PHARMACEO | Decision 2774464
Date Published: Sep 22, 2017
OPPOSITION No B 2 774 464
Matthias Oehlmann, Hirschwlese 62, 59379 Gelm, Germany (opponent), represented by Spieker & Jaeger, Kronenburgallee 5, 44139 Dortmund, Germany (professional representative)
a g a i n s t
Clic & Care, 47 rue de Monceau, 75008 Paris, France (holder), represented by PDGB, 174, avenue Victor Hugo, 75116 Paris, France (professional representative).
On 20/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 774 464 is partially upheld, namely for the following contested services:
Class 35: Retail or wholesale services for pharmaceutical, veterinary and sanitary preparations as well as for medical supplies; business management and organization consultancy; commercial information and advice for consumers in connection with the sale and promotion of various goods and services, in particular in the fields of parapharmacy, beauty and hygiene; commercial information via websites; sales promotion for others; publication of advertising texts; advertising; radio advertising; television advertising; advertising by mail order; online advertising on a computer network; rental of advertising time on all communication media; presentation of goods on all communication media, for retail sale.
Class 44: Advice relating to health, nutrition, parapharmaceutical issues, hygienic goods and beauty care for human beings and animals; medical advice for individuals with disabilities.
2. International registration No 1 283 950 is refused protection in respect of the European Union for all of the above services. 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 and services of international registration designating the European Union No 1 283 950, namely against all the services in Classes 35 and 44. The opposition is based on German trade mark registrations No 30 569 508 and No 30 2015 033 915. 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 services
The services on which the opposition is based are the following:
German trade mark registration No 30 569 508
Class 44: Pharmacy services.
German trade mark registration No 30 2015 033 915
Class 35: Retail services via the Internet in the fields of: pharmaceutical and veterinary articles, sanitary preparations and medical articles, goods for the health sector, infant formula, nutritional supplements, pharmaceuticals, cosmetics; rental of advertising space on the Internet.
The contested services are the following:
Class 35: Retail or wholesale services for pharmaceutical, veterinary and sanitary preparations as well as for medical supplies; arranging newspaper subscriptions for others; arranging subscriptions to telecommunication services for others; procurement services of goods for third parties; compilation of information into computer databases; business management and organization consultancy; computerized file management; commercial information and advice for consumers in connection with the sale and promotion of various goods and services, in particular in the fields of parapharmacy, beauty and hygiene; commercial information via websites; sales promotion for others; publication of advertising texts; advertising; radio advertising; television advertising; advertising by mail order; online advertising on a computer network; rental of advertising time on all communication media; presentation of goods on all communication media, for retail sale; administrative processing of purchase orders.
Class 44: Advice relating to health, nutrition, parapharmaceutical issues, hygienic goods and beauty care for human beings and animals; medical advice for individuals with disabilities.
An interpretation of the wording of the list of services is required to determine the scope of protection of these services.
The term ‘in particular’, used in the holder’s list of services, indicates that the specific services 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.
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.
Contested services in Class 35
The contested retail or wholesale services for pharmaceutical, veterinary and sanitary preparations as well as for medical supplies include, as a broader category, or overlap with the opponent’s retail services via the Internet in the fields of: pharmaceutical and veterinary articles, sanitary preparations and medical articles. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.
The contested advertising includes, as a broader category, the opponent’s rental of advertising space on the Internet. Therefore, they are identical.
The contested rental of advertising time on all communication media overlaps with the opponent’s rental of advertising space on the Internet. Therefore, they are identical.
The contested online advertising on a computer network is highly similar to the opponent’s rental of advertising space on the Internet, as these services have the same nature and purpose, are offered by the same or linked undertakings and target the same public.
The contested sales promotion for others; publication of advertising texts; radio advertising; television advertising; advertising by mail order are similar to the opponent’s rental of advertising space on the Internet, as they have the same nature, providers, relevant public and distribution channels.
The contested commercial information and advice for consumers in connection with the sale and promotion of various goods and services, in particular in the fields of parapharmacy, beauty and hygiene; commercial information via websites; presentation of goods on all communication media, for retail sale are similar to the opponent’s retail services via the Internet in the fields of: pharmaceutical and veterinary articles, sanitary preparations and medical articles, goods for the health sector, infant formula, nutritional supplements, pharmaceuticals, cosmetics. The Court has held that the objective of retail trade is the sale of goods to consumers, which includes, in addition to the legal sales transaction, all activity carried out by the trader for the purpose of encouraging the conclusion of such a transaction. That activity consists, inter alia, in selecting an assortment of goods offered for sale and in offering a variety of services aimed at inducing the consumer to conclude the abovementioned transaction with the trader in question rather than with a competitor (07/07/2005, C-418/02, Praktiker, EU:C:2005:425, § 34). Therefore, the services under comparison have the same purpose, target the same relevant public and use the same distribution channels.
The contested business management services are usually rendered by companies specialised in this specific field such as business consultants. They gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. The services involve activities such as business research and appraisals, cost price analysis and organisation consultancy. These services also include any ‘consultancy’, ‘advisory’ and ‘assistance’ activity that may be useful in the ‘management of a business, such as how to efficiently allocate financial and human resources; how to improve productivity; how to increase market share; how to deal with competitors; how to reduce tax bills; how to develop new products; how to communicate with the public; how to do marketing; how to research consumer trends; how to launch new products; how to create a corporate identity; etc.
When comparing business management services with the opponent’s rental of advertising space on the Internet (included in advertising services, as explained above), it should be noted that advertising is an essential tool in business management because it makes the business itself known in the market. As stated above, the purpose of advertising services is ‘to reinforce the [business’s] position in the market’ and the purpose of business management services is to help a business in ‘acquiring, developing and expanding market share’. There is no clear-cut difference between ‘reinforcing a business position in the market’ and ‘helping a business to develop and expand market share’. A professional who offers advice regarding how to efficiently run a business may reasonably include advertising strategies in that advice because there is little doubt that advertising plays an essential role in business management. Furthermore, business consultants may offer advertising (and marketing) consultancy as a part of their services and therefore the relevant public may believe that these two services have the same professional origin. Consequently, considering the above, the contested business management and organization consultancy are similar to a low degree to the opponent’s rental of advertising space on the Internet (22/11/2011, R 2163/2010-1, INNOGAME / InnoGames, § 13-17).
The contested arranging newspaper subscriptions for others; arranging subscriptions to telecommunication services for others; procurement services of goods for third parties; compilation of information into computer databases; computerized file management; administrative processing of purchase orders are commercial trading and administrative data processing services. They have nothing relevant in common with the opponent’s services in Classes 35 and 44. These services are usually rendered by specialised providers. They are different in nature and purpose and are neither in competition nor complementary. Therefore, they are dissimilar.
Contested services in Class 44
The contested advice relating to health, nutrition, parapharmaceutical issues, hygienic goods and beauty care for human beings and animals; medical advice for individuals with disabilities involve providing professional opinions in relation to medical, health, beauty and sanitary care services. There are some relevant similarities between these services and the opponent’s pharmacy services, in particular because they are all advice and consultancy services for maintaining and promoting human and animal health and care. Therefore, the services under comparison target the same consumers. Moreover, they are offered by the same providers and through the same distribution channels. Therefore, they are similar.
- 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 services found to be identical or similar to varying degrees are directed at the public at large and at business customers with specific professional knowledge or expertise (e.g. employees of advertising agencies and medical professionals).
Depending on the nature or price of the services, the degree of attention is likely to vary from average (e.g. for advice relating to hygienic goods in Class 44) to higher than average (e.g. for retail or wholesale services for pharmaceutical preparations in Class 35, irrespective of whether the preparations are issued on prescription or not, as these services can affect the user’s health).
- The signs
pharmeo | PHARMACEO |
Earlier trade marks | Contested sign |
The relevant territory is Germany.
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).
Since the earlier marks protect the same word sign, ‘pharmeo’, they will be referred to hereafter as ‘the earlier mark’.
The conflicting marks are word marks consisting of a single element. In the case of word marks, the words themselves are protected, not their written form. Therefore, it is irrelevant whether word marks are depicted in lower or upper case or in a combination thereof.
Both marks, as a whole, are meaningless and as such distinctive for the services in question. Although each sign is composed of one verbal element that has no meaning as a whole, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58).
In the present case, bearing in mind that some of the relevant services relate to the medical and pharmaceutical field, the consumers will perceive the elements ‘PHARM’/‘PHARMA’ in the signs as referring to the pharmaceutical industry. ‘PHARMA’ is a German prefix meaning ‘medicinal product’ (information extracted from Duden Dictionary on 11/09/2017 at http://www.duden.de/rechtschreibung/Pharma_). Therefore, this part of the signs is weak for the relevant services related to medicine and pharmaceuticals in Classes 35 and 44. For the rest of the services, it has a normal degree of distinctiveness.
Visually and aurally, the signs coincide in the string of seven letters ‘PHARM*EO’, which forms the entire earlier mark, and differ only in the additional sixth and seventh letters, ‘AC’, of the contested sign. Importantly, the signs coincide in their beginnings and in their endings.
For the relevant services in relation to which ‘PHARM’/‘PHARMA’ is weak, although both signs begin with this weak element, the last letters of the signs, ‘EO’, are also identical. Therefore, the signs are visually and aurally similar to an average degree.
For the rest of the services, in relation to which the element ‘PHARM’/‘PHARMA’ is distinctive, the signs are visually and aurally highly similar.
Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the element ‘PHARM’/‘PHARMA’, included in both signs, will be associated with the meaning given above in relation to medical and pharmaceutical services. Therefore, for the services for which this element is weak, the signs are conceptually similar to a low degree.
For the rest of the services, in relation to which the element ‘PHARM’/‘PHARMA’ is distinctive, 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.
- 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 his 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 services in question from the perspective of the public in the relevant territory, despite the presence of a weak element in the mark in respect of some of the relevant services, as stated above in section c) of this decision. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- 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 (recital 8 of the EUTMR). 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).
In the present case, the services are partly identical, partly similar to varying degrees and partly dissimilar. The signs are visually, aurally and conceptually similar to a high degree, for those services for which ‘PHARM’/‘PHARMA’ is distinctive, and visually and aurally similar to an average degree and conceptually similar to a low degree for those services for which ‘PHARM’/‘PHARMA’ is weak. The relevant public’s degree of attention will vary between average and high, and the earlier mark has a normal degree of distinctive character.
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).
Account must 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, EU:C:1999:323, § 26). This is particularly relevant in the present case, in which the signs are similar on account of the letter sequence ‘PHARM*EO’.
In an overall assessment of the relevant factors of the case, it is concluded that the differences identified between the signs are clearly insufficient to enable the relevant public to safely distinguish between the signs, even when the degree of attention is higher than average. 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).
Therefore, even for those services for which ‘PHARM’/‘PHARMA’ is weak, the visual commonalities are so overwhelming that a likelihood of confusion cannot be ruled out.
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).
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 German trade mark registrations No 30 569 508 and No 30 2015 033 915.
It follows from the above that the contested trade mark must be rejected for the services found to be identical or similar 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.
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 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 | Jorge ZARAGOZA GOMEZ | Richard BIANCHI |
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.