OPPOSITION No B 2 285 818

The Proactiv Company Sárl, Avenue Gratta-Paille 2, Lausanne, 1018, Switzerland (opponent), represented by Mitscherlich, Patent-Und Rechtsanwälte, Partmbb, Sonnenstraße 33, 80331, Munich, Germany, (professional representative)

a g a i n s t

Kimal Plc, Arundel Road, Uxbridge, Middlesex, UB8 2SA, United Kingdom, (applicant), represented by Marks & Clerk LLP, Alpha Tower, Suffolk Street, Queensway, Birmingham,  B1 1TT, United Kingdom (professional representative).

On 24/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 285 818 is upheld for all the contested goods.

2.        European Union trade mark application No 12 044 517 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 12 044 517. The opposition is based on European Union trade mark registration No 9 133 117. The opponent invoked Articles 8(1)(a) and (b) and 8(5) 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.

1. The goods

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

Class 3:        Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; skincare preparations and products; soaps; perfumery, essential oils, cosmetics, hair lotions; make-up, skin concealer, face powder and sunscreen preparations; dentifrices.

Class 5:        Pharmaceutical and veterinary preparations; acne treatment preparations; medicated skincare preparations and products; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

The contested goods are the following:

Class 10:        Catheters, including antimicrobial catheters.

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.

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.

Contested goods in Class 10

The contested goods are catheters, including antimicrobial catheters. Catheters are defined as ‘A catheter is a tube which is used to introduce liquids into a human body or to withdraw liquids from it’ (information extracted from the Collins English Dictionary on 24 May 2017).

The opponent’s Class 5 goods include pharmaceutical preparations which would coincide in end user and distribution channels.  Further, they are considered to complementary.  Therefore, they are similar to a low degree.

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 contested catheters, including antimicrobial catheters were found to be similar to the earlier pharmaceutical preparations.  Both sets of goods are considered to be aimed at professionals with specialised knowledge and expertise.  Therefore, the relevant public’s degree of attention is considered to be high.

3. The signs

PROACTIV	PROACTIV+
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).

Both the earlier trade mark and contested signs are word marks. The earlier mark consists of the word PROACTIV. It does not have any dominant element so the distinctiveness resides in the mark as a whole. The contested sign is for the same word but with ‘+’ (which is not considered to be distinctive) at the end which merely symbolises something additional or enhanced to PROACTIV. Therefore, the distinctiveness of the contested sign resides in the sign as a whole.

Visually, the signs contain 8 identical letters in the same order, the only difference between the signs is the additional ‘+’ at the end of the contested mark. Therefore, visually the marks are considered to be highly similar, in fact, nearly identical.    

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the word PROACTIV would be spoken in the same way.  Therefore, the only difference between the respective marks is the plus at the end of the contested sign.  Therefore, from an aural perspective, they are aurally similar to a high degree.

Conceptually, the word ‘PROACTIV’ in Romanian means ‘proactive’ or something that initiates an effect on something else. The vast majority of the public in the relevant territory will perceive the word ‘PROACTIV’ as referring to taking action in advance to deal with an unexpected difficulty due to the similar corresponding words in other languages, such as ‘proactive’ in English, ‘proaktiv’ in German, Hungarian, Swedish and Danish, ‘proaktywny’ in Polish, ‘proattivi’ in Italian, ‘proactivo’ in Spanish and ‘proactif’ in French. The plus sign of the contested sign is meaningful throughout the European Union and will be perceived as referring to a ‘gain, surplus, and advantage’. Accordingly, it carries the concept of something positive, advantageous or of high quality.

Since the signs will be associated with a similar meaning, the signs are conceptually similar to a high degree.

Taking into account the abovementioned visual, aural and conceptual coincidences, the signs under comparison are similar to a high degree.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 normal for all of the goods in question.

5. Global assessment, other arguments and conclusion

The conflicting goods have been found to be similar to a low degree and they target a specific professional public whose degree of attention is considered to be high.

The signs coincide visually, aurally and conceptually in the word ‘PROACTIV’ and they differ only with the inclusion of a plus sign in the contested sign. Therefore, the marks are considered to be highly similar.

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). This is known as the interdependency principle.

It should be noted that although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Even in cases involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular of similarity between the signs and between the goods and services covered (see judgement of 13/12/2007, T-134/06, ‘Pagesjaunes.com’, paragraph 70).

The earlier mark is considered to have a normal degree of distinctive character.  Applying the interdependency principle, the similarities between the marks outweighs the lesser degree of similarity between the goods. There is a likelihood of confusion.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation and use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Proposed limitation request

In the applicant’s letter of 19 September 2016 it proposes, if necessary, to limit its specification of goods to central venous catheters. This is not sufficient to overcome a likelihood of confusion. The proposed goods would still be considered similar to a low degree since they would be targeted to the same public via the same distribution channels.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Article 8(1)(a) and (5) EUTMR.

To summarise, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 9 133 117. 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

Erkki MŰNTER

Mark KING

Ioana MOISESCU

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.