INDABRU | Decision 2354242
Date Published: Oct 1, 2017
OPPOSITION No B 2 354 242
Pro.Med.CS Praha a.s., Telčská 1, Praha 4, Czech Republic (opponent), represented by Klára Labalestra, Na Poříčí 12, 11000 Praha 1, Czech Republic, (professional representative)
a g a i n s t
Brupharmexport, sprl, Rue de la Grotte 14, 1020 Bruxelles, Belgium, (holder), represented by Cabinet Bede S.A., Boulevard General Wahis 15, 1030 Bruxelles, Belgium (professional representative).
On 07/06/2017, the Opposition Division takes the following
DECISION:
- Opposition No B 2 354 242 is partially upheld, namely for the following contested goods:
Class 5: Pharmaceutical and veterinary products; sanitary products for medical purposes; dietetic food and substances for medical or veterinary use; food for babies; food supplements for humans and animals; plasters; materials for dressings; disinfectants; products for destroying vermin.
2. International registration No 1 170 659 is refused protection in respect of the European Union for all the above goods. It may proceed for the remaining goods.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against all the goods of international registration designating the European Union No 1 170 659. The opposition is based on international trade mark registration No 622 491 designating, inter alia, Bulgaria, Poland, Romania and Slovenia, Czech trade mark registration No 172 138 and Slovak trade mark registration No 175 280. 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 international trade mark registration No 622 491 designating, inter alia, Bulgaria, Poland, Romania and Slovenia, and Slovak trade mark registration No 175 280.
- The goods
The goods on which the opposition is based are the following:
International trade mark registration No 622 491:
Class 3: Cosmetics, including therapeutic cosmetic products.
Class 5: Medicines (medicated substances), medicines for human and veterinary use, pharmaceuticals.
Slovak trade mark registration No 175 280:
Class 3: Cosmetic products, including therapeutic cosmetics.
Class 5: Medicinals (substance), medicinal and veterinary preparations for humane, preparations for rational and artificial nutrition.
The contested goods are the following:
Class 5: Pharmaceutical and veterinary products; sanitary products for medical purposes; dietetic food and substances for medical or veterinary use; food for babies; food supplements for humans and animals; plasters; materials for dressings; material for dental fillings and dental impressions; disinfectants; products for destroying vermin; fungicides; herbicides.
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.
Pharmaceutical products are identically contained in both lists of goods (including synonyms).
A pharmaceutical preparation refers to any kind of medicine, that is, a substance or combination of substances for treating or preventing disease in people or animals. Therefore, the contested veterinary products are included in the broader term pharmaceuticals of the opponent. They are identical.
The contested sanitary products for medical purposes are highly similar to the opponent’s pharmaceuticals, since these goods have the same purpose (i.e. both have a medical purpose), are sold through the same distribution channels, target same relevant publics and are produced by the same companies.
The contested dietetic food and substances for medical or veterinary use and food supplements for humans and animals are substances prepared for special dietary requirements, with the purpose of treating or preventing disease. Bearing this in mind, their purpose is similar to that of the opponent’s pharmaceuticals (substances used to treat disease in people or animals) insofar as they are used to improve a patient’s (or an animal’s) medical condition. The relevant public coincides and the goods generally have the same distribution channels. Therefore, these goods are considered similar.
The contested plasters; materials for dressings are similar to the opponent’s pharmaceuticals, since they are both used for medical purposes (e.g. to treat bleeding wounds), they target same relevant publics and are distributed through the same channels.
The contested disinfectants are similar to the opponent’s pharmaceuticals, since these goods have the same purpose (both are used to prevent diseases or to, for example, clean wounds), they target same relevant publics, are distributed through the same channels and are produced by the same companies.
The contested products for destroying vermin are, inter alia, used to prevent the risks to human or animal health that can be posed by the species whose elimination is sought. As such, these goods and the opponent’s pharmaceuticals may have the same general medical purpose of improving health. In addition, the use of the contested preparations may be complementary to that of the opponent’s pharmaceutical products, which may be used to treat ailments caused by the presence of, or contact with, vermin. Furthermore, the goods under comparison may be sold through the same distribution channels. Therefore, they are similar.
The contested food for babies are similar to the opponent’s preparations for rational and artificial nutrition in Class 5. These goods coincide in purpose (feeding and improving the baby’s health through nutrition versus improving the patient’s health with artificial nutrition); they can be produced by the same producers and can be sold through same distribution channels.
The contested material for dental fillings and dental impressions are similar to a low degree to the opponent’s pharmaceuticals, since they coincide in relevant publics and distribution channels.
The contested fungicides are similar to a low degree to the opponent’s pharmaceuticals. These goods coincide in purpose, since fungicides can be used to fight fungal infections in animals and pharmaceuticals are used to treat diseases in both people and animals. Furthermore, these goods are complementary and are sold through the same distribution channels.
The contested herbicides are chemical substances used to kill or control unwanted plants. Therefore, the nature, purpose and method of use is different from the opponent ‘s cosmetics, including therapeutic cosmetic products in Class 3, which are, for example, used for vanity purposes and to prevent dry skin. Such goods in Classes 3 and 5 are neither complementary or in competition and are dissimilar.
Moreover, the contested herbicides have a different nature, purpose and method of use than the opponent’s goods in Class 5. The contested goods are used to control unwanted plants, while the opponent’s goods are mainly pharmaceuticals and medicines, used to treat or prevent diseases in human beings and animals, but also artificial nutrition for medical purposes. Furthermore, the contested herbicides are not complementary or in competition with the opponent’s goods in Class 5. Therefore, these conflicting goods are dissimilar.
- 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 to various degrees are directed at the public at large and at a more specialised public with specific knowledge and expertise, such as medical professionals and pharmacists.
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, including food for babies and nutritional supplements (10/02/2015, T-368/15, EU:T:2015:81, § 46).
- The signs
INDAP | INDABRU |
Earlier trade marks | Contested sign |
The relevant territories are Bulgaria, Poland, Romania and Slovenia (the earlier international registration) and Slovakia (the earlier Slovak national mark).
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 marks are word marks.
Neither of the signs, that is, ‘INDAP’ (the earlier marks) and ‘INDABRU’ (the contested sign), has a known meaning for the relevant public in the relevant territories. Therefore, both signs are distinctive.
Conceptually, for the reasons explained above, neither of the signs have 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, the signs coincide in the string of letters ‘INDA***’ and differ in that their following letter(s) are different (‘P’ in the earlier mark and ‘BRU’ in the contested sign), and that they contain a different amount of letters (five in the earlier mark and seven in the contested sign). However, account is taken of the fact that the signs’ four and initial letters are identical. The Opposition Division makes in this regard reference to that 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. Bearing this in mind, the signs are visually similar to an average degree overall.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the signs coincide in the pronunciation of their first four letters. Admittedly, the signs differ in length and in the amount of syllables (i.e. 5 letters and 2 syllables in the earlier mark and 7 letters and 3 syllables in the contested sign). Nevertheless, the earlier mark’s final letter (‘P) will be pronounced similarly to the letter ‘B’ of the contested sign, which is the first letter in the contested sign to follow the signs’ four initial and identical letters (‘INDA’). Also bearing in mind that the signs’ coinciding letters will be pronounced first in both signs, the signs are aurally similar to an average degree.
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 marks
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 marks are particularly distinctive by virtue of intensive use or reputation.
Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal.
- Global assessment, other arguments and conclusion
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). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 16).
Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.
Evaluating likelihood of confusion also implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
In the present case, the goods are partly identical, partly similar to various degrees and partly dissimilar. The signs are visually and aurally similar, while the conceptual aspect will not influence on the comparison of the signs. Therefore, the consumers must rely on their visual and aural perception of the signs when comparing them. Account is 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 need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).
Considering all the above, and also taking into consideration the principle of interdependence (according to which a higher degree of similarity between the signs outweighs a lower degree of similarity between the goods or services and vice versa), the Opposition Division finds that there is a likelihood of confusion on the part of the Bulgarian, Polish, Romanian and Slovenian parts of the public for the contested pharmaceutical and veterinary products; sanitary products for medical purposes; dietetic food and substances for medical or veterinary use; food supplements for humans and animals; plasters; materials for dressings; disinfectants; products for destroying vermin and on the part of the Slovak part of the public for the contested food for babies. Therefore, the opposition is partly well-founded on the basis of the opponent’s international trade mark registration and Slovak trade mark registration.
It follows from the above that the contested trade mark must be rejected for the goods found to be identical or at least similar to those of the earlier trade marks.
The opposition is not successful insofar as the goods that are similar to a low degree are concerned. For these goods the signs’ similarities cannot counteract their dissimilarities and the principle of interdependence (as referred to above) does not apply. The fact that the relevant public is displaying an attention that is higher than average in the present case, makes the average consumer more able to distinguish between the signs, and that is especially the case for goods found to be similar to a low degree.
The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.
The opponent has also based the opposition on Czech trade mark registration No 172 138, the word mark ‘INDAP’, registered for medications (substances), curative human preparations in Class 5.
As Opposition No B 2 354 242 is partially upheld for the contested goods found to be at least similar, it remains necessary to examine the likelihood of confusion only in relation to the contested goods that were found similar to a low degree and dissimilar.
The opponent’s Czech trade mark registration is identical to the opponent’s two word marks compared above and covers the same or a narrower scope of goods (as compared above). Therefore, the outcome cannot be different with respect to the goods for which the opposition has already been rejected, that is, for the goods found to be similar to a low degree and dissimilar to the contested sign. Therefore, 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. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.
Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
Adriana VAN ROODEN | Christian RUUD | Boyana NAYDENOVA |
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.