LUMEXIA | Decision 2530932 – Nobel Pharma EOOD v. GALDERMA S.A.

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OPPOSITION No B 2 530 932

Nobel Pharma Eood, 24 Simeonovsko chaussee blvd., fl.2, ap. 9, 1700 Sofia, Bulgaria (opponent), represented by Bureau Ignatov & Son,  53, "Schipchenski prohod" blvd. 1111 Sofia, Bulgaria (professional representative)

a g a i n s t

Nestlé Skin Health S.A., Avenue Gratta-Paille 2, 1018 Lausanne, Switzerland (applicant), represented by Regimbeau, 20 rue de Chazelles, 75847 Paris Cédex 17, France (professional representative).

On 10/02/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 530 932 is upheld for all the contested goods.

2.        European Union trade mark application No 13 881 339 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 13 881 339. The opposition is based on Bulgarian trade mark registration No 84 435. The opponent invoked Article 8(1)(b) EUTMR.

Preliminary remark – Substantiation

The applicant claimed that the opposition should have been rejected as non-substantiated, because the opponent, apart from submitting the opposition notice, gave no further arguments to substantiate the opposition as required by Article 15(2)(c) EUTMIR.

According to the Office’s Guidelines the specification of the grounds, required by Article 15(2)(c) EUTMIR should consist of a statement to the effect that the respective requirements under Article 8 EUTMR are fulfilled. The opposition is admissible if it is possible to identify the grounds from the notice of opposition without any doubt.

In the present case, the opponent has indicated on the opposition form the ground of Article 8(1)(b) EUTMR, which constitutes a proper indication of the grounds. Arguments and evidence are voluntary at this point in the proceedings.

The opponent has also, at the time of filing the opposition, proven the existence, validity and scope of protection of his earlier mark, as well as his entitlement to file the opposition, as required by Rule 20(1) EUTMIR.

Consequently, the fact that the opponent did not submit any further arguments or material during the additional time limit set by the Office has no relevance. Therefore, this argument of the applicant must be set aside.

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

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

Class 5: Pharmaceutical, veterinary preparations; sanitary preparations for

medical purposes.

The contested goods are the following:

Class 5: Pharmaceutical products for the treatment of precancerous skin lesions.

The contested pharmaceutical products for the treatment of precancerous skin lesions are included in the broad category of the opponent’s pharmaceutical products. Therefore, they are identical.

  1. 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 case of the identical pharmaceutical preparations at hand, the relevant public consists of both qualified medical professionals and the general public, without any specific medical knowledge. Nevertheless, the degree of attention will be high for both consumer groups, not only for medical professionals, as the health considerations will prompt the public at large to examine products with particular scrutiny and request professional assistance when purchasing these goods.

  1. The signs

MEXIA МЕКСИЯ

http://prodfnaefi:8071/FileNetImageFacade/viewimage?imageId=117622470&key=f8ea6e740a840803398a1cf1cc636bac

Earlier trade mark

Contested sign

The relevant territory is Bulgaria.

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 mark is composed of two words “MEXIA” and “МЕКСИЯ”, i.e. the word “MEXIA” and its equivalent in Cyrillic letters, “МЕКСИЯ”, as permitted under the practice of the Bulgarian Patent Office. They will be perceived by a Bulgarian consumer as the same word written in the Latin and the Cyrillic alphabet.

The contested sign is a figurative mark consisting of the word “LUMEXIA” written in blue standard capital letters, beneath a figurative element consisting of blue, orange, green and pink rays streaming from above the letter “E”. The contested mark has no element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in “MEXIA”. They differ in the initial two letters “LU” of the contested sign and the element “МЕКСИЯ” of the earlier sign.

The signs also differ in the blue colour of the contested sign’ verbal element and its graphic element, although when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

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

Aurally, the marks will be referred to as “MEXIA” and “LUMEXIA” by the Bulgarian consumers. It is unlikely that the earlier mark would be pronounced as “MEXIA, MEXIA” as an average Bulgarian consumer would clearly see that it is the same word written in two different alphabets. The pronunciation of the signs thus coincides in the sound of the letters “MEXIA”, i.e. all the sounds of the earlier sign. The pronunciation differs in the sound of the contested sign’s two additional letters, “LU”.

Therefore, the signs are aurally highly similar.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. The contested sign’s graphic element will not be associated with any clear concept either. 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.

  1. 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 the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

  1. Global assessment, other arguments and conclusion

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods covered are from the same or economically linked undertakings.

Moreover, account is taken of the fact that consumers, even attentive ones, 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).

The goods are identical and the signs are aurally highly similar. The degree of distinctiveness of the earlier mark is normal. None of the signs will be associated with a concept which would help the public differentiate between the signs.

The signs aurally coincide in all the sounds of the earlier mark. Moreover, they also share a certain visual similarity, albeit to a low degree. The contested sign’s differences in two additional letters or its stylisation will not have such an impact on the consumers which would be sufficient to offset the similarities and thus exclude a likelihood of confusion as to the commercial origin of the goods.

When confronted with the contested sign replicating the earlier sign’s verbal element with the addition of two letters, even highly attentive consumers would readily assume that the identical goods come from the same or economically linked undertakings.

The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings. This is because in all the cases cited by the applicant (Opposition No 1 957 359 “OASIS/SNOASIS”, Opposition No B 2 096 058 “GRANT/MIGRANT”, Opposition No B 2 252 768, “WHITE/BEWHITE”) there were also conceptual differences between the signs. In the case “WHITE/BEWHITE”, the lower distinctiveness of the earlier sign was also taken into account.

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 Bulgarian trade mark registration. It follows that the contested trade mark must be rejected for all the contested goods.

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

Cynthia DEN DEKKER

Marianna KONDAS

Julie GOUTARD

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.

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