FORLEAX | Decision 2703166 - CHIESI FARMACEUTICI S.P.A. v. IPSEN PHARMA S.A.S
Date Published: Sep 28, 2017
OPPOSITION No B 2 703 166
Chiesi Farmaceutici S.p.A., Via Palermo, 26 A, 43122 Parma (PR), Italy (opponent), represented by Giambrocono & C. S.p.A., Via Rosolino Pilo, 19/b, 20129 Milano, Italy (professional representative)
a g a i n s t
Ipsen Pharma S.A.S., 65, Quai Georges Gorse, 92100 Boulogne Billancourt, France (applicant), represented by Hélène Bernard-Boyle, 65 quai Georges Gorse, 92100 Boulogne-Billancourt, France (professional representative).
On 31/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 703 166 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 15 104 433 in Class 5. The opposition is based on Italian trade mark registration No 1 588 350. 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 and medicinal preparations; dietetic substances adapted for medical use; sanitary preparations for medical use; food for babies; plasters, materials for dressings; disinfectants.
The contested goods are the following:
Class 5: Pharmaceutical preparations; dietetic foods adapted for medical use; Dietetic substances adapted for medical use; Food for babies; Probiotic bacterial formulations for medical use; Food supplements; Nutritional supplements; Adhesive tapes for medical purposes.
The contested pharmaceutical preparations; dietetic substances adapted for medical use and food for babies are identically contained in both lists of goods.
The contested dietetic foods adapted for medical use; food supplements; nutritional supplements are included in the broad category of, or overlap with, the opponent’s dietetic substances adapted for medical use. Therefore, they are identical.
The contested probiotic bacterial formulations for medical use are included in the broad category of the opponent’s pharmaceutical preparations and medicinal preparations. Therefore, they are identical.
The contested adhesive tapes for medical purposes are included in the broad category of, or overlap with, the opponent’s materials for dressings. 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 target both the public at large and professionals in the fields of medicine and healthcare. Some of the contested goods, such as food supplements; nutritional supplements, are preparations that are relatively cheap and sold directly to the consumer without prescription, while some of the relevant goods (pharmaceutical preparations; probiotic bacterial formulations for medical use) 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 (dietetic foods adapted for medical use; dietetic substances adapted for medical use), 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.
- The signs
BOREAX | FORLEAX |
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).
Neither the earlier mark, ‘BOREAX’, nor the contested sign, ‘FORLEAX’, has any meaning for the Italian public and both are, therefore, equally distinctive.
Similarly, since both the signs are word marks, they lack any additional elements that could be considered more distinctive or dominant than other elements.
Visually and aurally, the signs coincide visually in the letters ‘OR’, placed in the same position in each mark, and the ending, ‘EAX’; therefore, the signs are similar from the visual point of view only to this extent. The signs differ in their first letters, ‘B’ in the earlier mark and ‘F’ in the contested sign; moreover, the contested sign has an additional letter ‘L’ in its middle. From an aural perspective, the signs differ, particularly in their first parts, the syllables ‘BO-RE’ and ‘FOR-LE’. On the other hand, the signs coincide aurally in the last syllable, ‘AX’.
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.
In the present case, although the first letters of the marks, ‘B’ and ‘F’, are linked by the same letter combination ‘OR’, they are still sufficient to create different impressions in the minds of the relevant consumers, reinforced by the additional ‘L’ in the contested sign.
Therefore, the signs are considered visually and aurally similar to a low degree.
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
The goods are identical. The degree of attention of the relevant public (the public at large and professionals) is expected to be higher than average as regards the goods whose use involves knowledge or expertise from the pharmaceutical/medical field. The earlier mark has a normal level of distinctiveness.
According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29).
As explained in section c) of the present decision, although the signs coincide visually and aurally in the ending ‘EAX’, it should be emphasised that from an aural perspective, since the signs are pronounced as ‘BO-RE-AX’ and ‘FOR-LE-AX’, the coinciding letters ‘EAX’ and ‘OR’ are not able to outweigh the differences that the Italian public can easily and immediately perceive in the first and middle parts of the marks (‘BO-RE*’/‘FOR-LE*’).
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 fact that the marks in question have almost the same number of letters (‘BOREAX’/‘FORLEAX’, six/seven letters) is not particularly significant in the circumstances of the present case.
Considering all the above, there is no likelihood of confusion on the part of the Italian public. Therefore, the opposition must be rejected.
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
Andrea VALISA | José Antonio GARRIDO OTAOLA | Michele M. BENEDETTI-ALOISI |
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.