DECISION

of the Fourth Board of Appeal

of 3 December 2015

In Case R 1048/2015-4

FIDDIAM S.A.
Rue des Bruyères 25 L-1274 Howald Luxembourg	Appellant / Applicant

represented by Office Freylinger S.A., Route d'Arlon 234, B.P. 48, L-8001 Strassen, Luxembourg

v

Dermapharm AG
Lil-Dagover-Ring 7 D-82031 Grünwald Germany	Respondent / Opponent

represented by Dr. Kunz-Hallstein Rechtsanwälte, Galeriestr. 6A, D-80539 München, Germany

APPEAL relating to Opposition Proceedings No B 2 361 007 (Community trade mark application No 12 424 611)

The Fourth Board of Appeal

composed of D. Schennen (Chairperson), L. Marijnissen (Rapporteur) and F. López de Rego (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 13 December 2013, FIDDIAM S.A. (‘the applicant’) sought to register the figurative mark in black and white

as a Community trade mark for goods and services in Classes 3, 5, 16, 29, 30, 31, 32, 35 and 41, including the following goods:

Class 3 – Soaps; cosmetics; Cosmetics, massage oils, massage creams, massage lotions; sprays for the body and the face;

Class 5 – Pharmaceutical and veterinary preparations; Sanitary preparations for medical purposes; Plasters, materials for dressings; Disinfectants; Fungicides, Antibiotics; Gurjun [gurjon, gurjan] balsam for medical purposes; Balms for medical purposes; Cachets for pharmaceutical purposes; Capsules, Tablets and powders for medical purposes; Mineral waters for medical purposes; Melissa water for pharmaceutical purposes; Sea water for medicinal bathing; Thermal water; Elixirs [pharmaceutical preparations]; Ointments for pharmaceutical purposes; Skin care (Pharmaceutical preparations for -); Empty and filled capsules for pharmaceutical preparations, essential oils for pharmaceutical, medical, dietetic and nutritional purposes, phytotherapeutic preparations for pharmaceutical, medical, dietetic and nutritional purposes, vitamins and minerals; Gel capsules for cosmetic and slimming purposes.

2. On 16 May 2014, a notice of opposition was filed by Dermapharm AG (‘the opponent’) based on the earlier German trade mark No 2 101 446 for the word mark

BIFON

registered on 5 November 1996 and renewed until 30 September 2021 for the following goods:

Class 5 – Medicines, namely dermatologicals for topical use without antibiotic effective ingredients.

3. The ground for opposition was likelihood of confusion as laid down in Article 8(1)(b) CTMR. The opposition was directed against part of the goods and services applied for, namely those specified in paragraph 1 above.

4. By decision of 27 March 2015, the Opposition Division partially upheld the opposition, namely for all the contested goods with the exception of ‘massage oils, massage creams, massage lotions’ in Class 3 and ‘mineral waters for medical purposes’ in Class 5. It rejected the application for the goods for which the opposition was upheld and ordered the parties to bear their own costs.

5. It reasoned that the conflicting signs were similar from a visual and aural point of view. Conceptually the earlier mark had no meaning while the contested mark had, namely ‘having or combining two words’; the signs were not conceptually similar. The distinctiveness of the earlier mark was normal. The goods for which the opposition was upheld were considered to be identical and similar and were directed at public at large, as well as at medical professionals, both showing a higher degree of attention. A likelihood of confusion was concluded for these identical and similar goods.

6. On 27 May 2015, the applicant filed a notice of appeal, followed by a statement of grounds on 27 July 2015. It requests that the Board annul the contested decision, allow the application to proceed for registration for all the goods and services applied for and order the opponent to bear the costs.

7. The applicant requests, for the first time, that the opponent furnish proof of use of the earlier mark pursuant to Article 42(2) and (3) CTMR.

8. Moreover, it argues that the figurative element of the contested mark, representing a ‘B’ and a ‘F’ being a clear reference to the two syllables BI-FORM, forms a dominant element of the mark. It argues that the conflicting marks are visually dissimilar and aurally dissimilar taking into account the different pronunciation of the second part. Conceptually, ‘BIFORM’ would refer to the combination of two forms and ‘BIFON’ to double fool as ‘fon’ might refer to the obsolete term ‘fool’ in English or to the usual ending in German for audio instruments as for megaFON, teleFON or saxoFON. The marks would be conceptually dissimilar as well.

9. It further argues that the contested goods in Class 3 are dissimilar to the earlier goods. The latter have a therapeutic function while the former have not; they differ in purpose and distribution channels; the Class 5 goods needs specific authorisation, the Class 3 goods not; the goods are not manufactured by the same undertakings and do not target the same end-consumers. The contested goods in Class 5 ‘phytotherapeutic preparations for pharmaceutical, medical, dietetic and nutritional purposes’ would not be similar to the earlier goods as the former are aimed for oral consumption while the latter are aimed for a direct application on the skin. The contested goods in Class 5 ‘Melissa water for pharmaceutical purposes; sea water for medicinal bathing, thermal water, elixirs [pharmaceutical preparations]’ would be dissimilar as they differ in method of use and nature and are not automatically used as medicines. The contested goods in Class 5 ‘cachets for pharmaceutical purposes; antibiotics; vitamins and minerals; capsules, tablets and powders for medical purposes; empty and filled capsules for pharmaceutical preparations, dietetic and foods supplements; gel capsules for cosmetic and slimming purposes’ would all be dissimilar as well as the method of use and nature of goods is different. Unlike the earlier goods they are not aimed for topical use and they might be antibiotics. The contested goods in Class 5 ‘sanitary preparations for medical purposes’ would be dissimilar as they do not have the same purpose, neither the same nature nor the same aspect.

10. It concludes that a likelihood of confusion for the goods subject of the appeal would not exist.

11. In reply, the opponent argues that the proof of use request is inadmissible. It further endorses the findings of the Opposition Division. It emphasizes that the marks are visually similar and aurally highly similar. Moreover, the contested goods in Class 3 are similar; the beauty care market offers various soaps, cosmetics and sprays for body and face which are for all different type of skins and thus also for consumers with skin problems. Most of the contested goods in Class 5 include dermatologicals, may serve for the treatment of skin diseases or are complementary to the earlier goods. In sum, all the contested goods are identical, highly similar or at least similar to the earlier goods. The different types of application of the preparations (orally or topically) are inappropriate for the exclusion of any identity or similarity to the goods; indeed the goods claimed by the contested mark are partially even broader and hence include the dermatologicals of the earlier mark. A likelihood of confusion would exist.

Reasons

12. The appeal is admissible and partly well founded. A likelihood of confusion within the meaning of Article 8(1)(b) CTMR exists for all the goods which are subject of this appeal, with the exception of ‘fungicides’ in Class 5 which goods are dissimilar.

The proof of use request

13. The applicant’s proof of use request is inadmissible. Rule 22(1) CTMIR provides that a request for proof of use pursuant to Article 42(2) or (3) CTMR shall be admissible only if the applicant submits such a request within the period specified by the Office pursuant to Rule 20(2) CTMR. By filing the request for the first time before the Board, the applicant failed to do so.

Article 8(1)(b) CTMR

14. Pursuant to Article 8(1)(b) CTMR, upon opposition of the proprietor of an earlier trade mark, the trade mark applied for shall not be registered if, because of its identity with or similarity to the earlier trade mark and, cumulatively, the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected.

15. The opposition is based on an earlier German trade mark; the relevant territory for analysing the likelihood of confusion is Germany. The relevant public consists of the public at large and medical professionals in that Member State.

Comparison of the goods

16. Conflicting goods and services are identical if they are covered by the conflicting marks with the same wording, if the contested goods or services are included in a broader category of goods or services as covered by the earlier mark and if the earlier goods or services are included in a broader category of goods or services as covered by the contested mark.

17. The earlier mark is registered for ‘dermatologicals for topical use without antibiotic effective ingredients’. Dermatology is the branch of medicine concerned with the diagnosis and treatment of diseases of the skin, hair and nails. Dermatologicals for topical use are medicines used for the healing, curing and prevention of these diseases by applying them to a body surface.

18. As correctly decided by the Opposition Division, the earlier goods are included in the broader category of the contested goods in Class 5 ‘pharmaceutical and veterinary preparations’. The goods are identical.

19. The contested ‘gurjun [gurjon, gurjan] balsam for medical purposes; balms for medical purposes; ointments for pharmaceutical purposes; skin care (pharmaceutical preparations for -); essential oils for pharmaceutical, medical purposes’ all fall, as correctly decided by the Opposition Division, under the broader category of the earlier goods and are, thus, identical as well. The same applies to the contested ‘disinfectants; phytotherapeutic preparations for pharmaceutical, medical purposes’ which, as correctly reasoned in the contested decision, can be used for skin problems and overlap with the earlier goods.

20. The other contested goods which are subject of this appeal are all similar with the exception of ‘fungicides’ in Class 5 which are dissimilar.

21. In assessing the similarity of goods or services, all the relevant factors pertaining to the relationship between those goods and services should be taken into account. Those factors include, among other things, their nature, their method of use, their intended purpose, their end-users and whether they are in competition with or complementary to each other (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 23). Other factors may also be taken into account such as, for example, the distribution channels of the goods and services concerned (11/07/2007, T‑443/05, Pirañam, EU:T:2007:219, § 37). The reference point is whether the relevant public would perceive the relevant products as having a common commercial origin (04/11/2003, T‑85/02, Castillo, EU:T:2003:288, § 38) and whether consumers consider it normal that they are marketed under the same trade mark, which normally implies that a large number of producers or distributors of these products are the same (11/07/2007, T‑150/04, Tosca Blu, EU:T:2007:214, §  37).

Class 5

22. As correctly reasoned in the contested decision, the contested goods in Class 5 ‘sanitary preparations for medical purposes; plasters, materials for dressings’ are similar, to an average degree, to the earlier goods. The goods may have the same purpose, namely to treat or to heal the skin, they have the same distribution channels, namely pharmacies, and they may target the same end-consumer, namely the medical professional treating, or the patient suffering from, a dermatological disease. Moreover the goods are complementary to each other where the contested goods are needed for the proper and effective appliance of the earlier goods.

23. The contested goods in Class 5 ‘antibiotics; cachets for pharmaceutical purposes; capsules, tablets and powders for medical purposes; empty and filled capsules for pharmaceutical preparations; elixirs [pharmaceutical preparations]; gel capsules for cosmetic purposes’ are similar to the earlier goods, not to a low degree as reasoned by the Opposition Division but, at least, to an average degree. Although these goods differ in nature and method of use from the earlier goods as they are, in principle, not for topical use, they may serve the same purpose namely to prevent, treat and heal diseases of the skin, hair and nails. They are distributed through the same channels, namely pharmacies and target the same public. Moreover, the one may serve as an alternative for the other in which case the goods are in competition with each other and, in case a proper treatment of the disease in question asks for both, the goods are complementary to each other. The goods are all pharmaceuticals which may be produced by the same manufacturers.

24. The Opposition Division correctly reasoned that the contested goods in Class 5 ‘Melissa water for pharmaceutical purposes; sea water for medicinal bathing; thermal water’ are similar to the earlier goods, to an average degree. Although they may not be administered in the same way, the goods may have the same purpose, i.e. to prevent, treat and heal skin diseases and target the same consumer suffering from such diseases. The same applies to the contested goods in Class 5 ‘essential oils for dietetic and nutritional purposes, phytotherapeutic preparations for dietetic and nutritional purposes, vitamins and minerals’.

25. The contested goods in Class 5 ‘gel capsules for slimming purposes’ are similar, to a low degree, to the earlier goods. Although they have a different purpose, they are both pharmaceuticals and are distributed through the same distribution channels, i.e. pharmacies. They may be produced by the same manufacturers.

26. The contested goods in Class 5 ‘fungicides’ are not identical as reasoned by the Opposition Division but, in fact, dissimilar.

27. The class heading of Class 5 reads: ‘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’. The class heading lists various broad categories of goods. As they are listed alongside and separately, none can contain the other. Consequently, ‘pharmaceutical preparations’ cannot comprise ‘fungicides’. This excludes their identity.

28. Moreover, ‘fungicides’ are not even similar to ‘pharmaceutical products’ and a fortiori to the earlier goods comprised by this broader category. ‘Fungicides’ are chemical compounds, for instance to eliminate fungi from vegetation and treat different crops. They may be hazardous to men. ‘Pharmaceutical products’ are intended to treat diseases in human beings. ‘Fungicides’ are sold to large-scale plant growers (farmers) through agricultural distribution networks or in garden shops and manufactured by chemical but not pharmaceutical companies. ‘Pharmaceutical products’ are sold either under prescription or over the counter but each time in pharmacies and with the assistance of pharmacists. The consumers of ‘fungicides’ are mostly farmers or plant growers while the consumers of ‘pharmaceutical products’ are persons who suffer from different diseases. Not only that they differ in their nature, purpose and method of use they are also sold through different channels of distribution, produced by different manufacturers, and are not in competition with or complementary to each other (07/05/2008, R 1092/2007-2, ZYDUS / ZIMBUS, § 25; 25/06/2013, R 2399/2011-4, VERTISAN, § 15-18; 03/03/2015, R 972/2014-4, Anginosan / ANGINOVAG § 15 to 19).

Class 3

29. The contested goods ‘soaps; cosmetics, sprays for the body and the face’ may all be used as to prevent, treat and heal certain skin, hair or nail problems, like the earlier pharmaceuticals do. These goods therefore, may coincide in purpose. Moreover, they share the same distribution channels since they can be found in pharmacies or other specialized shops. They are directed at the same public and may be manufactured by the same companies. The goods are similar to an average degree.

Comparison of the signs

30. The assessment of the visual, phonetic 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. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23; 06/10/2005, C‑120/04, Thomson Life, EU:C:2005:594, § 28). The comparison must be based on the perception, pronunciation and meaning of the conflicting signs in the languages of the Member States where the earlier mark is protected, i.e. Germany, and by reference to the target public of the goods at issue.

31. The following marks are to be compared:

    Contested application	Earlier German mark
    	BIFON

32. The contested figurative mark consists of the word ‘BIFORM’ written in standard capital letters preceded by a figurative element in black with a white lining-pattern inside. The latter element will merely be perceived as decorative and also as the consumer tends to focus on the textual elements within a figurative mark, the word ‘BIFORM’, which has no meaning in German, is the contested mark’s most distinctive and dominant part.

33. The earlier word mark consists of the word ‘BIFON’.

34. Visually, the earlier mark is to a large extent reproduced by the dominant and distinctive word element of the contested mark. The latter coincides with the earlier in the first four letters ‘BIFO’ on which the consumer will focus and the words only differ in their very endings, ‘RM’ and ‘N’ respectively. The marks are visually similar to an average degree.

35. Aurally, the figurative element of the contested mark will not be pronounced. The earlier mark consists of the two syllables ‘BI-FON’, the latter of the two syllables ‘BI-FORM’. The first syllables of the marks on which the consumer tends to focus are identical and the second ones are highly similar, also because in German the ‘RM’ and ‘N’ sound are similar. The marks are highly similar from an aural point of view.

36. Conceptually, the comparison remains neutral as neither of the marks have a meaning in German.

Global assessment of likelihood of confusion

37. According to the case-law of the Court of Justice, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion. It follows from the very wording of Article 8(1)(b) CTMR that the concept of a likelihood of association is not an alternative to that of likelihood of confusion, but serves to define its scope (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 29; 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17).

38. A likelihood of confusion on the part of the public must be assessed globally. That global assessment implies some interdependence between the factors taken into account and in particular similarity between the marks and between the goods or services covered. Accordingly, a lesser degree of similarity between these goods or 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; 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19). The more distinctive the earlier mark, the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation 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).

39. For the purpose of the global appreciation, the average consumer of the category of goods or services concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. The consumer’s level of attention is likely to vary according to the category of goods or services in question and the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26; 30/06/2004, T‑186/02, Dieselit, EU:T:2004:197, § 38).

40. The goods in question target the public at large and professionals in the medical field. Taking into account the nature of the goods, the level of attention of the relevant consumer will be above average or even high.

41. In the absence of any meaning of the earlier mark, the inherent distinctiveness of it is normal. Enhanced distinctiveness of the earlier mark has not been claimed or proven by the opponent.

42. Taking into account the identity and similarity of the conflicting goods, the average visual and high aural similarity of the signs, and the normal level of distinctiveness of the earlier mark, a likelihood of confusion exists, even taking into account a higher level of attentiveness of the relevant consumer.

43. There is, however, no likelihood of confusion for the dissimilar goods ‘fungicides’ in Class 5. For an opposition to succeed on Article 8(1)(b) CTMR, the conditions that the marks are similar or identical and that the goods or services are similar or identical are cumulative. If the conflicting goods or services are dissimilar, the opposition remains unsuccessful on that ground already, regardless of the degree of similarity or even identity between the conflicting signs or the reputation of the earlier mark (09/03/2007, C‑196/06 P, Comp USA, EU:C:2007:159, § 26, 38).

44. To conclude, the contested decision shall be annulled insofar as the opposition was upheld for ‘fungicides’ in Class 5. The appeal shall be dismissed for the remainder.

Costs

45. Since the opposition and the appeal are successful in part, each party shall bear its own costs and fees in the opposition and appeal proceedings pursuant to Article 85(2) CTMR.

Order

On these grounds,

THE BOARD

hereby:

1. Annuls the contested decision insofar as it upheld the opposition in relation to the goods ‘fungicides’ in Class 5 and rejects the opposition against these goods;

2. Dismisses the appeal for the remainder;

3. Orders each party to bear its own costs for the opposition and the appeal proceedings.

Signed D. Schennen

Signed L. Marijnissen

Signed F. López de Rego

Registrar: Signed H.Dijkema