ELLEGYN | Decision 2722828 - LABORATÓRIOS BASI - INDÚSTRIA FARMACÊUTICA, S.A. v. ALTA CARE LABORATOIRES

Date Published: Sep 28, 2017

OPPOSITION No B 2 722 828

Laboratórios Basi – Indústria Farmacêutica, S.A., Parque Industrial Manuel Lourenço Ferreira, Lote 15, 3450-232 Mortágua, Portugal (opponent), represented by Abel Dário Pinto de Oliveira, Rua Nossa Senhora de Fátima, n° 419 - 3º Frente, 4050-428 Porto, Portugal (professional representative)

a g a i n s t

Alta Care Laboratoires, Piazza di Spagna 6, 00187 Roma, Italy (applicant), represented by Bugnion S.P.A., Via di Corticella 87, 40128 Bologna, Italy (professional representative).

On 11/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 722 828 is upheld for all the contested goods, namely:

Class 5:        Pharmaceutical and medicinal products and preparations; Sanitary preparations for medical purposes; Foods and dietetic substances adapted for medical use; Food supplements for humans; Pharmaceutical preparations for skin care; Skin care creams for medical use; Transdermal patches for medical treatment; Medicated patch; Mud (Medicinal -); Diet supplements; Vaginal washes; Medical preparation for slimming purposes; Dietetic foods adapted for medical use; Medicated creams for treating cellulite; Aloe vera preparations for pharmaceutical purposes; Medicinal hair growth preparations; Medicated hair care preparations; Pharmaceutical preparations for treating dandruff; Herbal teas for medicinal purposes; Topical analgesics; Acids for pharmaceutical purposes; Medicated preparations in the form of creams, balms, lotions, oils and gels.

2.        European Union trade mark application No 15 206 031 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 15 206 031, namely against all the goods in Class 5. The opposition is based on Portuguese trade mark registration No 516 279. 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:        Pharmaceutical and veterinary preparations; Medicines for human and veterinary use; Sanitary preparations for medical purposes; Dietetic substances adapted for medical use, food for babies; Plasters for medical use; materials for dressings; Material for stopping teeth, dental wax; Disinfectants; Preparations for destroying vermin; Fungicides.

The contested goods are the following:

Class 5:        Pharmaceutical and medicinal products and preparations; Sanitary preparations for medical purposes; Foods and dietetic substances adapted for medical use; Food supplements for humans; Pharmaceutical preparations for skin care; Skin care creams for medical use; Transdermal patches for medical treatment; Medicated patch; Mud (Medicinal -); Diet supplements; Vaginal washes; Medical preparation for slimming purposes; Dietetic foods adapted for medical use; Medicated creams for treating cellulite; Aloe vera preparations for pharmaceutical purposes; Medicinal hair growth preparations; Medicated hair care preparations; Pharmaceutical preparations for treating dandruff; Herbal teas for medicinal purposes; Topical analgesics; Acids for pharmaceutical purposes; Medicated preparations in the form of creams, balms, lotions, oils and gels.

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.

Pharmaceutical products and preparations; sanitary preparations for medical purposes; foods and dietetic substances adapted for medical use are identically contained in both lists of goods (including synonyms).

The contested medicinal products and preparations are synonymous with the opponent’s pharmaceutical preparations. Therefore, they are identical.

Food supplements and diet supplements are mainly intended to provide nutrients to supplement a normal diet or to have health benefits. Therefore, the contested food supplements for humans; diet supplements; dietetic foods adapted for medical use are included in the broad category of, or overlap with, the opponent’s dietetic substances adapted for medical use. Therefore, they are considered identical.

Specific pharmaceuticals are considered identical to pharmaceuticals because specific pharmaceuticals are included in the broader category of pharmaceuticals.

The contested pharmaceutical preparations for skin care; skin care creams for medical use; transdermal patches for medical treatment; medicated patch; medical preparation for slimming purposes; medicated creams for treating cellulite; medicinal hair growth preparations; medicated hair care preparations; pharmaceutical preparations for treating dandruff; topical analgesics; acids for pharmaceutical purposes are identical to the opponent’s pharmaceutical preparations.

The contested medicated preparations in the form of creams, balms, lotions, oils and gels are included in the broad category of the opponent’s pharmaceutical preparations. Therefore, they are identical.

The contested herbal teas for medicinal purposes are included in the broad category of the opponent’s dietetic substances adapted for medical use. Therefore, they are identical.

The contested mud (medicinal -); vaginal washes; aloe vera preparations for pharmaceutical purposes are pharmaceutical and natural preparations and remedies, the broader purpose of which, like that of the opponent’s pharmaceutical preparations, is medical. Therefore, these contested goods and the opponent’s goods have the same producers, end users and distribution channels, or at least the same distribution channels and end users, as the contested goods are widely used in medical treatment in all the branches of medicine. Consequently, these goods 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 identical or similar target both the public at large and professionals in the fields of medicine and healthcare (26/04/2007, C-412/05 P, Travatan, EU:T:2005:337). Some of the contested goods, such as diet supplements, and the broad category of the applicant’s pharmaceutical and medicinal products and preparations, can include preparations that are relatively cheap and sold directly to the consumer without prescription, while the contested goods can also include other goods that are more specialised drugs for treating serious health problems. It is apparent from the case-law that, insofar as pharmaceutical preparations are concerned, the relevant public’s degree of attention is relatively high, whether or not issued on prescription (15/12/2010, T-331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T-288/08, Zydus, EU:T:2012:124, § 36 and cited case-law). In particular, medical professionals have a high degree of attentiveness when prescribing medicines. Non-professionals also have a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health. This high degree of attention is also applied to dietetic products, since these goods can have a direct effect on the proper functioning of the digestion and on one’s physical appearance (15/12/2009, T-412/08, Trubion, EU:T:2009:507, § 28). The degree of attention is high.

3. The signs

ELLEGY
Earlier trade mark	Contested sign

The relevant territory is Portugal.

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 word ‘ELLEGY’ of the earlier mark has no meaning for the relevant public and is, therefore, distinctive.

The contested mark is a figurative mark composed of the word ‘ELLEGYN’, depicted in a standard white typeface on a red rectangular background. The word ‘ELLEGYN’ has no meaning for the relevant public, and it has, therefore, an average degree of distinctiveness in relation to the goods. The red rectangular background is a commonplace shape used in labels and has, therefore, a purely decorative function. Consequently, it has little impact on the assessment of the similarity between the signs. To the right of the word ‘ELLEGYN’ is a depiction of a woman’s body, which is a commonly used figurative element that could be perceived as relating to the physical changes or greater attractiveness that a person could achieve by using some of the products in question, such as medical preparation for slimming purposes or medicated creams for treating cellulite. Therefore, the contested sign is composed of a distinctive verbal element and a less distinctive figurative element. However, the contested sign has no elements that could be considered clearly more dominant than other elements.

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).

Visually, the signs coincide in the letters ‘ELLEGY’, which constitute the entire distinctive earlier sign. However, they differ in the additional letter, ‘N’, of the word element of the contested sign and in the decorative red background and the figurative element of the contested sign, that is, the depiction of a woman’s body, which is of limited distinctiveness, as explained above. Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the sequence of letters ‘ELLEGY’, present identically in both signs. The pronunciation differs in the sound of only the letter ‛N’ of the contested mark, which has no counterpart in the earlier sign. Therefore, the signs are aurally highly similar.

Conceptually, neither of the signs as a whole has a meaning for the public in the relevant territory. However, the relevant public will perceive the less distinctive figurative element of a depiction of a woman’s body in the contested sign as explained above. Since the earlier trade mark will not be associated with any meaning, 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, 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).

In the present case, the contested goods are identical or similar. The relevant public’s degree of attention in relation to the goods at issue is high. However, 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).

Moreover, the differences between the signs are confined to an additional letter in and secondary elements and aspects of the contested sign, as explained above in section c) of this decision. These differences are not sufficient to rule out any likelihood of confusion, where the consumer directly confuses the trade marks themselves, or likelihood of association, where the consumer makes a connection between the conflicting signs and assumes that the goods covered are from the same or economically linked undertakings.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, 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 Portuguese trade mark registration No 516 279. 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

Richard BIANCHI

Carlos MATEO PÉREZ

Inés GARCÍA LLEDÓ

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.