STOZILTO | Decision 2462177 - Boehringer Ingelheim International GmbH v. Novartis AG
Date Published: Sep 28, 2017
OPPOSITION No B 2 462 177
Boehringer Ingelheim International GmbH, 55218 Ingelheim, Germany (opponent)
a g a i n s t
Novartis AG, 4002 Basel, Switzerland (applicant) represented by Milojevic, Sekulic & Associates, S.L., C/ Clara Campoamor Num. 5 BW-107, 03540 Alicante, Spain (professional representative).
On 30/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 462 177 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against all the goods of European Union trade mark application No 13 361 019. The opposition is based on international trade mark registration No 1 117 164 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.
- The goods
The goods on which the opposition is based are the following:
Class 5: Pharmaceutical preparations.
The contested goods are the following:
Class 5: Pharmaceutical preparations.
Pharmaceutical preparations are identically contained in both lists of goods.
- 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 public at large and healthcare professionals such as doctors, nurses and pharmacists.
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, healthcare professionals have a high degree of attentiveness when prescribing medicines. However, 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, as this is the best case scenario for the opponent.
- The signs
SPIOLTO | STOZILTO |
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).
Both signs are unitary word marks of similar lengths, with the earlier mark having seven letters, whilst the contested sign has eight letters. Neither of the signs have a meaning in the languages of the relevant territory nor for the goods in questions, and are, therefore, distinctive to a normal degree.
Visually, the signs coincide in their first and last three letters, ‘S***(*)LTO’. They also share a further two letters, ‘I’ and ‘O’, but these do not appear in the same positions. They differ in their second letters, ‘P’ in the earlier mark versus ‘T’ in the contested sign, and in the additional letter of the contested sign, namely a ‘Z’.
Therefore, the signs are visually similar to an average degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the signs coincide in the sound of their first and last three letters. However, they differ in the remaining letters. The signs will both be pronounced as three syllables, /SPI/OL/TO/ and /STO/ZIL/TO/, and, therefore, they only coincide in the last one, /TO/, and the similarities of the other shared letters are diluted by the presence of the differing ones. The signs have the same number of vowels (three) and they are the same letters, two ‘O’s and an ‘I’, but they are not in the same order, ‘I-O-O’ vs. ‘O-I-O’, which also noticeably alters the degree of aural similarity between the signs.
Therefore, the signs are aurally similar to a low degree.
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.
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 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.
- 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 come from the same or economically linked undertakings.
The Court has indicated that for the purposes of the global assessment, the average consumer of the products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect, and that the relevant public’s degree of attention is likely to vary according to the category of goods.
Whilst the relevant public only rarely has the chance to make a direct comparison between the different signs and must rely on an ‘imperfect recollection’ of them, a higher level of attention of the relevant public may lead to conclude that it will not confuse the marks, despite the lack of direct comparison between the trade marks (22/03/2011, T-486/07, CA, EU:T:2011:104, § 95).
The degree of attention of the relevant public, which has been defined as the general public, with regard to pharmaceutical preparations, independently of whether or not they are issued with a medical prescription, is generally high given that they are intended for the treatment or prevention of health issues.
As regards the remaining factors of the case, whilst the opponent is correct to argue that the signs share six letters out of seven or eight letters, the arrangement of these letters results only in an average degree of visual similarity, because even though the first letter is the same in both signs, the next three/four letters, (‘PIO’ vs ‘TOZI’), are noticeably different despite sharing two letters. Furthermore, and again despite the signs sharing six letters, the precise arrangement of the letters only leads to a low degree of aural similarity as explained above in section c).
The Court has stated that, when evaluating the importance attached to the degree of visual, aural and conceptual similarity between the signs, it is appropriate to take into account the category of goods and services in question and the way they are marketed (22/09/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 27). The category of the goods and services involved may increase the importance of one of the different aspects of similarity between signs (visual, aural, conceptual), because of how goods and services are ordered/purchase.
In the present case, the goods in question are pharmaceuticals. The marketing conditions of such goods do not justify giving more importance to the average degree of visual similarity than to the low degree of aural similarity.
Indeed, the Court has established that, for prescription medicines, the trade mark is written on a prescription by the prescribing doctor, hence the consumer is necessarily confronted with a visual representation of that mark before ordering them, in some circumstances orally, from a pharmacist (13/05/2015, T-169/14 Koragel/Choragon, EU:T:2015:280, § 79-80).
In the same judgment, the Court added that account should be taken of the generally higher level of attention of the consumer with regard to pharmaceutical preparations, independently of whether or not they are issued with a medical prescription and that it must be assumed that a pharmaceutical preparation will generally be the subject, before its purchase, of a visual inspection on the part of the consumer when the professional from whom he ordered that product presents it to him (Koragel/Choragon, § 81).
In the Opposition Division’s view, the visual and aural similarity between the signs is too low for a likelihood of confusion to exist on the part of the public especially bearing in mind that the public’s degree of attention is higher than average, and even taking into account that the goods are identical. For the sake of completeness, it is noted that a likelihood of confusion does not exist either on the part of the professional public given that the degree of attention on the part of this public is also very high.
Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Chantal VAN RIEL | Ric WASLEY | Vita VORONECKAITĖ |
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.