OPPOSITION No B 2 659 707

SW Pharma Ltd., 4 Naxou Street, Flat/Office 301, 1070 Nicosia, Cyprus (opponent), represented by Milcev Burbea Intellectual Property Office, 170 Stirbei Voda Street, Bl.10G, Entr.1, Floor 5, App.18, District 1, Bucharest, Romania (professional representative)

a g a i n s t

Heshan City Sunwave Hardware Industry Company, Dongxi Industrial B Zone, Zhishan Town, Heshan City, Guangdong 529729, People’s Republic of China (holder), represented by Global IP Law Ltd., Wisteria House, Clarendon Road, South Woodford, London E18 2AW, United Kingdom (professional representative).

On 14/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 659 707 is upheld for all the contested goods, namely:

Class 5:        Medicinal tea; food for babies; dietetic foods adapted for medical purposes; dietetic beverages adapted for medical use; dietetic substances adapted for medical use; protein dietary supplements; air purifying preparations; sanitary towels.

2.        International registration No 1 269 411 is refused protection in respect of the European Union for all of the contested goods. It may proceed for the remaining goods.

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

REASONS:

The opponent filed an opposition against some of the goods of international registration designating the European Union No 1 269 411, namely against all the goods in Class 5. The opposition is based on European Union trade mark registration No 12 154 126 and Romanian trade mark registration No 126 348. 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.

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 Romanian trade mark registration No 126 348.

1. The goods

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

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 and materials for dressings; materials for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

The contested goods are the following:

Class 5:        Medicinal tea; food for babies; dietetic foods adapted for medical purposes; dietetic beverages adapted for medical use; dietetic substances adapted for medical use; protein dietary supplements; air purifying preparations; sanitary towels.

Medicinal tea is a herbal preparation for medicinal purposes. Medicinal herbs could take the form of dried herbs or powders for making infusions. They could be taken in capsule form, used as a topical remedy or smoked. As they will always be in a dried or powdered form and could be used in both forms for making infusions, it may be concluded that they are included in the broad category of dietetic substances adapted for medical use. Therefore, the contested medicinal tea is considered identical to the opponent’s dietetic food and substances adapted for medical use.

Food for babies; dietetic foods adapted for medical purposes; dietetic substances adapted for medical use are identically included in both lists of goods (despite minor differences in wording, where applicable).

The contested dietetic beverages adapted for medical use are included in the broad category of the opponent’s dietetic food and substances adapted for medical use. Therefore, they are identical.

The contested protein dietary supplements are included in the broad category of the opponent’s dietary supplements for humans and animals. Therefore, they are identical.

The opponent’s sanitary preparations for medical purposes cover a wide variety of products and substances for hygienic purposes, deodorizers and air purifiers. Therefore, the contested air purifying preparations; sanitary towels are included in the opponent’s sanitary preparations for medical purposes. 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 goods found to be identical are directed at the public at large and at professionals in the field of medicine and healthcare. 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.

Depending on the nature or degree of sophistication of the goods, the degree of attention is likely to vary from average (e.g. for sanitary towels) to higher than average (e.g. for dietetic foods adapted for medical purposes, irrespective of whether or not they are issued on prescription, as these goods can affect the user’s state of health).

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Romania.

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 earlier figurative mark comprises the verbal element ‘SUN WAVE PHARMA’ in orange title case letters and a circular figurative element resembling an orange sunset over a blue sea. The word ‘PHARMA’, because of its wide use in the relevant territory, will be perceived by a significant part of the relevant public as referring to the pharmaceutical industry and is, therefore, weak for the relevant goods.

The contested sign is a figurative mark consisting of the verbal element ‘SUNWAVE’ in black upper case letters, which divides a black circle into two semicircles. The lower semicircle contains two horizontal lines, which are purely decorative figurative elements.

The verbal elements ‘SUN WAVE’ of the earlier mark and ‘SUNWAVE’ of the contested sign have no meaning in the relevant territory and are therefore distinctive.

Conceptually, the figurative elements of the contested sign, namely the two black semicircles and the two horizontal lines, are basic shapes that are commonly used on labels of goods and do not convey any specific meaning. The contested sign as a whole has no meaning in the relevant territory. Although the public will perceive the meanings of the figurative element and the weak word ‘PHARMA’ of the earlier mark, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

The distinctiveness of the figurative elements of the contested sign is weak, as they are purely decorative, whereas the figurative element of the earlier mark has an average degree of distinctiveness for the relevant goods. However, it should be borne in mind that, 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. This is because 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).

All the elements in the marks have the same visual impact. Therefore, neither of the signs under comparison has any element that could be considered clearly more dominant than any other.

Visually, the signs coincide in the distinctive verbal element ‘SUN WAVE’, although these words are together in the contested sign. It is noteworthy that these words constitute the only verbal element of the contested sign and are included in the beginning of the earlier mark’s verbal element. However, the signs differ in their colours, in the weak word element ‘PHARMA’ in the earlier mark and in the figurative elements in both signs. Considering this and bearing in mind that the consumers are likely to focus on verbal elements and generally tend to focus on the beginning of a sign, as 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, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the words ‘SUNWAVE’ and differs in the pronunciation of the weak word element ‘PHARMA’, present at the end of the earlier mark. The fact that the coinciding words are separated in the earlier mark does not result in a relevant aural difference. Therefore, the signs are aurally similar to a high degree.

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, despite the presence of a weak element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

In the present case, the goods are identical and the signs are visually similar to an average degree and aurally similar to a high degree.

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).

In an overall assessment of the relevant factors of the case, the differences identified between the signs are insufficient to counteract the similarities between them, in particular the coinciding distinctive word element ‘SUN WAVE’, present in both signs, and to enable the general public to safely distinguish between them in the context of identical goods. When encountering the signs at issue, the public may overlook the differences in the signs and assume that they denote goods produced by the same undertaking, or economically linked undertakings, and that the marks simply have different graphic depictions.

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).

Considering all the above, there is a likelihood of confusion on the part of the general public, even for consumers paying a high degree of attention. Given that a likelihood of confusion for only part of the public in the pertinent territory 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 Romanian trade mark registration No 126 348. It follows that the contested trade mark must be rejected for all the contested goods.

The opponent also based its opposition on European Union trade mark registration No 12 154 126 for the figurative sign . As earlier right Romanian trade mark registration No 126 348 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right 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 holder 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

Solveiga BIEZA

Jorge ZARAGOZA GOMEZ

Zuzanna STOJKOWICZ

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.