OPPOSITION No B 2 359 290

Uro Labs, 22 Villa du Hameau, 78400 Chatou, France (opponent)

a g a i n s t

Dance Biopharm Inc., 150 North Hill Drive, Suite 24, Brisbane California 94005, United States of America (applicant), represented by Gevers, Brussels Airport Business Park, Holidaystraat 5, 1831 Diegem, Belgium (professional representative).

On 04/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 359 290 is upheld for all the contested goods.

2. European Union trade mark application No 12 536 611 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 350.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 12 536 611. The opposition is based on European Union trade mark registration No 12 098 364. 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, inter alia, the following:

Class 5: Pharmaceutical and veterinary preparations; Sanitary preparations for medical purposes; Foodstuffs and dietetic substances for medical or veterinary purposes; Food for babies; Dietary supplements for humans and animals; Materials prepared for bandages (dressings); Material for stopping teeth, dental wax; Disinfectants; Preparations for destroying noxious animals; Fungicides, herbicides; Bath preparations for medical purposes; Pants and towels; Chemical preparations for medical or pharmaceutical purposes; Medicinal herbs; Herbal teas for medicinal purposes; Parasiticides; Alloys of precious metals for dental purposes; None of the aforesaid goods being intended for the field of cardiology.

Class 10: Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; Orthopedic articles; Suture materials; Stockings for varices; Feeding bottle receptacles; Feeding bottle teats; Clothing especially for operating rooms; Massage apparatus; Esthetic massage apparatus; Artificial limbs; Surgical implants made of artificial materials; Armchairs for medical or dental purposes; Surgical drapes; Basins for sanitary or medical purposes; Furniture especially made for medical purposes, surgical cutlery, orthopaedic footwear; None of the aforesaid goods being intended for the field of cardiology.

The contested goods are the following:

Class 5: Pharmaceutical and veterinary preparations including pharmaceutical preparations for inhalers; Inhalers filled with insulin.

Class 10: Medical apparatus for facilitating the inhalation of pharmaceutical preparations; Inhalers for medical use.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘including’, used in the applicant’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

Contested goods in Class 5

Given the meaning of the term ‘including’, as explained above, the contested pharmaceutical and veterinary preparations including pharmaceutical preparations for inhalers include, as a broader category, the opponent’s pharmaceutical and veterinary preparations; none of the aforesaid goods being intended for the field of cardiology. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested inhalers filled with insulin are, because insulin is not used for cardiological purposes, included in the opponent’s pharmaceutical preparations; none of the aforesaid goods being intended for the field of cardiology. Therefore, these goods are identical.

Contested goods in Class 10

The contested medical apparatus for facilitating the inhalation of pharmaceutical preparations; inhalers for medical use are included in, or overlap with, the opponent’s medical apparatus and instruments; none of the aforesaid goods being intended for the field of cardiology. Therefore, they are identical.

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 are directed at the public at large or at professionals in the field of medicine.

It is apparent from case law that, insofar as pharmaceutical preparations are concerned, the relevant public’s degree of attention is relatively high, whether or not these preparations are 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 quoted case law). In particular, medical professionals have a high degree of attention when prescribing medicines. With regard to non-professionals, they also pay a higher degree of attention, regardless of whether the pharmaceuticals are sold with or without a prescription, as these goods affect their state of health.

The same reasoning applies to the contested medical apparatus in Class 10; the degree of attention is also relatively high in relation to these goods.

3. The signs

	CHOROS
Earlier trade mark	Contested sign

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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the relevant public.

The earlier mark is a figurative mark consisting of the verbal element ‘qoros’ in stylised grey letters and, to the right of this, a blue circle with a grey border. A group of four stylised people, in white, are depicted within the circle, and underneath, in very small letters, is the word ‘qoros’, in the same (or a very similar) typeface as the larger element ‘qoros’.

The contested sign is a word mark, ‘CHOROS’.

The verbal elements of the signs are distinctive (they are meaningless).

The group of four people in the earlier mark clearly consists of two adults, a man and a woman, and two children, a girl and a boy, all holding hands. The depiction evokes a family. This concept is not related to the goods at issue; therefore, this element is also distinctive.

The contested word sign will be perceived as a whole and therefore does not have any element that is more eye-catching than others. In the earlier mark, the larger verbal element and the figurative element have the same visual impact. Only the verbal element within the figurative element is clearly less eye-catching, due to its very small size and its position in the lower part of the figurative element.

Visually, given that the contested sign is a word mark and that, in the case of word marks, the word itself is protected and not its written form, the signs coincide in the four letters ‘-oros’.

They differ in the figurative element and the stylisation of the letters in the earlier mark, as well as in the first letters of the signs, ‘q’ in the earlier mark and ‘ch’ in the contested sign, which, as emphasised by the applicant, are easily noticeable owing to their positions at the beginnings of the words.

In view of the above, it is considered that the signs are visually similar to a low degree.

Aurally, the additional element ‘qoros’ of the earlier mark will not be pronounced because of its very small size, its position in the lower part of the figurative element, and the fact that it is only a repetition of the larger verbal element. Furthermore, the earlier mark’s figurative element is not subject to a phonetic assessment.

Given the above, for part of the public, the signs are aurally identical because the contested sign ‘choros’ and the verbal element of the earlier mark ‘qoros’ are pronounced identically, as the grapheme ‘ch’ is (like the letter ‘q’) pronounced as /k/ in many French words, such as ‘choeur’, ‘chorale’, ‘choléra’, ‘cholestérol’, ‘chorégraphie’, etc.

Another part of the public will nevertheless pronounce the ‘ch’ of ‘choros’ differently, namely as /ʃ/, as in the French words ‘chocolat’, ‘choquer’ and ‘chose’. For this part of the public, the signs are aurally similar to a high degree, even bearing in mind that the differing sounds are placed at the beginnings of the verbal elements, because the resulting difference does not alter the syllabic structure or the rhythm and intonation of the signs, which are the same.

Conceptually, the verbal elements of the signs have no clear meaning for the French-speaking public, but the figurative element of the earlier mark clearly evokes a family and will be understood as conveying that concept (i.e. of a group of people traditionally consisting of parents and their children).

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.

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 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.

5. Global assessment, other arguments and conclusion

The signs are aurally identical or similar to a high degree. They are also visually similar, albeit to a low degree. The goods are identical.

The applicant contends that the differences between the signs are sufficient to find them dissimilar because they are short signs. Bearing in mind that short signs are, according to the Opposition Division’s practice, signs consisting of at most three letters, neither of the signs at issue is short, and therefore the applicant’s argument must be dismissed.

The applicant also refers to previous decisions of the Office to support its argument that there is no likelihood of confusion in the present case. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the applicant are not particularly relevant to the present proceedings because they refer to signs that are not comparable to those at issue. In the decision of 30/11/1999, No B 76 374 ( versus ), the signs were considered short, which is not the case here; in any case, these signs do not have anything to do with those in question in the present case. Likewise, the signs in the decision of 02/04/2008, R 657/2007-1, COMBAIR/QUOPAIR, and in the decision of 24/07/2000, No 74 593 (‘SNACKERS/Snaccos’), had more differences than those in the present case. In the decision of 27/05/2013, No 1 931 933, the signs at issue, ‘CICAR’ and ‘QUICAR’, were not, as are the signs in the present case, aurally identical for part of the public.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

The applicant also puts forward that the difference between ‘qoros’ and ‘choros’ lies in the first letters and will be clearly remembered by the public, all the more so as the letter ‘q’ is unusual at the beginning of a word; therefore, consumers would, according to the applicant, remember it. The Opposition Division, is of the view that, although the beginnings of word marks may be liable to attract the consumer’s attention more than the following parts, and the letter ‘q’ at the beginning of a word, especially when not followed by the vowel ‘u’, is unusual, the difference in some of the first letters of each sign is not sufficient in the present case to counteract the similarity between the verbal elements in question (22/5/2012, T‑585/10, PENTEO, EU:T:2012:251, § 67). Furthermore, the difference will be less memorable for the part of the public for which the differing letters ‘q’ and ‘ch’ are pronounced identically.

As regards the additional figurative element of the earlier mark, it must be taken into account that, 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 difference arising from the figurative element is not decisive for an absence of likelihood of confusion.

In addition, it must be borne in mind that the visual perception of the marks does not necessarily take place prior to purchase in relation to the specific goods at issue.

In the light of the above, the Opposition Division considers that the visual differences between the signs cannot counteract the aural identity or high degree of similarity and the visual commonalities, albeit reduced.

In addition, 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). Even consumers with 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).

Finally, it must be borne in mind that the goods are identical and that 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). In this respect, it is important to note that the earlier mark is not subject to proof of use obligation; therefore, the applicant’s comment that, according to some documents submitted by the opponent, the earlier mark is used for goods that are dissimilar to the contested goods is irrelevant.

Considering all the above, in particular the facts that the goods are identical and that the marks are aurally identical for part of the public, there is a likelihood of confusion on the part of the French-speaking public, even when a relatively high degree of attention is paid.

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.

Therefore, the opposition is well founded on the basis of the opponent’s EUTM registration. It follows that the contested trade mark must be rejected for all the contested goods.

COSTS

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. In the present case the opponent did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Begoña URIARTE VALIENTE

Catherine MEDINA

Gueorgui IVANOV

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.