DermoFaes | Decision 2716432
Date Published: Oct 2, 2017
OPPOSITION No B 2 716 432
Dr. August Wolff GmbH & Co. KG Arzneimittel, Sudbrackstr. 56, 33611 Bielefeld, Germany (opponent), represented by Loesenbeck · Specht · Dantz, Am Zwinger 2, 33602 Bielefeld, Germany (professional representative)
a g a i n s t
Faes Farma, S.A., Calle Máximo Aguirre, 14, 48940 Lamiaco-Leioa (Vizcaya), Spain (applicant), represented by Sonia Álvarez López, Núñez de Balboa 31, 28001 Madrid
Spain (professional representative).
On 30/06/2017, the Opposition Division takes the following
1. Opposition No B 2 716 432 is partially upheld, namely for the following contested goods:
Class 3: Perfumery, including cosmetics, soaps, lotions, essential oils, dentifrices, washing preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations.
Class 5: Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use; baby food; plasters, materials for dressings; dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.
2. European Union trade mark application No 15 069 289 is rejected for all the above goods. It may proceed for the remaining goods.
3. Each party bears its own costs.
The opponent filed an opposition against some of the goods of European Union trade mark application No 15 069 289, namely against some of the goods in Class 1 and against all of the goods in Classes 3 and 5. The opposition is based on European Union trade mark registration No 5 440 111. 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 3: Soaps; perfumery, essential oils, cosmetics, hair lotions.
Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; disinfectants; fungicides.
The contested goods are the following:
Class 1: Chemical preparations for cosmetics.
Class 3: Perfumery, including cosmetics, soaps, lotions, essential oils, dentifrices, washing preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations.
Class 5: Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use; baby food; plasters, materials for dressings; materials for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.
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 1
The contested chemical preparations for cosmetics are similar to a low degree to the opponent's cosmetics in Class 3 as they can coincide in nature and in producer.
Contested goods in Class 3
Perfumery, cosmetics, soaps, essential oils are identically contained in both lists of goods.
The contested lotions include, as a broader category the opponent’s hair lotions. 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 washing preparations and other substances for laundry use; cleaning preparations overlap with the opponent’s soap in Class 3. Indeed, soap is a cleaning or emulsifying agent made by reacting animal or vegetable fats or oils with potassium or sodium hydroxide. Soaps often contain colouring matter and perfume and act by emulsifying grease and lowering the surface tension of water, so that it more readily penetrates open materials such as textiles. Since soap is used for cleaning purposes, it is identical to the contested washing preparations and other substances for laundry use; cleaning preparations.
The contested dentifrices are similar to the opponent’s pharmaceutical preparations in Class 5 as they have the same purpose. They can coincide in producer, end user and distribution channels.
The contested polishing, scouring and abrasive preparations are similar to the opponent’s soap in Class 3. Polishing preparations are used to make a product smooth and shiny by rubbing, especially with wax or an abrasive. Scouring preparations are used to clean or polish (a surface) by washing and rubbing, as with an abrasive cloth. Finally, abrasive preparations are substances or materials such as sandpaper, pumice, or emery, used for cleaning, grinding, smoothing, or polishing. All of these products are agents used for cleaning. To that extent, their nature and purpose are similar to those of soap. Furthermore, they target the same consumers and are sold in the same retail outlets and in the same section in supermarkets.
Contested goods in Class 5
Pharmaceutical and veterinary preparations; dietetic substances adapted for medical use, food for babies (or their synonym baby food); plasters, materials for dressings; disinfectants; fungicides are identically contained in both lists of goods.
The contested sanitary preparations include, as a broader category, the opponent’s sanitary preparations for medical purposes in Class 5. 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 preparations for destroying vermin; herbicides are similar to a high degree to the opponent’s fungicides in Class 5 as they have the same purpose. They can coincide in producer, consumers and distribution channels.
The contested dental wax is similar to the opponent’s pharmaceutical preparations in Class 5 as they have the same purpose. They can coincide in producer, consumers and distribution channels.
The contested materials for stopping teeth are similar to a low degree to the opponent’s pharmaceutical preparations in Class 5 as they can coincide in consumers and distribution channels.
- 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 in question.
In the present case, the goods found to be identical or similar (to various degrees) are directed at both qualified professionals (in particular, the goods in Class 1 and part of the goods in Class 5) and the general public at large, without any specific chemical or pharmaceutical knowledge (in particular, the goods in Class 3 and part of the goods in Class 5).
As regards the goods at issue covered in Class 1 as well as materials for stopping teeth in Class 5, these goods exclusively target the professional public. Therefore, the relevant public for assessing likelihood of confusion will be the professional public only (14/07/2005, T-126/03, Aladin, EU:T:2005:288, § 81).
As regards the goods in Class 5 that may target both the professional and the general public, the likelihood of confusion will be assessed against the perception of the general public, as it is a significant part of the public that will be more prone to confusion. Indeed, if a significant part of the relevant public for the goods at issue may be confused as regards the origin of the goods, this will be sufficient to establish a likelihood of confusion. It is not necessary to establish that all actual or potential consumers of the relevant goods are likely to be confused. This is also the best light in which the opponent's case can be considered.
As regards the remaining goods in Class 3 and 5 that target the general public, the likelihood of confusion must be assessed against the perception of the general public.
Furthermore, 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). 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.
Consequently, the degree of attention for the goods that are found identical or similar will vary from average to high, mainly depending on whether they affect the state of health and on the specialised nature of the goods.
- The signs
Earlier trade mark
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 earlier mark is a word mark composed of the single word element, made up of eight letters, ‘Dermowas’.
The contested sign is a word mark composed of the verbal element ‘DermoFaes'.
Both signs are word marks. Therefore, the words as such are protected, not their written form. Indeed, according to the case-law, a word mark is a mark consisting entirely of letters, of words or of associations of words, written in printed characters in normal font, without any specific graphic element (20/04/2005, T-211/03, Faber, EU:T:2005:135, § 33; 13/02/2007, T-353/04, Curon, EU:T:2007:47, § 74). Consequently, the protection offered by the registration of a word mark applies to the word(s) stated in the application for registration, i.e. ‘DERMOWAS’ and ‘DERMOFAES, respectively, not to the individual graphic characteristics which that mark might possess (22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is irrelevant whether the word marks are depicted using a mixture of lower and upper case letters.
In addition, since both signs are word marks, they have no elements that could be considered clearly more dominant than other elements.
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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
The elements 'WAS' (of the earlier mark) and 'FAES' (of the contested mark) are not meaningful in certain territories, for example, in the Czech Republic and Lithuania. Consequently, the Opposition Division finds it appropriate to focus the analysis of the decision on the Czech- and Lithuanian- speaking part of the public. This is also the best light in which the opponent's case can be considered.
Throughout the European Union, the common element ‘DERM(O)-’ evokes the term ‘DERM-’ (with the Greek root ‘DERMA’) which refers to a connective tissue that, together with the epidermis and the hypodermis, forms the skin, and is the root of many words related to skin, such as ‘dermatologie’ and ‘dermatologija’ (dermatology) in Czech and Lithuanian language, respectively. Consequently, this element has weaker distinctiveness in respect of the goods at issue.
As detailed above, the verbal elements 'WAS' (of the earlier mark) and 'FAES' (of the contested sign) have no meaning for the relevant public (general and professional) in the Czech Republic and Lithuania; consequently, they have normal distinctiveness.
Visually, the signs coincide in seven letters, that is, ‘DERMO*A*S’, out of the eight letters of which the earlier mark is composed and out of the nine letters of which the contested sign is composed. They differ in their middle letters, ‘W’ in the earlier mark and ‘F*E’ in the contested sign.
The beginnings of the conflicting marks are identical: albeit weak, they are not devoid of distinctiveness. 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.
In addition, the signs coincide in their ending letter ‘S’ and in their middle letter ‘A’. Furthermore, due to their position, the difference of the letters ‘W’ in the earlier mark, and ‘F*E’ in the contested sign has a rather limited impact on the overall impression created by the signs and it may be overlooked by the relevant public, which will not overanalyse these verbal elements, given that they are both, as a whole, meaningless terms.
Therefore, the signs are visually similar to a high degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‘DERMO*A*S’, present identically in both signs. The pronunciation differs in the sound of the different middle letters ‛W’ of the earlier mark and ‛F*E’ of the contested sign, which however have a rather limited impact on the overall impression created by the signs, due to their position in the middle of the signs, considering that the earlier mark and the contested sign have identical beginnings and endings.
Therefore, the signs are aurally similar to a high degree.
Conceptually, the semantic content of the conflicting signs and their elements is discussed above. As regards the general public and the professional public, both signs will evoke the concepts of ‘skin’ which however has weaker distinctiveness and to this extent they are conceptually 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.
- 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 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, despite the presence of a weaker element in the mark as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
The likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
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 covered are from the same or economically linked undertakings.
The signs contain the same seven letters, five of which form the beginning of both marks. While it is acknowledged that the initial common part of the sign is of weaker distinctiveness, it is nevertheless not devoid of distinctive character. In addition, the ending consonant ('A' and 'S') of the earlier mark and of the contested sign are identical; furthermore the signs share the vowel ‘A’ in their ending part.
The differences between the marks at issue are not sufficient to overcome their similarities as regards the goods that are identical and similar to an average degree.
Account must be 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).
As set out above, considering that the signs are visually and aurally similar to a high degree and conceptually similar to a low degree for the relevant public, the differences between the signs are incapable of counteracting the similar overall impressions created by the signs sufficiently to enable the relevant public with an imperfect recollection to safely distinguish between them in relation to goods that are identical or similar to an average degree, even where the degree of attention of consumers will be high.
This is however not the case as far as the goods that are similar to a low degree are concerned (which are all exclusively targeting the professional public, that is also less prone to confusion), since the similarity of the signs does not outweigh the low degree of similarity of those goods. Since there exists no likelihood of confusion in the above chosen territories which represents the best-case scenario for the opponent, no likelihood of confusion can exist in the remaining part of the European Union.
Given all the foregoing, particularly the facts that the signs are visually and aurally highly similar as well as conceptually similar to a low degree and that part of the goods are identical and similar to an average degree, the Opposition Division is of the opinion that the relevant public would believe that these goods that are identical or similar to an average degree come from the same undertaking or economically linked undertakings.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Czech- and Lithuanian- speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration. 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.
It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to an average degree to those of the earlier trade mark.
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.
Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
VAN DEN EEDE
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.