EXERKINE | Decision 2358995 - Novartis AG v. Mark Tarnopolsky
Date Published: Sep 25, 2017
OPPOSITION No B 2 358 995
Novartis AG, 4002 Basel, Switzerland (opponent), represented by Friedrich Graf Von Westphalen & Partner mbB, Kaiser-Joseph-Str. 284, 79098 Freiburg i. Br., Germany (professional representative)
a g a i n s t
Mark Tarnopolsky, 19 Oakwood Place, Hamilton L8S 4C9, Canada (applicant), represented by Patentanwälte Bauer Vorberg Kayser Partnerschaft mbB, Goltsteinstr. 87, 50968 Köln, Germany (professional representative).
On 20/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 358 995 is upheld for all the contested goods, namely:
Class 5: | Purified proteins for injection or ingested compounds for the treatment of aging and aging associated disorders such as diabetes, dementia, obesity, or muscle weakness and atrophy. |
2. European Union trade mark application No 12 519 294 is rejected for all the contested goods. It may proceed for the remaining goods and services.
3. The applicant bears the costs, fixed at EUR 650.
REASONS:
The opponent filed an opposition against some of the goods and services of European Union trade mark application No 12 519 294, namely against all the goods in Class 5. The opposition is based on European Union trade mark registration No 11 587 946. 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 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; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides. |
The contested goods are the following:
Class 5: | Purified proteins for injection or ingested compounds for the treatment of aging and aging associated disorders such as diabetes, dementia, obesity, or muscle weakness and atrophy. |
The above contested goods are all included in, or overlap with, the broad category of the opponent’s pharmaceutical preparations. Therefore, they are identical.
- 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 are directed at the public at large and also at business customers with specific professional knowledge or expertise in the medical, health and/or dietetic areas.
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.
Therefore, the degree of attention of the relevant public in the present case is high.
- The signs
EXCEDRINE | EXERKINE |
Earlier trade mark | Contested sign |
The relevant territory is the European Union.
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 trade mark is the word mark ‘EXCEDRINE’ and the contested sign is the word mark ‘EXERKINE’. Neither of them has a meaning for the relevant public and they are, therefore, distinctive. Each mark will be perceived as a single word by the relevant public in the relevant territory.
Visually, the signs coincide in their beginnings, namely in the letters ‘EX’, and in their endings, namely in the letters ‘INE’. Their middle letters, ‘CEDR’ and ‘ERK’, also coincide in two letters, namely ‘E’ and ‘R’; however, they are in in different positions. The signs coincide in seven letters out of nine in the earlier mark and eight in the contested sign. Their length is, therefore, also very similar.
It is important to note that the similarities lie in the beginnings and endings of the verbal elements, while the only differences are in the middle. In terms of recognition and recall, commonalities in the initial and final parts of verbal elements tend to be of more importance, while differences in the middle of verbal elements may be overlooked or not well recognised and recalled by the relevant consumer.
Therefore, the signs are visually highly similar.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters /EX/ at their beginnings, the sound of the letters /INE/ at their endings and the sound of the letters /E/ and /R/ in their middle parts. Furthermore, they have the same vowel pattern, /E-E-I-E/. The pronunciation differs exclusively in the sound of the letters /C/ and /D/ of the earlier mark and the letter /K/ of the contested sign. The signs coincide in the sounds of seven letters out of nine in the earlier mark and out of eight in the contested sign. Their lengths are also very similar. Therefore, their rhythms and intonations are very similar.
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
Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case. For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, account should 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 who pay a high degree of attention, as in this case, need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).
The goods are identical. The degree of attention of the relevant public will be high and the earlier mark has a normal degree of distinctiveness.
The signs coincide significantly in the letters forming their single and distinctive elements, and have identical beginnings and endings as seen in section c), which makes them visually and aurally highly similar. Furthermore, it is important to note that the similarities lie in the beginnings and endings of the signs, while the only differences lie in two letters in the middle. As set out above, commonalities in the initial and final parts of the verbal elements tend to be of more importance for the relevant consumer.
In view of all of the above, it is considered that the differences between the signs, even if consumers’ degree of attention is high, are not sufficient to safely counteract the significant existing similarities and 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 European Union trade mark registration No 11 587 946. 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
Rasa BARAKAUSKIENE | Fabián GARCIA QUINTO | Zuzanna STOJKOWICZ |
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.