perspective of the general public, only the contested sign will be associated with a meaning.

Therefore, 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 part of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the fact that the professional part of the public will associate the beginning of the mark with the medical compound loratadine.

5. Global assessment, other arguments and conclusion

As was concluded above, the contested goods are similar to the opponent’s goods and they target the public at large and healthcare professionals, both having a high degree of attention. Furthermore, the earlier mark is considered to have a normal degree of distinctiveness in relation to the relevant goods. Moreover, the signs are visually and aurally similar to a low degree and have no conceptual similarity.

The earlier mark and the first word of the contested sign coincide aurally and visually in the letters ‘L*R*N*’. However, the coinciding letters, ‘L*R*N*’, are combined with other letters in both marks and followed by two additional words in the contested sign, and this, regardless of the signs’ distinctiveness or lack thereof, contributes to the different overall impressions created by the marks under comparison.

Taking into account the differences described above, the Opposition Division considers that the similarities between the marks are clearly outweighed by their differences, and that the marks are sufficiently different to avoid confusion between them, especially taking into account the relatively high degree of attention of the relevant public.

Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.

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

José Alexandre DE PAIVA ANDRADE TEIXEIRA

Benjamin Erik WINSNER

Denitza STOYANOVA-VALCHANOVA

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.