OPPOSITION No B 2 784 356

Pierre Fabre Medicament, 45, place Abel Gance, 92100 Boulogne Billancourt, France (opponent), represented by Deprez Guignot & Associes, 21, rue Clément Marot, 75008, Paris, France (professional representative)

a g a i n s t

Gravis Pharma GmbH, Westhafenstrasse 1, 133-53, Berlin, Germany (applicant), represented by Biuro Patentowe Czesław Popławski, ul. Piecewska 18A/30, 80-288, Gdańsk, Poland (professional representative).

On 13/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 784 356 is upheld for all the contested goods.

2.        European Union trade mark application No 14 890 321 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 890 321 for the word mark ‘sinudrill’. The opposition is based on, inter alia, French trade mark registration No 1 714 270 for the word mark ‘DRILL’. The opponent invoked Article 8(1)(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.

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 French trade mark registration No 1 714 270.

1. The goods

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

Class 5:        Pharmaceuticals; candy for the treatment of respiratory tract.

The contested goods are the following:

Class 5:        Diet supplements; gelatine-based dietary supplements, not for medical purposes, containing plant extracts.

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.

The contested diet supplements; gelatine-based dietary supplements, not for medical purposes, containing plant extracts are various substances prepared to meet special dietary requirements, with the purpose of balancing nutritional deficiencies and preventing or curing medical problems in the broadest sense. Therefore, their purpose is similar to that of the opponent’s pharmaceutical preparations, insofar as they are used to improve a person’s medical condition. They also have the same relevant public and they generally have the same distribution channels (e.g. both pharmaceutical products and food/dietetic supplements may be sold in pharmacies). Therefore, these goods are considered similar.

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 similar are directed at the public at large and professionals in the field of health or medicine.

The consumer’s degree of attention is considered higher than average in respect of health-related goods in general. The Court has confirmed that the degree of attention is also higher than average for all goods in Class 5, such as food supplements (10/02/2015, T-368/13, ANGIPAX, EU:T:2015:81, § 46).

In the present case, the Opposition Division finds it appropriate to limit its examination to the part of the relevant public that is more prone to confusion, that is, usually the public at large (general public), which is assumed to have no specific medical knowledge or experience. If a significant part of the relevant public for the goods at issue may be confused about the origin of the goods, it will be sufficient to establish a likelihood of confusion. It is not necessary to establish that all actual or potential consumers of the relevant goods are likely to be confused.

3. The signs

DRILL	sinudrill
Earlier trade mark	Contested sign

The relevant territory is 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).

It should be noted that 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). Therefore, it is irrelevant whether a word mark is depicted in lower or upper case letters, or in a combination thereof. Consequently, the difference in the signs under comparison in this regard is immaterial.

The Court has held that, although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, when perceiving a word sign, they will 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).

Therefore, the component ‘SINU’, included in the contested sign, will be associated by part of the French public with ‘sinus’ (the same in English), meaning ‘bodily cavity within a bone or other tissue, specially one in the bones of the face connecting with the nasal cavities’ or ‘sinusite’ (‘sinusitis’ in English), meaning ‘inflammation of the sinuses’. It is therefore likely that a significant part of the public at large will perceive this meaning, and this part of the sign is therefore non-distinctive for that part of the public, at least in relation to some of the goods, such as diet supplements, because it may indicate their purpose (e.g. diet supplements for the treatment of sinusitis).

The element ‘DRILL’, which forms the entire earlier mark and the second recognisable element of the contested sign, is meaningless and therefore distinctive.

As regards the contested sign, the relevant part of the public that perceives ‘SINU’ will not pay as much attention to this element as to the other element, ‘DRILL’. Consequently, the impact of this non-distinctive element is limited when assessing the likelihood of confusion between the marks at issue.

Visually and aurally, the signs coincide in the letter sequence ‘DRILL’ and the corresponding sounds. The difference between the signs is confined to the additional non-distinctive element ‘SINU’, which is at the beginning of the contested sign and has no counterpart in the earlier mark. The earlier mark in French is pronounced in one syllable, ‘DRILL’, and the contested mark is pronounced in three syllables, ‘SI-NU-DRILL’.

The earlier mark ‘DRILL’ is entirely included in the contested sign.

Therefore, the marks are visually and aurally similar to a high degree.

Conceptually, although neither of the signs has a meaning as a whole, as seen above, the public in the relevant territory will perceive the meaning of the element ‘SINU-’ of the contested sign, while the other sign has no meaning in that territory. 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.

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.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

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). 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 present assessment of likelihood of confusion is based on the perception of the part of the public that is more prone to confusion, namely the general public. The degree of attention is higher than average and the earlier mark enjoys a normal degree of inherent distinctiveness for the relevant goods. As concluded above, the contested goods are similar to the opponent’s goods.

The signs are visually and aurally highly similar because they coincide in the letter sequence ‘DRILL’, which is distinctive and forms the entire earlier mark and the second recognisable element of the contested sign. The signs differ in the first part of the contested sign, ‘SINU’, which is non-distinctive. Furthermore, the element ‘DRILL’ of the contested sign, which is identical to the earlier mark, is distinguishable in the contested sign because of the meaningful content of the element ‘SINU’ and because it plays an independent role in the sign (which is particularly relevant, because, according to settled case-law, two marks are similar when, from the point of view of the relevant public, they are at least partly identical as regards one or more relevant aspects and this common element retains an independent distinctive role in another composite mark (06/10/2005, C-120/04, Thomson Life, EU:C:2005:594, § 30).

Moreover, it should be highlighted 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 covered are from the same or economically-linked undertakings. It is highly likely that the relevant consumer will perceive the contested sign with its first additional component ‘SINU’ as a sub-brand or a word variation of the earlier mark, configured in a different way according to the purpose or type of disease that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Based on an overall assessment, and taking into account the principle of imperfect recollection, 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.

Therefore, the opposition is well founded on the basis of the opponent’s French trade mark registration No 1 714 270. It follows that the contested sign must be rejected for all the contested goods.

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 ground of the opposition, namely Article 8(5) EUTMR.

As the earlier French trade mark registration No 1 714 270 leads to the success of the opposition and to the rejection of the contested sign 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

Andrea VALISA

Birgit FILTENBORG

María Belén IBARRA DE DIEGO

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.