OPPOSITION No B 2 672 361

Repsol S.A., C/ Méndez Álvaro 44, 28045 Madrid, Spain (opponent), represented by Pons Consultores de Propiedad Industrial, S.A., Glorieta Rubén Darío, 4, 28010 Madrid, Spain (professional representative)

a g a i n s t

Repolar Pharmaceuticals Oy, P.O. Box 26, 02101 Espoo, Finland (applicant), represented by Kolster OY AB, Salmisaarenaukio 1, 00180 Helsinki, Finland (professional representative).

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

DECISION:

1.        Opposition No B 2 672 361 is upheld for all the contested goods.

2.        European Union trade mark application No 14 887 269 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 14 887 269. The opposition is based on European Union trade mark registrations No 10 858 777 and No 13 459 508. 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.

1. The goods

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

Earlier mark 1: European Union trade mark registration No 10 858 777

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices; car polish, room scenters; essential oils for room fragrances.

Earlier mark 2: European Union trade mark registration No 13 459 508

Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

Class 24: Textiles and textile goods, not included in other classes; bed covers; table covers; flags and pennants, not of paper; textile tissues; labels; markers [labels] of cloth for textile fabrics.

The contested goods, after a limitation filed by the applicant on 01/06/2016, are the following:

Class 3: Cosmetic creams; cosmetic preparations for skin care; cosmetics; lotions for cosmetic purposes; tissues impregnated with cosmetic lotions.

Class 5: Bandages for dressings; chemical preparations for pharmaceutical purposes; chemical preparations for veterinary purposes; solutions for contact lenses; contact lens cleaning preparations; disinfectants for hygiene purposes; dog washes; dressings, medical; gauze for dressings; lotions for pharmaceutical purposes; lotions for veterinary purposes; mouthwashes for medical purposes; diapers for incontinents; pharmaceutical preparations; pharmaceutical preparations for skin care; pharmaceutical preparations for treating dandruff; sunburn preparations for pharmaceutical purposes; sunburn ointments; tissues impregnated with pharmaceutical lotions; veterinary preparations.

Contested goods in Class 3

Cosmetics are identically contained in the applicant’s list of goods and the opponent’s list of goods in Class 3 of earlier mark 1.

The contested cosmetic creams; cosmetic preparations for skin care; lotions for cosmetic purposes; tissues impregnated with cosmetic lotions are included in the broad category of the opponent’s cosmetics in Class 3 of earlier mark 1. Therefore, they are identical.

Contested goods in Class 5

Pharmaceutical preparations; veterinary preparations are identically contained in the applicant’s list of goods and the opponent’s list of goods in Class 5 of earlier mark 2.

The contested bandages for dressings; dressings, medical; gauze for dressings are included in the broad category of the opponent’s materials for dressings in Class 5 of earlier mark 2. Therefore, they are identical.

The contested chemical preparations for pharmaceutical purposes; chemical preparations for veterinary purposes; lotions for pharmaceutical purposes; lotions for veterinary purposes; pharmaceutical preparations for skin care; pharmaceutical preparations for treating dandruff; sunburn preparations for pharmaceutical purposes; sunburn ointments; tissues impregnated with pharmaceutical lotions are included in the broad category of the opponent’s pharmaceutical and veterinary preparations in Class 5 of earlier mark 2. Therefore, they are identical.

The opponent’s sanitary preparations for medical purposes in Class 5 of earlier mark 2 is a broad category that covers a variety of materials and substances used for hygienic purposes, to prevent the spread of germs and bacteria and ultimately to protect health in some way. Therefore, the contested solutions for contact lenses; contact lens cleaning preparations; disinfectants for hygiene purposes; dog washes; mouthwashes for medical purposes; diapers for incontinents are included in, or overlap with, the broad category of the opponent’s sanitary preparations for medical purposes in Class 5 of earlier mark 2. Therefore, they 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 relevant goods are directed at both the public at large, such as cosmetics, and professionals, such as pharmaceutical preparations (which can be directed at both healthcare professionals and the public at large). Since these goods target both the general public and specialists, the likelihood of confusion will be assessed in relation to the general public, which is generally more prone to confusion than specialists.

The degree of attention may vary from average, in relation to those goods that do not have a higher than average degree of purchase involvement on the part of the public (e.g. cosmetic creams; cosmetics), to relatively high, in relation to those goods that relate to consumers’ health (e.g. pharmaceutical preparations).

In fact, 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).

c)        The signs

1) EUTM registration No 10 858 777 2) EUTM registration No 13 459 508
Earlier trade marks	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.

In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public, that is, to take into consideration the potential impact of the meaning of the verbal element ‘Technology’ in the contested mark in relation to the contested goods on this part of the public.

The earlier marks are figurative marks composed of the letters ‘REPSOL’ written in bold italic upper case letters in a slightly stylised font, placed under a spherical figurative element. The letters are dark blue, while the figurative element is orange at the top, white in the middle and red at the bottom.

Both the verbal and the figurative elements of the earlier marks are distinctive, since the word ‘REPSOL’ has no meaning and the spherical element will be perceived by the relevant public as an abstract device with no immediately perceptible meaning in relation to the goods at issue.

The earlier marks do not have any element that could be considered clearly more dominant (visually eye-catching) than other elements.

The contested mark is a figurative mark composed of the letters ‘RESOL’ in white upper case letters, the word ‘TECHNOLOGY’ in smaller white upper case letters placed below the word ‘RESOL’, and the depiction of a green pine tree within a white droplet, placed above the word ‘RESOL’. All these elements are within a green rectangular background.

With regard to the figurative elements of the contested sign, it has to be stressed that the rectangular background is a commonplace shape used in labels and has, therefore, a purely decorative nature; the depiction of the pine tree within a droplet is neither descriptive nor allusive of or otherwise weak for the relevant goods.

Furthermore, 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, since 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; 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).

In its observations, the applicant argues that the verbal element ‘RESOL’ ‘refers to two different meanings i.e. ‘resin’ or ‘resolution’. The applicant’s claims must be set aside, since the word ‘RESOL’ does not exist as such in English and it is very unlikely that the public will be reminded of the words ‘resin’ or ‘resolution’, which differ from the word ‘RESOL’. Therefore, as it is a meaningless word, ‘RESOL’ is considered distinctive for the relevant goods.

The applicant argues that the final syllable of both marks, ‘SOL’, will be associated by the non-Spanish-speaking part of the public with ‘sun’ (the English translation of the Spanish word ‘sol’). However, the applicant did not provide any evidence to prove that part of the relevant public would perceive this concept in the signs as such. Contrary to the applicant’s opinion, the Opposition Division believes that a substantial part of the relevant public, which will not have a good command of Spanish, will not grasp the meaning of the Spanish word ‘sol’ in the context of the words ‘REPSOL’ and ‘RESOL’ of the earlier marks and the contested sign, respectively, and therefore will perceive both words as a whole without associating them with any meaning.

The word ‘TECHNOLOGY’ of the contested sign will be associated with something related to the application of scientific knowledge for specific purposes, especially in industry. Virtually all types of products, including in the cosmetic and pharmaceutical fields such as the relevant goods, derive from a kind of technology. Therefore, the word ‘TECHNOLOGY’ is considered weak for all of the relevant goods and the public will not pay as much attention to this weak element as to the other, more distinctive, elements of the contested sign.

Moreover, this word, due to its small size, is overshadowed by the other verbal and figurative elements of the contested sign.

Visually, the signs coincide in the letters ‘RE*SOL’, placed in the same order, which constitute five out of the six letters of the only verbal element of the earlier signs, ‘REPSOL’, and the entire distinctive verbal element of the contested sign, ‘RESOL’. However, they differ in the additional letter ‘P’ in the middle of the earlier marks, and which could easily be overlooked by consumers, in the additional verbal element ‘TECHNOLOGY’ of the contested sign and in the figurative elements, stylisation and colours of the signs.

As explained above, the word ‘TECHNOLOGY’ plays a minor role in the evaluation of the visual similarity between the signs because of its low degree of distinctiveness and small size; in addition, the rectangular background in the contested sign is less relevant than other elements on account of its merely decorative function. As regards the other figurative elements (the spherical figurative element of the earlier signs and the green pine tree within a droplet of the contested sign), despite their distinctiveness, as explained above, their impact on the consumer will be less than that of the verbal elements.

Consequently, the relevant public is likely to focus on the distinctive verbal elements of the earlier marks and the contested sign, ‘REPSOL’ and ‘RESOL’, rather than on the other elements of the signs.

Therefore, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘RE*SOL’, present identically in both signs. The pronunciation differs in the sound of the letter ‘P’ of the earlier signs and in the additional verbal element ‘TECHNOLOGY’ of the contested sign, when it would be pronounced by the public. Bearing in mind the weight attributed to the word ‘TECHNOLOGY’, it is concluded that the signs are aurally similar to a high degree.

Conceptually, the earlier signs have no meaning, since the word ‘REPSOL’ is, as stated above, a fanciful word and the spherical figurative element does not evoke any specific concept. The contested sign will be associated with the concepts related to one of its verbal elements, namely the word ‘TECHNOLOGY’, and its figurative elements, the pine tree within a droplet. Therefore, the signs are not conceptually similar.

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 marks

The distinctiveness of the earlier marks 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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal.

e)        Global assessment, other arguments and conclusion

The goods are identical. The degree of attention may vary from average to relatively high. The distinctiveness of the earlier marks is normal.

The signs are visually similar to an average degree and aurally similar to a high degree to the extent that the only distinctive word of the contested sign, ‘RESOL’, is fully included in the only word of the earlier signs, namely ‘REPSOL’. The signs are not conceptually similar.

The fact that the marks are not conceptually similar must be put in the context of this lack of similarity arising from the presence of a weak element in the contested sign, namely the word ‘TECHNOLOGY’, and a less relevant element in the contested sign, namely the depiction of a pine tree within a droplet.

In this regard, the Opposition Division finds that the differences created by the words ‘TECHNOLOGY’ in the contested sign and the figurative elements in all of the signs do not have a decisive impact on the overall impressions created by the signs, for the reasons explained above in section c).

In relation to the differences created by the additional letter ‘P’ of the earlier marks, it has to be stressed that this letter is in the middle of the word and may therefore easily go unnoticed by consumers.

In contrast, the nearly full coincidence of verbal elements ‘REPSOL’ and ‘RESOL’ of the earlier marks and contested sign, respectively, has a strong influence on the overall impressions created by the signs, considering that these words are distinctive for the relevant public.

Account is 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) and 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).

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).

Taking all the above into account, the Opposition Division considers that the additional and differing elements of the signs are not sufficient to counteract the similarities between the signs arising from the nearly full coincidence of verbal elements ‘REPSOL’/’RESOL’. Therefore, the relevant public, including the part with a high degree of attention, when encountering the signs in relation to identical goods, is likely to think that they come from the same undertaking or, as the case may be, from economically linked undertakings.

In its observations, the applicant argues that there are 47 European Union trade marks registered for goods in Classes 3 and 5 ending with the letters ‘SOL’, namely the final syllable of the verbal elements of the earlier marks and the contested sign, ‘REPSOL’ and ‘RESOL’, respectively. The applicant also added that there are 15 European Union trade mark registrations for goods in Class 5, and 14 European Union trade mark registrations for goods in Class 3, containing the word ‘RESOL’.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include said elements. Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, there is a likelihood of confusion on the part of the English-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 registrations No 10 858 777 and No 13 459 508. 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

María Belén IBARRA DE DIEGO

Angela DI BLASIO

María Clara IBÁÑEZ FIORILLO

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.