OPPOSITION No B 2 743 220

Laboratorios Alter, S.A., Mateo Inurria, 30, 28036 Madrid, España (opponent), represented by Ryo Rodríguez Oca, S.L., Calle Juan Hurtado de Mendoza, 9 Apto. 507, 28036 Madrid, España (professional representative)

a g a i n s t

Phyto Garda S.R.L., Via Europa Unita 1A/4, 37011 Bardolino (VR), Italy (applicant).

On 09/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 743 220 is upheld for all the contested goods.

2.        European Union trade mark application No 15 356 595 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 356 595. The opposition is based on Spanish trade mark registrations No 3 092 893 and No 765 114. 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 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 Spanish trade mark registration No 765 114.

1. The goods

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

Class 5:         Pharmaceutical specialties.

The contested goods are the following:

Class 3:         Cosmetics.

Class 5:         Dietary supplements and dietetic preparations.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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

The contested cosmetics are similar to the opponent’s pharmaceutical specialties in Class 5 since they have the same purpose. Additionally, they may have the same producer, end user and distribution channels.

Contested goods in Class 5

The contested dietary supplements and dietetic preparations are similar to the opponent’s pharmaceutical specialties as they have the same purpose, distribution channels 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 the public at large and at professionals in cosmetics and the medical field, such as pharmacists and dieticians.

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 to be also high as regards cosmetics as they are applied to the body, especially the face, to improve its appearance, therefore, a special attentiveness is paid when selecting these kinds of goods.

3. The signs

LODERME	LEDERME
Earlier trade mark	Contested sign

The relevant territory is Spain.

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).

Neither of the signs has a meaning for the relevant public and are, therefore, distinctive.

Visually and aurally, the signs coincide in the string of letters and sounds ‘L*DERME’. However, they differ in their second letters, namely in the sound of the letters ‘O’ in the earlier mark and ‘E’ in the contested sign.

Therefore, since the signs are identical in length (seven letters) and highly similar in their rhythms and intonations, only differing in one letter, they are visually and aurally highly similar.

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.

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 has 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 mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The contested goods are similar to the opponent’s goods.

The signs are visually and aurally highly similar. As has been mentioned above in section c) of this decision, the signs have the same length and highly similar rhythms and intonations. Six out of seven of the letters/sounds of the signs are identical and placed in the exact same positions. The sole differing letters/sounds, ‘O’/‘E’, of the signs are not sufficient to differentiate the marks and this is the case for the entire relevant public, even where a higher than average degree of attention is paid. In addition, neither of the signs conveys a specific meaning that could distinguish the signs from each other conceptually.

To sum up, and taking into account the normal degree of distinctiveness of the earlier mark, the differences between the signs are not striking and are not capable of counteracting the strong similarities between them, with the result that the relevant public may believe that the similar goods come from the same undertaking or economically linked undertakings.

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).

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 Spanish trade mark registration No 765 114. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier Spanish trade mark registration No 765 114 leads 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 right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Finally, the opponent’s claim that the applicant filed the contested trade mark in bad faith, in particular, that the contested sign has been applied with the intention to obtain a ‘foreign’ goodwill that belongs to the owner of the earlier marks, does not have to be examined. In any case, this cannot be a basis for the opposition as Article 41 EUTMR states that an opposition can only be filed on the grounds set forth in Article 8 EUTMR.

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

Vanessa PAGE

Marta GARCÍA COLLADO

Richard BIANCHI

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.