OPPOSITION No B 2 761 768

S.A. Eurogenerics N.V., Esplanade Heysel b 22, 1020 Bruxelles, Belgium (opponent), represented by Bureau M.F.J. Bockstael NV, Arenbergstraat 13, 2000 Antwerpen, Belgium (professional representative)

a g a i n s t

Frédéric Rodzynek, 20 rue Saint Jean, 03100 Montluçon, France (applicant).

On 29/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 761 768 is upheld for all the contested goods, namely: 

Class 5:        Pharmaceuticals.

2.        European Union trade mark application No 15 280 721 is rejected for all the contested goods. It may proceed for the remaining goods.

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

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 15 280 721, namely against some of the goods in Class 5. The opposition is based on, inter alia, European Union trade mark registration No 12 522 595. 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 European Union trade mark registration No 12 522 595.

1. The goods

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

Class 5:        Pharmaceutical preparations.

The contested goods are the following:

Class 5:        Pharmaceuticals.

The contested pharmaceuticals are a synonym of the opponent’s pharmaceutical

preparations and therefore those goods are identical.

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 identical are directed at the public at large and at business customers with specific professional knowledge or expertise, such as medical professionals and pharmacists.

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.

3. The signs

MOBIFLEX NEO	Mobiflash
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The elements ‘FLEX’ in the earlier mark and ‘flash’ in the contested sign are meaningful in certain territories, for example, in those countries where English is understood. In these territories the signs will be conceptually dissimilar, as the two words convey clearly different concepts; the word ‘FLEX’ will be understood as an abbreviation of ‘flexible’ which indicates, inter alia, that an object or material can be bent easily without breaking (Collins Dictionaries) and Flash will be understood as meaning, inter alia, a sudden burst of light or something shiny or bright (Collins Dictionaries). Furthermore, in certain territories the element ‘NEO’ in the earlier mark will be understood as meaning ‘new’, for example in Bulgaria and Greece, and for these countries this element will be non-distinctive. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Bulgarian- and Greek-speaking part of the public.

The earlier mark is a word mark consisting of the elements ‘MOBIFLEX’ and ‘NEO’. The element ‘MOBIFLEX’ will be perceived as a fanciful term with no meaning in relation to the relevant goods and therefore with an average degree of distinctiveness. Contrary to the opponent’s argument the relevant public will not dissect this element into ‘MOBI’ and ‘FLEX’ or the contested sign into ‘Mobi’ and ‘flash’; as no components of the elements have a meaning such a dissection would be artificial. The element ‘NEO’ will be perceived by the relevant public as meaning ‘NEW’ and is therefore non-distinctive for the goods in question as it merely indicates that these pharmaceuticals are new on the market.  

The contested sign is the word mark ‘Mobiflash’ which, by the relevant public, will be perceived as a fanciful term with no meaning in relation to the goods in question and it therefore has an average degree of distinctiveness.

As the signs are word marks they have no elements that could be considered clearly more dominant than other elements. It can be noted, that the fact that the earlier mark is written in upper case letters is immaterial.  The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43).

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 and aurally (irrespective of the different pronunciation rules in different parts of the relevant territory), the signs coincide in the (sound of) the letters ‘MOBIFL**(*)’ which makes up six out of eight letters in the first and only distinctive element of the earlier mark and six out of nine letters of the contested sign. The coinciding letters are the first six letters of both signs. The signs differ in the (sound of) the last two letters ‘EX’ in the earlier mark, and the last three letters ‘ASH’ in the contested sign. The signs also differ in the element ‘NEO’ of the earlier mark, however this element is non-distinctive.

Therefore, and taking into consideration the importance of the beginning of the signs, they are aurally and visually highly similar.

Conceptually, neither of the signs has a meaning as a whole. Although the word ‘NEO’ in the earlier mark will evoke a concept, as explained above, this element is non-distinctive, and therefore it has an extremely limited impact, not to say void,  on the conceptual perception of the mark. The attention of the relevant public will rather be attracted by the additional fanciful verbal elements, which have no meaning. Therefore, a conceptual comparison is not possible and 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 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, despite the presence of a non-distinctive element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323). Even for goods for which the degree of attention is high, as is the case for the goods in question, consumers need to rely on their imperfect recollection of the trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

The goods are identical, and the distinctiveness of the earlier mark is normal. The relevant public’s degree of attention is high.

Although the signs differ in some letters, the Opposition Division has found in section c) of this decision that the signs are visually and aurally highly similar; considering the consumer’s imperfect recollection, the differences between the signs are not sufficient to outweigh the similarities between them and to exclude any likelihood of confusion, even taking into consideration the high degree of attention of the relevant public.

Considering all the above, there is a likelihood of confusion on the part of the Greek- and Bulgarian-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 12 522 595. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier European Union trade mark registration No 12 522 595 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 rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Birgit FILTENBORG

Cecilie Leth BOCKHOFF

Michele M. BENEDETTI-ALOISI

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.