OncoSana | Decision 2570250

Date Published: Oct 1, 2017

OPPOSITION No B 2 570 250

Lab. Medizin Farma, S.L., P. Ind. Benieto, C/ del Transporte 32, 46702 Gandía (Valencia), Spain (opponent), represented by J. López Patentes y Marcas, S.L., C/. Paz, nº 14-2º-3ª, 46003 Valencia, Spain (professional representative)

a g a i n s t

Sapiotec GmbH, Nikolausstraße 18, 97082 Würzburg, Germany (holder), represented by Glawe Delfs Moll, Rothenbaumchaussee 58, 20148 Hamburg, Germany (professional representative).

On 26/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 570 250 is partially upheld, namely for the following contested goods and services:

Class 5: Pharmaceutical preparations for human use; dietary and nutritionally fortified food products, including beverages and preparations for making beverages, adapted for human medical purposes; dietetic substances and preparations adapted for medical use; nutraceuticals for therapeutic purposes for human use; dietary additives for medical purposes and dietary supplements for medical use and nutritional supplements for human use; meal replacement powders for medical purposes; meal replacement and dietary supplement drink mixes for medical purposes; meal replacement bars for medical purposes.

Class 44: Dietetic advisory services for human purposes; dietary and nutritional information services and guidance for human purposes.

2.        International registration No 1 224 334 is refused protection in respect of the European Union for all of the above goods and services. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of international registration designating the European Union No 1 224 334 for the word mark ‘OncoSana’. The opposition is based on Spanish trade mark registration No 2 257 955 for the word mark ‘ONCOSAN’. The opponent invoked Article 8(1)(a) and (b) EUTMR.

PRELIMINARY REMARK ON THE SUBSTANTIATION OF THE EARLIER MARK

The holder contests the substantiation of the earlier Spanish trade mark registration claiming that the opponent failed to provide a sufficient translation of the certificate for the opposition mark and that it merely submitted an online excerpt from the website ‘sitadex.oepm.es’ and an English translation thereof.

While it is true that the certificate of the earlier mark has not been translated, as the holder correctly points out, the opponent has also submitted an extract from the official database (Sitadex) of the Spanish Patent and Trademark Office (OEPM) together with the translation thereof, containing all the required information, including the data about its renewal in the year 2009.

In this regard, the Office accepts the extracts from official databases as proof of existence, validity and scope of protection of the earlier marks (Guidelines for Examination in the Office, Part C, Section 1, point 4.2.3) and, therefore, the holder’s claim must be dismissed.

PROOF OF USE

Preliminary remark regarding the relevant period of use

As a preliminary remark, it should be noted that the holder indicated that according to Regulation (EU) No 2015/2424, the period of use starts from the priority date of the contested IR and, therefore, the five-year period relevant for furnishing proof of use starts from 25/04/2009 until 24/04/2014.

It is true that regarding oppositions filed on or after the entry into force of Regulation (EU) No 2015/2424 (the Amending Regulation), that is 23/03/2016, the actual period for which use must be shown can simply be computed backwards from the filing or, if the contested EUTM application has a priority date, from the priority date of the contested EUTM application, and if the contested mark is an international registration designating the Union, the actual period for which use must be proven can simply be computed backwards from the date of registration (INID code 151) or the date of priority (INID code 300), or, as the case may be, the date of subsequent designation of the Union (INID code 891).

However, it should be pointed out that before the entry into force of the Amending Regulation, the five-year period was computed backwards from the date of publication of the contested EUTM application. In the case of contested IRs, the equivalent date was the beginning of the opposition period (which is, pursuant to Article 152(1) EUTMR, six months after the date of publication of the international registration or subsequent designation). This is applicable to the oppositions filed before the entry into force of Regulation (EU) No 2015/2424, that is 23/03/2016, as is the case in the present opposition proceedings taking into account that the opposition was filed on 28/08/2015 (emphasis added by the examiner).

Proof of Use

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

As indicated above, for international registrations designating the European Union, the ‘date of publication’ of the contested mark within the meaning of Article 42(2) EUTMR, that is to say for the purposes of establishing the five-year period of use obligation for the earlier mark, is considered to be six months after the first republication of the international registration, which corresponds to the beginning of the opposition period (Article 156 EUTMR in conjunction with Article 152 EUTMR, in the version in force at the time of filing of the opposition). The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The holder requested that the opponent submit proof of use of the trade mark on which the opposition is based.

The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The relevant date (first republication of the contested international registration plus six months) is 28/05/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Spain from 28/05/2010 to 27/05/2015 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 5: Pharmaceutical products and specialties, dietetic products for children and sick.

According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 22/06/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 27/08/2016 to submit evidence of use of the earlier trade mark. After an extension of the time limit requested by the opponent on 29/07/2016, the deadline expired on 27/10/2016. On 27/10/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Eight invoices issued by the opponent to various clients in Spain. The invoices are dated between 02/04/2012 to 08/02/2016 and show the earlier trade mark ‘ONCOSAN’ with the following units of products sold: one invoice from 2012 (12 units sold), two invoices from 2013 (24 units sold in total), 2014 (7 units sold in total) and 2015 (2 units sold in total), and one invoice from 2016 (12 units sold); the last two invoices, from 14/10/2015 and 08/02/2016, are dated outside the relevant period. The earlier trade mark ‘ONCOSAN’ appears in the description of the invoices together with other trademarked goods. It is also shown the price per unit (45.43 – the currency is not expressly indicated but because of the country of issuance and the addresses of the clients, it can be deduced that it is in Euro) and the total value sold of ‘ONCOSAN’ goods in each case according to the units sold. The specific goods to which the sales refer are not indicated in the invoices.

• Undated leaflet containing information about the product ‘ONCOSAN’ together with its translation into English. It appears in the document that ‘ONCOSAN®’ SHARK CARTILAGE “BENEFIN®” 100% PURE HIGHEST QUALITY’ is a food supplement that has ‘important actions, in addition to an excellent nutritional value’.

• Representation of the packaging of a product under the trademarks ‘FHARMOCAT®’, ‘ONCOSAN®’ and “BENEFIN®”, containing the opponent’s name, address and contact details. The document is undated and no translation has been provided. However, the information contained in the packaging partially coincides with the information that appears in the leaflet and has been already translated and, therefore, it can be concluded that the product is a food supplement made of shark cartilage (‘complemento alimenticio - cartílago de tiburón’, as indicated in Spanish).

The holder argues that the opponent did not submit translations of some of the evidence of use and that, therefore, this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Rule 22(6) EUTMIR). Taking into account the nature of the documents which have not been translated and are considered relevant for the present proceedings, namely, the invoices and the product packaging, and their self-explanatory character, the Opposition Division considers that there is no need to request a translation. Furthermore, the information contained in Spanish in the packaging is basically reproduced in the leaflet that has been duly translated by the opponent. It further contains the name, address and contact details of the opponent, the number of capsules (180 cápsulas), the ingredients (100% pure shark cartilage 700 mg) and the indication that it is a food supplement (complemento alimenticio), as indicated in the leaflet.

The holder also argues that not all the items of evidence indicate genuine use in terms of use of the goods for which the earlier mark is registered. In particular, the holder claims that the invoices do not contain any sufficient reference to the goods on which the opposition is based. The holder’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use. In this regard, the invoices show under the description column the trade mark ‘ONCOSAN’, among other trademarked goods, and the packaging and leaflet indicate that this trade mark corresponds to a food supplement based in shark cartilage.

The invoices, packaging and leaflet show that the place of use is Spain. This can be inferred from the language of the documents (Spanish) and some addresses in Spain. Therefore, the evidence relates to the relevant territory.

Most of the invoices are dated within the relevant period.

Furthermore, evidence referring to use made outside the relevant timeframe is disregarded unless it contains conclusive indirect proof that the mark must have been put to genuine use as well during the relevant period of time. Events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50).

In the case at hand, the evidence referring to use outside the relevant period reinforces the duration of the use of the opponent’s mark made within the relevant period. This is because the two invoices dated outside the relevant period are not so far removed in time and can be taken as indicative elements of this use duration and frequency.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The documents filed, namely the invoices, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. In the present case, the invoices show the sale of 44 units of the product ‘ONCOSAN’ within the relevant period and other 13 units outside it. The product is a specialised food supplement, its price is not particularly low (EUR 45.43) and the invoices provided are dated at least within four relevant years and, thus, the duration is not short, with two invoices per year at least in three consecutive years. Furthermore, it should be pointed out that use of the mark need not be quantitatively significant for it to be deemed genuine. The general rule is that, when it serves a real commercial purpose, even minimal use of the trade mark could be sufficient to establish genuine use, depending on the goods and services, and the relevant market (23/09/2009, T-409/07, acopat, EU:T:2009:354, § 35 and the quoted case-law; 02/02/2012, T-387/10, Arantax, EU:T:2012:51, § 42).

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier mark.

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 15(1), second subparagraph, point (a) EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, the evidence shows that the earlier trade mark has been used either as registered, that is, the word mark ‘ONCOSAN’, or as a figurative mark. However, as regards the latter, the use of the earlier mark along with the decorative bold blue typeface clearly does not alter the distinctive character of the mark as registered.

Furthermore, regarding the use in combination with other trademarks, namely the one that appears in the leaflet “BENEFIN®’”, which also appears in the packaging along with the also additional mark ‘FHARMOCAT®’, it is quite common in some market areas for goods and services to bear not only their individual mark, but also the mark of the business or product group (‘house mark’). In these cases, the registered mark is not used in a different form, but the two independent marks are validly used at the same time.

There is no legal precept in the European Union trade mark system that obliges the opponent to provide evidence of the earlier mark alone when genuine use is required within the meaning of Article 42 EUTMR. Two or more trade marks may be used together in an autonomous way, or with the company name, without altering the distinctive character of the earlier registered trade mark (T-463/12, MB, EU:T:2014:935, § 43). It is common practice in the trade to depict independent marks in different sizes and typeface, so these clear differences, which emphasise the house mark, indicate that two different marks are used jointly but autonomously (07/08/2014, R 1880/2013-1, HEALTHPRESSO/PRESSO, § 42). In the present case, the three marks ‘FHARMOCAT’, ‘ONCOSAN’ and “BENEFIN” are all used together with the symbol ® denoting that they are registered trade marks separately and, therefore, this use does not change the distinctive character of the earlier trade mark as registered.

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

According to case-law, when applying the abovementioned provision the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories.

(14/07/2005, T-126/03, Aladin, EU:T:2005:288).

In the present case, the evidence proves use only for food supplements. These goods can be considered to form an objective subcategory of dietetic products for children and sick, namely food supplements for children and sick. On the other hand, the opponent has not proved genuine use of the earlier trade mark in relation to pharmaceutical products and specialties. Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for food supplements for children and sick.

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 and for which genuine use has been established are the following:

Class 5: Food supplements for children and sick.

The contested goods and services are the following:

Class 5: Pharmaceutical preparations for human use; dietary and nutritionally fortified food products, including beverages and preparations for making beverages, adapted for human medical purposes; dietetic substances and preparations adapted for medical use; nutraceuticals for therapeutic purposes for human use; dietary additives for medical purposes and dietary supplements for medical use and nutritional supplements for human use; meal replacement powders for medical purposes; meal replacement and dietary supplement drink mixes for medical purposes; meal replacement bars for medical purposes.

Class 44: Dietetic advisory services for human purposes; dietary and nutritional information services and guidance for human purposes; physician services for human use; lifestyle counselling and consultancy for human medical purposes; consultancy and information services relating to pharmaceutical products for human use.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘including’, used in the holder’s list of goods in Class 5, 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).

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.

In this regard, it should be noted that the holder claims that ‘considering the high level of attention of the relevant public for the goods and services at issue, a similarity of goods and services cannot be confirmed’. However, the Opposition Division points out that the comparison of the goods and services should be made on account to the above-mentioned comparison criteria (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 23), and not in respect of the degree of attention of the relevant public, which is a factor to consider when assessing likelihood of confusion and is, in fact, dealt with separately in section b) of the present decision.

Contested goods in Class 5

The contested nutritional supplements for human use include, as a broader category, the opponent’s food supplements for children and sick. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The opponent’s food supplements for children and sick are concentrated sources of nutrients (or other substances) with a nutritional or physiological effect, whose purpose is to supplement the normal diet. Such food supplements can be marketed in ‘dose’ form, such as pills, tablets, capsules, liquids in measured doses, etc. The contested dietary and nutritionally fortified food products, including beverages and preparations for making beverages, adapted for human medical purposes; dietetic substances and preparations adapted for medical use; nutraceuticals for therapeutic purposes for human use; dietary additives for medical purposes and dietary supplements for medical use; meal replacement powders for medical purposes; meal replacement and dietary supplement drink mixes for medical purposes; meal replacement bars for medical purposes are substances prepared for special dietary requirements, with the purpose of treating or preventing disease in humans or animals. The goods in comparison serve for covering nutritional needs of the organism as to maintain its healthy condition. The goods in comparison could be used in combination and their method of use, namely oral administration, is the same. Furthermore, they share producer, end user and distribution channels. These goods are, therefore, considered at least similar to a high degree.

The contested pharmaceutical preparations for human use may have the same purpose, of treating or preventing a medical condition, than the opponent’s food supplements for children and sick. They can also coincide in end user and distribution channels. Therefore, the goods are similar.

Contested services in Class 44

The contested dietetic advisory services for human purposes; dietary and nutritional information services and guidance for human purposes are considered similar to a low degree to the opponent’s food supplements for children and sick in Class 5. Dietary advice relates to informing individuals about dietetic products and generally requires the patient to take vitamins, supplements and dietary and nutritional preparations. These goods and services coincide in their distribution channels and end users. Indeed, the opponent’s services can be rendered in the same stores in which the opponent’s goods are sold, namely dieticians stores. Furthermore, these goods and services are often complementary.

The Opposition Division cannot see any material nexus between the contested physician services for human use; lifestyle counselling and consultancy for human medical purposes; consultancy and information services relating to pharmaceutical products for human use and the opponent’s goods in Class 5, namely food supplements for children and sick. The contested services include mainly medical related services and they belong to different areas of activity, have a different nature and purpose. The usual commercial origin, distribution channels and end users are different. Furthermore, they are neither complementary nor in competition. Therefore, they are 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 varying degrees are directed at the public at large and at professionals in the nutritional and medical sectors with specific professional knowledge or expertise.

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.

It follows that the public’s degree of attention may vary from average to high, depending on their exact nature, purpose and impact on the health of the consumer.

3. The signs

ONCOSAN	OncoSana
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 Court has held that, although average consumers normally perceive a mark as a whole and do 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). Therefore, although the signs as a whole do not have any meaning for the public in the relevant territory, the average consumer is likely to dissect them into elements.

In this regard, it should be noted that the element ‘ONCO’, present in both signs, will be associated with ‘oncologic’ or ‘oncology’ (‘oncológico’ or ‘oncología’ in Spanish) and will be understood as meaning ‘the study and treatment of tumors’ (information extracted from Oxford Dictionaries on 19/09/2017 at www.oxforddictionaries.com).  Bearing in mind that the relevant goods and services are pharmaceutical preparations and nutritional food supplements as well as related services that can treat or alleviate an oncologic condition, this element is weak for all the relevant goods and services in both marks.

Moreover, it is likely that the relevant public will understand the elements ‘SAN’ in the earlier mark and ‘Sana’ in the contested sign. ‘SAN’ is an abbreviated form of the Latin words ‘sanitas, sanus’ (‘health, healthy’) which is often used with healthcare goods and services, and has a highly descriptive allusion for the relevant public in connection with the goods and services in question (14/10/2011, R 2178/2010-4, ALPINSAN / ALPIFRESH § 19). Furthermore, the corresponding Spanish words ‘sanidad’ or ‘sano’ are similar and start with the same three letters. The same applies mutatis mutandis to the element ‘Sana’ of the contested sign. Therefore, these elements are weak for all the relevant goods and services.

 

Visually and aurally, the signs coincide in the sequence of letters (and in the sound of such letters) ‘ONCOSAN’/ ‘OncoSan*’ which consists in the whole of the earlier mark.  Since the protection conferred by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic features which that mark might possess (22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43), it is irrelevant whether a word mark is depicted in lower or upper case letters, or in a combination thereof. Consequently, the visual difference in the signs under comparison in this regard is immaterial. In addition, the signs have a similar word length of seven and eight letters, respectively. As explained above, the coinciding elements ‘ONCO’ and ‘SAN/SANA’ are weak in relation to the relevant goods and services. The signs only differ in the last letter, ‘A’, of the contested sign.

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. In the present case, the similarities are not only confined to the first element of the signs, ‘ONCO’, as the respective second elements are also highly similar ‘SAN/SANA’.

Taking into account the arguments previously set out, the signs are found to be visually and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the elements composing the signs will be associated with a weak similar meaning, the signs are conceptually 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.

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 below average for of the goods in question.

5. Global assessment, other arguments and conclusion

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 within the meaning of Article 8(1)(b) EUTMR (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 16-18; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 30).

The likelihood of confusion must be appreciated globally, in accordance with the relevant public’s perception of the signs and of the goods and services in question, taking into account all factors relevant to the circumstances of the case (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18), in particular the similarity of the marks and the similarity of the goods and services, which are interdependent criteria in the sense that a lesser degree of similarity between the goods 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).

For the purpose of the global appreciation, the average consumer of the category of goods concerned is deemed to be reasonably well informed and reasonably observant and circumspect. The consumer’s degree of attention is likely to vary according to the category of goods or services in question and average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, since they rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25). Even consumers with 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).

In the present case, the contested goods and services are partly identical, partly similar to varying degrees and partly dissimilar to the opponent’s goods and are aimed at the general public and professionals in the relevant sector who display a degree of attention ranging from average to high, depending on the specific goods and services.

The earlier sign, ‘ONCOSAN’, and the contested mark, ‘OncoSana’, have been found to be similar to an average degree on all levels of comparison. Indeed, the earlier mark is fully contained in the contested sign which only differs in its last additional letter. This difference between the signs does not prevent them from being similar overall.

Even though the coinciding elements may be perceived as weak in relation to the relevant goods and services, it must be borne in mind that the fact that a coinciding element has a low degree of distinctive character does not automatically prevent a finding of likelihood of confusion. Although the distinctive character of the earlier mark or of the elements of which it is composed must be taken into account when assessing the likelihood of confusion, it is only one factor involved in that assessment. Therefore, even in a case involving an earlier mark or an element with a low degree of distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (13/12/2007, T-134/06, Pagesjaunes.com, EU:T:2007:387, § 70).

Therefore, the Opposition Division considers that the difference between the signs is not sufficient to counterbalance the degree of overall similarity between them. Therefore, the relevant public may believe that the identical or similar goods and services – and, as a result of the principle of interdependence, even those that are similar only to a low degree – come from the same undertaking or at least economically linked undertakings.

Moreover, although the public may pay special attention during the purchase of some of the goods and services in question, this will not be sufficient to avoid confusion regarding their origin, taking into account the fact that the signs have significant similarities.

The holder refers to previous decisions of the General Court to support its arguments. In the present case, the previous cases referred to by the holder are not relevant to the present proceedings since they examined different scenarios and circumstances regarding the coinciding and different elements of the signs, namely the coincidence in a purely descriptive element and difference in a distinctive additional element, or the striking and significant visual dissimilarities between the signs. Therefore, the same findings cannot be roughly applied but the present case must be assessed on the case by case practice.  

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 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 to varying degrees to those of the earlier trade mark.

The rest of the contested 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 services cannot be successful.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining services because the signs and the services are obviously not identical.

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

Marta GARCÍA COLLADO

Eva Inés PÉREZ SANTONJA

Vít MAHELKA

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.