OPPOSITION No B 2 521 261

Terapia S.A., Str. Fabricii no.124, Cluj-Napoca, 400632 jud. Cluj, Romania (opponent)

a g a i n s t

Innopharm Gyógyszergyártó Korlátolt Felelősségű Társaság, Budapest, Csillaghegyi út 19-21, 1037, Hungary (applicant), represented by Engel És Eszes Ügyvédi Iroda, Budapest, Horvát utca 14-24, 1027, Hungary (professional representative)

On 16/02/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 521 261 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 Community trade mark application No 13 438 809. The opposition is based on Romanian trade mark registration No 110 788. The opponent invoked Article 8(1)(b) CTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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, inter alia, the following:

Class 5: Pharmaceutical and veterinary products; nutritive supplements; hygienic products for medical use; dietetic substances adapted for medical use, food for babies; plasters and materials for dressings; materials for stopping teeth and dental molds; disinfectants; product for vermin, fungicides, herbicide.

The contested goods are the following:

Class 5: Aldehydes for pharmaceutical purposes; alginate dietary supplements; aloe vera preparations for pharmaceutical purposes; amino acids for medical purposes; anti-oxidant food supplements; antioxidants; antibiotics; antibiotics for human use; mineral food supplements; antioxidant pills; mineral water salts; mineral waters for medical purposes; asthmatic tea; bacteriological preparations for medical and veterinary use; cultures for medical use; cultures for veterinary use; bacterial poisons; bacterial preparations for medical and veterinary use; medicinal ointments; balms for medical purposes; balsamic preparations for medical purposes; biological tissue cultures for veterinary purposes; biological preparations for medical purposes; biological preparations for veterinary purposes; biological tissue cultures for medical purposes; skin care lotions [medicated]; skin care creams for medical use; pharmaceutical preparations for skin care; wheat germ dietary supplements; melissa water for pharmaceutical purposes; gallic acid for pharmaceutical purposes; stick liquorice for pharmaceutical purposes; liquorice for pharmaceutical purposes; fennel for medical purposes; dietary fiber; yeast for pharmaceutical purposes; yeast dietary supplements; yeast extracts for pharmaceutical purposes; elixirs [pharmaceutical preparations]; enzymes for medical purposes; enzyme preparations for medical purposes; tonics [medicines]; tonics [medicines]; enzyme dietary supplements; eucalyptol for pharmaceutical purposes; eucalyptus for pharmaceutical purposes; sterilising preparations; disinfectants; disinfectants and antiseptics; germicides; disinfectants [other than disinfectant soap]; disinfectants for medical instruments; fumigants; glucose for medical purposes; by-products of the processing of cereals for dietetic or medical purposes; glucose dietary supplements; glucose preparations for medical purposes; fungicides; antifungal preparations; fungicides; fungicidal fungal agents; medicinal tea; beverages adapted for medicinal purposes; medicinal herbs; lozenges for pharmaceutical purposes; extracts of medicinal herbs; pharmaceutical preparations; herbal teas for medicinal purposes; medicinal herbs; herbal beverages for medicinal use; medicinal herbal extracts for medical purposes; drugs for medical purposes; lozenges for pharmaceutical purposes; medicinal tea; dragees [medicines]; medicated food supplements; herbal medicine; extracts of medicinal plants; pharmaceuticals and natural remedies; pharmaceutical compositions; pharmaceutical sweets; pharmaceutical preparations; smoking herbs for medical purposes; preparations for use as additives to food for human consumption [medicated]; herbal teas for medicinal purposes; tisanes [medicated beverages]; urinary tract preparations; anti-uric preparations; vaginal washes; douching preparations for medical purposes; irish moss for medical purposes; iodine; iodine for pharmaceutical purposes; iodides for pharmaceutical purposes; camphor oil for medical purposes; camphor for medical purposes; candy for medical purposes; dill oil for medical purposes; capsules for medicines; parasiticides; parasiticides; tissues impregnated with pharmaceutical lotions; disinfectants impregnated into tissues; wipes for medical use; ointments for pharmaceutical purposes; sulfur sticks [disinfectants]; flowers of sulfur for pharmaceutical purposes; angostura bark for medical purposes; mangrove bark for pharmaceutical purposes; quebracho bark for medical use; condurango bark for medical purposes; croton bark; collodion for pharmaceutical purposes; extracts of hops for pharmaceutical purposes; lupulin for pharmaceutical purposes; air purifying preparations; washes (disinfectant -) [other than soap]; washes (sterilizing -); royal jelly for pharmaceutical purposes; royal jelly dietary supplements; mint for pharmaceutical purposes; menthol; cultures of microorganisms for medical and veterinary use; mustard for pharmaceutical purposes; mustard powder for medical purposes; mustard oil for medical purposes; mustard preparations for medical purposes; medicinal roots; barks for pharmaceutical purposes; preparations of trace elements for human and animal use; trace element preparations for human use; cachets for pharmaceutical purposes; medicinal oils; lozenges for pharmaceutical purposes; cough pastilles for medical use; pollen dietary supplements; propolis for pharmaceutical purposes; propolis dietary supplements; chewing gum for medical purposes; chewing gum for medical purposes; chewing gum for medical purposes; salts for medical purposes; medicated dental rinses; mouthwashes for medical purposes; mouthwashes [gargles] for medical purposes; mouthwashes for medical purposes; mouthwashes for medical purposes; medicated mouth spray; dental rinse; antiseptic mouthwashes; antimicrobial mouthwashes; serums; syrups for pharmaceutical purposes; tinctures for medical purposes; detergents for medical purposes; vaccines; vaccines; vitamin tablets; vitamin preparations; vitamin supplements; effervescent vitamin tablets; mixed vitamin preparations; gelatine for medical purposes; gelatine for medical purposes; fumigation preparations for medical purposes; gurjun [gurjon, gurjan] balsam for medical purposes; bronchodilating preparations.

The earlier Romanian trade mark No 110 788 is registered for, inter alia, the entire class heading of Class 5 of the Nice Classification. It was filed on 15/02/2010. In accordance with the Common Communication on the Implementation of ‘IP Translator’ of the European Trade Mark and Design Network, the Office considers that its scope of protection includes both the natural and usual meaning of the general indications in the heading and the alphabetical list of the class concerned in the edition of the Nice Classification in force at the time when the filing was made, in this case the 9th edition.

The contested aldehydes for pharmaceutical purposes; alginate dietary supplements; aloe vera preparations for pharmaceutical purposes; amino acids for medical purposes; anti-oxidant food supplements; antioxidants; antibiotics; antibiotics for human use; mineral food supplements; antioxidant pills; mineral water salts; mineral waters for medical purposes; asthmatic tea; bacteriological preparations for medical and veterinary use; cultures for medical use; cultures for veterinary use; bacterial poisons; bacterial preparations for medical and veterinary use; medicinal ointments; balms for medical purposes; balsamic preparations for medical purposes; biological tissue cultures for veterinary purposes; biological preparations for medical purposes; biological preparations for veterinary purposes; biological tissue cultures for medical purposes; skin care lotions [medicated]; skin care creams for medical use; pharmaceutical preparations for skin care; wheat germ dietary supplements; melissa water for pharmaceutical purposes; gallic acid for pharmaceutical purposes; stick liquorice for pharmaceutical purposes; liquorice for pharmaceutical purposes; fennel for medical purposes; dietary fiber; yeast for pharmaceutical purposes; yeast dietary supplements; yeast extracts for pharmaceutical purposes; elixirs [pharmaceutical preparations]; enzymes for medical purposes; enzyme preparations for medical purposes; tonics [medicines]; tonics [medicines]; enzyme dietary supplements; eucalyptol for pharmaceutical purposes; eucalyptus for pharmaceutical purposes; sterilising preparations; disinfectants; disinfectants and antiseptics; germicides; disinfectants [other than disinfectant soap]; disinfectants for medical instruments; fumigants; glucose for medical purposes; by-products of the processing of cereals for dietetic or medical purposes; glucose dietary supplements; glucose preparations for medical purposes; fungicides; antifungal preparations; fungicides; fungicidal fungal agents; medicinal tea; beverages adapted for medicinal purposes; medicinal herbs; lozenges for pharmaceutical purposes; extracts of medicinal herbs; pharmaceutical preparations; herbal teas for medicinal purposes; medicinal herbs; herbal beverages for medicinal use; medicinal herbal extracts for medical purposes; drugs for medical purposes; lozenges for pharmaceutical purposes; medicinal tea; dragees [medicines]; medicated food supplements; herbal medicine; extracts of medicinal plants; pharmaceuticals and natural remedies; pharmaceutical compositions; pharmaceutical sweets; pharmaceutical preparations; smoking herbs for medical purposes; preparations for use as additives to food for human consumption [medicated]; herbal teas for medicinal purposes; tisanes [medicated beverages]; urinary tract preparations; anti-uric preparations; vaginal washes; douching preparations for medical purposes; irish moss for medical purposes; iodine; iodine for pharmaceutical purposes; iodides for pharmaceutical purposes; camphor oil for medical purposes; camphor for medical purposes; candy for medical purposes; dill oil for medical purposes; capsules for medicines; parasiticides; parasiticides; tissues impregnated with pharmaceutical lotions; disinfectants impregnated into tissues; wipes for medical use; ointments for pharmaceutical purposes; sulfur sticks [disinfectants]; flowers of sulfur for pharmaceutical purposes; angostura bark for medical purposes; mangrove bark for pharmaceutical purposes; quebracho bark for medical use; condurango bark for medical purposes; croton bark; collodion for pharmaceutical purposes; extracts of hops for pharmaceutical purposes; lupulin for pharmaceutical purposes; air purifying preparations; washes (disinfectant -) [other than soap]; washes (sterilizing -); royal jelly for pharmaceutical purposes; royal jelly dietary supplements; mint for pharmaceutical purposes; menthol; cultures of microorganisms for medical and veterinary use; mustard for pharmaceutical purposes; mustard powder for medical purposes; mustard oil for medical purposes; mustard preparations for medical purposes; medicinal roots; barks for pharmaceutical purposes; preparations of trace elements for human and animal use; trace element preparations for human use; cachets for pharmaceutical purposes; medicinal oils; lozenges for pharmaceutical purposes; cough pastilles for medical use; pollen dietary supplements; propolis for pharmaceutical purposes; propolis dietary supplements; chewing gum for medical purposes; chewing gum for medical purposes; chewing gum for medical purposes; salts for medical purposes; medicated dental rinses; mouthwashes for medical purposes; mouthwashes [gargles] for medical purposes; mouthwashes for medical purposes; mouthwashes for medical purposes; medicated mouth spray; dental rinse; antiseptic mouthwashes; antimicrobial mouthwashes; serums; syrups for pharmaceutical purposes; tinctures for medical purposes; detergents for medical purposes; vaccines; vaccines; vitamin tablets; vitamin preparations; vitamin supplements; effervescent vitamin tablets; mixed vitamin preparations; gelatine for medical purposes; gelatine for medical purposes; fumigation preparations for medical purposes; gurjun [gurjon, gurjan] balsam for medical purposes; bronchodilating preparations are identical to the opponent’s pharmaceutical and veterinary products; nutritive supplements; hygienic products for medical use; dietetic substances adapted for medical use, food for babies; plasters and materials for dressings; materials for stopping teeth and dental molds; disinfectants; products for vermin, fungicides, herbicide, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods cover the alphabetical list of the Class 5 and include or overlap with the contested goods.

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 public at large and at medical professionals with specific professional knowledge or expertise.

It is apparent from the case-law that, as far as pharmaceutical preparations and dietetic substances adapted for medical use are concerned, the relevant public’s degree of attention is relatively high, whether or not these preparations are issued on prescription (judgment of 15/12/2010, T‑331/09 ‘Tolposan’, paragraph 26; and judgment of 15/03/2012, T‑288/08 ‘Zydus’, paragraph 36 and quoted case-law).

In particular, medical professionals have a high degree of attentiveness when prescribing medicines. Non-professionals also display a higher degree of attention, regardless of whether or not the pharmaceutical products are sold with a prescription, as these goods affect their state of health.

3. The signs

MAGNESTRES+B6	Magnexpress
Earlier trade mark	Contested sign

The relevant territory is Romania.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark is a word mark composed of the verbal element ‘MAGNESTRES’, the sign ‘+’ and the combination ‘B6’. The element ‘MAGNE’ of the earlier mark will be associated with magnesium and ‘B6’ of the same mark will be associated with vitamin B6. The verbal element ‘STRES’ of the earlier mark will be perceived as ‘mental, emotional, or physical strain or tension’ (information extracted on 11/02/2016 from Dexonline Dictionary at https://dexonline.ro/definitie/stres). The sign ‘+’ will be perceived as ‘plus’, ‘a composing element which means more, additional’ (information extracted on 11/02/2016 from Dexonline Dictionary at https://dexonline.ro/definitie/plus).

The contested sign is a work mark composed of the verbal element ‘Magnexpress’. The element ‘Magne’ of the contested mark will be associated with magnesium and the element ‘(e)xpress’ of the same mark will be perceived as the misspelling of the word ‘expres’ as ‘clearly indicated or shown; explicitly stated’ (information extracted on 11/02/2016 from Dexonline Dictionary at https://dexonline.ro/definitie/expres).

As regards the distinctive character of the sign’s verbal elements, the element ‘MAGNE’ of both signs will be associated with a specific pharmaceutical substance, magnesium. The same applies for the element ‘B6’ of the earlier mark that will be associated with a specific vitamin. The sign ‘+’ will be perceived as ‘plus’, ‘a composing element which means more, additional’. Bearing in mind that the relevant goods are medical and pharmaceutical products, it is considered that these elements are weak for all the relevant goods, which belong to the border categories of pharmaceutical and veterinary products; nutritive supplements; hygienic products for medical use; dietetic substances adapted for medical use, food for babies; plasters and materials for dressings; materials for stopping teeth and dental molds; disinfectants; products for vermin, fungicides, herbicide. The public understands the meaning of these elements and will not pay as much attention to these weak elements as to the other, more distinctive, elements of the marks. Consequently, the impact of these weak elements is limited when assessing the likelihood of confusion between the marks at issue.

The element ‘STRES’ of the earlier mark will be associated with ‘a mental, emotional, or physical strain or tension’. The combination ‘MAGNESTRES+B6’ could be perceived as pharmaceutical product that contains magnesium used for reducing the stress having in addition vitamin B6. Bearing in mind that the relevant goods are medical and pharmaceutical products, it is considered that this element could indicate the purpose of these products, namely to reduce the stress and therefore, it is allusive for some of the relevant goods, namely for the goods belonging to the border categories of pharmaceutical and veterinary products; nutritive supplements; dietetic substances adapted for medical use, food for babies. The public understands the meaning of these elements and will not pay as much attention to these weak elements as to the other, more distinctive, elements of the marks. Consequently, the impact of these weak elements is limited when assessing the likelihood of confusion between the marks at issue. For the rest of the relevant goods, the distinctive character of these elements is normal.

The element ‘(e)xpress’ of the contested mark will be associated with ‘clearly indicated or shown; explicitly stated’. Bearing in mind that the relevant goods are medical and pharmaceutical products, it is considered that this element could indicate the fact that the relevant goods contain a specific substance and therefore, it is allusive for all the relevant goods that belong to the border categories of pharmaceutical and veterinary products; nutritive supplements; hygienic products for medical use; dietetic substances adapted for medical use, food for babies; plasters and materials for dressings; materials for stopping teeth and dental molds; disinfectants; products for vermin, fungicides, herbicide. The combination ‘magnexpress’ could be perceived as referring to medical and pharmaceutical products that contain explicitly magnesium. The public understands the meaning of these elements and will not pay as much attention to these weak elements as to the other, more distinctive, elements of the marks. Consequently, the impact of these weak elements is limited when assessing the likelihood of confusion between the marks at issue.

The marks have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.

Visually, the signs coincide in sequence of letters ‘‘MAGNE’ of both signs. However, they differ in the additional verbal elements, ‘STRES’ and ‘B6’ separated by the sign ‘+‘ of the earlier mark and the verbal element ‘xpress’ of the contested mark. Although the marks have in common the double letter ‘S’ and the letters ‘RE’, these are included in different words as it is detailed above.

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

Aurally, the pronunciation of the signs coincides in the syllables, /MAG/NE/, present identically in both signs. The pronunciation differs in the syllables, /STRES/ of the earlier sign and /X/PRESS/ of the contested mark, as well as in the pronunciation of the sign ‘+’ as /PLUS/ and the combination ´B6´as /BE/ȘASE/ in the earlier mark. Although the marks have in common the double letter ‘S’ and the letters ‘RE’, these are included in different words as it is detailed above. The rhythms and the intonation of the marks are different, the earlier mark being composed of six syllables, whereas the contested mark is composed only of four syllables.

Therefore, the signs are aurally similar to a low degree.

Conceptually, the element ‘MAGNE’ of both marks will be associated with magnesium.

The verbal element ‘STRES’ of the earlier mark will be perceived as ‘mental, emotional, or physical strain or tension’ (information extracted on 11/02/2016 from Dexonline Dictionary at https://dexonline.ro/definitie/stres). The element ‘B6’ of the same mark will be associated with vitamin B6 and the sign ‘+’ will be perceived as ‘plus’, ‘a composing element which means more, additional’ (information extracted on 11/02/2016 from Dexonline Dictionary at https://dexonline.ro/definitie/plus). The combination ‘MAGNESTRES+B6’ could be perceived as pharmaceutical product that contains magnesium used for reducing the stress having also vitamin B6.

The element ‘(e)xpress’ of the contested mark will be perceived as the misspelling of the word ‘expres’ as ‘clearly indicated or shown; explicitly stated’ (information extracted on 11/02/2016 from Dexonline Dictionary at https://dexonline.ro/definitie/expres). The combination ‘Magnexpress’ could be perceived as referring to medical and pharmaceutical products that contain explicitly magnesium.

Therefore, the signs are conceptual similar to a low 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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low in relation to the some of the relevant goods from the perspective of the public in the relevant territory, namely for pharmaceutical and veterinary products; nutritive supplements; dietetic substances adapted for medical use, food for babies. For the rest of the relevant goods, the earlier trade mark as a whole has no specific meaning from the perspective of the public in the relevant territory, and, for this part of the public, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some weak elements in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components’ (judgment of 11/11/1997, C‑251/95, ‘Sabèl’, paragraph 22 et seq..

The goods found to be identical are directed at the public at large and at medical professionals. The level of attention of the relevant public will be higher than average.

The signs are similar to the extent that they share the sequence of letters ‘MAGNE’. However, this element was found to be weak for all the relevant goods. It is now an established practice that, when the marks share an element with low distinctiveness, the assessment of likelihood of confusion will focus on the impact of the non-coinciding components on the overall impression conveyed by the marks (see Guidelines for Examination in the Office, Part C, Opposition).

Aurally, the earlier mark will be pronounced in six syllables, whereas the contested sign will be pronounced in four syllables, by the relevant public. The rhythm and the intonation of the signs are different.

The signs differ in the elements ‘STRES’ and ‘B6’ separated b the sign ‘+‘ of the earlier mark and the verbal element ‘xpress’ of the contested mark which add visual, aural and conceptual differences to the signs at issue. The Opposition Division considers that, despite identity of the goods at issue, these visual, aural and conceptual differences, combined with the higher level of attention of the relevant public, suffice to offset the similarities between the signs that lie in the weak element ‘MAGNE’.

Considering all the above, the Opposition Division finds that the abovementioned differences are enough to outweigh the similarities between the signs and that there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

COSTS

According to Article 85(1) CTMR, 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 (7)(d)(ii) CTMIR, 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

Zuzana WALTHER

Francesca DINU

Julie GOUTARD

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 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) CTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Article 2(30) CTMFR) has been paid.