Pharmosphère | Decision 2760265

Date Published: Sep 24, 2017

OPPOSITION No B 2 760 265

Pharmos Natur GmbH, Am Neuland 2, 82347 Bernried am Starnberger See, Germany (opponent), represented by Gerstenberg Rechtsanwälte, Uhlandstrasse 2, 80336 München, Germany professional (representative)

a g a i n s t

Pharmosphère, 80 avenue Charles de Gaulle, 92200 Neuilly-sur-Seine, France (applicant).

On 24/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 760 265 is upheld for all the contested goods.

2.        European Union trade mark application No 15 443 682 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 620.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 443 682. The opposition is based on international trade mark registration No 1 162 634 designating the European Union. 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

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

Class 03:        Cosmetics, perfumery, hair lotions, essential oils, soaps; dentifrices.

Class 05:        Pharmaceutical preparations and biological preparations for health care; dietetic preparations adapted for medical use; nutritional supplements; teas for medicinal use; vitamins and vitamin preparations for medical and non medical use.

The contested goods are the following:

Class 03:        Essential oils and aromatic extracts; Toiletries; Perfumery and fragrances; Body cleaning and beauty care preparations; Oral hygiene preparations; Cosmetics; Non-medicated cosmetics; Cosmetics and cosmetic preparations; Cosmetic preparations for body care; Cosmetics in the form of oils; Oils for toiletry purposes; Mineral oils [cosmetic]; Oils for cosmetic purposes; Impregnated cleaning pads impregnated with cosmetics; Impregnated cleaning pads impregnated with toilet preparations; Perfumed body lotions [toilet preparations]; Cosmetic kits; Cosmetics for personal use.

Class 05:        Dietary supplements and dietetic preparations; Food for babies; Dietary supplements for animals; Dietetic foods for use in clinical nutrition; Dietetic foods adapted for invalids; Dietetic foods adapted for medical use; Food for diabetics; Food for infants; Albuminous foodstuffs for medical purposes; Antioxidants; Vitamin drinks; Food supplements; Protein dietary supplements; Anti-oxidant food supplements; Dietary supplements consisting of vitamins; Dietary supplements consisting primarily of calcium; Dietary supplements consisting primarily of iron; Dietary supplements consisting primarily of magnesium; Enzyme dietary supplements; Health food supplements made principally of minerals; Health food supplements made principally of vitamins; Medicated supplements for foodstuffs for animals; Dietary supplements for humans not for medical purposes; Dietary supplements for humans; Dietary supplemental drinks; Food supplements consisting of amino acids; Food supplements consisting of trace elements; Health food supplements for persons with special dietary requirements; Liquid vitamin supplements; Mineral dietary supplements for humans; Mineral nutritional supplements; Nutritional supplements; Dietary and nutritional supplements; Probiotic supplements; Vitamin supplements; Vitamin and mineral supplements; Nutraceuticals for use as a dietary supplement; Neutraceutical preparations for humans; Vitamin preparations in the nature of food supplements; Mixed vitamin preparations; Vitamin tablets; Artificial tea [for medicinal use]; Medicinal tea; Hygienic preparations and articles; Deodorizers and air purifiers; Disinfectants and antiseptics; Medical and veterinary preparations and articles.

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 3

Essential oils; perfumery and cosmetics are identically contained in both lists of goods.

The contested fragrances are included in the broad category of the opponent’s perfumery. Therefore, they are identical.

The contested oral hygiene preparations include, as a broader category, the opponent’s dentifrices. 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 contested cosmetic kits generally contain a selection of cosmetics and cosmetic brushes and applicators. They overlap with the opponent’s cosmetics and are therefore identical.

The contested toiletries;^[a] body cleaning and beauty care preparations include ^[b]as broader categories, the opponent’s cosmetics. 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 contested non-medicated cosmetics; cosmetic preparations; cosmetic preparations for body care; cosmetics in the form of oils; oils for toiletry purposes; mineral oils [cosmetic]; oils for cosmetic purposes; impregnated cleaning pads impregnated with cosmetics; impregnated cleaning pads impregnated with toilet preparations; perfumed body lotions [toilet preparations]; cosmetics for personal use are included in the broad category of the opponent’s cosmetics. Therefore, they are identical.

The contested aromatic extracts are similar to high degree to the opponent’s perfumery. They coincide in nature and purpose, are manufactured by the same producers and share the distribution channels.

Contested goods in Class 5

Dietary supplements consisting of vitamins; nutritional supplements; medicinal tea are identically contained in both lists of goods (including synonyms).

The contested dietary supplements; dietary supplements for animals; antioxidants; vitamin drinks; food supplements; protein dietary supplements; anti-oxidant food supplements; dietary supplements consisting primarily of calcium; dietary supplements consisting primarily of iron; dietary supplements consisting primarily of magnesium; enzyme dietary supplements; health food supplements made principally of minerals; health food supplements made principally of vitamins; medicated supplements for foodstuffs for animals; dietary supplements for humans not for medical purposes; dietary supplements for humans; dietary supplemental drinks; food supplements consisting of amino acids; food supplements consisting of trace elements; health food supplements for persons with special dietary requirements; liquid vitamin supplements; mineral dietary supplements for humans; mineral nutritional supplements; dietary supplements; probiotic supplements; vitamin supplements; vitamin and mineral supplements; nutraceuticals for use as a dietary supplement; vitamin preparations in the nature of food supplements; mixed vitamin preparations; vitamin tablets are included in the broad category of the opponent’s nutritional supplements. Therefore, they are identical.

The contested dietetic preparations; food for diabetics include or overlap with the opponent’s dietetic preparations adapted for medical use. Therefore they are identical.

The contested dietetic foods for use in clinical nutrition; dietetic foods adapted for invalids; dietetic foods adapted for medical use; albuminous foodstuffs for medical purposes; neutraceutical preparations for humans are included in or overlaps with the broad category of the opponent’s dietetic preparations adapted for medical use. Therefore they are identical.

The contested artificial tea [for medicinal use] is included in the broad category of the opponent’s teas for medicinal use. They are therefore identical.

The contested medical and veterinary preparations and articles overlap with the opponent’s pharmaceutical preparations. They are therefore identical.

The contested food for babies; food for infants is similar to the opponent’s dietetic preparations adapted for medical use. The purpose of these goods may coincide as may the distribution channels and producers.

 The contested disinfectants and antiseptics; deodorizers and air purifiers are similar to the opponent’s pharmaceutical preparations. They can have the same purpose and may coincide in producer, end user and distribution channels.

The contested hygienic preparations and articles are similar to the opponent’s perfumery in Class 3. The purpose of these goods may coincide as may the distribution channels and relevant public. In addition they may be produced by the same companies.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical and similar to varying degrees are directed at the public at large and at professional customers with specific professional knowledge or expertise. The degree of attention is considered to vary from average for most of the goods to high in relation to pharmaceutical products.

It is apparent from the case-law that, insofar as pharmaceutical preparations are concerned, the relevant public’s degree of attention is 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 high degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health.

3. The signs

PHARMOS
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 common element ‘PHARM’ is meaningful as an abbreviation for ‘pharmaceutical’ in certain territories, for example, in those countries where English is understood.  Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Hungarian and Greek part of the public where ‘PHARM’ has no meaning and the likelihood of confusion is greatest. In particular, ‘pharmaceutical’ in Hungarian is translated as ‘gyógyszerészeti’ and the respective Greek modifier in compounds related to medicines is ‘φάρμακο- ‘ (farmako-) and not ‘farm’.

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).

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.

The earlier sign is the word mark ‘PHARMOS’ which is meaningless in relation to the goods at issue. Therefore it is distinctive. It must be noted that in the case of word marks it is the word as such that is protected, irrespective of the form it is written.

The contested sign is a figurative mark composed of the verbal component ‘PHARMOSPHÈRE’ represented in a black capital standard typeface. ‘PHARMOSPHÈRE’ has no meaning in relation to the goods at issue and so is distinctive. The first part of the word element is in bold. Above the word element is a circular blue and white figurative element that represents a stylised letter ‘P’, reinforcing the fact that the verbal element starts with the letter ‘P’. The figurative element is distinctive. No element is more dominant than another, the visual and verbal elements in mark vying for the attention of the consumer.

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.

Visually, the signs coincide in the distinctive element ‘PHARMOS’, which is the earlier mark in its entirety and the first seven letters of the contested sign. The signs differ with respect to the remainder of the verbal element of the contested sign ‘PHÈRE’, the use of bold and the blue figurative element representing the letter ‘P’ which have no counterpart in the earlier mark.  Therefore, the signs are similar to an average 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 letters ‛PHARMOS’, present identically in both signs. The pronunciation differs in the sound of the letters ‛PHÈRE’ of the contested mark, which has no counterpart in the earlier sign. It is highly unlikely that the consumer will pronounce the ‘P’ represented in the figurative element. Therefore, the signs are similar to an above 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. 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.

5. Global assessment, other arguments and conclusion

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

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 (eighth recital of the CTMR). 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).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the marks may be offset by a lower degree of similarity between the goods, and vice versa (see, to that effect, 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).

In the present case the goods are partly identical and partly similar to varying degrees. The marks are visually similar to an average and aurally similar to an above average degree, the conceptual aspect not having any impact in the present case. The earlier mark has a normal level of distinctive character and the level of attention of the consumer varies from average to high.

Account is 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). 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 earlier word mark, protected as such irrespective of the written form, is contained in its entirety in the contested sign. In addition it appears at the beginning of the verbal element of the contested sign where the consumer’s attention will be focused. The use of bold on the element ‘PHARMO’ will enable the consumer to single out this element which is almost identical to the earlier mark. The figurative element, although distinctive in itself, represents the initial letter of the verbal element and will not be pronounced.  As explained in section c) above, the verbal element has a greater impact on the consumer and the focus will be on the beginning of the signs, precisely where the coincidence lies.

Therefore there is a likelihood of confusion on the part of the relevant public because the similarity, at the start of the word element where the attention is focused, outweighs the differences in the verbal elements, at the end of the contested mark, and the visual aspect which will be given less importance by the user. This can be said even for those consumers with a high degree of attention.

Considering all the above, there is a likelihood of confusion on the part of the Hungarian and Greek-speaking speaking part of the public. 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.

Therefore, the opposition is well founded on the basis of the international trade mark registration No 1 162 634 designating the European Union. It follows that the contested trade mark must be rejected for all the contested goods.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Konstantinos MITROU

Lynn BURTCHAELL

Martin EBERL

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.