PASLETI | Decision 2701285
Date Published: Oct 11, 2017
OPPOSITION No B 2 701 285
Laboratorios Leti, S.L. Unipersonal, Gran Via de les Corts Catalanes,184, Planta 7,
08038 Barcelona, Spain (opponent), represented by Clarke, Modet y Cía. S.L., Rambla de Méndez Núñez, 12 - 1º Puerta 2 bis, 03002 Alicante, Spain (professional representative)
a g a i n s t
Biogen Idec Inc., 3030 Callan Road, San Diego, California 92121, United States of America (applicant), represented by Carpmaels & Ransford LLP, One Southampton Row, London WC1B 5HA, United Kingdom (professional representative).
On 27/03/2017, the Opposition Division takes the following
1. Opposition No B 2 701 285 is upheld for all the contested goods.
2. European Union trade mark application No 15 082 043 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
The opponent filed an opposition against all the goods of European Union trade mark application No 15 082 043. The opposition is based on, inter alia, European Union trade mark registration No 13 348 883. 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 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 European Union trade mark registration No 13 348 883.
- The goods
The goods on which the opposition is based are the following:
Class 5: Pharmaceutical and veterinary preparations; Dietary supplements and dietetic preparations; Food for babies; Dietary supplements for animals; Dental preparations and articles; Hygienic preparations and articles; Disinfectants and antiseptics; Deodorizers and air purifiers; Absorbent articles for personal hygiene; Feminine hygiene products; Nappies for babies and incontinents; Pest control preparations and articles; Medical and veterinary preparations and articles; Live organs and tissues for surgical purpose; Diagnostic preparations; Pharmaceuticals and natural remedies; Medical dressings, coverings and applicators.
The contested goods are the following:
Class 5: Pharmaceutical preparations for the treatment of neurologic disorders.
Contested goods in Class 5
The contested pharmaceutical preparations for the treatment of neurologic disorders are included in the broad category of the opponent’s pharmaceutical … preparations. Therefore, they are identical.
The Opposition Division notes that the applicant’s and the opponent’s pharmaceutical preparations include preparations for both human and veterinary medicine. For reasons of procedural economy, the assessment of the opposition will further focus only on the identical goods for veterinary use.
- 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 (and on which the assessment of the opposition is focused) are directed both at veterinary professionals and the public at large. The degree of attention will be high because veterinary professionals have a high degree of attentiveness when prescribing medicines. Non-professionals will also have a high degree of attentiveness because the goods affect the state of health of their animals.
- 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 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). This applies by analogy to international registrations designating the European Union. 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 ‘LETI’ and ‘PAS’ are meaningful in Croatian. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Croatian-speaking part of the public.
The element ‘LETI’ of the earlier mark will be understood as ‘(he/she) flies’ (3rd person, singular) or ‘fly!’ (imperative, singular) by the relevant Croatian public. As it is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive.
The earlier mark has no elements that could be considered clearly more distinctive or more dominant than other elements.
The element ‘PAS’ of the contested sign will be understood as ‘dog’ by the relevant Croatian public. Bearing in mind that the relevant goods (on which the assessment of the opposition is focused) are pharmaceutical preparations for veterinary use, this element is non-distinctive for all the contested goods.
The element ‘LETI’ of the contested sign will be understood in the context of the contested sign ‘PASLETI’ as ‘(he/she) flies’. As mentioned above, the element is distinctive.
As regards the earlier mark, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).
Visually, the signs coincide in the distinctive element ‘LETI’. However, they differ in the figurative element of the earlier mark and the non-distinctive element ‘PAS’ of the contested sign.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛LETI’, present identically in both signs. The pronunciation differs in the sound of the letters ‛PAS’ of the contested mark, which have no counterparts in the earlier sign. Consequently, the marks aurally coincide in the distinctive element ‘LETI’ and differ in the non-distinctive element ‘PAS’.
Therefore, the signs are aurally similar to an average degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning, the signs are conceptually highly similar.
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
The goods have been found identical. The earlier trade mark’s degree of distinctiveness is average and the degree of attention of the relevant public will be high.
The overall impressions created by the marks are similar because they coincide in the distinctive element ‘LETI’ and differ only in the non-distinctive element ‘PAS’ of the contested sign and the figurative element of the earlier mark which has a lesser impact on the consumer than the word element ‘LETI’.
Considering all the above, there is a likelihood of confusion on the part of the Croatian-speaking part of the public. 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.
This likelihood of confusion occurs on the part of the public dealing with veterinary pharmaceutical preparations. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public (i.e. the public concerned with human pharmaceutical preparations).
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 13 348 883. It follows that the contested trade mark must be rejected for all the contested goods.
As the above 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 (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.
The Opposition Division
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.