OPPOSITION No B 2 369 489

Sanofi (société anonyme), 54, rue La Boétie, 75008 Paris, France (opponent), represented by Edith Gourtay, Sanofi (société anonyme), 54, rue La Boétie, 75008 Paris, France (employee representative)

a g a i n s t

GlaxoSmithKline Biologicals S.A., Rue de l’Institut 89, 1330 Rixensart, Belgium (applicant), represented by Oscar Benito, GlaxoSmithKline Services Unlimited, 980 Great West Road, Brentford TW8 9GS, United Kingdom (employee representative).

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

DECISION:

1. Opposition No B 2 369 489 is upheld for all the contested goods.

2. European Union trade mark application No 12 603 817 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 12 603 817. The opposition is based on French trade mark registration No 93 664 687. 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 products

The contested goods are the following:

Class 5: Vaccines for human use.

The contested vaccines for human use are included in the broad category of the opponent’s pharmaceutical products. 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 and health professionals.

It is apparent from case law that, so far as pharmaceutical preparations are concerned, the relevant public’s degree of attention is relatively high, whether or not they are 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).

In particular, medical professionals have a high degree of attention when prescribing medicines. Non-professionals also have a relatively high degree of attention, regardless of whether the pharmaceuticals are sold with or without prescription, as these goods affect their state of health.

3. The signs

AFICEYO	AFILEO
Earlier trade mark	Contested sign

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).

Visually, the signs coincide in ‘AFI*E(*)O’. However, they differ in their fourth letters, ‘C’ in the earlier sign and ‘L’ in the contested sign, and in the sixth letter, ‘Y’, of the earlier sign, which has no counterpart in the contested sign. Furthermore, the first parts of the conflicting marks 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. Therefore, the signs are visually similar to an average degree.

Aurally, the signs coincide in the sound of the letters ‘AFI*E(*)O’ and they differ in their fourth letters, ‘C’ and ‘L’, and in the letter ‘Y’ of the earlier sign. However, each mark consists of four syllables, the mark’s vowels, namely ‘A*I*E*O’, follow the same order, and, thus, they have the same rhythm and intonation. Therefore, the signs are aurally 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.

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 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 (recital 8 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 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). This is particularly relevant in the present case, as the goods are identical.

The identical goods target the public at large and a professional public. The degree of attention is high.

The marks are visually similar to an average degree and aurally similar to a high degree.

Taking into account the principle of interdependence mentioned above, as well as the fact that the similarities result from the beginnings of the marks, the relevant public – including the professional public – might be led to believe that the identical goods come from the same undertaking or from economically linked undertakings, even when a high degree of attention is paid.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s French trade mark registration No 93 664 687. 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

Claudia ATTINÀ

Eamonn KELLY

Adriana VAN ROODEN

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.