OPPOSITION No B 2 701 749

Gilead Sciences, Inc., 333 Lakeside Drive, Foster City, California 94404, United States of America (opponent), represented by Jeffrey Parker and Company, The Grange, Hinderclay, Suffolk  IP22 1HX, United Kingdom (professional representative)

a g a i n s t

Sky Throne Ltd, 1 Otterwood Square, Wigan  WN5 0L, United Kingdom (applicant), represented by Łukasz Korga, ul. Wita Stwosza 2 segm. D, 40-036 Katowice, Poland (professional representative).

On 20/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 701 749 is upheld for all the contested goods, namely 

Class 5:        Tobacco-free cigarettes for medical purposes.

2.        European Union trade mark application No 14 759 922 is rejected for all the contested goods. It may proceed for the remaining goods.

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

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 759 922, namely against all the goods in Class 5. The opposition is based on European Union trade mark registration No 3 965 861. 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.

1. The goods and services

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

Class 5:        Pharmaceutical preparations and substances.

Class 16:        Printed matter; manuals; user guides; publications; flyers; brochures; stationery; reports; educational and information materials in the field of pharmaceuticals.

Class 44:        Information and advisory services relating to pharmaceuticals, including such services provided on-line from a computer network or the Internet.

The contested goods are the following:

Class 5:        Tobacco-free cigarettes for medical purposes.

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.

Contested goods in Class 5

The contested tobacco-free cigarettes for medical purposes and the opponent’s pharmaceutical preparations and substances in Class 5 are both used for treating, preventing or alleviating symptoms or disorders in the human body. They coincide in purpose of use, relevant consumers and distribution channels. Moreover, they are produced by the same type of undertakings. Consequently, they are 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. The degree of attention will be higher than average because the goods affect the consumer’s state of health.

3. The signs

TRUVADA
Earlier trade mark	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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The verbal elements of which the contested sign is composed are not meaningful in certain territories, for example, in those countries where English or French is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Czech-, Slovak- or Polish-speaking part of the public.

The contested sign is depicted in black, blue and white.

The element ‘TRUVADA’ of the earlier mark has no meaning for the relevant public and is, therefore, distinctive.

The elements ‘TRUVAPE AIR’ of the contested sign have no meaning for the relevant public and are, therefore, distinctive.

The contested sign has no element that would be clearly more dominant (visually eye-catching) than other elements.

The small curved line in the upper middle part of the sign is considered weak because it is a rather simple figurative element of a purely decorative character.

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).

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 sequence of letters ‘TRUVA-’ at the beginning of the marks. However, they differ in ‘-DA’ vs ‘-PE AIR’ and in the stylisation and figurative elements of the contested sign that have no counterpart in the earlier trade mark.

The structure of the contested sign contributes to the visual similarity between the marks because the sign starts with the stylised element ‘TRUVAPE‘ having the same length as ‘TRUVADA‘ (namely seven letters). The element ‘AIR‘ at the end of the sign is more stylised and less legible.

Therefore, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛TRUVA-’, present identically in both signs. The pronunciation differs in the sound of the letters ‘-DA’ vs ‘-PE AIR’.

Therefore, the signs are aurally similar to an average degree.

Conceptually, neither of the signs has a meaning for the relevant public. 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.

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 in the Czech Republic, Slovakia and Poland.

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

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 goods are similar. The earlier trade mark’s degree of distinctiveness is average and the degree of attention of the relevant public is higher than average.

The marks are visually and aurally similar to an average degree because they contain the same string of letters ‘TRUVA-‘ in a prominent position at the beginning of the marks. This, together with the structure of the contested sign as mentioned above, outweighs the differences at the end of the marks. The overall impressions of the marks are, therefore, similar.

Considering all the above, there is a likelihood of confusion on the part of the Czech-, Slovak- or Polish-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 registration No 3 965 861. It follows that the contested trade mark 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.

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

Richard BIANCHI

Vít MAHELKA

Lucinda CARNEY

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.