KERVITA | Decision 2735721

Date Published: Sep 25, 2017

OPPOSITION No B 2 735 721

Italfarmaco, S.A., Calle San Rafael, 3, Polígono Industrial Alcobendas, 28108 Alcobendas (Madrid), Spain (opponent), represented by J. Pereira da Cruz, S.A., Rua Victor Cordon, 14, 1249-103 Lisboa, Portugal (professional representative)

a g a i n s t

Sigma-Tau Rare Disease Limited, 21 Holborn Viaduct, London EC1A 2DY, United Kingdom (applicant), represented by Lewis Silkin LLP, 5 Chancery Lane, Clifford's Inn, London  EC4A 1BL, United Kingdom (professional representative).

On 05/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 735 721 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 and services of European Union trade mark application No 15 214 431. The opposition is based on Portuguese trade mark registration No 346 242. 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.

1. The goods and services

The goods on which the opposition is based are the following:

Class 5: Pharmaceutical preparations, chemico-pharmaceutical preparations, pharmaceutical products, chemico-pharmaceutical products and drugs for humans and animals.

The contested goods and services are the following:

Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

Class 42: Research services; medical laboratory and pathological research services; biological research, clinical research and medical research; medical laboratory services; advising upon, organising and undertaking clinical trials; conducting of research and development in the field of medical equipment, apparatus and instruments; design of laboratory information and management support systems; provision and implementation of laboratory information; support services for medical software systems; research into rare diseases; consultancy relating to quality control; quality control for others; scientific research in the field of genetics and genetic engineering; design services in relation to the aforesaid.

Class 44: Medical services; human and veterinary pathology services including professional consultation services provided by clinical pathologists to the public, veterinarians and health professionals, information services relating to human and veterinary pathology and related disciplines including haematology, serology, biochemistry, microbiology, cytology, histology, histopathology; health screening services; medical services for the diagnosis and treatment of rare diseases of the human body; health and medical information services; medical health and fitness assessment services; advisory, counselling and professional consultancy services, all relating to medicine and pathology; web based medical information services, including the provision of medical test results and supporting information; blood transfusion services; human and veterinary pathology services.

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.

Contested goods in Class 5

The contested Pharmaceutical preparations are identically contained in both lists of goods.

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 preparations are included in the broader term pharmaceutical preparations. They are identical.

The contested sanitary preparations for medical purposes which are special hygienic substances prepared to treat or prevent a disease, are similar to a high degree to the opponent’s goods in Class 5 as they have the same purpose. They can coincide in producer, end user and distribution channels.

The contested plasters (adhesive strips of material, usually medicated for dressing a cut or wound) and materials for dressings (substances from which a thing is made to cover a wound) are similar to the opponent’s goods as they have the same purpose. They can coincide in end user and distribution channels.

The contested material for stopping teeth, dental wax which are all items related to the care of the teeth are similar to a low degree to the opponent’s goods as they can coincide in end user and distribution channels.

The contested preparations for destroying vermin, are used to get rid of or control small harmful or annoying insects or animals, and are similar to the opponent’s goods as they have the same purpose. They can coincide in distribution channels. Furthermore they are complementary.

The contested fungicide are substances used to destroy fungi, which are plants without leaves, flowers, or roots that reproduce by spores, including moulds, yeasts and mushrooms. They are similar to a low degree to the opponent’s goods as they have the same purpose. They can coincide in distribution channels. Furthermore they are complementary.

The contested herbicides are used to kill unwanted vegetation and they are dissimilar to the opponent’s goods in Class 5. Such products are predominantly chemical based, and their nature and purpose are clearly different from those products protected by the earlier mark. They also have different distribution channels and targeted consumers.

The contested disinfectants ('an agent that destroys or inhibits the activity of microorganisms that cause disease') are similar to the opponent’s goods as they have the same purpose. They can coincide in producer, end user and distribution channels.

The contested food for babies (specially prepared nutritious substance for babies) are similar to a low degree to the opponent’s goods as they have the same purpose. Also, they can coincide in distribution channels.

The contested dietetic food and substances adapted for medical or veterinary use, dietary supplements for humans and animals are substances prepared for special dietary requirements with the purpose of treating or preventing a disease for human beings or animals. Bearing this in mind, their purpose are similar to those of pharmaceutical preparations (a substance or combination of substances for treating or preventing disease in people or animals) insofar as they are all chemical compounds used to treat or prevent diseases. The end users and distribution channels coincide. For the above reasons, these goods are similar.

Contested services in Class 42

The contested services are dissimilar to the opponent’s goods in Class 5. Although pharmaceutical companies are heavily involved in Class 42 services, including research and development activities, they usually do not provide such services to third parties. Consequently, services covered by Class 42 are considered dissimilar to the opponent’s Class 5 goods.

Contested services in Class 44

The contested services in Class 44 are dissimilar to the opponent’s goods in Class 5.

Even though a certain link cannot be denied between the contested services and the opponent’s Class 5 goods due to the common goal of treating diseases, the differences in nature and especially in the usual origin clearly outweigh any similarities. The relevant public does not expect a doctor to develop and market a drug. Also, the goods and services at issue have different distribution channels.

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 goods found to be identical and similar to various degrees are directed at the public at large and at medical professionals. The degree of attention of the relevant public will vary from average to high.

3. The signs

FERVIT	KERVITA
Earlier trade mark	Contested sign

The relevant territory is Portugal.

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 at issue are both word marks; the earlier sign consists of the word ‘FERVIT’ and the contested sign of the word ‘KERVITA’.

The elements ‘VIT’ of the earlier mark and ‘VITA’ of the contested sign will be associated with ‘vitamin’, vitality (in Portuguese ‘vitalidade’) or ‘vital’. Bearing in mind that the earlier mark covers pharmaceutical products in Class 5, it is considered that this element will have a limited distinctive character, as it will be perceived by the relevant public as referring to a characteristic or a quality of the goods. The contested sign covers in Class 5 Pharmaceutical and veterinary preparations; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals. It is considered that the part ‘VITA’ has a limited distinctive character for those goods.

Visually, the signs are similar to the extent that they coincide in the letters ‘*E-R-V-I-T’. On the other hand, they differ in their first letters, ‘F’, of the earlier mark and ‘K’ of the contested sign and in the additional last letter ‘A’, of the contested sign. As stated above, the parts, ‘VIT’/ ‘VITA’ of the signs are considered to have a limited distinctive character for the goods specified above in Class 5.

Therefore, the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters /*E-R-V-I-T/, present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the first letters of the signs, ‛F’, of the earlier mark and ‘K’ of the contested sign and in the sound of the last letter, ‘A’, of the contested sign. The signs differ in the vowel sequence. Also, the rhythm and intonation of the marks are different.

Therefore, the signs are aurally similar to a low degree.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the elements ‘VIT’/’VITA’, of the signs, will be associated with the same meanings as explained above. These elements are not sufficient to establish conceptual similarity. Whichever meaning will be perceived, these elements are considered to have a limited distinctive character for the goods specified above.

Therefore, the signs are conceptually similar to a low degree.

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.

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, despite the presence of a weak element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

In the present case, the goods and services are partly identical, partly similar to various degrees and partly dissimilar.

The marks display a certain similarity, given that they have five letters (E-R-V-I-T) in common. However, the first letters of the marks are clearly different, both visually and phonetically (‘K’ as opposed to ‘F’). The consumer normally attaches more importance to the first part of a word 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. It must be pointed out that given that the letter ‘K’ is not commonly used in the Portuguese orthography, it will attract the consumer’s attention within the contested sign.

The sounds of the letters ‘K’ and ‘F’ placed at the beginning of the signs have an overriding impact. Furthermore, the rhythm and intonation of the marks are clearly dissimilar. The signs differ also in the additional letter, ‘A’, in the contested sign which has no counterpart in the earlier mark and it will add to distinguish the signs.

Additionally, although the coinciding part ‘VIT’ will evoke the same concepts, this element is considered to have a limited distinctive character. The attention of the relevant public will be attracted by the remaining verbal elements.

Taking into account all the above, the Opposition Division is of the opinion that, in the case at issue, the initial parts of the marks play an important differentiating role in the overall impressions of the signs. Further, it has to be taken into account that the level of attention of the relevant consumer is at least average, since consumers take health seriously and, thus, will be careful when selecting such goods, even if purchasing them off the shelf. Clearly, over-the-counter products dispensed by pharmacists on the basis of prescriptions made by doctors lead to a high degree of attention.

Considering all the above, there is no likelihood of confusion on the part of the 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

Liliya YORDANOVA

Marzena MACIAK

Ewelina SLIWINSKA

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.