medilab | Decision 2392978 - ITALFARMACO, S.A. v. MEDILAB Sp. z o.o.

Date Published: Oct 1, 2017

OPPOSITION No B 2 392 978

Italfarmako, S.A., Calle San Rafael, 3, Poligono Industrial Alcobendas, 28108 Alcobendas (Madrid), Spain (opponent), represented by Isern Patentes y Marcas, S.L., Paseo de la Castellana, 115 - 1º Dcha., 28046 Madrid, Spain (professional representative)

a g a i n s t

Medilab Sp. z o.o., ul. Niedźwiedzia 60, 15531 Białystok, Poland (applicant), represented by Biuro Patentów Licencji I Znaków Towarowych, ul. Wrzeciono 1A/134, 01-951 Warszawa, Poland (professional representative).

On 28/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 392 978 is partially upheld, namely for the following contested goods and services:

Class 3:        Bleaching preparations; cleaning preparations; soaps; essential oils, cosmetics, hair lotions; dentifrices.

Class 5:        Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

Class 35:        Operating warehouses, shops and points of sale for the following goods: chemicals used in industry and science, bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, pharmaceutical and veterinary preparations, sanitary preparations for medical purposes, plasters, materials for dressings, material for stopping teeth, dental wax, disinfectants, preparations for destroying vermin, fungicides, herbicides, scientific, weighing, measuring, checking (supervision), life-saving and teaching apparatus and instruments, surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth, orthopaedic articles, suture materials, apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, textiles and textile goods, textile goods and hospital bedding, bed covers, table covers.

2.        European Union trade mark application No 12 701 694 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 12 701 694. The opposition is based on Spanish trade mark registration No 2 573 906.  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 and services on which the opposition is based are the following:

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

Class 35:        Import, export and retail sale of pharmaceutical and veterinary products, sanitary preparations for medical purposes, dietetic substances adapted for medical use.

Class 39:        Distribution, transport, storage and packaging of pharmaceutical and veterinary products, sanitary preparations for medical purposes, dietetic substances and food supplements for medical use.

The contested goods and services are the following:

Class 1:        Chemicals used in industry, science.

Class 3:        Bleaching preparations and other substances for laundry use; Cleaning, polishing, scouring and abrasive preparations; Soaps; Perfumery, essential oils, cosmetics, hair lotions; Dentifrices.

Class 5:        Pharmaceutical and veterinary preparations; Sanitary preparations for medical purposes; Plasters, materials for dressings; Material for stopping teeth, dental wax; Disinfectants; Preparations for destroying vermin; Fungicides, herbicides.

Class 9:        Apparatus and equipment: scientific, Weighing, Measuring, Checking (supervision), Life-saving, Teaching.

Class 11:        Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

Class 24:        Textiles and textile goods, fabrics, not included in other classes; Textile goods and Hospital bedding; Bed covers; Table covers.

Class 35:        Operating warehouses, shops and points of sale for the following goods: chemicals used in industry and science, bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, pharmaceutical and veterinary preparations, sanitary preparations for medical purposes, plasters, materials for dressings, material for stopping teeth, dental wax, disinfectants, preparations for destroying vermin, fungicides, herbicides, scientific, weighing, measuring, checking (supervision), life-saving and teaching apparatus and instruments, surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth, orthopaedic articles, suture materials, apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, textiles and textile goods, textile goods and hospital bedding, bed covers, table covers; Advertising; Business management; Business administration; Office functions.

Class 41:        Education; Providing of training; Entertainment; Sporting and cultural activities.

Class 42:        Scientific and technological services and research and design relating thereto; Industrial analysis and research services; Design and development of computer hardware and software.

Class 44:        Medical services; Veterinary services; Hygienic care for human beings.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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 1

Although major chemical companies are usually involved in the production of all kinds of basic chemicals, speciality chemicals and life science products, including pharmaceuticals and pesticides, as well as consumer products, such as cleaning preparations and cosmetics, the mere fact that their nature coincides — as all of them can be broadly classified as chemical products — is not sufficient to find them similar. Special attention must be drawn to the specific purpose of these chemicals, as well as to their public and distribution channel. What has been said above as to the relation between raw materials, semi-processed and finished products particularly applies to these products. Consequently, although goods in Class 3 and Class 5 are usually combinations of various chemicals, they are in principle not considered similar to goods included in Class 1. Their purpose as a finished product usually differs from goods in Class 1, which are mainly in their raw, unfinished state and not yet mixed with other chemicals and inert carriers into a final product. The finished products in Class 3 and Class 5 usually also target a different public and do not share the same distribution channels.

Therefore, the contested chemicals used in industry, science are considered dissimilar to all the opponent’s goods and services, as they belong to different areas of activity, are of different nature, have different purposes, target different publics and have different distribution channels.

Contested goods in Class 3

The contested cleaning preparations are similar to the opponent’s preparations for destroying vermin and also to the fungicides. The have the same nature, purpose and distribution channels.

The contested bleaching preparations are similar to the opponent’s disinfectants as they coincide in nature, purpose, distribution channels, relevant public and producers.

Soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices are products for the embellishment, scenting or cleaning of the human body. 

The contested cosmetics; dentifrices are similar to the opponent’s pharmaceutical preparations. They may have the same purpose, producers, distribution channels and relevant public.

The contested soaps are similar to a low degree to the opponent’s disinfectants. They have the same relevant public and distribution channels.

The contested hair lotions are similar to a low degree to the opponent’s pharmaceutical preparations. They have the same purpose, producers, distribution channels and relevant public.

The contested essential oils are similar to a low degree to the opponent’s disinfectants. They may coincide in purpose, methods of use and relevant public.

The contested other substances for laundry use; polishing, scouring and abrasive preparations; perfumery are not directly related to any of the opponent’s goods and services. They belong to a different area of activity, are of different nature and have different initial purposes. Consequently, the Opposition Division consider them dissimilar.

Contested goods in Class 5

Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides are identically contained in both lists of goods and services.

Contested services in Class 35

Retail is commonly defined as the action or business of selling goods or commodities in relatively small quantities for use or consumption rather than for resale (as opposed to wholesale, which is the sale of commodities in quantity, usually for resale). Retail services allow consumers to satisfy different shopping needs in one place and are usually directed at the general consumer. They can take place in a fixed location, such as a department store, supermarket, boutique or kiosk, or in the form of non-shop retailing, such as through the internet, by catalogue or mail order. Therefore, the contested operating warehouses, shops and points of sale, etc. could include retail services (as well as wholesale).

Thus, the contested operating warehouses, shops and points of sale for the following goods: pharmaceutical and veterinary preparations, sanitary preparations for medical purposes include, as a broader category, the opponent’s retail sale of pharmaceutical and veterinary products, sanitary preparations for medical purposes. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

Retail services relating to specific goods are considered to be similar to retail services relating to other specific goods independently of whether or not there is similarity between the goods in question. The services under comparison share the same nature as both are retail services, have the same purpose of allowing consumers to conveniently satisfy different shopping needs, and have the same method of use. Furthermore, depending on whether the goods in question are commonly retailed in the same outlets, they may coincide in relevant public and distribution channels, in which case they must be considered highly similar.

Therefore, the contested operating warehouses, shops and points of sale for the following goods: chemicals used in industry and science, bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, plasters, materials for dressings, material for stopping teeth, dental wax, disinfectants, preparations for destroying vermin, fungicides, herbicides, scientific, weighing, measuring, checking (supervision), life-saving and teaching apparatus and instruments, surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth, orthopaedic articles, suture materials, apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, textiles and textile goods, textile goods and hospital bedding, bed covers, table covers are considered similar to the opponent’s retail sale of pharmaceutical and veterinary products, sanitary preparations for medical purposes, dietetic substances adapted for medical use. The services at issue have the same nature since both are retail services, the same purpose of allowing consumers to conveniently satisfy different shopping needs, and the same method of use. Furthermore, they partly coincide in relevant public and distribution channels.

The contested advertising; business management; business administration; office functions are not directly related to any of the opponent’s goods or services. They belong to different areas of activity, are of different natures and have different initial purposes. Therefore, they are dissimilar.

Contested services in Class 44

The contested medical services; veterinary services; hygienic care for human beings are dissimilar to the opponent’s goods and services, including the pharmaceutical preparations. Even though a link cannot be denied 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.

Contested goods and services in Class 9, 11, 24, 41 and 42

The contested goods and services in these classes are not directly related to any of the opponent’s goods or services. They belong to different areas of activity, are of different natures and have different initial purposes. Consequently, the Opposition Division consider them dissimilar.

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 and services found to be identical or similar to different degrees are directed at the public at large and at specialists with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

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.

3. The signs

MEDILAB
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 earlier mark is a word mark, ‘MEDILAB’, which has no meaning as such for the Spanish public.

The contested mark is a figurative mark, consisting of the stylised letters ‘MED’ and ‘LAB’ and in between these, a figurative element consisting of what looks like a pedestal with a large orb on top of it, all in blue, with a white shade in the orb. This element is considered to be rather weak, as referring to the quality of the relevant goods and services. However, at least part of the public will easily perceive the letter ‘I’ out of this figurative element in the centre of this word. The rest of the public will perceive only the elements ‘MED’ and ‘LAB’ in the contested mark.

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, 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).

The Spanish-speaking public will see the word ‘MEDILAB’ of the earlier mark and the verbal element ‘MED(I)LAB’ in the contested sign as being made up of two meaningful elements, ‘MED’ or ‘MEDI’ and ‘LAB’. In this respect, the word ‘MED´ or MEDI’ will both be perceived as relating to the medical purpose of the goods and services or as a general reference to the medical field, as words like, for example,  médico, médica, medicina, which means doctor, care, treatment or medicine in Spanish (information extracted from Collins English-Spanish Dictionary at https://www.collinsdictionary.com/dictionary/english-spanish/medical).

The element ‘LAB’ will be perceived as referring to a shortened form of ‘laboratorio’ (laboratory) by the Spanish public (information extracted from Collins English-Spanish Dictionary at https://www.collinsdictionary.com/dictionary/english-spanish/laboratory. Since the relevant goods are often produced and/or tested in laboratories, it is considered that this element is weak for these goods.

Taken as a whole, the combination of these two elements will be perceived as meaning ‘medical laboratory’ or similar.

Therefore, bearing in mind that the relevant goods and services are medical or pharmaceutical goods and services related to these, the earlier mark as a whole is allusive for some of the relevant goods and services, namely for pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides; retail sale of pharmaceutical and veterinary products, sanitary preparations for medical purposes, dietetic substances adapted for medical use.

The contested mark - whether perceived as ‘MEDILAB’ or ‘MED*LAB’ - is also allusive for some of the goods and services, namely pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides, and weak for the services related to goods with pharmaceutical or medical characteristics; Operating warehouses, shops and points of sale for the following goods: pharmaceutical and veterinary preparations, sanitary preparations for medical purposes, plasters, materials for dressings, material for stopping teeth, dental wax, disinfectants, preparations for destroying vermin, fungicides, herbicides, surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth, orthopaedic articles, suture materials, medical services; veterinary services; hygienic care for human beings.  

The contested sign has no elements that could be considered clearly more dominant than other elements.

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).

Visually, the signs coincide in the verbal elements ‘MED’ and ‘LAB’, which are easily perceived also in the contested mark. For the part of the public that perceives the figurative element in the centre of the contested mark as the letter ‘I’, the marks also coincide in this letter. The verbal elements are weaker than average for some of the goods and services, as described above. The signs differ in the stylisation of the contested mark, including the figurative element in the centre.

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛MED’ and ‘LAB’ for part of the public, and in the sound of the letters ‘MEDILAB’, constituting the whole earlier mark, for the part of the public that perceives the figurative element in the centre of the contested mark as the letter ‘I’. These coinciding elements are weaker than average for some of the goods and services, as described above. The pronunciation differs in the sound of the letter ‘I’ of the earlier sign for the part of the public that do not perceive this letter in the contested mark.

Therefore, the signs are aurally identical for the part of the public that pronounce the contested sign as ‘MEDILAB’, and aurally highly similar for the part of the public that does not perceive and pronounce the letter ‘I’ in the contested mark.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the partly weak elements ‘MED(I)’ and ‘LAB’ included in both signs will be associated with the meaning explained above. They differ in the concept of the pedestal. However, the signs are conceptually highly similar.

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as lower than average for some of the goods and services in question, namely pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides; in Class 5, retail sale of pharmaceutical and veterinary products, sanitary preparations for medical purposes, dietetic substances adapted for medical use, in Class 35.

5. 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. 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).

As concluded above, the contested goods and services found to be identical, similar (to different degrees) or dissimilar to the opponent’s goods and services. They target the public at large and specialists with specific professional knowledge or expertise. The degree of attention varies from average to high.

The earlier trade mark has a lower than average degree of inherent distinctiveness for some of the relevant goods and services, as explained above in section d) of this decision.

Overall, the conflicting signs are visually, aurally and conceptually similar, to a high degree.

The finding that part of a mark has limited distinctive character in respect of some of the goods or services does not preclude a finding that there is a likelihood of confusion. As a whole, the earlier mark has a lower than average degree of distinctiveness for some of the goods and services. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods and services (13/12/2007, T-134/06, ‘Pagesjaunes.com’, EU:T:2007:387, § 70).

It should be noted that consumers tend to remember the similarities rather than the dissimilarities between signs. In addition, account should also be 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 Meyer, EU:C:1999:323).

Based on the principle of imperfect recollection, as well as the principle of interdependence between the relevant factors, that is, that a lesser degree of similarity between the signs may be offset by a greater degree of similarity between the goods and services and vice versa, and given the identity or similarity between the goods and services in question, it is considered that the established similarities between the signs are sufficient to cause the public to believe that that the identical or similar goods come from the same undertaking or economically linked undertakings.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

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, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s Spanish trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar, even to a low degree, to those of the earlier trade mark. The high similarity of the signs outweighs the low similarity of these goods/services.

The rest of the contested goods and services 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 and services cannot be successful.

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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Irina SOTIROVA

Lena FRANKENBERG GLANTZ

Janja FELC

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.