Serana | Decision 2723198
Date Published: Oct 11, 2017
OPPOSITION No B 2 723 198
Biofarma, société par actions simplifiée, 50, rue Carnot, 92284 Suresnes cedex France (opponent), represented by Cabinet Plasseraud, 66, rue de la Chaussée d'Antin, 75440 Paris Cedex 09, France ( (professional representative)
a g a i n s t
Serana Europe GmbH, Hollerbach 20, 94501 Aidenbach, Germany (applicant), represented by Jörg Plöhn, Olympische, Str. 10, 14052 Berlin, Germany (professional representative).
On 29/03/2017, the Opposition Division takes the following
1. Opposition No B 2 723 198 is upheld for all the contested goods and services.
2. European Union trade mark application No 15 227 028 is rejected in its entirety.
3. The applicant bears the costs, fixed at fixed at EUR 620.
The opponent filed an opposition against all the goods and services of the European Union trade mark application No 15 227 028. The opposition is based on French trade mark registration No 41 04 010. 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 and services
The goods on which the opposition is based are the following:
Class 5: Pharmaceuticals and veterinary preparations; Sanitary preparations for medical purposes.
Class 10: Surgical and medical apparatus and instruments.
The contested goods and services are the following:
Class 5: Pharmaceutical and veterinary preparations derived from animal and human by-products and man-made formulations.
Class 35: Retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies; distribution of goods (not being transport services) (agent, wholesale, representative services, by any means) all of the aforementioned provided in relation to pharmaceutical and veterinary preparations derived from animal and human by-products as well as man-made formulations.
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be 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 5
The contested pharmaceutical and veterinary preparations derived from animal and human by-products and man-made formulations are included in the broad category of the opponent’s pharmaceuticals and veterinary preparations. Therefore, they are identical.
Contested services in class 35
Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.
The principles set out above apply to the services rendered in connection with different forms exclusively consisting of activities around the actual sale of goods, such as retail store services, wholesale services, internet shopping etc.
Therefore, the contested retail or wholesale services for pharmaceutical, veterinary and sanitary preparations are similar to a low degree to the opponent’s pharmaceuticals and veterinary preparations; sanitary preparations for medical purposes in Class 5.
The contested retail or wholesale services for medical supplies are considered similar to a low degree to the opponent’s surgical and medical apparatus and instruments in Class 10, taking into account that medical supplies are identical to the above mentioned opponent’s goods since they are included in the broad category of, or overlap with, the opponent’s surgical and medical apparatus and instruments in Class 10.
The contested distribution of goods (not being transport services) (agent, wholesale, representative services, by any means) all of the aforementioned provided in relation to pharmaceutical and veterinary preparations derived from animal and human by products as well as man-made formulations has to be understood as a service offered by a distributor, that in general is authorized by the producer through a distribution agreement, consisting in the sale of the producer’s goods, normally, at wholesale in a particular area. The words in brackets ‘agent, wholesale, representative services, by any means’ are considered as examples of how the distribution can be performed given that the applicant used the wording ‘by any means’ at the end. As seen before, the principles according to which retail services concerning the sale of particular goods are similar to a low degree to those particular goods can apply also to wholesale services. Therefore, this contested service is considered similar to a low degree to the opponent’s pharmaceuticals and veterinary preparations in Class 5, taking into account that the contested service relates to pharmaceutical and veterinary preparations derived from animal and human by products as well as man-made formulations, which are identical to the opponent’s pharmaceuticals and veterinary preparations since they are included in this broad category.
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 the services found to be similar to a low degree to the opponent’s goods are directed at both the public at large and professional public.
It is apparent from the case-law that, insofar as pharmaceutical preparations and the services offered in relation to them 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).
In particular, medical professionals have a high degree of attentiveness when prescribing medicines. 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.
Earlier trade mark
The relevant territory is France.
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 the word mark ‘CEDRANA’ and the contested sign is the word ‘Serana’. Because they are word marks, neither of them has any element that could be considered clearly more dominant (visually eye-catching) than other elements.
The earlier mark ‘CEDRANA’ and the contested sign ‘Serana’ have no meaning for the relevant public and are, therefore, distinctive.
Visually, the signs coincide in the sequence of letters ‘*E*RANA’, present in the same order in both marks. They differ in their first letters (‘C’ versus ‘S’) and in the additional third letter ‘D’ of the earlier mark. In total, the earlier sign and the contested sign have five out of seven and six letters, respectively, in common.
Therefore, the signs are similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‘*E*RANA’, present identically in both signs and in the sound of the first letters, ‛C/S’, of the earlier mark and the contested sign, respectively, since both these consonants have the same pronunciation in French when placed before the vowel “e”. The pronunciation only differs in the sound of the third letter ‘D’ of the earlier sign, which has no counterpart in the contested mark.
Therefore, the signs are similar to a high degree.
Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.
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 at issue are identical. The contested services are similar to low degree to the opponent’s goods. The signs are visually similar to an average degree and aurally similar to a high degree. The conceptual aspect does not influence the assessment of the similarity of the signs.
Because the signs coincide in the sequence of letters ‘*E*RANA’, present in the same order in both marks and their differing first letters ‘C’/‘S’ have the same sound, the signs create a similar overall impression.
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) and 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).
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.
Therefore, even considering that the degree of attention of the relevant public is relatively high, the differences between the signs are not sufficient to offset the similar overall impressions created by the marks in the minds of consumers, to the extent that the relevant public, when encountering the signs in relation to identical goods is likely to think that they come from the same undertaking or economically linked undertakings.
This is also true for the contested services which have been found to be similar to a low degree to the earlier goods. In this regard, it should be mentioned that a lesser degree of similarity between the goods and/or services may be offset by a greater degree of similarity between the signs and vice versa. Therefore the average degree of visual similarity and the high degree of aural similarity between the signs is sufficient to offset the low similarity of the contested services and to find a likelihood of confusion on the part of the public with regard to these as well.
Considering all the above, 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 French trade mark registration no. 41 04 010.
It follows from the above that the contested trade mark must be rejected for all the contested goods and services.
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
IBARRA DE DIEGO
Angela DI BLASIO
BENEDETTI - ALOISI
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.