OKTASKIN | Decision 2760984
Date Published: Sep 22, 2017
OPPOSITION No B 2 760 984
Dompé Farmaceutici S.p.A., Via S. Martino della Battaglia, 12, 20122 Milano, Italy (opponent), represented by Dragotti & Associati S.R.L., Via Nino Bixio 7, 20129 Milano, Italy (professional representative)
a g a i n s t
Medi-Sept Sp. z o.o., Konopnica 159 C, 21-030 Motycz, Poland (applicant), represented by Łukasz Jakub Czernicki, ul. Parkowa 21/6, 51-616 Wrocław, Poland (professional representative).
On 12/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 760 984 is partially upheld, namely for the following contested goods:
Class 5: Pharmaceuticals, medical and veterinary preparations, sanitary preparations for medical purposes, disinfectants in the form of gels and fluids, preparations for destroying vermin, fungicides, antiseptics, germicides, detergents for medical purposes; Medicines for use in treating skin diseases, wound treatment preparations, disinfectants, antiseptics having medical and/or prophylactic properties, chemicals for medical purposes having medical and/or prophylactic properties, chemicals for healthcare purposes.
2. European Union trade mark application No 15 257 851 is rejected for all the above goods. It may proceed for the remaining goods and services.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against some of the goods of European Union trade mark application No 15 257 851, ‘OKTASKIN’, namely against all the goods in Class 5. The opposition is based on international trade mark registration No 1 257 987, ‘OKITASK’, designating the European Union and European Union trade mark No 1 375 443 ‘OKI’. 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 1 257 987 designating the European Union.
- The goods
The goods on which the opposition is based are the following:
Class 5: Pharmaceutical preparations; anti-inflammatory products, in particular non-steroidal pharmaceutical products.
The contested goods are the following:
Class 5: Pharmaceuticals, medical and veterinary preparations, sanitary preparations for medical purposes, disinfectants in the form of gels and fluids, preparations for destroying vermin, fungicides, herbicides, antiseptics, germicides, detergents for medical purposes; medicines for use in treating skin diseases, wound treatment preparations, disinfectants, antiseptics having medical and/or prophylactic properties, chemicals for medical purposes having medical and/or prophylactic properties, chemicals for healthcare purposes.
An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.
The term ‘in particular’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
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.
The contested pharmaceuticals, medical and veterinary preparations; medicines for use in treating skin diseases are identically listed in the opponent’s list of goods or included in the broad category of the opponent’s pharmaceutical preparations, which refer to any kind of medicine, that is, a substance or combination of substances for treating or preventing disease in people or animals. Therefore, veterinary preparations are also included in the broader term pharmaceutical preparations. For this reason, they are identical.
The contested sanitary preparations for medical purposes are similar to a high degree to the opponent’s pharmaceutical preparations, as they have the same purpose and can coincide in producer, relevant public and distribution channels.
The contested disinfectants in the form of gels and fluids, antiseptics, germicides, detergents for medical purposes; wound treatment preparations, disinfectants, antiseptics having medical and/or prophylactic properties, chemicals for medical purposes having medical and/or prophylactic properties, chemicals for healthcare purposes are agents that destroy or inhibit the activity of microorganisms that cause disease and antimicrobial substances to reduce the possibility of infection, sepsis or putrefaction. They are similar to the opponent’s pharmaceutical preparations, as they have the same purpose. Moreover, they coincide in their producers, are distributed through the same channels and target the same relevant consumers.
The contested preparations for destroying vermin are chemical substances used to destroy harmful organisms of very small sizes to assure the healthy existence of human beings. They are similar to the opponent’s pharmaceutical preparations, as they have the same purposes, can be distributed through the same distribution channels, target the same consumers and are complementary to each other.
The contested fungicides are biocidal chemical compounds or biological organisms used to kill fungi or fungal spores. A number of fungicides are used in human healthcare, so they are considered similar to a low degree to the opponent’s pharmaceutical preparations, since they have the same purpose, can coincide in distribution channels and are complementary to each other.
The contested herbicides are products intended primarily for agricultural use, whereas the opponents’ goods in Class 5 are intended for healthcare. The natures of the goods are different, as are their distribution channels and prospective purchasers. The goods do not fulfil similar functions from the consumer’s point of view, and they satisfy different needs. Furthermore, they are not substitutes for or in competition with one another. The relevant consumer will not regard the opponent’s goods and the contested goods as originating from the same undertaking. Therefore, the contested herbicides are dissimilar to the opponent’s goods in Class 5.
- 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 business consumers with specific professional knowledge or 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 same applies to such goods as preparations for destroying vermin and fungicides, which may have a potentially harmful effect on humans’ health. Therefore, the relevant public’s degree of attention is considered relatively high in relation to all the goods at issue.
- The signs
OKITASK | OKTASKIN |
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).
The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
The earlier mark consists of a meaningless word, ‘OKITASK’. Its distinctiveness in relation to the relevant goods is seen as normal.
The contested mark is a word mark, ‘OKTASKIN’. As correctly pointed out by the applicant, at least the English-speaking part of the relevant public may recognise the last four letters, ‘SKIN’, as referring to ‘the thin layer of tissue forming the natural outer covering of the body of a person’ (information extracted from Oxford Dictionary on 30/08/2017 at https://en.oxforddictionaries.com). Therefore, this element will be perceived as descriptive by this part of the public, as it merely indicates the intended purpose of the relevant goods, which may include preparations for use in treating skin diseases or injuries, or products applied to the skin.
The remaining part of the public, such as the Spanish-speaking part of the public, will perceive ‘OKTASKIN’ as one meaningless word. Therefore, the Opposition Division finds it appropriate to first examine the opposition in relation to the Spanish-speaking part of the public, because this part of the public will be more likely to confuse the signs due to the lack of any concept that could differentiate them. The distinctiveness of the only word that composes the sign, ‘OKTASKIN’, is seen as normal.
Since the earlier mark, ‘OKITASK’, and the contested sign, ‘OKTASKIN’, are word marks, neither of them has any element that could be considered more dominant (visually eye-catching) than other elements.
Visually, the signs coincide in the sequence of letters ‘OK*TASK**’, which constitute the first two and the last four letters of the earlier mark (out of seven), and the first six letters of the contested sign (out of eight). The signs differ in the third letter, ‘I’, of the earlier mark and the last two letters, ‘IN’, of the contested sign.
The earlier mark, ‘OKITASK’, and the contested sign, ‘OKTASKIN’, have similar lengths, namely seven and eight letters, respectively. Contrary to the applicant’s argument, the one-letter difference in length cannot be considered an important distinguishing factor, since the public, which is not, in general, aware of the exact number of letters in a word mark, will not notice significant differences (if any at all) in the lengths of the words ‘OKITASK’ and ‘OKTASKIN’.
The applicant emphasises the importance of the difference in the endings of the signs under comparison. However, according to established practice, it is usually the beginning of a sign that caches consumers’ attention and, thus, a difference in endings of signs is often insufficient to exclude similarity between them.
In the present case, the visual similarities between the signs lie in the fact that the contested sign reproduces six letters out of seven of the earlier mark, in the same order. Although the differing third letter ‘I’ of the earlier mark and the ending ‘IN’ of the contested sign create some visual differences, they are not able to counteract the similarities arising from the abovementioned commonalities. Therefore, the signs are considered visually similar to a higher than average degree.
Aurally, the pronunciation of the signs coincides in the sound of the first letters, /OK/, and the sequence of letters /TASK/. The pronunciation differs in the sound of the third letter, /I/, of the earlier mark and the sound of the ending, /IN/, of the contested sign.
Both signs will be pronounced in three syllables: the earlier mark as /O-KI-TASK/ and the contested sign as /OK-TAS-KIN/. Although, as correctly stated by the applicant, some syllables do not have any letters in common, the same number of syllables in both marks still creates similar rhythms and intonations. Moreover, account must be taken of the fact that the relevant consumers will pronounce the mark as a whole, without dividing and analysing the content of its syllables. In this regard, although the vowel ‘I’ between the letters ‘K’ and ‘T’ of the earlier mark, resulting in the sound /KIT/, will create a noticeable aural difference from the sound /KT/ in the contested sign, and some aural difference will be created by the sound /IN/ at the end of the contested sign, the fact that the signs coincide in the sound of the letters /OK/ at their beginnings and in the sound of the identically pronounced part /TASK/ will create significant aural similarities between the earlier mark and the contested sign. Therefore, the signs are considered aurally similar to an average 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
Evaluating likelihood of confusion 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).
As concluded above, the contested goods are partly identical, partly similar (to various degrees) and partly dissimilar to the opponent’s goods and they target the public at large and business consumers, who have a higher than average degree of attention. The degree of distinctiveness of the earlier mark is average.
The signs are visually similar to a higher than average degree and aurally similar to an average degree. The conceptual aspect does not influence the assessment of likelihood of confusion between the signs, as both signs are meaningless. As detailed in section c), the signs coincide in their beginnings, which usually have a greater impact in terms of likelihood of confusion in the mind of the consumer. Moreover, the signs also coincide, to a great extent, in their remaining parts, except the difference in the third letter of the earlier mark and the two letters at the end of the contested sign. Although these differences reduce the aural similarity to average, their impact on visual similarity is quite low. Since visual observation prior to purchase in respect of the relevant goods and the signs under comparison cannot be excluded, the relevant consumer could be confused by the fact that the earlier mark and the contested sign are composed to a great extent of the same letters in the same order and may not even recall the one-letter difference in the middle of the earlier mark or the two-letter addition at the end of the contested sign.
Therefore, considering 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) and that 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), the abovementioned visual and aural similarities result in a likelihood of confusion between the signs, even in relation to the goods that are similar to a low degree. Since neither of the marks under comparison conveys any concept that could differentiate them from each other, it cannot be safely excluded that the relevant consumer will confuse the marks or alternatively perceive the contested mark as a sub-brand or variation of the earlier mark (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s international trade mark registration No 1 257 987, ‘OKITASK’, designating the European Union. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar (to various degrees) to those of the earlier trade mark.
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.
Since opposition is successful only for some of the contested goods in relation to this right, the examination continues in relation to the remaining earlier right invoked under Article 8(1)(b) EUTMR.
Examination of the opposition in relation to EUTM No 1 375 443 ‘OKI’
The opponent has also based its opposition on earlier EUTM No 1 375 443 for the word mark ‘OKI’.
- The goods
The goods on which the opposition is based are the following:
Class 5: Pharmaceutical, veterinary and sanitary preparations; 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.
The remaining contested goods are the following:
Class 5: Herbicides.
Herbicides are identically contained in both lists of goods.
- The 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 are directed at the public at large as well as at business customers with specific professional knowledge or expertise in the agriculture and chemical fields. Since the goods in question are toxic chemical agents, which need to be used with care, the degree of attention is higher than average.
- The signs
OKI | OKTASKIN |
Earlier trade mark | Contested sign |
The relevant territory is the European Union.
The earlier mark consists of a meaningless word, ‘OKI’. Its distinctiveness in relation to the relevant goods is seen as normal.
The contested mark is a word mark, ‘OKTASKIN’. As mentioned above, at least the English-speaking part of the relevant public may recognise the last four letters, ‘SKIN’, as referring to ‘the thin layer of tissue forming the natural outer covering of the body of a person’ (information extracted from Oxford Dictionary on 30/08/2017 at https://en.oxforddictionaries.com). Although this element will be perceived as descriptive by this part of the public for some of the opponent’s goods (which may include preparations for use in treating skin diseases or injuries, or products applied to the skin), in relation to herbicides, its distinctiveness is seen as normal, as it does not describe or allude to any characteristics of these goods. The remaining part of the public, such as the Spanish-speaking part of the public, will perceive the word ‘OKTASKIN’ as one meaningless word. In any case, the distinctiveness of the word ‘OKTASKIN’, when taken as a whole, is seen as normal.
Visually, the signs are similar to the extent that they coincide in their first two letters, ‘OK’. However, the signs differ in all the other letters, namely the letter ‘I’ of the earlier mark versus the letters ‘TASKIN’ of the contested sign.
Although the signs coincide in their first two letters, the significant differences in the lengths of the signs (the earlier mark consists of three letters, whereas the contested sign consists of seven letters) and the completely different visual impressions created by their remaining letters, ‘I’ of the earlier mark and ‘TASKIN’ of the contested sign, will clearly be noticed by the relevant consumers and create significant differences between the marks. Therefore, the signs are considered visually similar to a low degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the first letters ‛OK’, present identically in both signs. However, the pronunciation completely differs in the sound of the remaining letters, namely /I/ of the earlier mark versus /TASKIN/ of the contested sign. Therefore, the signs are aurally similar to a low degree.
Conceptually, although part of the relevant public in the relevant territory will perceive the meaning of the element ‘SKIN’ of the contested sign, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar for this part of the public.
For the part of the public that perceives the contested sign, ‘OKTASKIN’, as meaningless, a conceptual comparison is not possible and 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
Since the opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. 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
As concluded above, the contested goods are identical to the opponent’s goods and they target the public at large and business consumers with a higher than average degree of attention. The degree of distinctiveness of the earlier mark is average.
The earlier mark and the contested sign are similar insofar as they have their first letters, ‘OK’, in common. However, they differ in the last letter of the earlier mark versus the remaining six letters of the contested sign. Moreover, the earlier mark, ‘OKI’, is a short mark, consisting of three letters only, and therefore the fact that the contested mark differs in six letters (out of eight) from the earlier mark will create significant differences between the marks and is a decisive factor when evaluating likelihood of confusion. Consequently, since the commonalities, as explained in section c), lead to only a low degree of visual and aural similarity and the signs under comparison do not have a conceptual link that would lead the public to associate them with each other (or are even not similar for part of the relevant public), it can be concluded that the differences between the marks are clearly perceptible and counteract the similarities that arise from the fact that the marks have their first two letters in common.
Therefore, it can be concluded that the differences between the signs outweigh the commonalities to such an extent that a likelihood of confusion, including likelihood of association, on the part of the relevant public with a higher than average degree of attention can safely be excluded, even in relation to the identical goods.
Considering all the above, the Opposition division finds that there is no likelihood of confusion on the part of the public.
Therefore, the opposition must be rejected as far as it is based on earlier European Union trade mark No 1 375 443.
Conclusion
It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar (to various degrees) to those of earlier international trade mark registration No 1 257 987, ‘OKITASK’, designating the European Union.
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
Janja FELC | Rasa BARAKAUSKIENE | Ana MUÑIZ RODRÍGUEZ |
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.