OPPOSITION DIVISION

OPPOSITION No B 2 797 275

Novartis AG, 4002 Basel, Switzerland (opponent), represented by Boehmert &

Boehmert Anwaltspartnerschaft mbB - Patentanwälte Rechtsanwälte,

Kurfürstendamm 185, 10707 Berlin, Germany (professional representative)

a g a i n s t

Arafarma Group S.A., Calle Fray Gabriel de San Antonio 6-10, Polígono Industrial El

Henares, 19180 Marchamalo, Spain (applicant).

The opponent filed an opposition against all the goods of European Union trade mark

application No 15 691 769 ‘SOLFERRO’. The opposition is based on United Kingdom

trade mark registration No 3 121 010 ‘SORFEROL’. 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

The contested goods are the following:

Decision on Opposition No B 2 797 275 page: 2 of 5

Class 5: Pharmaceuticals; veterinary preparations and substances;

pharmaceutical preparations for veterinary use; nutritional supplements; food

supplements; dietary and nutritional supplements.

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.

preventing diseases in animals. The opponent’s goods include preparations and

substances meant for treating and preventing diseases in human beings. The goods

in comparison coincide in their general purpose and furthermore can share the same

method of use. They can also coincide in their producer. These are, therefore, found

to be similar.

The contested nutritional supplements; food supplements; dietary and nutritional

supplements are substances prepared for special dietary requirements, with the

purpose of treating or preventing disease. Bearing this in mind, their purpose is

similar to that of pharmaceutical preparations for human use (substances used to

treat disease) insofar as they are used to improve a patient’s medical condition. The

according to the category of goods or services in question.

In the present case, the goods found to be identical or similar are directed at the

public at large, but also at business customers with specific professional knowledge

or expertise, such as medical practitioners.

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,

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It follows that the public’s degree of attentiveness may vary from average to high,

depending on the price, sophistication, specialised nature, or terms and conditions of

the purchased goods.

Given that the general public is more prone to confusion, the examination will

proceed on this basis.

The relevant territory is the United Kingdom.

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).

Both signs are word marks. The earlier mark consists of the element ‘SORFEROL’

and the contested sign consists of the element ‘SOLFERRO’. The elements of the

signs have no meaning for the general public in the relevant territory and are,

therefore, distinctive.

Visually and aurally, the signs coincide in the sequence (and the sounds) of letters

the contested sign.

Due to the coinciding letters in the signs, the differences are somewhat hidden and

would not be that easily perceived by the relevant part of the public.

Therefore, the signs are visually and aurally similar to a high degree.

Conceptually, neither of the signs has a meaning for the general public in the relevant

territory. Since a conceptual comparison is not possible, the conceptual aspect does not

influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, the

examination of likelihood of confusion will proceed.

d) Distinctiveness of the earlier mark

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The opponent did not explicitly claim that its mark is particularly distinctive by virtue

of intensive use or reputation.

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 general

public in the relevant territory. Therefore, the distinctiveness of the earlier mark must

be seen as normal.

general public whose degree of attention varies from average to high. Furthermore,

the earlier mark enjoys a normal degree of distinctiveness and the signs are visually

and aurally similar to a high degree, which similarity is based on the shared letters

and sounds analysed above.

It is taken into account that, 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.

Account is also 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,

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 United

Kingdom trade mark registration No 3 121 010. 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.

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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.

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.