HEMOSENS | Decision 2723255
Date Published: Sep 25, 2017
OPPOSITION No B 2 723 255
Laboratorios Cinfa, S.A., Ctra. de Roncesvalles, s/n, Políg. Ind. de Ollokilanda, 31699 Olloki (Navarra), Spain (opponent), represented by Ab Asesores, Calle Bravo Murillo, 219 - 1º B, 28020 Madrid, Spain (professional representative)
a g a i n s t
Lancer d.o.o., Pot v mejah 4, 1000 Ljubljana, Slovenia (applicant), represented by Item d.o.o., Resljeva 16, 1000 Ljubljana, Slovenia (professional representative).
On 27/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 723 255 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 15 173 991 for the figurative mark. The opposition is based on, inter alia, European Union trade mark registration No 10 349 678 for the word mark ‘HEMOSAN CINFA’. 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 European Union trade mark registration No 10 349 678.
- The goods
The goods on which the opposition is based are the following:
Class 5: Tissues impregnated with pharmaceutical lotions.
The contested goods are the following:
Class 3: Toiletries; skin balms (non-medicated -); moisturising skin creams [cosmetic]; skin care creams [cosmetic]; cosmetic nourishing creams; skin cream; cosmetic preparations for skin renewal; cosmetics for the treatment of dry skin; cosmetic preparations for skin care; non-medicated skin creams; skin care creams, other than for medical use; non-medicated creams; nutritional creams (non-medicated -); dermatological creams [other than medicated]; creams (non-medicated -) for the body; creams for firming the skin; skin conditioning creams for cosmetic purposes; salves [non-medicated]; skin conditioners; moisturising preparations; aloe vera preparations for cosmetic purposes; aloe vera gel for cosmetic purposes; baby care products (non-medicated -); cosmetics for personal use; greases for cosmetic purposes; cosmetic preparations for body care.
Class 5: Dietary supplements and dietetic preparations; astringents for medical use; alkaline iodides for pharmaceutical purposes; aloe vera gel for therapeutic purposes; aloe vera preparations for pharmaceutical purposes; anticoagulants; balsamic preparations for medical purposes; balms for pharmaceutical purposes; digestives for pharmaceutical purposes; dermatological pharmaceutical products; dermatological pharmaceutical substances; dermatological preparations; parapharmaceutical products for use in dermatology; astringents [pharmaceutical]; moisturising creams [pharmaceutical]; pharmaceutical creams; pharmaceutical agents affecting digestive organs; pharmaceutical agents for epidermis; tissue-regenerative pharmaceutical preparations; pharmaceutical preparations and substances with analgesic properties; pharmaceutical preparations and substances; pharmaceutical preparations and substances for the treatment of gastro-intestinal diseases; pharmaceuticals; pharmaceutical preparations for treating skin disorders; pharmaceutical preparations for use in dermatology; pharmaceutical preparations for wounds; pharmaceutical preparations for skin care; pharmaceutical preparations for the prevention of diseases of the metabolic system; pharmaceutical preparations for human use; gastrointestinal preparations; extracts of medicinal plants; extracts of medicinal herbs; medicinal herbal extracts for medical purposes; jujube, medicated; creams for dermatological use; anti-itch creams; skin care creams for medical use; anti-itch ointments; medicinal creams for the protection of the skin; hemorrhoidal ointments; ointments for pharmaceutical purposes; witch hazel; skin care preparations for medical use; hemorrhoid preparations; plant and herb extracts for medicinal use; plant extracts for pharmaceutical purposes; capillary stabilizing agents for medical purposes; stool softeners; anti-dermoinfectives; vasoconstrictors; medicated skin creams; medicinal herbs; herbal creams for medical use; antiseptic ointments; lubricants for medical use; medicinal healthcare preparations; antioxidants; anti-oxidant food supplements; dietary fiber; nutritional supplements; food supplements; dietary fiber to aid digestion; mixed vitamin preparations; vitamin c preparations; dietary supplements consisting of vitamins; dietary supplements for humans; vitamin and mineral supplements; vitamin preparations in the nature of food supplements.
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.
- 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 assumed to be identical are directed at the general public as well as at professional consumers with specific professional knowledge or expertise, namely professionals in the medical and pharmaceutical field.
The degree of attention is average for the goods in Class 3.
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 Court has confirmed that the degree of attention is also higher than average for all goods in Class 5, such as food supplements (10/02/2015, T-368/15, EU:T:2015:81, § 46).
- The signs
HEMOSAN CINFA | |
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).
When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.
The Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).
In the present case, the signs as a whole have no meaning. However, the component ‘HEMO’, which the signs have in common, will be associated by a part of the relevant public with blood, as ‘hemo’ is a prefix, a combining form, originating from Greek, meaning ‘blood, or blood related’ and it is used in expressions such as ‘hemofilie’ (‘haemophilia’ in English) or ‘hemodialyse’ (‘hemodialysis’ in English). It is therefore likely that the professional public and a part of the public at large will perceive this reference, and this part of the signs is therefore non-distinctive for that part of the public, at least in relation to some of the goods, such as pharmaceutical preparations, because it indicates their purpose.
However, it cannot be excluded that, for the other part of the public, it has no meaning and is distinctive.
The Opposition Division finds it appropriate for reasons of procedural economy to first examine the opposition in relation to the part of the public that does not perceive the meaning of the component ‘HEMO’, which is the best scenario in which the opponent’s case can be considered.
This part of the public will perceive the signs as a whole, since the components of the signs do not suggest any specific meaning or resemble words known to them. For this part of the public, the earlier mark has a normal degree of distinctiveness. This is also the case for the contested sign.
The earlier mark is a word mark, ‘HEMOSAN CINFA’.
The contested sign is a figurative sign composed of the verbal components ‘HEMO’ in blue bold letters and ‘SENS’ in green standard letters. At the beginning of the contested sign, there is a figurative element consisting of a small white drop inside a bigger green drop. Below the green drop, there is a blue curved line that surrounds the lower part of the green drop. The drop of the contested sign will be perceived as a drop of a liquid, for example of cosmetic or medicated, being a commonplace device used in trade in relation to liquid cosmetic and medicated preparations. The public understands the meaning of the element and will not pay as much attention to this element as to the others more distinctive elements of the sign. Consequently, the impact of this element is limited when assessing the likelihood of confusion between the marks at issue with regard to these goods.
Contrary to the opponent’s argument, the signs have no elements that could be considered more dominant (visually eye-catching).
Visually, the signs coincide in the letters ‘HEMOS*N*’, although they are depicted in different ways. The signs differ in the last letter ‘S’ of the contested sign and in their sixth letters: ‘A’ in the earlier mark versus ‘E’ in the contested sign. They also differ in the additional verbal element of the earlier mark, ‘CINFA’, and in the additional figurative element of the contested sign. 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). Therefore, the signs are visually similar to a low degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛HEMOS*N*’, present in both signs. The pronunciation differs in the sound of their sixth letters, namely ‘A’ in the earlier mark versus ‘E’ in the contested sign, and in the letters ‛CINFA’ of the earlier sign, which have no counterparts in the contested mark. Therefore, the signs are aurally similar to an average degree at most.
Conceptually, neither of the signs has a meaning for the part of the public that does not perceive the meaning of either the component ‘HEMO’, present in both signs, or the figurative element of the contested sign. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for this part of the public. However, a part of the public will perceive the meaning of the figurative element of the contested sign; the other sign (the earlier mark) has no meaning for this public. Since one of the signs 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.
- 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 part of the public that does not perceive the meaning of the component ‘HEMO’ in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- 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, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
The goods assumed to be identical target the public at large as well as professional consumers with specific professional knowledge or expertise whose degree of attention will vary from average to high.
As concluded above, the conceptual aspect is neutral for part of the public and for the remaining public the signs are not conceptually similar, from the visual point of view, the signs are similar, although only to a low degree, whereas, from an aural point of view, they are similar to an average degree at most. The distinctiveness of the earlier mark must be seen as normal.
The beginnings of the signs are identical. The argument about the importance of the beginning of signs cannot hold true in all cases and does not undermine the principle that the assessment of a case must take account of the overall impression created by the marks, since the average consumer normally perceives a trade mark as a whole and does not proceed to analyse its various details.
In the present case, the commonalities between the marks are limited to the first letters of the earlier mark, which, as a whole, consist of additional distinctive elements that are neither secondary in the visual impression nor to be disregarded. Therefore, the assessment of the likelihood of confusion is not to be limited to the first element of the earlier mark and the contested sign, as suggested by the opponent, but shall be based on the earlier mark, as a whole.
The earlier mark consists of two verbal elements and the contested sign is a one-word mark that, furthermore, contains a figurative element. Although the opponent is correct that, in general, the verbal components of a complex mark are of more importance when assessing the likelihood of confusion, the figurative aspects of the contested sign cannot be disregarded and they contribute to the different overall impressions created by the conflicting signs.
The opponent refers to previous decisions of the Office to support its arguments (20/06/2013, B 1 8818 23, ALERCINA PLUS / ALCINA; 25/01/2012, B 1 809 881, OPTIVIT / OFTYVIT; 23/05/2000, B 86 944, CESAE / CESA; 13/12/2006, B 1 633 703, SMART-TURN / SMART; 22/06/2006, B 726 234, DISAYT / DISAIN; 16/06/2016, B 2 518 655, HEMOSAN CINFA / HEMORSAN). However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.
This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).
Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.
In the present case, the previous cases referred to by the opponent are not relevant to the present proceedings, since the cases mentioned are not sufficiently comparable to the present case to weigh significantly in favour of an identical outcome. In those cases, either the signs were found to be more similar visually/aurally or the goods disputed were not in Class 5 and the degree of attention of the public was not high.
The Opposition Division finds that the differences between the signs are sufficient to differentiate the marks, especially bearing in mind that the first elements of the earlier mark and the contested sign are not identical but have differences (the letters ‘AN’ in the earlier mark versus the letters ‘ENS’ in the contested sign) and also bearing in mind that the degree of attention of the relevant public varies from average to high.
Regarding the above, there are no reasons to consider that the consumer would establish a link between the earlier mark and the contested mark and would think that the relevant goods bearing the marks are offered by the same undertaking or economically linked undertakings. Even though the relevant goods were assumed to be identical, the differences between the marks analysed above safely counteract the commonalities and are sufficient to exclude likelihood of confusion.
Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
This absence of a likelihood of confusion equally applies to the part of the public for which the element ‘HEMO’ is at least weak. This is because, as a result of the non-distinctive/weak character of that coinciding component, that part of the public will perceive the signs as being even less similar.
The opponent has also based its opposition on Spanish trade mark registration No 2 979 977 for the word mark ‘HEMOSAN CINFA’.
This mark and the relevant goods are the same as those compared above. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those 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 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
Anna BAKALARZ | Alexandra APOSTOLAKIS | Pedro JURADO MONTEJANO |
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.