DONNACALM | Decision 2757394
Date Published: Sep 22, 2017
OPPOSITION No B 2 757 394
Sanofi, 54 rue La Boétie, 75008 Paris, France (opponent), represented by Elzaburu S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative)
a g a i n s t
Aristo Pharma Iberia S.L., Solana 26, 28850 Torrejón de Ardoz (Madrid), Spain (applicant), represented by Ryo Rodriguez Oca S.L., Calle Juan Hurtado de Mendoza, 9 Apto. 507, 28036 Madrid, Spain (professional representative).
On 05/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 757 394 is upheld for all the contested goods, namely
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.
2. European Union trade mark application No 15 420 367 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 15 420 367 DONNACALM, namely against some of the goods in Class 5. The opposition is based on Italian trade mark registration No 1 331 256, DONNAMAG. 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 preparations, dietetic food and substances adapted for medical use.
The contested goods 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.
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
Pharmaceutical preparations, dietetic food and substances adapted for medical use are identically contained in both lists of goods.
A pharmaceutical preparation refers to any kind of medicine, that is, a substance or combination of substances for treating or preventing disease in people or animals. Therefore, veterinary preparations are included in the broader term pharmaceutical preparations. They are identical.
The contested sanitary preparations for medical purposes which are special hygienic substances prepared to treat or prevent a disease, are similar to a high degree to the opponent’s goods in Class 5 as they have the same purpose. They can coincide in producer, end user and distribution channels.
Dietetic substances and food supplements adapted for veterinary use are substances prepared for special dietary requirements, with the purpose of treating or preventing disease in animals. Bearing this in mind, their purpose is similar to that of pharmaceutical products (substances used to treat disease) insofar as they are used to improve animal’s medical condition. The relevant public coincides and the goods generally have the same distribution channels. Therefore, these goods are considered similar.
The contested food for babies is similar to the opponent’s dietetic food and substances adapted for medical use since baby food in this class is specific food adapted to the specific nutritional needs of babies that are not yet capable of eating normal food and need to follow a particular diet. These goods have a similar purpose; they are often sold in the same retail outlets and produced by the same producers.
The contested dietary supplements for humans and animals are intended to provide nutrients that might otherwise not be consumed in sufficient quantities. Supplements are generally understood to include vitamins, minerals, fibre, etc. The opponent’s dietetic substances adapted for medical use are those that, naturally or through processing, have a low calorific content. These goods are considered similar, since they have the same purpose and method of use in relation to improving one’s health. They are sold through the same channels and may be produced by the same companies.
- 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 either identical or similar to varying degrees are directed at the public at large and at health professionals. However, the relevant public’s degree of attention is relatively high. In particular, medical professionals have a high degree of attention when prescribing medicines or pharmaceutical preparations. With regard to non-professionals they also show a higher than average degree of attention, as the goods in question affect their state of health.
- The signs
DONNAMAG | DONNACALM |
Earlier trade mark | Contested sign |
The relevant territory is Italy.
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).
It should be noted that the earlier and the contested signs are both word marks.
The element “DONNA” included in both signs will be associated with “woman” for the Italian speaking public.Taking into account the relevant goods that may include a variety of articles and products targeting on occasions mainly the female customers, this element is considered weak.
The element ‘MAG’ of the earlier sig can be associated by the relevant public with an abbreviation that stands for magnesium: the chemical element of a silver-white metal with an atomic number 12. It is quite usual that such abbreviations appear on packages of pharmaceutical or dietary products as an indication that these products contain the health-related chemical component. Consequently, in relation to the relevant goods the element ‘MAG’ of the earlier sign should be regarded as weak.
As regards the element ‘CALM’ of the contested sign, it alludes to the Italian word ‘calma’ that means serenity, tranquillity and/or calm. Bearing in mind that the relevant goods are pharmaceutical preparations, dietetic substances for medical use and dietary supplements, it is considered that this element is also weak since it could indicate that the products are for calming the bodily nervous system, such as sedatives for instance.
Visually, the signs coincide in the element ‘DONNA’, present identically in both signs. They differ in the element ‘MAG’ of the earlier sign and the element ‘CALM’ of the contested sign. It should be noted that 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. Consequently, even if the overlapping element is weak, it will still have a strong impact on consumers because the differentiating elements are likewise weak. Therefore, the signs are visually similar to an average degree.
Aurally, the signs coincide in the sound of the letters ‘DONNA’. They differ in the sound of the letters ‘MAG’ which have no counterparts in the contested sign; and in the sound of the letters ‘CALM’ which are not present in the earlier mark. However, it should be noted that the differing elements still have the vowel ‘a’ in common. Both signs consist of three syllables which makes the rhythm and the intonation pattern of the marks very similar. Consequently, the signs are considered aurally similar to an average degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs coincide in the concept of a ‘WOMAN’ due to the common element ‘DONNA’. The additional elements, although evoking different concepts (chemical component versus state of mind), still overlap for example in the calming effects the magnesium component in pharmaceutical and/or dietary preparations has on body and mind. To that extent, the differentiating elements ‘MAG’ and ‘CALM’ are also similar.
Considering all the above, the signs must be regarded as conceptually highly similar.
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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for the goods in question.
- Global assessment, other arguments and conclusion
Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods covered are from the same or economically linked undertakings.
In the present case, the goods are identical or similar to varying degrees. The signs are visually and aurally similar to an average degree as they have identical beginnings, similar rhythm and intonation. Conceptually the sings are similar to a high degree. It is true that the common element ‘DONNA’ is weak. However, the additional elements that are supposed to differentiate between the marks are likewise weak. Consequently more weight has to be given to the overlapping element. Account has to be taken also 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); and 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, it is highly conceivable that the relevant consumer will perceive the contested mark as a variation of the earlier mark and, therefore, as coming form the same undertaking.
Therefore, the Opposition Division finds that there is a likelihood of confusion on the part of the Italian public and the opposition is well founded on the basis of the opponent’s Italian trade mark registration No 1 331 256. 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
Loreto URRACA LUQUE | Arkadiusz GORNY | Judit NÉMETH |
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.