DOLBAN | Decision 2654229 - Takeda Oy v. ARAFARMA GROUP, S.A.
Date Published: Sep 28, 2017
OPPOSITION No B 2 654 229
Takeda Oy, C/o Takeda GmbH, Byk-Gulden-Str. 2, 78467 Konstanz , Germany (opponent), represented by Takeda GmbH, Arianna Lucheroni, P.O. Box 100310, 78403, Konstanz, Germany (employee 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 09/12/2016, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 654 229 is upheld for all the contested goods, namely:
Class 5: Pharmaceutical preparations; Chemico-pharmaceutical preparations; Dietary supplements for humans; Dietary and nutritional supplements; Dietetic substances adapted for medical use.
2. European Union trade mark application No 14 747 018 is rejected for all the contested goods. It may proceed for the remaining goods.
3. The applicant bears the costs, fixed at EUR 350.
REASONS:
The opponent filed an opposition against some of the goods of European Union trade mark application No 14 747 018, namely against some of the goods in Class 5. The opposition is based on Finnish trade mark registration No 22 626. 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: Pharmaceutical products.
The contested goods are the following:
Class 5: Pharmaceutical preparations; Chemico-pharmaceutical preparations; Dietary supplements for humans; Dietary and nutritional supplements; Dietetic substances adapted for medical use.
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 pharmaceutical preparations are included in the broad category of the opponent’s pharmaceutical products. Therefore, they are identical.
The contested chemico-pharmaceutical preparations overlap with the opponent’s pharmaceutical products. Therefore, they are identical.
The contested dietary supplements for humans; dietary and nutritional supplements; dietetic substances adapted for medical use are substances prepared for special dietary requirements, with the purpose of treating or preventing disease. Bearing this in mind, their purpose is similar to that of pharmaceutical products (substances used to treat diseases) insofar as they are used to improve a patient’s medical condition. The relevant public coincides and the goods generally have the same distribution channels. Therefore, these goods are considered similar.
- 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 or similar are directed at both the public at large and healthcare professionals. Since the relevant goods target both the general public and specialists, the likelihood of confusion will be assessed against the perception of the part of the public that displays the lower degree of attentiveness, and which will therefore be more prone to confusion, namely the public at large.
It is apparent from the case law that, insofar as products related to consumers’ health are concerned, the relevant public’s degree of attention is relatively high. Indeed, when purchasing the relevant goods, average consumers show a higher than average degree of attention, as these goods affect their state of health.
- The signs
DOLAN | DOLBAN |
Earlier trade mark | Contested sign |
The relevant territory is Finland.
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 the earlier mark and the contested sign are word marks, formed of a single word element that has no meaning for the general public in the relevant territory. Therefore, the distinctiveness of both ‘DOLAN’ and ‘DOLBAN’ is average.
Visually, the signs coincide in the letters ‘DOL*AN’. However, they differ in the letter ‘B’ of the contested sign, which has no counterpart in the earlier mark. The letter ‘B’ is, however, in the middle of the contested sign and is surrounded by letters that are identical to those forming the earlier mark. Moreover, the lengths and structures of the signs are also very similar, as they are both formed of a single word of five or six letters, out of which five coincide. Therefore, the signs are visually highly similar.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛DOL’ and ‘AN’, present identically in both signs. The pronunciation differs only in the sound of the letter ‘B’ of the contested sign, which has no counterpart in the earlier mark. In addition, the signs have the same number of syllables and very similar rhythms and intonations, as the sound of the differing consonant ‘B’ is not of such a nature that it significantly offsets the sounds of the five identical letters surrounding it. Therefore, the signs are aurally highly similar.
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 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 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).
The contested goods in Class 5 are identical or similar to the opponent’s goods. The earlier trade mark enjoys a normal degree of distinctiveness.
The signs in dispute are visually and aurally highly similar due to the coincidences in the letters ‘DOL*AN’, present identically and in the same order in both signs. The difference between the signs lies exclusively in the additional letter, ‘B’, of the contested sign. However, as this letter is in the middle of the sign, where consumers do not tend to focus their attention, and considering that the differing letter is surrounded by letters identical to those of the earlier mark, this differing element may be overlooked by the relevant public.
In addition, account must be 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 with 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).
Taking into account the abovementioned similarities between the signs in question, the Opposition Division considers that those similarities might lead at least part of the relevant public, even with a high degree of attention, to think that the contested goods and the opponent’s goods came from the same undertaking, or from economically-linked undertakings. Considering all the above, there is a likelihood of confusion on the part of the public. As previously indicated, this assessment was based on the public that is more likely to be prone to confusion, that is, the general public. In this regard, it should be noted that if a significant part of the relevant public for the goods at issue may be confused about the origin of the goods, that is sufficient for a finding of likelihood of confusion. Therefore, there is no need to establish that all actual or potential consumers of the relevant goods are likely to be confused.
Therefore, the opposition is well founded on the basis of the opponent’s Finnish trade mark registration No 22 626. It follows from the above that the contested sign 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. In the present case the opponent did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.
The Opposition Division
Edith Elisabeth VAN DEN EEDE | Orsola LAMBERTI | Oana-Alina STURZA |
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.