Pharmaview Evidence | Decision 2707597
Date Published: Oct 11, 2017
OPPOSITION No B 2 707 597
IMS Health S.A., Júan Esplandiu 11, 28007 Madrid, Spain (opponent), represented by Javier Ungría López, Avda. Ramón y Cajal 78, 28043 Madrid, Spain (professional representative)
a g a i n s t
DLI MI, Lersø Parkallé 101, 2100 København Ø, Denmark (applicant).
On 23/03/2017, the Opposition Division takes the following
1. Opposition No B 2 707 597 is upheld for all the contested services.
2. European Union trade mark application No 15 124 548 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
The opponent filed an opposition against all the services of European Union trade mark application No 15 124 548. The opposition is based on Spanish trade mark registration No 2 031 819. The opponent invoked Article 8(1)(a) and (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 services
The services on which the opposition is based are the following:
Class 35: Advertising; marketing research.
The contested services are the following:
Class 35: Computer assisted business information; computerised information services to business opportunities appraisals; computerised business information services; computerised business research; provision of statistical information relating to business; business statistical studies; information services relating to businesses; business analysis of markets; commercial information services provided by access to a computer database; information and data compiling and analyzing relating to business management; providing business information, also via internet, the cable network or other forms of data transfer; market information services relating to market statistics; business statistical information services; economic forecasting and analysis; providing business information via a web site; provision of computerised business statistics; dissemination of data relating to business; business data analysis services; preparing business reports; statistical analysis and reporting; business analysis; analysis of business statistics.
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 services in Class 35
The contested services, namely computer assisted business information; computerised information services to business opportunities appraisals; computerised business information services; computerised business research; provision of statistical information relating to business; business statistical studies; information services relating to businesses; business analysis of markets; commercial information services provided by access to a computer database; information and data compiling and analyzing relating to business management; providing business information, also via internet, the cable network or other forms of data transfer; market information services relating to market statistics; business statistical information services; economic forecasting and analysis; providing business information via a web site; provision of computerised business statistics; dissemination of data relating to business; business data analysis services; preparing business reports; statistical analysis and reporting; business analysis; analysis of business statistics, are all intended to help companies manage their business. They involve activities associated with running a company and are usually rendered by companies specialised in this specific field such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire develop and expand market share. The services include activities such as business research and assessments, cost and price analyses, organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a business, such as advice on how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, market products, research consumer trends, launch new products, create a corporate identity, etc. Therefore, these services fall under broad category of business management.
The earlier mark’s advertising services in Class 35 consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc.
When comparing the contested services, which all fall in the broad category of business management, with advertising, advertising is an essential tool in business management because it makes the business itself known in the market. As stated above, the purpose of advertising services is to ‘reinforce a client’s position in the market’ and the purpose of business management services is to help a business ‘acquire, develop and expand market share’. There is no clear-cut difference between the two. A professional who offers advice on how to run a business efficiently may reasonably include advertising strategies in their advice because there is little doubt that advertising plays an essential role in business management. Furthermore, business consultants may offer advertising (and marketing) consultancy as part of their services and the relevant public may thus believe that these two services have the same professional origin. Therefore, they are similar to a low degree.
- 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 services found to be similar to a low degree are directed at business customers with specific professional knowledge or expertise. The degree of attention is considered to be higher than average since the services at hand are normally contracted for a specific purpose, their price could also be relatively high and they could have serious consequences for the functioning of a business.
- The signs
Earlier trade mark
The relevant territory is Spain.
The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).
Both marks are word marks. At this point it should be pointed out that in case of word marks, the words themselves are protected, not their written form. Therefore, it is irrelevant whether a word mark is represented in lower or upper case or a combination of those letters.
The earlier mark is a word mark composed of the term ‘PHARMAVIEW’ which do not have any obvious meaning in relation to the services at issue. Therefore, it is distinctive.
The contested sign is a word mark made up of two words ‘PHARMAVIEW’ and ‘EVIDENCE’. The term ‘PHARMAVIEW’ is meaningless whereas the term ‘EVIDENCE’ is very close to the equivalent word in Spanish ‘evidencia’ which refers to a ground to belief or disbelief and as such, most likely, will be understood by at least part of the relevant public. Nevertheless, whilst it conveys an idea, it is not descriptive of the services at hand or their characteristics and so its distinctiveness should be seen as normal. Consequently, both elements are distinctive in relation to the services at issue.
Visually and aurally, the signs coincide in the word/ sound of the word ‘PHARMAVIEW’ which not only forms the whole earlier mark but also one of the distinctive elements of the contested sign. They differ in the appearance and pronunciation of the additional verbal element of the contested mark ‘EVIDENCE’. Although, this element is distinctive, and therefore, will have an impact of the consumer’s visual and aural perception of the marks, it does not alter the fact that the first word of the contested sign has an independent distinctive role.
Furthermore, it must be taken into account that the common element ‘PHARMAVIEW’, as the first element of the contested sign, will catch the primary attention of the consumer when encountering the 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. Consequently, the fact that the first verbal element of the contested sign coincides with the earlier mark has to be taken into account when assessing the likelihood of confusion between the marks.
Hence, the marks are visually and aurally similar to a high degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the public in the relevant territory might perceive the meaning of one of the elements of the contested sign, as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually 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 services 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 appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (eighth recital of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 18; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22).
Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).
As has been concluded, the contested services are similar to a low degree to the opponent’s services in Class 35 and are directed at professionals whose level of attention is high. Furthermore, the earlier mark has a normal degree of distinctiveness. The signs are visually and aurally similar to a high degree whereas conceptually they are not similar. The signs have the distinctive element ‘PHARMAVIEW’ in common. This element forms the entire earlier mark and plays an independent distinctive role at the beginning of the contested sign.
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). Having said that, it is stressed that 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).
In view of all the relevant factors in the present case and the principle of interdependence between them, i.e. the principle that a lesser degree of similarity between the services may be offset by a greater degree of similarity between the marks, in the case at hand, the high similarity of the marks offsets the low degree of similarity between the services.
In addition, it should be stressed that 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. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). Therefore, consumers may reasonably assume that the signs at stake distinguish different lines of services provided by the same undertaking or from connected entities.
In light of the foregoing, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is well-founded on the basis of the opponent’s Spanish trade mark registration No 2 031 819. It follows that the contested trade mark must be rejected for all the contested services.
Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) EUTMR.
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.