OPPOSITION DIVISION
OPPOSITION No B 2 543 877
Farmina sp. z.o.o., ul. Lipska 44, 30-721 Kraków, Poland (opponent), represented
by Triloka Czarnik Ozog Kancelaria Patentowa i Adwokacka SP.P., ul. Kornela
Ujejskiego 12/7, 30-102 Kraków, Poland (professional representative)
a g a i n s t
Mediderma, S.L., Calle Masmagrell, 3 Pol. Industrial Rafelbunyol, 46138
Rafelbunyol (Valencia), Spain (applicant), represented by Kapler S.L., Calle Orense,
10, 1º Of. 12, 28020 Madrid, Spain (professional representative).
On 30/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 543 877 is partially upheld, namely for the following
contested goods and services:
Class 3: Cosmetics and perfumery.
Class 5: Medical and pharmaceutical preparations; Dietary and nutritional
supplements.
Class 35: Wholesaling and retailing in shops and via global computer
networks of cosmetic, medical and pharmaceutical preparations.
2. European Union trade mark application No 13 732 961 is rejected for all the
above goods and services. It may proceed for the remaining services.
3. Each party bears its own costs.
PRELIMINARY REMARK
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS:
The opponent filed an opposition against all the goods and services of European
Union trade mark application No 13 732 961 . The opposition is
based on, inter alia, Polish trade mark registration No 248 342 ‘Mediderm proprawia
komfort życia’. The opponent invoked Article 8(1)(b) EUTMR.
Decision on Opposition No B 2 543 877 page: 2 of 9
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 Polish trade mark registration No 248 342 ‘Mediderm proprawia komfort
życia’.
a) The goods and services
The goods on which the opposition is based are the following:
Class 3: Cosmetic products, care products, cleaning products, hair care products,
dentifrices, deodorants, perfumery.
Class 5: Pharmaceuticals, pharmaceutical preparations, veterinary pharmaceutical
products and sanitary products, sanitary products used in medicine and personal
hygiene, medications, dietary and therapeutic supplies, medical nutrition, aids
treatment, dietary foods for medical purposes, food supplements for medical
purposes, dietetic foods adapted for medical purposes, dietetic beverages adapted
for medical purposes, dietetic substances adapted for medical use, mineral food
supplements adapted for medical purposes, vitamin preparations adapted for
medical purposes, mineral preparations adapted for medical purposes, strengthening
preparations adapted for medical purposes, candies for medical purposes,
preparations with microelements suitable for human medical use, chewing gum for
medical purposes, lozenges for pharmaceutical, biological preparations for medical
purposes, tablets, granules, powders for drinks enriched with vitamins and minerals
adapted for Medical use.
The contested goods and services are the following:
Class 3: Cosmetics and perfumery.
Class 5: Medical and pharmaceutical preparations; Dietary and nutritional
supplements.
Class 35: Wholesaling and retailing in shops and via global computer networks of
cosmetic, medical and pharmaceutical preparations and of medical and surgical
furniture, apparatus and instruments.
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.
Decision on Opposition No B 2 543 877 page: 3 of 9
Contested goods in Class 3
The contested cosmetics and perfumery are identically covered by the earlier mark,
despite a difference in wording.
Contested goods in Class 5
Since the opponent’s medications and the contested medical preparations are
synonymous and since the opponent’s dietary supplies and food supplements
designate the same products as the contested dietary and nutritional supplements, it
has to be considered that the contested medical and pharmaceutical preparations;
dietary and nutritional supplements are identically covered by the earlier mark.
Contested services in Class 35
As regards the contested services in Class 35, retail services concerning the sale of
particular goods are similar to a low degree to those particular goods. Although the
nature, purpose and method of use of these goods and services are not the same,
they have some similarities, as they are complementary and the services are
generally offered in the same places where the goods are offered for sale.
Furthermore, they target the same public.
Moreover, the same applies to wholesale services.
In the present case, registration is sought for the contested wholesaling and retailing
services in relation to cosmetic, medical and pharmaceutical preparations on the one
hand and medical and surgical furniture, apparatus and instruments on the other
hand.
Cosmetic, medical and pharmaceutical preparations are identically covered by the
earlier mark in Classes 3 and 5. Therefore, the contested wholesaling and retailing in
shops and via global computer networks of cosmetic preparations are similar to a low
degree to the opponent’s cosmetic products in Class 3. Similarly, the contested
wholesaling and retailing in shops and via global computer networks of medical and
pharmaceutical preparations are similar to a low degree to the opponent’s
pharmaceutical preparations; medications in Class 5.
As regards the contested wholesaling and retailing in shops and via global computer
networks of medical and surgical furniture, apparatus and instruments, the
Opposition Division notes that the earlier mark does not cover medical and surgical
furniture, apparatus and instruments or any goods falling into these broad categories.
Therefore, these contested services are dissimilar to the opponent’s goods.
b) 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 in Class 5 found to be identical and the contested
services in Class 35 found to be similar to a low degree to the opponent’s goods are
directed at the public at large and/or at professionals in the healthcare sector.
Decision on Opposition No B 2 543 877 page: 4 of 9
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 or purchasing 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 of the relevant public for the goods in Class 5 and the
services in Class 35 will therefore be higher than average.
By contrast, the identical goods in Class 3 are directed at the public at large and the
degree of attention is considered average (21/02/2013, T-427/11, Bioderma,
EU:T:2013:92, § 38; 14/04/2011, T-466/08, ACNO FOCUS, EU:T:2011:182, § 49).
c) The signs
Mediderm proprawia komfort życia
Earlier trade mark Contested sign
The relevant territory is Poland.
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 a word mark consisting of the word ‘MEDIDERM’ followed by the
expression ‘proprawia komfort życia’.
The contested mark is a figurative sign that is made up of two separately identifiable
components, namely ‘MEDI’ in bold upper case letters and the element ‘derma’ in
lower case. As the grey typeface in which these elements are depicted and the
underling of the element ‘derma’ are very simple and banal features, they will not be
attributed any trade mark significance by the relevant public.
The expression ‘proprawia komfort życia’ of the earlier mark means ‘improves the
quality of life’ in Polish and will be clearly understood as a slogan promoting
‘MEDIDERM’ products. Due to its laudatory content, this expression will be perceived
as weak by the relevant public.
On the other hand neither the word ‘MEDIDERM’ in the earlier mark nor the verbal
element of the contested sign, ‘MEDIDERMA’, has a meaning as a whole. They are,
therefore, have an average distinctive character.
Decision on Opposition No B 2 543 877 page: 5 of 9
Notwithstanding the above, since, when perceiving a sign, consumers tend to break it
down into elements which, for them, suggest a specific meaning or which resemble
words known to them (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57), it
cannot be excluded that the Polish public will break down the earlier mark’s element
‘MEDIDERM’ and the verbal element of the contested sign, ‘MEDIDERMA’, into the
elements ‘MEDI’ and ‘DERM(A)’, which are abbreviations of ‘medyczny’ and
‘dermatologiczny’, respectively, in Polish.
As these two elements (‘MEDI’ and ‘DERM(A)’) are allusive of the medical and
dermatological purposes of the goods in question, they both have a weak distinctive
character and neither element can be considered more distinctive than the other.
It follows from the above that the element ‘MEDIDERM(A)’ is the most distinctive
element in each sign.
Neither of the marks has any element that could be considered clearly more
dominant than other elements.
Visually, the signs coincide in the letters ‘MEDIDERM*’. However, they differ in the
final letter, ‘A’, of the contested sign’s verbal element and in the graphical depiction of
the contested sign.
The signs further differ in the additional expression ‘proprawia komfort życia’ of the
earlier mark, which, however, will be perceived as a mere promotional statement.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‘ME-DI-
DERM’, present identically in both signs.
Considering its lack of distinctive character, it can reasonably be assumed that the
expression ‘proprawia komfort życia’ of the earlier mark will not be pronounced when
referring to that mark (07/02/2013, T-50/12, Metro Kids Company, EU:T:2013:68,
§ 42; 30/11/2011, T-477/10, SEc Sports Equipment, EU:T:2011:707, § 55;
16/09/2009, T-400/06, zerorh+, EU:T:2009:331, § 58; 18/09/2012, T-460/11, Burger,
EU:T:2012:432, § 48).
Accordingly, the only difference between the signs from the aural perspective lies in
the final letter, ‘A’, of the contested sign’s verbal element. Contrary to the applicant’s
claim, this additional letter does not afford the contested sign a significantly different
rhythm from that of the earlier mark and, when pronounced, ‘MEDIDERM’ and
‘MEDIDERMA’ will produce very similar aural impressions.
Therefore, the signs are aurally highly similar.
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks. As explained above, although neither ‘MEDIDERM’
nor ‘MEDIDERMA’ has any meaning as a whole, they will both be perceived as
referring to the medical (‘MED’) and dermatological (‘DERM’/‘DERMA’) purposes of
the goods and services in question. Since the additional, meaningful, elements in the
earlier mark (the words ‘proprawia komfort życia’) have a low distinctive character,
they will have limited conceptual impact. It follows from the above that the marks are
conceptually highly similar.
Decision on Opposition No B 2 543 877 page: 6 of 9
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) 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. Considering what has been stated above in section c) of this
decision, the distinctiveness of the earlier mark must be seen as low for all the goods
it covers.
However, the earlier mark is considered to have at least a minimum degree of
inherent distinctiveness. Earlier marks, whether EUTMs or national marks, enjoy a
‘presumption of validity’. The Court made it clear, in its judgment of 24/05/2012,
C-196/11, F1-Live, EU:C:2012:314, § 40-41, that ‘in proceedings opposing the
registration of a European Union trade mark, the validity of national trade marks may
not be called into question’. The Court added that ‘it should be noted that the
characterisation of a sign as descriptive or generic is equivalent to denying its
distinctive character’.
e) 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).
In the present case, there is a likelihood of confusion between the marks because the
differences between them are confined to non-distinctive or secondary elements and
aspects, namely the graphical depiction and the final letter, ‘A’, of the contested sign’s
element ‘MEDIDERMA’ as well as the expression ‘proprawia komfort życia’ of the
earlier mark, which respectively have no counterpart in the other sign.
Since 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), and given that
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), the
Opposition Division considers that the average Polish consumer could overlook these
differences and therefore confuse the marks.
Moreover, this conclusion is not called into question by the applicant’s argument that
the earlier mark has a weak distinctive character, since, even in a case involving an
earlier mark of weak distinctive character, there may be a likelihood of confusion on
account, in particular, of a similarity between the signs and between the goods or
services covered (13/12/2007, T-134/06, Pagesjaunes.com, EU:T:2007:387;
16/03/2005, T-112/03, Flexi Air, EU:T:2005:102).
Decision on Opposition No B 2 543 877 page: 7 of 9
As the signs in the present case are visually similar to an average degree and aurally
and conceptually highly similar, the likelihood of confusion between the marks cannot
be excluded.
The approach taken by the applicant in that respect would have the effect of
disregarding the factor of similarity between the marks in favour of one based on the
distinctive character of the earlier national mark, which would then be given undue
importance. The result would be that where the earlier national mark is only of weak
distinctive character a likelihood of confusion would exist only where there was an
exact reproduction of that mark by the mark applied for, whatever the degree of
similarity between the marks in question. Such a result would not, however, be
consistent with the very nature of the global appreciation which the competent
authorities are required to undertake by virtue of Article 8(1)(b) EUTMR (13/12/2007,
T-134/06, Pagesjaunes.com, EU:T:2007:387, § 71, and the case-law cited therein).
In its observations, the applicant argues that it owns several registrations for the word
‘MEDIDERMA’ with the EUIPO and the Spanish Patent and Trade Mark Office
(OEPM), which coexist with the opponent’s earlier mark.
According to case-law, the possibility cannot be entirely dismissed that, in certain
cases, the coexistence of earlier marks on the market could reduce the likelihood of
confusion which exists between two conflicting marks. However, that possibility can
be taken into consideration only if, at the very least, during the proceedings before
the EUIPO concerning relative grounds of refusal, the applicant for the European
Union trade mark duly demonstrated that such coexistence was based upon the
absence of any likelihood of confusion on the part of the relevant public between the
earlier marks upon which it relies and the intervener’s earlier mark on which the
opposition is based, and provided that the earlier marks concerned and the marks at
issue are identical (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86).
In this regard it should be noted that formal coexistence on national or Union
registries of certain marks is not per se particularly relevant. It should also be proved
that they coexist in the market, which could actually indicate that consumers are used
to seeing the marks without confusing them. Last but not least, it is important to note
that the Office is in principle restricted in its examination to the trade marks in conflict.
Only under special circumstances may the Opposition Division consider evidence of
the coexistence of other marks in the market (and possibly in the register) on a
national/Union level as an indication of ‘dilution’ of the distinctive character of the
opponent’s mark that might be contrary to an assumption of likelihood of confusion.
This has to be assessed on a case-by-case basis and such an indicative value
should be treated with caution as there may be different reasons as to why similar
signs coexist, e.g. different legal or factual situations in the past, or prior rights
agreements between the parties involved.
Therefore, in the absence of convincing arguments and evidence thereof, this
argument of the applicant must be rejected as unfounded.
The applicant also refers to previous decisions of the Office to support its argument
that the signs have relevant aural and visual differences.
Decision on Opposition No B 2 543 877 page: 8 of 9
In that regard, it is noted at the outset that the Office is not bound by its previous
decisions, as each case has to be dealt with separately and with regard to its
particularities (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.
However, the previous cases referred to by the applicant are not relevant to the
present proceedings.
In particular, the decision of 06/07/2005, R 941/2004-2, BORRAS (fig.) / Bora, has no
bearing in the present case, since its finding of a low degree of aural similarity
between the signs was based on German, not Polish, pronunciation rules. Likewise,
the finding of the Board of Appeal in its decision of 02/06/2008, R 1121/2007-2, ZAPA
/ ZAPA ZAPA (fig.), that there was no visual similarity between the signs was based
on the fact that ‘the consumer will rather perceive the earlier marks as figurative trade
marks consisting of a series of triangles, lines and curves’, which is obviously not
applicable to the present case, in which the word ‘MEDIDERMA’ is clearly perceptible
in the contested sign.
Considering all the above, the Opposition Division finds that there is a likelihood of
confusion on the part of the public and therefore the opposition is partly well founded
on the basis of the opponent’s Polish trade mark registration No 248 342.
It follows from the above that the contested trade mark must be rejected for the
goods found to be identical to those of the earlier trade mark.
The opposition is also successful insofar as the services that are similar to a low
degree are concerned. Indeed, the similarities between the marks are sufficient to
outweigh the low degree of similarity between these contested services and the
opponent’s goods.
The rest of the contested services are dissimilar. As similarity of goods and services
is a necessary condition for the application of Article 8(1) EUTMR, the opposition
based on this article and directed at these services cannot be successful insofar as it
is based on earlier Polish trade mark registration No 248 342.
The opponent has also based its opposition on earlier Polish trade mark registration
No 215 281 for the word ‘MEDIDERM’. This mark also includes the element
‘MEDIDERM’ but covers a narrower scope of goods, namely (according to the
opponent’s translation) cosmetic products in Class 3 and medical devices included in
this class, hygiene products included in this class in Class 5.
In that regard, the Opposition Division notes that the medical devices given in the
opponent’s translation, that is, wyroby medyczne in Polish, actually correspond to
medical articles. Since this earlier mark does not cover medical and surgical
furniture, apparatus and instruments or any goods falling into this broad category, the
outcome cannot be different with respect to the services for which the opposition has
already been rejected.
Therefore, no likelihood of confusion exists with respect to those services.
For the sake of completeness, it must also be noted that the opponent also referred
to its ‘recent’ German registration No 302 009 070 333, registered for goods in
Class 10, claiming that it ‘hereby reports as a basis for this […] opposition’. However,
Decision on Opposition No B 2 543 877 page: 9 of 9
as the opponent did not claim this earlier right as a basis for its opposition during the
opposition period, it is obviously inadmissible.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party. According to
Article 109(3) EUTMR, where each party succeeds on some heads and fails on
others, or if reasons of equity so dictate, the Opposition Division will decide a
different apportionment of costs.
Since the opposition is successful only for part of the contested goods and services,
both parties have succeeded on some heads and failed on others. Consequently,
each party has to bear its own costs.
The Opposition Division
Ferenc GAZDA Marine DARTEYRE Carmen SÁNCHEZ
PALOMARES
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been filed only when the appeal fee of EUR 720 has been paid.