FARINGOGERMINA | Decision 2473083 - TERAPIA S.A. v. D.M.G. ITALIA S.r.l.
Date Published: Oct 2, 2017
OPPOSITION No B 2 473 083
Terapia S.A., Str. Fabricii no. 124, Cluj-Napoca, jud. Cluj, Romania, 400632 Cluj-Napoca, Romania (opponent)
a g a i n s t
D.M.G. Italia S.r.l., Via Laurentina Km. 26,700, 00040 Pomezia (RM), Italy (applicant), represented by Studio Ferrario S.R.L., Via Collina, 36, 00187 Rome, Italy (professional representative).
On 01/03/2017, the Opposition Division takes the following
1. Opposition No B 2 473 083 is upheld for all the contested goods.
2. European Union trade mark application No 13 392 832 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 350.
The opponent filed an opposition against all the goods of European Union trade mark application No 13 392 832. The opposition is based on, inter alia, Romanian trade mark registration No 1 178. The opponent invoked Article 8(1)(b) and 8(5) 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 shall 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 shall be rejected.
The applicant requested that the opponent submit proof of use of the trade marks on which, inter alia, the opposition is based, namely Romanian trade mark registration No 1 178.
The request was submitted in due time and is admissible as the earlier trade marks were registered more than five years prior to the relevant date mentioned above.
The contested application was published on 03/11/2014. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in Romania from 03/11/2009 to 02/11/2014 inclusive.
Furthermore, the evidence must show use of the trade marks for the goods on which the opposition is based, namely the following:
Class 5 Medicinal products under the form of injectable vials, tablets and sugar-coated pills and any other pharmaceutical forms.
According to Rule 22(3) EUTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.
On 26/11/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 01/02/2016 to submit evidence of use of the earlier trade marks. On 29/01/2016 and 01/02/2016, within the time limit, the opponent submitted evidence of use.
Furthermore, on 31/08/2015, the opponent had submitted another batch of evidence to substantiate its opposition. In principle, all the evidence submitted before or within the substantiation period for proof of use has to be taken into account. Therefore, this first batch of evidence will also be listed and assessed in the present proceedings.
The evidence to be taken into account is, inter alia, the following:
First batch of evidence
1) An extract from the website of a Romanian pharmacy, www.spiterie.ro, with an illustration of a product bearing the mark ‘FaringoImun’.
2) Surveys on brand awareness of the mark ‘FARINGOSEPT’, including key information about the brand performance (public recognition and promotional activities), its marketing environment and competitors and the purchasing habits of consumers using the relevant products:
- A study conducted by GfK Romania in May 2005, among people of different ages and social and educational backgrounds, with a total of 205 respondents. The study reports results on the brand awareness of the trade mark ‘FARINGOSEPT’, in particular 52% top of mind awareness (question: Please tell me all the medicines for sore throat you know, even if you haven’t used them), 79% spontaneous awareness (question: One answer only?), and 100% assisted awareness (question: Which of these medicines for sore throat you have heard?). According to the survey, 90% of the respondents have used ‘FARINGOSEPT’ products.
- A study conducted by GfK Romania in January 2006, among people of different ages and social and educational backgrounds, with a total of 601 respondents. As in the previous survey, the key results in relation to brand awareness were the following: 55% top of mind awareness, 78% spontaneous awareness, 99% assisted awareness and 51% recognition of a particular brand advertisement run by the opponent, which 71% of respondents associated with ‘Faringosept’ products.
- A study conducted on the same terms by GfK Romania in April 2007, comprising 513 interviewees with the following results: 48% top of mind awareness, 73% spontaneous awareness and 99% assisted awareness.
- A study, entitled ‘GPWatch – Faringosept’, conducted by MercuryResearch in Romania, from November to December 2006. Although the study was submitted in Romanian with no corresponding translation, it can be seen in a diagram that the opponent’s mark ‘Faringosept’ appears in first place, along with other brands such as ‘Tantum Verde’, ‘Strepsils’, ‘Neo-angin’, etc.
- A survey, entitled ‘Sore Throat Medicines’, carried out in April 2010 by GfK Romania and involving 414 respondents in total. Some results of the survey show that, in terms of ‘spontaneous associations with sore throat medicines’, 21% of the respondents indicated the opponent’s brand in answer to the question: First name that comes to mind when you think of sore throat medications, single answer. Likewise, similarly structured results involving 311 respondents show 41% top of mind awareness, 62% spontaneous awareness and 98% assisted awareness. Furthermore, the survey also gives information about the awareness of advertisements for the opponent’s brand; the results show 23% top of mind awareness (question: Please tell me for what medicines for sore throat have you seen or heard any advertising in the last 6 months), 31% spontaneous awareness and 48% assisted awareness. When asked through which channel the advertising reached them, 99% of respondents pointed to TV advertising and only 15% to stand advertising in pharmacies.
3) Extracts from reports, entitled ‘Pharma & Hospital Report’, comprising information about the nationwide consumption of medicinal products, giving units and values. The reports were produced by a company called Cegedim and signed in Bucharest on 02/08/2013. They contain figures showing product sales (in units and generated sales) for the relevant period (2008-2013) and in relation to different throat preparations, including the opponent’s ‘Faringosept’ and ‘Faringonatur’. By way of example, the brand ‘Faringosept’ has generated sales on the Romanian market of more than 2 million units in 2008, over 1.6 million units in 2009, 1.4 million units in 2010, approximately 1.4 million units in 2012 and more than 600 000 units in part of 2013.
4) A decision of 07/07/2010 of the Civil Section of Bucharest District Court of Romania, with reference to a decision that the opponent’s mark was a reputed trade mark in the relevant territory. The original decision is accompanied by an English translation.
5) Articles published on the website www.zf.ro on 12/10/2011 and 29/11/2012, entitled ‘With 50 years behind them, brands such as Penicilina or Algocalmin are still in pharmacies…’ and ‘Brands that have stood the test of time’, accompanied by an English translation, with a reference to the opponent’s brand stating ‘another “veteran” of the local production of medicines is Faringosept, released by Terapia Cluj more than 30 years ago. Today, the brand has export sales of EUR 13 million, generating 86% of Terapia Ranbaxy external supplies.’
6) Samples of packages of the opponent’s products bearing the marks ‘FaringoSept’, ‘FaringoNatur’, ‘Faringo Hot Drink’ and ‘FaringoTusiv’, with expiry dates between 07/2016 and 03/2018.
Second batch of evidence, dated 31/08/2015
This contains, inter alia, the following:
- Annex 2: copies of 60 invoices (with translations in English), issued by the opponent between November 2009 and November 2014, and addressed to different pharmacies and drug stores in Romania, in particular Bucharest, Sibiu, Brașov, Buzău, Cluj-Napoca, Timișoara and Argeș. The invoices show total sales of products bearing the mark ‘Faringosept’, in which it can be seen that the products are offered in the form of compressed lozenges.
- Annex 5: extracts from verified reports by the independent market research company Cegedim (reference is made to the first batch of evidence, point 3), certifying the total number of sales of the opponent’s products bearing, inter alia, the relevant trade mark, ‘Faringosept’; the report was signed on 16/12/2015. The information concerns the relevant period between 2009 and 2015, in which, for instance, the total sales for 2014 amount to 1 602 667 units. It must be mentioned that the opponent’s products bearing the mark ‘Faringosept’ are categorised as throat preparations.
- Annex 6: translations of the product packages referred to in the first batch of evidence, point 6.
The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods for which the earlier mark is registered.
The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.
Place of use
The materials listed above show that the place of use is Romania. This can be inferred from the language of the documents (Romanian), the currency used (Romanian lei) and the clients, listed above, to which the invoices were issued in Romania, in particular pharmacies domiciled in the regions of Bucharest, Sibiu, Brașov, Buzău, Cluj-Napoca, Timișoara and Argeș. Therefore, the evidence is considered to relate to the relevant territory, Romania.
Time of use
Most of the evidence, particularly the invoices and the reports of total sales, as well as the article published by a national media channel, is dated within the relevant period of time. Although some of the evidence does not contain any clear reference to time (e.g. some packages), in principle, this evidence may still be taken into account as long as it contains conclusive indirect proof that the mark has been put to genuine use during the relevant period of time.
Extent of use
Concerning the extent of the use made of the earlier mark, account must be taken, in particular, of the commercial volume of all the acts of use on the one hand and the duration of the period in which those acts of use occurred, and the frequency of those acts, on the other (08/07/2004, T-334/01, Hipoviton, EU:T:2004:223, § 35). However, use need not, therefore, always be quantitatively significant for it to be deemed genuine, as that depends on the characteristics of the goods or services and the market.
In the present case, the opponent submitted sufficient evidence containing references to the opponent’s sales figures during the period from November 2009 to November 2014, including examples of invoices issued throughout the relevant period. The opponent states that the copies of the invoices submitted are only examples of its commercial activity and do not represent exhaustive sales figures for the relevant period; this may be inferred from the extracts listed in Annex 5 verifying its total sales between 2009 and 2015 (in units and amounts).
Therefore, taking into account the invoices submitted in conjunction with the remaining evidence, the product samples and the article published by a national media channel, as well as the specifications of the relevant pharmaceutical market, especially its complexity and competitive character, the opponent provided the Opposition Division with sufficient information concerning the commercial volume (quantity of units sold and turnover generated in the relevant period), the territorial scope (Romania), the duration and the frequency of use.
Nature of use
The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).
However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.
According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.
According to case-law, when applying the abovementioned provision the following should be considered:
…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.
Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories.
(14/07/2005, T-126/03, Aladin, EU:T:2005:288).
In the present case, the evidence proves use only for tablets and sugar-coated pills for treatment of sore throat. These goods can be considered to form an objective subcategory of tablets and sugar-coated pills and any other pharmaceutical forms, namely such products used as throat preparations. Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for tablets and sugar-coated pills for treatment of sore throat.
Given that proof of use has been found for all the goods protected by the earlier Romanian mark in question, the Opposition Division will proceed purely on this basis and the other marks will be set aside unless necessary.
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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Romanian trade mark registration No 1 178.
- The goods
The goods on which the opposition is based are the following:
Class 5: tablets and sugar-coated pills for treatment of sore throat
The contested goods are the following:
Class 5: Cachets for pharmaceutical purposes; mouth sprays for medical use; medicated throat sprays; mouth washes; syrups for pharmaceutical purposes.
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.
In principle, specific pharmaceuticals are considered similar to other specific pharmaceuticals. In the present case, the contested medicated throat sprays are highly similar to the opponent’s tablets and sugar-coated pills for treatment of sore throat. These goods are used for the same medical purposes, namely the treatment of sore throat. Furthermore, the contested cachets for pharmaceutical purposes; mouth sprays for medical use; mouth washes; syrups for pharmaceutical purposes are considered similar to the opponent’s goods, because these goods may have the same nature and methods of use, for instance the tablets and pills and the cachets, or may be used for relieving the symptoms of sore throat and related conditions. These goods usually have the same relevant public and the same distribution channels, mostly pharmacies and drug stores, and they may be manufactured by the same pharmaceutical companies. Apart from that, the goods may be in competition with each other to the extent that they are alternative preparations for the treatment of sore throat.
- 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 similar to various degrees are directed at the public at large, as well as at the professional public with knowledge of or expertise in chemistry or medicine.
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 they are 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).
In particular, medical professionals have a high degree of attentiveness when prescribing medicines. Non-professionals also show a higher degree of attention, regardless of whether the pharmaceuticals are sold with or without prescription, as these goods affect their state of health.
In the case of pharmaceutical goods targeting only specialists for professional use, the likelihood of confusion must be assessed from the point of view of only that specialist public (26/04/2007, C-412/05 P, Travatan, EU:C:2007:252, § 66). However, the average consumer of non-prescription pharmaceuticals sold over the counter, as in the present case, is the general public. Consequently, for the purposes of further examination, the Opposition Division finds it appropriate to proceed with the analysis of the similarities of the signs from the perception of the general public, which is more prone to confusion.
- The signs
Earlier trade mark
The relevant territory is Romania and the comparison will be focused on the public at large, as it is more prone to confusion, taking into consideration the nature of the relevant goods.
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 figurative mark consisting of the verbal element ‘FARINGOSEPT’ in a standard font. The contested sign is a word mark consisting of the sole verbal element ‘FARINGOGERMINA’.
Each of the signs under comparison is composed of an arbitrary verbal element that does not exist as such in the relevant language. However, the Court has held that, although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).
In the present case, the element ‘FARINGO’ in the signs may be perceived by a significant part of the relevant public as a reference to the ‘throat’ or more specifically to the ‘pharynx’ as ‘a part of the alimentary canal between the mouth and the oesophagus’ (from Greek, ‘pharynx’, https://dexonline.ro/definitie/faringo).
The word ‘SEPT’ in the second part of the earlier mark may be understood by a part of the public as its English equivalent ‘septum’ meaning ‘a dividing partition between two tissues or cavities’ (https://dexonline.ro/definitie/sept). However, this element might be more familiar to the public in its use in expressions such as ‘anti-septic’ preparations, in which it designates a substance that kills germs.
The verbal element ‘GERMINA’ in the second part of the contested sign will be perceived by the relevant public as a form of the Romanian verb ‘germinare’, meaning ‘germinate’ (https://dexonline.ro/definitie/germina), namely to ‘grow or cause to grow; develop’, and it might be seen as a reference to the multiplication of germ cells in an organism or to the term ‘germs’ in general.
Bearing in mind that the relevant goods are medicinal products related to relieving the symptoms of sore throat, these elements will be seen by the public that understands them as references to the nature, characteristics and functionalities of the relevant goods. Therefore, to the extent that the signs consist of descriptive or allusive components that will be perceived as such by a significant part of the relevant public, they are considered to have a limited degree of distinctiveness for that public.
Nevertheless, for the public that does not understand any of the components, the signs are fanciful words with no meaning and, consequently, they have a normal degree of distinctiveness as a whole.
Visually and aurally, the signs coincide in the string of the letters ‘FARINGO*Е*’. They differ in the remaining letters ‘S*PT’ in the earlier mark and ‘G*RMINA’ in the contested sign. However, the first parts of the conflicting marks are identical. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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. Bearing in mind the standard stylisation of the earlier mark’s verbal element, it may be assumed that this will not be perceived as any different by the relevant consumers.
Therefore, for the public that does not understand their components, the signs are considered visually and aurally similar to an average degree.
However, as described above, a significant part of the public will understand these components and attribute different meanings to them. For these consumers, the signs are visually and aurally similar to a low degree.
Conceptually, as mentioned above, the public in the relevant territory will perceive the two signs as fanciful terms or expressions. However, parts of the signs may be perceived to have the meanings referred to above and, taking into account the public’s perceptions in relation to the goods, the signs are conceptually similar to a low degree.
For the public with no understanding at all of the different components, a conceptual comparison cannot be carried out.
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. In the present case, as demonstrated above, the relevant earlier mark consists of components with a weak or allusive character that will be understood as such by a significant part of the relevant public, and for that part of the public the mark has been considered to have a limited degree of distinctiveness.
However, according to the opponent, the earlier trade mark enjoys a high degree of recognition among the relevant public in Romania in connection with some of the goods for which it is registered, namely drugs under the shape of pills and tablets. Furthermore, the analysis of proof of use of above showed that the earlier mark has been used for drugs in the shape of pills and tablets for treatment of sore throat. This claim must be properly considered, given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).
In assessing whether or not the earlier mark has acquired distinctiveness throughout the relevant territory, all the relevant factors must be considered, in particular how intensive, geographically widespread and long standing the use of the mark has been; the amount invested by the undertaking in promoting the mark; and the proportion of the relevant section of the public that, because of the mark, identifies the goods or services as originating from a particular undertaking.
The relevant date for the finding of enhanced distinctiveness that has to be taken into account is the filing date of the contested sign, 22/10/2014. However, in the present case the applicant has claimed priority for its application, and the relevant date to be observed is 20/06/2014. The documents that will be considered are contained in the first batch of evidence submitted by the party and listed above. Therefore, the following findings are made on the basis of that evidence taken as a whole.
In the present case, the opponent submitted copies of four surveys conducted in 2005, 2006, 2007 and 2010 by the company GfK and one conducted in 2006 by the company MercuryResearch. The probative value of market surveys is usually determined by the status and degree of independence of the entity conducting them, by the relevance and accuracy of the information they provide, and by the reliability of the method used. As stated above, the opponent’s surveys on its mark’s recognition were carried out by the independent market research institute GfK, Romania, which is a leading market research company, specialising in consumer research. The circumstances under which the surveys were conducted are detailed in the copies submitted and they are considered acceptable for the purposes of the ongoing proceedings. The key information and the detailed diagrams submitted in the copies filed, given above as percentages, provide sufficient information to deduce an overall impression of the public’s perception of the mark ‘Faringosept’. Furthermore, the surveys also provide information about the opponent’s competitors throughout the relevant years and illustrate the leading position of the opponent’s brand in some respects. In addition, the surveys also demonstrate that the brand ‘Faringosept’ has been the subject of significant promotional activities and investment in advertising in the pharmaceutical market, as the opponent also submitted the results of the advertising brand awareness. Some conclusions about the degree of exposure of the public to advertising messages about the mark may be drawn from the percentages given above.
In addition, the reference to the opponent’s brand in the article ‘Brands that have stood the test of time’, published in 2012 (in the relevant period) by a national media channel, also gives a relevant indication of the presence of the mark on the market and the brand’s popularity over the years since its establishment (over 30 years ago, as referred to above). As a result, the opponent’s long-standing, intensive and widespread presence on the market and its advertising activities are considered a strong factor leading to public awareness and recognition of the earlier mark.
Not least, as illustrated by the verified report of the agency Cegedim, the products sold under the brand ‘Faringosept’ have earned significant revenues over recent years (2009-2015). Therefore, the opponent has succeeded in proving that its brand ‘Faringosept’ occupies a significant position in the relevant market.
Therefore, on the basis of the above findings and taking into account the fact that the pharmaceutical market is a complex and dynamic environment with evolving trends and that the products marketed by the opponent are offered widely, not just in pharmacies, it may be assumed that the opponent enjoys a consolidated position among its competitors and that it is a leading brand in the relevant field. Therefore, the Opposition Division considers that the earlier mark enjoys a high degree of recognition for the following goods: drugs in the shape of pills and tables for treatment of sore throat.
- Global assessment, other arguments and conclusion
The goods are similar to various extents and the degree of attention is considered high, as pharmaceuticals are, in principle, paid a greater degree of attention, even when purchased by non-professionals.
Firstly, 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). Secondly, 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).
In the present case, some similarities have been found between the signs, especially on the visual and aural levels, namely to the extent that the signs coincide in the letters ‘FARINGO*E*’, which form the larger part of the earlier mark likely to be dissected and perceived by some of the relevant consumers, as described above in section c) of this decision. These similarities will depend especially on the perception of the relevant public: in particular, they are similar to a low degree for the public that understands the constituent elements and similar to an average degree for the public that does not perceive and analyse the components.
As the applicant correctly states, a coincidence in an element with a low degree of distinctiveness will not normally lead to likelihood of confusion on its own. However, the Opposition Division points out that the enhanced distinctiveness of the earlier mark has to be especially taken into account in the assessment of the signs.
In principle, 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. In the present case, bearing in mind the recognition of the earlier mark by a sufficient part of the public, although average consumers are deemed to be observant and well informed, they may still lack the knowledge and experience to differentiate between products bearing the marks and might wrongly attribute the same origin to similar categories of pharmaceutical products if relying on their recollection of the earlier mark and, moreover, on the identical beginnings, ‘FARINGO*’, of the signs in question. Furthermore, as illustrated in the previous section, the additional word, ‘GERMINA’, in the contested sign is not capable of conveying a distinctive concept in the contested sign but rather alludes to ‘germs’. Therefore, a risk of association between similar products bearing the two marks in question cannot be completely excluded in a real market environment.
In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that there are many trade marks that include ‘FARINGO’. In support of its argument, the applicant refers to several trade mark registrations in different Member States, including Romania.
The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘FARINGO’. Under these circumstances, the applicant’s claims must be set aside.
Considering all the above, there is a likelihood of confusion on the part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s Romanian trade mark registration No 1 178. It follows that the contested trade mark must be rejected for all the contested goods.
As that earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent or the claim of a family of trade marks (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
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. In the present case the opponent did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.
The Opposition Division
LOPEZ FERNANDEZ DE CORRES
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.