OPPOSITION No B 2 299 546

Santhera Pharmaceuticals Holding AG, Hammerstrasse 49, 4410 Liestal, Switzerland (opponent), represented by CMS Hasche Sigle Partnerschaft Von Rechtsanwälten Und Steuerberatern Mbb, Schöttlestr. 8, 70597 Stuttgart, Germany (professional representative)

a g a i n s t

Amplegrove Medical Ltd, Ground Floor Right, 64 Paul Street, London EC2A 4NG, United Kingdom (applicant), represented by Lazareff Le Bars Aarpi, 22 rue du Général Foy, 75008 Paris, France (professional representative).

On 12/09/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 299 546 is partially upheld, namely for the following contested goods:

Class 3: Bleaching preparations and other substances for laundry use; cleaning preparations; soaps; essential oils, cosmetics, hair lotions; dentifrices.

Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides.

2. European Union trade mark application No 12 183 323 is rejected for all the above goods. It may proceed for the remaining goods, namely:

Class 3: Polishing, scouring and abrasive preparations; perfumery.

Class 5: Herbicides.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 12 183 323. The opposition is based on international trade mark registration designating, inter alia, the Czech Republic, Denmark, Italy, Benelux, Poland, Portugal, Romania, Slovenia, Slovakia and the United Kingdom No 1 098 036. 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.

1. The goods

The goods on which the opposition is based are the following:

Class 5: Pharmaceutical preparations, excluding oncology and rheumatic fever; veterinary preparations, sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies.

The contested goods are the following:

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; plasters, materials for dressings; material 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 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 3

The contested cosmetics constitute a broad category of goods, which includes preparations used to enhance or protect the appearance or odour of the human body. The contested soaps are cleaning or emulsifying agents made by reacting animal or vegetable fats or oils with potassium or sodium hydroxide. Finally, the contested dentifrices are substances that are used to clean the teeth. The opponent’s pharmaceutical preparations, excluding oncology and rheumatic fever in Class 5 are goods, such as skin, teeth or hair care preparations, with medical properties. To that extent, the contested goods may coincide in purpose and method of use with the opponent’s goods. Furthermore, they target the same public, they have the same distribution channels, since they can be found in pharmacies or other specialised shops, and they are often manufactured by the same companies. Therefore, they are all considered similar.

The contested bleaching preparations and other substances for laundry use as well as the contested cleaning preparations are all agents used for cleaning and could contain substances that are also used for destroying germs. The opponent’s sanitary preparations for medical purposes in Class 5 are goods that are used to destroy or to inhibit the activity of harmful microorganisms. To that extent, all of these goods serve, in a broad sense, the same purpose and have the same nature. They are, therefore, considered similar to a low degree.

The contested essential oils are any of a variety of volatile organic oils present in plants, usually containing terpenes and esters, and with the odour or flavour of the plant from which they were extracted. They serve the same purpose as the opponent’s pharmaceutical preparations, excluding oncology and rheumatic fever in Class 5 to the extent that they could be used for the treatment of illnesses, for example in aromatherapy. Furthermore, they may target the same end users and have the same distribution channels. They are, therefore, considered similar to a low degree.

The contested hair lotions have some elements in common with the opponent’s pharmaceutical preparations, excluding oncology and rheumatic fever in Class 5. The opponent’s goods may also include medicated hair care preparations, which could be manufactured by the same undertaking that produces the contested goods. Furthermore, the goods in question may have the same distribution channels and target the same end users. Therefore, they are considered similar to a low degree.

The contested polishing preparations are used to make a product smooth and shiny by rubbing, especially with wax or an abrasive. The contested scouring preparations are used to clean or polish (a surface) by washing and rubbing, as with an abrasive cloth. The contested abrasive preparations are substances or materials such as sandpaper, pumice, or emery, used for cleaning, grinding, smoothing, or polishing. Finally, the contested perfumery refers to mixtures of alcohol and fragrant essential oils extracted from flowers, spices, etc., or made synthetically, that are used, in particular, to impart a pleasant long-lasting scent to the body. All of these contested goods serve a different purpose from that of the opponent’s goods in Class 5, which are, mainly, various substances used to treat diseases in humans or animals, substances prepared for special dietary requirements and other preparations for medical or veterinary purposes. Furthermore, they are not in competition or interchangeable, and they do not usually have the same commercial origins, distribution channels or end users. Therefore, they are considered dissimilar.

Contested goods in Class 5

Veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use; food for babies are identically included in both lists of goods.

The contested pharmaceutical preparations include, as a broad category, the opponent’s pharmaceutical preparations, excluding oncology and rheumatic fever. 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 dietetic food adapted for medical or veterinary use; dietetic substances adapted for veterinary use are included in the broad category of the opponent’s dietetic substances adapted for medical use. Therefore, they are identical.

The contested dietary supplements for humans and animals overlap with the opponent’s dietetic substances adapted for medical use. Therefore, they are considered identical to the opponent’s goods.

The contested disinfectants are agents that destroy or inhibit the activity of microorganisms that cause disease. As such, they have the same purpose as the opponent’s sanitary preparations for medical purposes, which are used to destroy agents that can cause infection or disease. They may coincide in producers, distribution channels and end users. Therefore, they are considered highly similar.

The contested plasters, materials for dressings are goods that are used to heal wounds and protect the skin. Therefore, to the extent that they can be used in order to prevent a disease by avoiding the risk of infection, as they protect the wounded part of a body, they fulfil the same purpose as a pharmaceutical preparation. Moreover, these goods target the same public and they generally have the same distribution channels. Therefore, they must be considered similar to the opponent’s pharmaceutical preparations, excluding oncology and rheumatic fever.

The contested preparations for destroying vermin are chemical substances that are used to destroy parasitic insects or harmful organisms to ensure the healthy existence of human beings. As such, they have the same general medical purpose, namely to improve human health or well-being, as the opponent’s pharmaceutical preparations, excluding oncology and rheumatic fever. They may also have the same channels of distribution (e.g. pharmacies). Moreover, they can be complementary, as pharmaceutical preparations may be used to treat ailments caused by the presence of, or contact with, vermin. Therefore, they are considered similar.

The contested material for stopping teeth, dental wax are goods for the treatment of toothache and all related dental matters. As such, they have the same general medical purpose, namely to improve human health or well-being, as the opponent’s pharmaceutical preparations, excluding oncology and rheumatic fever. Moreover, these goods can have the same distribution channels and target the same end users. Therefore, they must be considered similar to a low degree.

The contested fungicides are antimycotics with applications in the medical field. As such, they have the same general medical purpose, namely to improve human health or well-being, as the opponent’s pharmaceutical preparations, excluding oncology and rheumatic fever. They may also have the same channels of distribution (e.g. pharmacies). Moreover, they can be complementary, as pharmaceutical preparations may be used to treat ailments caused by the presence of, or contact with, fungi. Therefore, they are considered similar to a low degree.

The contested herbicides are substances designed to protect the environment, particularly crops, against undesirable plants. Therefore, the objective of such a product is entirely different from the general purpose of the opponent’s goods in Class 5, namely pharmaceutical and veterinary preparations, sanitary preparations and dietetic substances, which is to protect and improve human health and well-being. Moreover, they have different natures, given that the active substances contained in the contested goods are not generally related to those used in pharmaceutical, veterinary, sanitary or dietary preparations. They do not target the same customers and are distributed through different channels. Finally, they are not in competition with or complementary to the opponent’s goods. Therefore, they must be considered dissimilar.

2. 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 or similar to varying degrees are directed at the public at large as well as business customers with specific professional knowledge or expertise, such as healthcare professionals.

The degree of attention is considered to vary between average and high. In particular, it is likely that the public will display a relatively high degree of attention when purchasing the aforementioned goods in Class 5, given that they may, to a lesser or greater extent, affect their state of health. In particular, it is apparent from case law that, so far as pharmaceutical preparations and medicines are concerned, the relevant public’s degree of attention is considered high, whether or not issued on prescription (15/12/2010, T‑331/09, Tolposan, EU:T:2010:520, § 26; and 15/03/2012, T‑288/08, Zydus, EU:T:2012:124, § 36, and quoted case law). Medical professionals also pay a high degree of attention when prescribing medicines.

3. The signs

Earlier trade mark	Contested sign

The relevant territories are the Czech Republic, Denmark, Italy, Benelux, Poland, Portugal, Romania, Slovenia, Slovakia and the United Kingdom.

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 composed of the verbal element ‘santhera’, written in standard black lower case letters, and the verbal element ‘Pharmaceuticals’, written underneath in much smaller letters. On the left-hand side of the mark, there is a black figurative element composed of geometric shapes, namely a circle intersected by two curved lines.

The contested sign is a figurative mark composed of the verbal element ‘Santera’, written in standard blue title case letters, and the verbal element ‘Laboratoires’, written underneath in much smaller letters. Above the final three letters of the verbal element ‘Santera’, there is an abstract green figurative element.

The verbal element ‘Pharmaceuticals’ of the earlier mark will be understood by the relevant public as a reference to drugs used in medical treatment, as there are very similar words with equivalent meanings in the official languages of the relevant territories, namely Czech and Slovakian (‘produkt farmaceutický’), Danish (‘produkt farmaceutisch’), Dutch (‘farmaceutica’), Italian (‘prodotti farmaceutici’), French (‘produits pharmaceutiques’), Polish (‘farmaceutyki’), Portuguese (‘[produtos] farmacêutico’), Romanian (‘[produse] farmaceutice’) and Slovenian (‘farmacevtski’). Bearing in mind that the relevant goods are pharmaceuticals or other health-related goods, the aforementioned verbal element is considered non‑distinctive in relation to these goods.

Similarly, the verbal element ‘Laboratoires’ of the contested sign will be understood by the relevant public as the French word for ‘laboratories’, namely a place equipped to conduct scientific experimentation or research, given that there are very similar words with equivalent meanings in the official languages of the relevant territories, namely Czech (‘laboratoř’), Danish, Dutch and Polish (‘laboratorium’), English (‘laboratory’), Italian (‘laboratorio’), Portuguese (‘laboratórios’), Romanian (‘laborator’), Slovenian (‘laboratorij’) and Slovakian (‘laboratórium’).

Bearing in mind that the contested goods include cleaning preparations, toiletries, and medical and hygiene-related preparations that are usually created in laboratories, the aforementioned verbal element is considered non‑distinctive in relation to these goods.

Although there is no clearly dominant element in the earlier mark, the word ‘Pharmaceuticals’ is secondary owing to its much smaller size and its position below the verbal element ‘santhera’.

The verbal element ‘Santera’ in the contested sign is the dominant element as it is the most eye-catching.

Visually, the signs coincide in the sequence of letters ‘SANT*ERA’. It must be emphasised that the verbal elements ‘santhera’ of the earlier mark and ‘Santera’ of the contested sign are almost identical, as they differ only in the additional fifth letter, ‘H’, of the word ‘santhera’ in the earlier mark. In particular, their beginnings 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.

Although the signs differ in their additional verbal elements, namely ‘Pharmaceuticals’ in the earlier mark and ‘Laboratoires’ in the contested sign, as stated above, the aforementioned components are non-distinctive in relation to the relevant goods and are secondary within the conflicting signs.

The signs also differ in their figurative elements. However, as mentioned above, the green geometric shape in the contested sign is secondary. Moreover, 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; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). Therefore, the figurative elements have less impact than the verbal elements of the conflicting signs.

In the light of the foregoing, the signs are visually similar to a high degree.

Aurally, irrespective of the differences in pronunciation in the different parts of the relevant territories, the pronunciation of the verbal elements ‘santhera’ and ‘Santera’ will be identical for the part of the relevant public that will not pronounce the consonant ‘H’, such as the Dutch-, Portuguese- and Italian-speaking parts of the public.

For another part of the public, such as the Czech-, English- and Polish-speaking parts of the public, the pronunciation will differ due to the different phonemes ‘TH’ and ‘T’ in the middle of the signs.

Although the pronunciation of the signs also differs due to the additional words, ‘Pharmaceuticals’ in the earlier mark and ‘Laboratoires’ in the contested sign, as has been stated above, both of these words are non-distinctive in relation to the relevant goods and are secondary within the conflicting signs. As a result, a significant part of the public is unlikely to pronounce the aforementioned verbal elements.

Consequently, for the part of the relevant public that will pronounce the verbal components ‘santhera’ and ‘Santera’ identically, but will not pronounce the verbal elements ‘Pharmaceuticals’ and ‘Laboratoires’, the signs are aurally identical. For the rest of the relevant public, the signs are aurally highly similar.

Conceptually, the verbal element ‘santhera’ of the earlier mark has no particular meaning for the relevant public. Therefore, it will be perceived as a fanciful or foreign word.

The verbal element ‘Pharmaceuticals’ of the earlier sign will be understood by the relevant public as a reference to drugs used in medical treatment, as there are very similar words with equivalent meanings in the official languages of the relevant territories, namely Czech and Slovakian (‘produkt farmaceutický’), Danish (‘product farmaceutisch’), Dutch (‘farmaceutica’), Italian (‘prodotti farmaceutici’), French (‘produits pharmaceutiques’), Polish (‘farmaceutyki’), Portuguese (‘[produtos] farmacêutico’), Romanian (‘[produse] farmaceutice’) and Slovenian (‘farmacevtski’). As mentioned above, this word is of very limited importance for the comparison of the signs, given that it is non‑distinctive and secondary.

The abstract figurative element of the earlier sign will be seen as such.

The verbal element ‘Santera’ of the contested sign has no particular meaning for the relevant public. Therefore, it will be perceived as a fanciful or foreign word.

The verbal element ‘Laboratoires’ of the contested sign will be understood by the relevant public as the French word for ‘laboratories’, namely a place equipped to conduct scientific experimentation or research, given that there are very similar words with equivalent meanings in the official languages of the relevant territories, namely Czech (‘laboratoř’), Danish, Dutch and Polish (‘laboratorium’), English (‘laboratory’), Italian (‘laboratorio’), Portuguese (‘laboratórios’), Romanian (‘laborator’), Slovenian (‘laboratorij’) and Slovakian (‘laboratórium’). As discussed above, this word is of very limited importance for the comparison of the signs, given that it is non‑distinctive and secondary.

The abstract figurative element of the contested sign will be seen as such.

Neither of the signs has a meaning as a whole. Although the verbal elements ‘Pharmaceuticals’ and ‘Laboratoires’ will evoke concepts, they do not serve to establish any conceptual similarity between the signs because, as mentioned above, these elements are not capable of indicating the commercial origin of each mark. The attention of the relevant public will be drawn to the additional fanciful verbal and figurative elements, which have no particular meanings. Therefore, 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.

4. 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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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, despite the presence of a non‑distinctive element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

According to the case law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison 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, § 22). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

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).

The relevant public is the general public and professionals with a degree of attention varying between average and high.

The contested goods are partly identical, partly similar to various degrees and partly dissimilar to the opponent’s goods.

The conflicting signs are visually and aurally similar to a high degree, or aurally identical for part of the public, given that the verbal elements ‘santhera’ and ‘Santera’ differ in only one consonant, ‘H’, which will not be pronounced by part of the relevant public. It must be emphasised that the aforementioned elements are the components of the signs that have the most visual impact.

Conversely, the differences between the signs mostly concern elements that are less distinctive and/or elements that are secondary with regard to the overall impression given by the signs, such as the additional verbal elements, ‘Pharmaceuticals’ in the earlier mark and ‘Laboratoires’ in the contested sign, and the figurative components, which have less visual impact.

Moreover, 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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion and, therefore, the opposition is partly well founded on the basis of the opponent’s international trade mark registration designating, inter alia, the Czech Republic, Denmark, Italy, Benelux, Poland, Portugal, Romania, Slovenia, Slovakia and the United Kingdom No 1 098 036.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to various degrees to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

COSTS

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 shall 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

Loreto URRACA LUQUE

Marta GARCÍA COLLADOMarion GAILLARD

Vít MAHELKA

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.