OPPOSITION DIVISION
OPPOSITION No B 2 797 275
Novartis AG, 4002 Basel, Switzerland (opponent), represented by Boehmert &
Boehmert Anwaltspartnerschaft mbB – Patentanwälte Rechtsanwälte,
Kurfürstendamm 185, 10707 Berlin, Germany (professional representative)
a g a i n s t
Arafarma Group S.A., Calle Fray Gabriel de San Antonio 6-10, Polígono Industrial El
Henares, 19180 Marchamalo, Spain (applicant).
On 28/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 797 275 is upheld for all the contested goods.
2. European Union trade mark application No 15 691 769 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 15 691 769 ‘SOLFERRO’. The opposition is based on United Kingdom
trade mark registration No 3 121 010 ‘SORFEROL’. 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.
a) The goods
The goods on which the opposition is based are the following:
Class 5: Pharmaceutical preparations for human use.
The contested goods are the following:
Decision on Opposition No B 2 797 275 page: 2 of 5
Class 5: Pharmaceuticals; veterinary preparations and substances;
pharmaceutical preparations for veterinary use; nutritional supplements; food
supplements; dietary and nutritional supplements.
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 pharmaceuticals include, as a broader category the opponent’s
pharmaceutical preparations for human use. Since the Opposition Division cannot
dissect ex officio the broad category of the contested goods, they are considered
identical to the opponent’s goods.
The contested veterinary preparations and substances; pharmaceutical preparations
for veterinary use are preparations and substances which are meant for treating or
preventing diseases in animals. The opponent’s goods include preparations and
substances meant for treating and preventing diseases in human beings. The goods
in comparison coincide in their general purpose and furthermore can share the same
method of use. They can also coincide in their producer. These are, therefore, found
to be similar.
The contested nutritional supplements; food supplements; dietary and nutritional
supplements are substances prepared for special dietary requirements, with the
purpose of treating or preventing disease. Bearing this in mind, their purpose is
similar to that of pharmaceutical preparations for human use (substances used to
treat disease) insofar as they are used to improve a patient’s medical condition. The
relevant public coincides and the goods generally have the same distribution
channels. Therefore, these goods are considered similar.
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 or similar 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
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.
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It follows that the public’s degree of attentiveness may vary from average to high,
depending on the price, sophistication, specialised nature, or terms and conditions of
the purchased goods.
Given that the general public is more prone to confusion, the examination will
proceed on this basis.
c) The signs
SORFEROL SOLFERRO
Earlier trade mark Contested sign
The relevant territory is the United Kingdom.
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 element ‘SORFEROL’
and the contested sign consists of the element ‘SOLFERRO’. The elements of the
signs have no meaning for the general public in the relevant territory and are,
therefore, distinctive.
Visually and aurally, the signs coincide in the sequence (and the sounds) of letters
‘SO*FER*O* and they both consist of eight letters in total. The signs also share the
letter (and sound) ‘L’, which however is placed in different positions, namely as the
eight letter of the earlier mark and as the third letter of the contested sign.
Furthermore, the signs differ in the additional (seventh) letter ‘R’ of the contested
sign, which is not present in the earlier mark. However, when pronounced aurally the
single letter ‘R’ of the earlier mark would be pronounced as the double letters ‘R’ of
the contested sign.
Due to the coinciding letters in the signs, the differences are somewhat hidden and
would not be that easily perceived by the relevant part of the public.
Therefore, the signs are visually and aurally similar to a high degree.
Conceptually, neither of the signs has a meaning for the general 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.
Decision on Opposition No B 2 797 275 page: 4 of 5
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 general
public in the relevant territory. Therefore, the distinctiveness of the earlier mark must
be seen as normal.
e) Global assessment, other arguments and conclusion
As has been concluded above, the contested goods are found to be identical and
similar to the opponent’s goods and must be assessed from the point of view of the
general public whose degree of attention varies from average to 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). 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.
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.
Therefore, the opposition is well founded on the basis of the opponent’s United
Kingdom trade mark registration No 3 121 010. 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.
Decision on Opposition No B 2 797 275 page: 5 of 5
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
Irina SOTIROVA Irina SOTIROVA
Erkki MÜNTER
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.