SIRONEX | Decision 2632878 - MABO-FARMA, S.A. v. Horizon Orphan LLC

Date Published: Sep 28, 2017

OPPOSITION No B 2 632 878

Mabo-Farma, S.A., Crtra. M-300, Km. 30,500, Alcala de Henares (Madrid), Spain (opponent), represented by Ryo Rodriguez Oca, S.L., Calle Juan Hurtado de Mendoza, 9 Apto. 507, 28036 Madrid, Spain (professional representative)

a g a i n s t

Horizon Orphan LLC, 150 S. Saunders Rd., Suite 130, Lake Forest, Illinois 60045, United States of America (applicant), represented by Valérie Perrichon, 109 boulevard Haussmann, 75008 Paris, France (professional representative).

On 18/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 632 878 is upheld for all the contested goods, namely:

Class 5:        Pharmaceutical preparations for treating genetic disorders; pharmaceutical preparations for treating neurological disorders; pharmaceutical preparations for treating mitochondrial disease; pharmaceutical preparations for treating Huntington’s disease and related disorders; pharmaceutical preparations for treating NAFLD and NASH disease and related disorders; pharmaceutical preparations for treating metabolic disorders; and pharmaceutical preparations for treating fibrotic disorders.

2.        European Union trade mark application No 14 533 616 is rejected for all the contested goods. It may proceed for the remaining services.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 533 616, namely against all the goods in Class 5. The opposition is based on Spanish trade mark registration No 2 941 329. The opponent invoked Article 8(1)(b) EUTMR.

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.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely Spanish trade mark No 2 941 329.

In the present case the contested trade mark was published on 24/09/2015. Earlier Spanish trade mark No 2 941 329 was registered on 12/11/2010. Therefore, the request for proof of use is inadmissible.

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 5:        Pharmaceutical products.

After the limitation of the scope of protection of the contested sign made by the applicant on 07/07/2016, the contested goods are the following:

Class 5:        Pharmaceutical preparations for treating genetic disorders; pharmaceutical preparations for treating neurological disorders; pharmaceutical preparations for treating mitochondrial disease; pharmaceutical preparations for treating Huntington’s disease and related disorders; pharmaceutical preparations for treating NAFLD and NASH disease and related disorders; pharmaceutical preparations for treating metabolic disorders; and pharmaceutical preparations for treating fibrotic disorders.

The contested pharmaceutical preparations for treating genetic disorders; pharmaceutical preparations for treating neurological disorders; pharmaceutical preparations for treating mitochondrial disease; pharmaceutical preparations for treating Huntington’s disease and related disorders; pharmaceutical preparations for treating NAFLD and NASH disease and related disorders; pharmaceutical preparations for treating metabolic disorders; and pharmaceutical preparations for treating fibrotic disorders are included in the broad category of the opponent’s pharmaceutical products. Therefore, they are identical.

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 are directed at the general public as well as at professional consumers with specific professional knowledge or expertise, namely professionals in the medical and pharmaceutical fields.

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.

Given that the general public is more prone to confusion, the examination will proceed on this basis.

3. The signs

SYRON	SIRONEX
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 signs are word marks, each made up of a single verbal element, neither of which has a meaning in the language of the relevant territory. Therefore, they are distinctive.

In response to the applicant’s arguments, the Opposition Division considers that it is important to note that word marks have no dominant elements because by definition they are written in a standard typeface.

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 letters ‘S*RON**’. They differ in their second letters, ‘Y’ in the earlier mark versus ‘I’ in the contested sign, and in the additional letters ‘EX’ at the end of the contested sign, where they are less likely to be noticed by the relevant public. The applicant’s argument that the differences in the letters ‘Y’ and ‘X’ will be particularly noticeable for the relevant public must be set aside, since both letters are part of the Spanish alphabet and the use of those letters is not particularly unusual for the relevant public.

Therefore, the signs are visually similar to an average degree.

Aurally, it should be noted that the visual difference in the second letter of the signs does not exist aurally, since the relevant public will pronounce the letter ‘Y’ of the earlier marks as ‘I’ because it is placed between two consonants. Therefore, the signs coincide in the sound of the first five letters of the contested sign, which constitute the entire earlier mark, namely the sound /SIRON/. The signs differ in the additional letters ‘EX’ at the end of the contested sign, where they are less likely to be perceived by the relevant public.

Therefore, the signs are aurally highly similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. 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 services covered are from the same or economically linked undertakings.

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).

The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings, since, in the previous decisions of 18/10/2016, No B 2 308 685, CINFA/CINFINI; 27/10/2016, B 2 597 196, ECUTON/ECOTONUS; 9/09/2015, R 2187/2014-2, PIKOLO/PICOBELO; and 13/12/2013, R 996/2012-2, APPLE/APPLINE, the signs had lower degrees of similarity than the signs in the present case, and in several of these decisions the marks were considered conceptually not similar. Furthermore, in the decision of 09/11/2009, B 964 751, VERIS/VERITAS, the contested sign is a 3D mark, so that case is not comparable to the present case.

In the present case, the goods at issue are identical. The signs are visually similar to an average degree and aurally highly similar. They target, inter alia, the public at large, whose degree of attention is high. Furthermore, the earlier mark has a normal degree of distinctiveness.

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). Furthermore, a high degree of attention does not automatically lead to a finding of no likelihood of confusion. All other factors have to be taken into account. A likelihood of confusion can exist despite a high degree of attention. For example, where there is a strong likelihood of confusion caused by other factors, such as the identity or high overall similarity of the marks and the identity of the goods, the attention of the relevant public alone cannot be relied upon to prevent confusion (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 53-56; 06/09/2010, R 1419/2009-4, Hasi).

Considering all the above, there is a likelihood of confusion on the part of the general public. Given that a likelihood of confusion for only part of the relevant public is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 2 941 329. 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

Anna BAKALARZ

Alexandra APOSTOLAKIS

Adriana VAN ROODEN

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.