Felbolin | Decision 2699190 - TERAPIA S.A. v. Stefan Felber

Date Published: Sep 28, 2017

OPPOSITION No B 2 699 190

Terapia S.A., Str. Fabricii no.124, Cluj-Napoca, jud. Cluj, Romania, 400632 Cluj-Napoca, Romania (opponent)

a g a i n s t

Stefan Felber, Leutstettener Straße 4, 82319 Starnberg, Germany (applicant), represented by Yvonne Deutsch, A.-v.-Menzel-Str. 47, 50259 Pulheim, Germany (professional representative).

On 17/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 699 190 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 059 298, namely against all the goods in Class 5. The opposition is based on Romanian trade mark registration No 1 583. The opponent invoked Article 8(1)(b) and 8(5) 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:        Medicinal products for human and veterinary use under any pharmaceutical form.

The contested goods are the following:

Class 5:        Pharmaceutical preparations; dietary supplements and dietetic preparations; medical and veterinary preparations and articles; face cream (medicated -); medicated food supplements; medicinal drinks.

Some of the contested goods are identical to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark.

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 relevant goods are directed at the public at large as well as at professionals in the medical and pharmaceutical sectors with specific professional knowledge or expertise.

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 statement also applies for medical and veterinary preparations and articles; face cream (medicated -); medicated food supplements; medicinal drinks as these goods also affect consumer’s state of health. The dietary supplements and dietetic preparations alter consumer’s nutrition based upon their medical condition and individual needs. Therefore, the degree of attention is relatively high, at least above average.

3. The signs

FIOBILIN	Felbolin
Earlier trade mark	Contested sign

The relevant territory is Romania.

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 verbal elements ‘FIOBILIN’ of the earlier mark and ‘Felbolin’ of the contested sign have no clear meaning for the relevant public and are, therefore, distinctive.

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.

Visually and aurally, the signs coincide in the sequence of the five letters ‘F**B*LIN’ and their sounds. However, they differ in the three letters ‘*IO*I***’ of the earlier mark and the three letters ‘*EL*O***’ of the contested sign as well as in their respective sounds. The structure of the signs is also similar, mainly because of the consonant structure of the signs and the same number of syllables. However, the only coinciding syllable of the signs, ‘−LIN’, is placed at the end of the signs. 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. Although the signs share the same first letter ‘F’, their initial parts do not really coincide. The first syllable ‘FIO−‘ or the first two syllables ‘FIOBI−’ of the earlier mark substantially differ from the first syllable ‘FEL−‘ or the first two syllables ‘FELBO−’ of the contested sign, respectively.

Moreover, the General Court has held that the same number of letters in two marks is not, as such, of any particular significance for the relevant public, even for a specialised public. Since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar. In addition, the public is not, in general, aware of the exact number of letters in a word mark and, consequently, will not notice, in the majority of cases, that two conflicting marks have the same number of letters (25/03/2009, T-402/07, ARCOL / CAPOL, EU:T:2009:85, § 81-82 confirmed by 04/03/2010, C-193/09 P, ARCOL / CAPOL, EU:C:2010:121).

Therefore, the signs are visually and aurally similar to a degree below average.

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.

According to the opponent the earlier trade mark enjoys a high degree of distinctiveness as result of its long standing and intensive use and enjoys a high degree of recognition among the relevant public in Romania in connection with all the goods for which it is registered, namely medicinal products for human and veterinary use under any pharmaceutical form. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted the following evidence:

• Certificate No 7874/1999 issued by the Ministry of Health of Romania and its translation;

• Manufacturing Authorization No 1987/1999 issued by the Ministry of Health of Romania and its translation;

• Certification issued by the market research company CEGEDIM in relation to total volume and value of sales of products commercialised by the opponent under its earlier mark and its translation: for example, these data show that, in 2015, 839,771 units of the goods have been sold under the opponent’s brand in Romania whereas the total volume sales for this category of goods reach for all brands 8,184,073 units. Therefore, the opponent’s sales only represent 10.3% of the total amount.

• 28 invoices dated during the period 2001-2016, addressed to various clients situated in Romania.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use.

Despite showing use of the trade mark, the evidence does not provide any indication of the degree of recognition of the trade mark by the relevant public. The certificate and authorisation issued by the Ministry of Health of Romania only certify that the product ‘FIOBILIN’ may be used in Romania. The invoices are valid evidence to prove genuine use but are insufficient, on their own, to prove that the earlier trade mark acquired a high degree of distinctiveness through its use. As regards the market research study, even if it shows that the opponent occupied the third place in its sector (Cholerestics and Cholekinetics) in Romania in terms of sales, the figures and, therefore, the market share of the trade mark are not particularly striking all the more so as the evidence does not indicate the extent to which the trade mark has been promoted and is known by the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark enjoys a high degree of distinctiveness and has a 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

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, C342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C251/95, Sabèl, EU:C:1997:528, § 22).

The goods are directed at the public at large and medical professionals whose degree of attention may vary from above average to high according to the goods taken into consideration.

The conceptual aspect is neutral as neither of the signs has a meaning and, from the visual and aural points of view, the signs are similar but only to a degree below average. The opponent failed to prove that its trade mark has a high degree of distinctiveness through use. Therefore, its distinctiveness per se must be seen as normal.

The strong visual and aural differences between the signs, most of them placed in the initial part of the signs which is the one that first catches the attention of the consumers, are sufficient to counteract the similarities, all the more so as the high, or at least above average, degree of attentiveness on the part of the relevant public also contributes to dispelling confusion.

Although the goods are considered identical but considering also the high degree of attentiveness of the public, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected insofar as it is based on Article 8(1)(b) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient.

Reputation of the earlier trade mark

The evidence submitted by the opponent to prove the reputation and high distinctive character of the earlier trade marks has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

It was concluded that the evidence submitted by the opponent does not demonstrate that the earlier trade marks acquired a reputation.

Therefore, the opponent failed to prove that the earlier trade mark has a reputation. As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade marks have a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected on this ground.

In any case, the Opposition Division also notes that the opponent did not provide any facts, arguments or evidence which could support the conclusion that the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Boyana NAYDENOVA

Benoit VLEMINCQ

Martina GALLE

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.