OPPOSITION No B 2 758 384

Apogepha Arzneimittel GmbH, Kyffhäuserstr. 27, 01309 Dresden, Germany (opponent), represented by Kailuweit & Uhlemann Patentanwälte Partnerschaft MBB, Bamberger Str. 49, 01187 Dresden, Germany (professional representative).

a g a i n s t

Izasa Hospital S.L., Torre Werfen, Plaça d'Europa 21-23, 08908 L'Hospitalet de Llobregat, Spain (holder), represented by Curell Suñol S.L.P., Via Augusta 21, 08006 Barcelona, Spain (professional representative).

On 10/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 758 384 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 418 148. The opposition is based on German trade mark registration No 533 431. 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.

1. The goods

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

Class 5:        Medicines; chemical products for medical and hygienic purposes; pharmaceutical drugs and preparations; plasters; dressings; preparations for destroying noxious animals and herbicides; disinfectants.

The contested goods are the following:

Class 10:        Medical and surgical devices in the field of urology and andrology.

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 10

The contested medical and surgical devices in the field of urology and andrology are at best similar to the opponent’s pharmaceutical drugs and preparations. They may be complementary goods for which the distribution channels and relevant public may coincide.

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 at best similar are specialised goods directed at professionals with specific professional knowledge or expertise.

Considering the nature of the goods and the fact that they may be rather expensive and object of infrequent purchase, the degree of attention will be high.

3. The signs

UROL
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 mark is a word mark, ‘UROL’. The word has no meaning in the relevant territory; however, considering the relevant public, namely specialists within the medical field of urology and andrology (relating to the problems of the male reproductive system and urological problems that are unique to men), the combination of the first three letters of the mark, ‘URO’, will immediately be perceived by said public as a reference to this specific medical field since the German word for this medical field starts with these three letters (Urologie, http://www.duden.de/rechtschreibung/Urologie, online 07/07/2017). Nevertheless the mark is regarded to be distinctive as a whole.

The contested sign is a figurative mark with the verbal element ‘UROTOP’. The figurative element is located to the left of the verbal element and consists of a light blue circle with a stylised white line inside. The verbal element, ‘UROTOP’, has no meaning in the relevant territory; however, as with the earlier mark, the combination of the first three letters will immediately be associated by the relevant public to the relevant medical field. The combination of the last three letters, ‘TOP’, may be perceived as laudatory considering that it is a word indicating ‘highest in status, degree, or importance’ in Germany (http://www.duden.de/rechtschreibung/top, online 07/07/2017).

The contested sign has no elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the first three letters ‘URO’. However, they differ in the final letters ‘L’ and ‘TOP’ of the earlier mark and the contested sign, respectively. Furthermore, they differ in that the contested sign also contain a figurative element. The differences between the marks will be noticed by the consumers considering the length of the contested mark compared with the earlier mark and all the more so when taking into account that the verbal sequence ‘URO’ in both signs refers to the relevant medical field for which it is of little impact in the comparison.

Therefore, the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛URO’, present identically in both signs. The pronunciation differs in the sound of the letter ‛L’ of the earlier mark and the sound of the letters ‛TOP’ of the contested sign. Furthermore, the earlier mark is pronounced in two syllables whilst the contested sign is pronounced in three syllables. Considering that the verbal sequence ‘URO’ in both signs refers to the relevant medical field, it is of little impact in the comparison.

Therefore, the signs are aurally similar to a low degree.

Conceptually, neither of the signs has a meaning as a whole. Although the coinciding verbal sequence ‘URO’ evokes the same concept, it is not sufficient to establish any conceptual similarity, as this element is non distinctive and therefore cannot indicate the commercial origin of any of the marks. As stated above, the verbal sequence 'TOP' of the contested sign will be perceived as laudatory. Although this part is weak, it has some impact conceptually and 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, even though the beginning of the sign clearly refers to a medical field considering the relevant goods, the mark as a whole will be perceived as an invented fanciful term and therefore is distinctive.

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 of art. 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).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).

As has been concluded above, the contested goods are at best similar to an average degree. The goods are specialised goods directed at professionals with specific professional knowledge or expertise with a high level of attention. Furthermore, the earlier mark is considered to enjoy a normal degree of distinctiveness despite the presence of a weak element. Additionally the marks in dispute have been found visually and aurally similar to a low degree. Furthermore, the signs are not conceptually similar.

Although the signs coincide in the letters ‛URO’ at the beginning of the signs, a likelihood of confusion does not exist, considering the length of the contested sign (they only coincide in three out of four/respectively six letters) and what has been said above regarding the distinctiveness of the beginning of the signs. The figurative element of the contested sign also puts the marks further apart. Furthermore, it should be noted that the level of attention is high and the relevant public is professionals. This leads to the situation that consumers will not be so easily bound for confusion between the marks because they are professionals and their level of attention is higher than average.

The signs present visual and aural differences due to the presence of the letters ‛L’ in the earlier mark and ‛TOP’ in the contested sign plus a figurative element. Consequently, the differences in the end of each mark have to be taken into account when assessing the likelihood of confusion between the marks. The opponent did not claim or prove enhanced distinctive character of the earlier mark.

As the goods at issue are specialised, expensive and directed to professionals, the consumer acquiring such goods, would carry out a scrupulous examination of the goods on the market and very probably contact the providers. In the course of that selection process, those consumers would be aware not only of the characteristics of the goods, but also of the identity of the providers and the marks on the market and would therefore be able to notice even slight differences between those marks.

Considering all the above there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Adriana VAN ROODEN

Benjamin Erik WINSNER

Martina GALLE

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.