OPPOSITION DIVISION
OPPOSITION No B 2 821 562
Difass International SRL, Via Ausa, 181 Località Cerasolo, 47853 Coriano (RN),
Italy (opponent), represented by Bianchetti Bracco Minoja S.R.L., Via Plinio, 63,
20129 Milano, Italy (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 21/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 821 562 is upheld for all the contested goods.
2. European Union trade mark application No 15 870 975 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
Preliminary remarks
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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.
REASONS
The opponent filed an opposition against all the goods of European Union trade mark
application No 15 870 975. The opposition is based on Italian trade mark registration
No 862 446. 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.
Decision on Opposition No B 2 821 562 page: 2 of 5
a) The goods
The goods on which the opposition is based are the following:
Class 5: Pharmaceuticals; sanitary products; dietetic products; disinfectants;
fungicides; herbicides; intimate hygiene products; deodorants not for personal use;
medicaments; medicinal herbs, medicinal herbs based syrups, infusions, herbal tea;
capsules for medicaments, pills, tablets for pharmaceutical use; pesticides
The contested goods are the following:
Class 5: Pharmaceuticals; Chemico-pharmaceutical preparations; Veterinary
preparations and substances; Pharmaceutical preparations for veterinary use;
Nutritional supplements; Food supplements; Dietary and nutritional supplements
Pharmaceuticals are identically contained in both lists of goods.
A pharmaceutical preparation refers to any kind of medicine, that is, a substance or
combination of substances for treating or preventing disease in people or animals.
Therefore, the contested Veterinary preparations and substances; Pharmaceutical
preparations for veterinary use are included in the broader term pharmaceuticals
covered by the earlier mark. They are identical.
The contested nutritional supplements; food supplements; dietary and nutritional
supplements are included in the broad category of, or overlap with, the opponent’s
dietetic products. Therefore, they are identical.
The contested chemico-pharmaceutical preparations overlap with the opponent’s
pharmaceuticals. 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
and business customers with specific professional knowledge or expertise.
It is apparent from the case-law that, insofar as pharmaceutical preparations,
whether or not issued on prescription, are concerned, the relevant public’s degree of
attention is relatively high (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.
Decision on Opposition No B 2 821 562 page: 3 of 5
c) The signs
SOLTUX SOLUTUSS
Earlier trade mark Contested sign
The relevant territory is Italy.
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 marks are word marks, each consisting of one single verbal element as
displayed above.
Neither the element ‘SOLTUX’ of the earlier mark nor ‘SOLUTUSS’ of the contested
sign will convey any clear meaning to the relevant public. As neither of them is
descriptive, allusive or otherwise weak for the relevant goods, they are both
distinctive.
Moreover, consumers generally tend to focus on the beginning of a sign when they
encounter a trade mark. This is because the public reads from left to right, which
makes the part placed at the left of the sign (the initial part) the one that first catches
the attention of the reader.
Visually, the signs coincide in the fact that they are both word marks made up of one
single verbal element. They share the sequence of letters ‘SOL*TU**’, that is to say
they coincide in five out of six/eight letters, respectively. However, they differ in the
letters ‘X’ of the earlier mark and ‘U’ and ‘SS’ of the contested mark.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛SOL’ and
‘TU’, present identically in both signs. The pronunciation differs in the sound of the
letters ‛X’ at the end of the earlier mark and ‘U’ and ‘SS’ placed respectively in the
middle and ending of the contested mark. However, it must be noted that the
pronunciation of the vowel ‘U’, due to its position in the middle of the contested mark,
will not engender a strong phonetic difference between the marks, and the
pronunciation of the last letters ‘X’/‘SS’ is not strikingly different either, being letters
quite close phonetically in Italian (/ks/ vs /ss/).
Therefore, the signs are aurally similar to an average degree.
Conceptually, neither of the signs has a meaning for the 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.
Decision on Opposition No B 2 821 562 page: 4 of 5
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 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.
e) Global assessment, other arguments and conclusion
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.
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).
The goods were found to be identical. The signs are visually and aurally similar to an
average degree and they do not convey any concept that could help differentiate
them. The distinctiveness of the earlier mark is normal.
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).
Moreover, 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).
Considering all the above, and especially the principle of interdependence of factors,
it is concluded that there is a likelihood of confusion on the part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s Italian trade
mark registration No 862 446. It follows that the contested trade mark must be
rejected for all the contested goods.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party.
Decision on Opposition No B 2 821 562 page: 5 of 5
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
Plamen IVANOV Claudia ATTINA Keeva DOHERTY
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.