AYLET | Decision 2692476
Date Published: Sep 28, 2017
OPPOSITION No B 2 692 476
Stada Arzneimittel AG, Stadastr. 2-18, 61118 Bad Vilbel, Germany (opponent), represented by Harmsen Utescher, Neuer Wall 80, 20354 Hamburg, Germany (professional representative)
a g a i n s t
Ibsa Institut Biochimique S.A., Via al Ponte 13, 6900 Massagno, Switzerland (applicant), represented by IBSA Farmaceutici Italia SRL, Giorgio Pisani, Via della Filanda 30, 26900 Lodi, Italy (employee representative).
On 03/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 692 476 is upheld for all the contested goods.
2. European Union trade mark application No 15 025 241 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 15 025 241. The opposition is based on Bulgarian trade mark registration No 85 239. 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 goods
The goods on which the opposition is based are the following:
Class 5: Veterinary preparations, sanitary preparations for medical use; dietetic substances adapted for medical use, food for babies, plasters, materials for dressings, material for stopping teeth, dental wax, modeling wax for dentists, wax for teeth; disinfectants; preparations for destroying vermin; fungicides, herbicides.
In accordance with the limitation in the list of goods requested by the applicant on 11/05/2016 and accepted by the Office, the contested goods are the following:
Class 10: Medical and veterinary apparatus and instruments; diagnostic, examination, and monitoring equipment.
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 medical apparatus and instruments are similar to low degree to the opponent’s veterinary preparations in Class 5 as they coincide in relevant public and distribution channels. Furthermore, they are complementary.
The contested veterinary apparatus and instruments are similar to low degree to the opponent’s veterinary preparations in Class 5 as they coincide in relevant public and distribution channels. Furthermore, they are complementary.
The contested diagnostic, examination, and monitoring equipment share certain points of contact with the opponent’s veterinary preparations in Class 5, which are natural chemical substances used in the treatment, prevention, or diagnosis of disease in animals. These goods might be complementary, insofar as certain diagnostic, examination or monitoring equipment may prove to be indispensable for the screening or administration of the opponent’s medicines. Furthermore, they are all aimed at the same public and used for medical purposes. Finally, they may be sold via the same distribution channels. Therefore, these goods must be considered similar to a low degree.
- 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 to a low degree are directed both at the public at large and at customers with specific professional knowledge or expertise in the health-care field (e.g. veterinary preparations in Class 5 may target both the general public and veterinary professionals). The degree of attention varies from average to high, depending on the exact nature and purpose of the goods and the health effects that they may have.
- The signs
ADILET | AYLET |
Earlier trade mark | Contested sign |
The relevant territory is Bulgaria.
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 marks are both word marks, consisting of the word ‘ADILET’ in the earlier mark and the word ‘AYLET’ in the contested sign.
The earlier mark ‘ADILET’ and the contested sign ‘AYLET’ have no meanings for the relevant public and are, therefore, distinctive to an average degree.
Visually, the signs coincide in their beginnings with the letter ‘A’ and in their endings with the letters ‘LET’. The difference is in the remaining letters ‘DI’ placed in the second and third position in the earlier mark and in the letter ‘Y’ placed in the second position in the contested sign. Therefore, the signs are visually similar to, at least, an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‘A*I/Y-L-E-T’ present in both signs, since the letters ‘I’ and ‘Y’ will have the same sound when read in a word with Latin alphabet. The rhythm and intonation is also similar, taking into account that the vocalic sequence is the same. The pronunciation differs in the sound of the letter ‘D’ placed in the second position in the earlier mark. Therefore, the signs are aurally similar to a high 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.
- 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.
- 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 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).
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 the present case the contested goods are similar to a low degree to the opponent’s goods and they target not only the public at large, but professionals in like manner. The degree of attention in relation to the goods in question varies from average to high. The marks were found to be visually similar to, at least, and average degree, aurally highly similar and the conceptual aspect of the marks does not influence the outcome.
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). 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 the above and the fact that the main difference between the signs lies in the two letters placed in the middle of them, where they are more likely to be overlooked by consumers, it is highly conceivable that the relevant consumer will perceive that the goods in question marked with the signs in question come from the same undertaking or from economically linked undertakings.
Consequently, 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 Bulgarian trade mark registration No 85 239. 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.
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
Benoît | Begoña | Boyana |
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.