Fiona | Decision 2597188
Date Published: Oct 1, 2017
OPPOSITION No B 2 597 188
Hexal Aktiengesellschaft, Industriestr. 25, 83607 Holzkirchen, Germany (opponent), represented by Boehmert & Boehmert Anwaltspartnerschaft mbB - Patentanwälte Rechtsanwälte, Kurfürstendamm 185, 10707 Berlin, Germany (professional representative)
a g a i n s t
Meril Endo Surgery Private Limited, Survey No. 135/139, Bilakhia House, Muktanand Marg, Chala, Vapi-396191, Gujarat, Vapi Gujarat 396191, India (applicant), represented by Zacco Dr. Peters und Partner, Am Wall 187-189, 28195 Bremen, Germany (professional representative).
On 01/06/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 597 188 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 of European Union trade mark application No 14 347 942, namely against all the goods in Class 5. The opposition is based on, inter alia, German trade mark registration No 30 647 777. 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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s German trade mark registration No 30 647 777.
- The goods
The goods on which the opposition is based are the following:
Class 5: Pharmaceutical products, namely ethinylestradiol and levonorgestrel-containing preparations.
The contested goods are the following:
Class 5: Contraceptive preparations; Chemical contraceptives.
An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.
The term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.
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 contraceptive preparations include, as a broader category the opponent’s pharmaceutical products, namely ethinylestradiol and levonorgestrel-containing preparations. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
The contested chemical contraceptives consist of spermicides, or products designed to kill live sperm. They exist as gels, foams and films and are introduced into the vagina. These goods are highly similar to the opponent’s pharmaceutical products, namely ethinylestradiol and levonorgestrel-containing preparations which are also contraceptives. Even though the earlier goods are administered orally, they are still contraceptives. Therefore, they are directed at the same consumers, may originate from the same companies, are in competition to each other and may also be complementary. Their distribution channels are also identical as they are sold in pharmacies.
- 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 the female public and at medical professionals.
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.
- The signs
LEONA | FIONA |
Earlier trade mark | Contested sign |
The relevant territory is Germany.
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 first parts of the conflicting marks are dissimilar. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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, the dissimilar first elements of the marks at issue have to be taken into account when assessing the likelihood of confusion between the marks.
Visually, the signs coincide in ‘-ONA’. However, they differ in the initial letters ‘LE’ of the earlier mark against ‘FI’ in the contested mark.
Therefore, the signs are visually similar to a low degree.
Aurally, the earlier sign will be pronounced LE-O-NA while the contested mark will be pronounced FI-O-NA. As the signs share two identical syllables and the first syllable is lowly similar, the signs are aurally similar to an average degree.
Conceptually, both marks will be perceived by the relevant public as different female first names. Even though they both refer to female first names, this is not enough to establish a conceptual similarity. Quite the contrary, because they refer to different first names, the signs are conceptually dissimilar.
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 goods were found to be identical and highly similar. The signs are visually lowly similar and aurally similar to an average degree while they were found to be conceptually dissimilar.
Although the signs coincide aurally in the element ONA, a likelihood of confusion does not exist since the signs begin with two different letters and, additionally, both signs are also conceptually dissimilar as they refer to two different female first names. While the name Leona may not be very famous in German, it will still be understood as a female first name because the masculine version (Leon) has been in the top ten of the favourite first names for boys for at least a decade in Germany and Austria.
The Opponent refers to several decisions to make its case (Pentasa/Octasa and Ritex/ZyTex). However none of the cases are comparable to the one at hand because even though in the cases cited the first letters differ, the signs did not have a meaning and therefore a likelihood of confusion could not be excluded. In any case, it also has to be mentioned again that the signs differ in their initial letters, the part of the signs which catches first the consumers’ attention. Even though the goods are identical and highly similar, there is therefore no likelihood of confusion on the part of the public, especially taking into account the degree of attention of the relevant public. Therefore, the opposition must be rejected.
Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.
The opponent has also based its opposition on the following earlier trade mark:
- German trade mark registration No 30 649 046 for the word mark Leona HEXAL
The other earlier right invoked by the opponent is less similar to the contested mark. This is because it contains the additional word ‘HEXAL’ which is not present in the contested trade mark. Even though this mark covers a slightly broader protection, this will not influence the outcome as the other mark which was already compared resulted in identical and highly similar goods which would be sufficient to uphold the opposition in any case. However, the problem does not lie in the closeness between the goods but that there is no likelihood of confusion between the signs and as this sign is even less similar, the opposition must also be rejected with regard to this earlier 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
Tobias KLEE | Lars HELBERT | Swetlana BRAUN |
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.