NERVOX | Decision 2756305

OPPOSITION No B 2 756 305
Janssen Pharmaceutica NV, Turnhoutseweg 30, 2340 Beerse, Belgium (opponent),
represented by Novagraaf Nederland B.V., Hoogoorddreef 5, 1101 BA Amsterdam,
Netherlands (professional representative)
a g a i n s t
Doz SA, Al. Jerozolimskie 134, 02305 Warszawa, Poland, (applicant), represented
Agnieszka Obmińska, Al. Jerozolimskie 134, 02305 Warszawa, Poland (employee
On 13/11/2017, the Opposition Division takes the following
1. Opposition No B 2 756 305 is upheld for all the contested goods.
2. European Union trade mark application No 15 170 806 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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.
The opponent filed an opposition against all the goods of European Union trade mark
application No 15 170 806 for the word mark NERVOX. The opposition is based on
international trade mark registration No 371 352 ,(for the word mark VERMOX),
designating the Czech Republic, Romania, Slovakia, Italy, Hungary, Germany,
Slovenia, and France. The opponent invoked Article 8(1) (a) EUTMR.
Although the specific conditions under Article 8(1)(a) and Article 8(1)(b) EUTMR
differ, they are related. Consequently, in oppositions dealing with Article 8(1) EUTMR,
if 8(1)(a) is the only ground claimed but identity between the signs and/or the
goods/services cannot be established, the Office will still examine the case under
Article 8(1)(b) EUTMR which requires at least similarity between signs and
goods/services and likelihood of confusion. For reasons of procedural economy, the
Opposition Division finds it appropriate to focus the comparison between the signs on
the International trade mark registration No. 371 352 designating Germany.

Decision on Opposition No B 2 756 305 page: 2 of 5
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.
a) The goods
The goods on which the opposition is based are the following:
Class 5: Pharmaceutical, veterinary and hygienic products; dietetic goods for
children and the sick; plasters and materials for dressings; material for stopping teeth
and dental wax; disinfectants; preparations for weed and pest control (included in
class 5).
The contested goods are the following:
Class 5: Medicines for human purposes; Pharmaceutical preparations; Food
supplements; Dietary supplements for humans; Dietary supplements and dietetic
preparations; Nutritional supplements; Food supplements.
Contested goods in Class 5
The contested medicines for human purposes; pharmaceutical preparations; are
included in or overlap with the broad category of the opponent’s pharmaceutical
products. Therefore, they are identical.
The contested food supplements (contained twice); dietary supplements for humans;
dietary supplements and dietetic preparations; nutritional supplements; overlap with
the opponent’s dietetic goods for children and the sick. Since the Opposition Division
cannot dissect ex officio the broad categories of the contested goods, they are
considered identical to the opponent’s goods. Therefore, they are identical.
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 found to be identical are directed at the public at
large, but also at business customers with specific professional knowledge or
expertise, such as medical practitioners.
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

Decision on Opposition No B 2 756 305 page: 3 of 5
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 same degree of attention can be expected for the remaining
goods in Class 5 as they also affect one’s state of health.
Given that the general public is more prone to confusion, the examination will
proceed on this basis.
c) The signs
Earlier trade mark Contested sign
The relevant territoriey is Germany (see above)., Germany, Slovenia, and France.
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).
Both signs are word marks. The earlier mark consists of the verbal element VERMOX
and the contested sign consists of the verbal element NERVOX. The elements of the
signs have no meaning for the general public in the relevant territory and are,
therefore, distinctive. Contrary to the applicant, the signs will not be dissected by the
relevant public in VERM – OX or NERV – OX, as such a dissection does not coincide
with the syllables of the words, namely VER-MOX and NER-VOX and furthermore
such a dissection would not make any sense in the German language.
Visually and aurally, the signs coincide in the sequence and the sounds of letters
*ER*OX and they both consist of six letters in total. The signs coincide in number of
syllables (two), vowel sequence (E-O) rhythm and intonation. The signs also share
the letter (and sound) V, which however is placed in different positions, namely as the
first letter of the earlier mark and as the fourth letter of the contested sign.
Furthermore, the signs differ in their sixth letter M respectively N of the contested
sign. However, when pronounced aurally the letters M and N sound very similar.
Due to the coinciding letters in the signs, and even taking into account the different
beginnings, namely V and N, the differences between the signs are not sufficient to
overcome the similarities caused by the identical letters *ER*OX, which are moreover
placed at the same positions in both signs. Furthermore, the letters OX are not a
usual ending of German words, and therefore the identical ending OX will attract the
consumers attention.
Therefore, the signs are visually and aurally similar to a high degree.

Decision on Opposition No B 2 756 305 page: 4 of 5
Conceptually, neither of the signs has a meaning for the relevant 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.
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 claimed that the earlier trade mark enjoys enhanced distinctiveness
but did not file any evidence in order to prove such a claim.
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
e) Global assessment, other arguments and conclusion
As has been concluded above, the contested goods are found to be identical to the
opponent’s goods and must be assessed from the point of view of the general public
whose degree of attention is high. Furthermore, the earlier mark enjoys a normal
degree of distinctiveness and the signs are visually and aurally similar to a high
degree, which similarity is based on the shared letters and sounds analysed above.
It is taken into account that, 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/services covered are from the same or economically linked undertakings.
Account is also 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).
Therefore, due to the coincidences between the signs, deriving from their visual and
aural similarities, when consumers encounter the signs at different times, they may
assume that the signs have the same origin or at least economically linked origins.
This holds true also for consumers who pay a high level of attention.
Considering all the above, there is a likelihood of confusion on the part of the general
public. Given that a likelihood of confusion for only part of the relevant public is
sufficient to reject the contested application, there is no need to analyse the
remaining part of the public.

Decision on Opposition No B 2 756 305 page: 5 of 5
Therefore, the opposition is well founded for on the basis of the opponent’s
International trade mark registration No. 371 352 designating Germany.
It follows that the contested trade mark must be rejected for all the contested goods.
Since the opposition is successful based on the International trade mark registration
designating Germany, there is no need to examine the opposition on the basis of the
other invoked earlier rights.
According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former
Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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
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.
The amount determined in the fixation of the costs may only be reviewed by a
decision of the Opposition Division on request. According to Article 109(8) EUTMR
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)
EUTMR) has been paid.

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