CANCELLATION No 11 155 C (INVALIDITY)

Biohealth Italia, S.r.l, C.so Francia, 233/D, 10098 Rivoli (TO), Italy (applicant), represented by Buzzi, Notaro & Antonielli d’Oulx, Via Maria Vittoria, 18, 10123 Torino, Italy (professional representative)

a g a i n s t

Medora Therapeutics Ltd, 149 Irakleitos str., 15238 Halandri, Athens, Greece (EUTM proprietor), represented by Marks & Us, Marcas y Patentes, Licenciado Poza 52, 6°B, 48013 Bilbao (Vizcaya), Spain (professional representative).

On 01/12/2016, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is upheld.

2. European Union trade mark No 12 744 901 is declared invalid in its entirety.

3. The EUTM proprietor bears the costs, fixed at EUR 1 150.

REASONS

The applicant filed an application for a declaration of invalidity against all the goods of European Union trade mark No 12 744 901. The application is based on international trade mark registration No 1 156 203 designating the European Union. The applicant invoked Article 53(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the contested trade mark should be declared invalid because there is a likelihood of confusion, including a likelihood of association, with its earlier trade mark, as the signs are visually, aurally and conceptually similar, and the goods are identical or at least highly similar. It emphasises that the coinciding letters are placed at the beginnings of the signs, which increases the impact of the commonality, and invokes the principles of interdependence and imperfect recollection to support its argument.

The EUTM proprietor contends that the signs are dissimilar overall because they produce different overall impressions. It states that, since similarity between signs is a sine qua non for a likelihood of confusion, there is no need to compare the goods. It argues that, even bearing in mind the principle of imperfect recollection, the differences between the signs would be noticed by consumers. It also argues that the earlier mark ‘LITHOS’ is short and, therefore, that the differences between the marks will be noticed immediately. Furthermore, it states that ‘LITHOS’ means ‘stone’, or ‘calculus’ in the medical field, and will be understood as ‘kidney stone’ which is descriptive in connection with the Class 5 goods at issue. The EUTM proprietor adds that the applicant’s website shows that the trade mark ‘LITHOS’ is used for a nutritional supplement that, as the website explains, protects against the formation of kidney stones. It submits photographs of both its product and the applicant’s to show how differently the trade marks are used on the market and argues that the general practitioners who prescribe those products to their patients will not confuse the trade marks.

In view of the foregoing, the EUTM proprietor argues that the applicant cannot monopolise the use of the word for related goods and refers to Article 7(1)(c) EUTMR as well as to case law concerning the issue of the descriptive character of trade marks. It contends that the endings of the marks, ‘S’ and ‘REN’, are clearly different and sufficiently so to allow the marks to coexist on the market without a risk of confusion. It also emphasises that the earlier mark, given its descriptive character, should not be afforded broad protection. In addition, it refers to three European Union trade marks starting with ‘LITHO’ that are registered for goods in Class 5 (‘LITHOS’, ‘LITHOCAL’, ‘LITHOSTAT’) to support its argument that ‘LITHO’ is weak. It states that the mark ‘LITHOSTAT’ was subject to an opposition that was withdrawn after the applicant limited the specification to pharmaceutical goods for the treatment of kidney stones. It also refers to previous Office decisions that it considers comparable to the present case and in which it was found that there was no likelihood of confusion between the signs at issue.

The EUTM proprietor submits the following evidence in support of its arguments:

Exhibit 1: extract from the website Dictionary.com at http://dictionary.reference.com showing the entries for ‘litho-’ (which is defined as the combining form of the word of Greek origin ‘líthos’, and as a prefix meaning ‘mineral concretion’ or ‘calculus’ in the field of medicine).

Exhibit 2: extract from same dictionary showing several definitions of the medical term ‘calculus’ (which all include the word ‘stone’).

Exhibit 3: extract from the applicant’s website at www.biohealth.it concerning the product ‘Lithos’, which is described which is described as defending against the formation of kidney stones.

Exhibit 4: extract from the applicant’s website explaining what a kidney stone is.

Exhibit 5: copy of a limitation of the goods specified in the EUTM application for the mark ‘LITHOSTAT’ to pharmaceutical preparations for the treatment of kidney stones.

In its reply, the applicant puts forward that the use that is made of its earlier trade mark on the market is irrelevant because the mark is not subject to obligation of use. It argues that the mere existence of several trade marks does not demonstrate that consumers are accustomed to trade marks including a particular element (in this case, ‘litho’) or that that element has a low degree of distinctive character. It also refers to case law establishing that the earlier mark as a whole should always be considered to have at least a minimum degree of distinctiveness (24/05/2012, C‑196/11, F1-Live, EU:C:2012:314, § 40-41).

In its final observations, the EUTM proprietor states that the applicant has failed to respond to its main argument, namely that ‘LITHOS’ means ‘stone’ and, therefore, that the earlier mark is descriptive and should not be afforded broad protection. It insists on the difference between the signs, especially from the aural point of view, and reiterates that the signs are dissimilar overall and that the earlier mark is descriptive for all the goods because they can all contain supplements that regulate kidney function. It also reiterates that the earlier mark is used in relation to a product that is prescribed by general practitioners, that is, professionals, who, in addition, are particularly attentive when prescribing medicines and will not confuse the signs. This high degree of attention also rules out any likelihood of confusion on the part of the end users (patients).

LIKELIHOOD OF CONFUSION — ARTICLE 53(1)(a) EUTMR IN CONNECTION WITH 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 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.

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

Class 5: Pharmaceutical and veterinary preparations, namely, dietetic foods adapted for medical purposes, dietetic beverages for medical purposes, dietetic substances for medical purposes, disinfectant for hygiene purposes, foods for babies.

The contested goods are the following:

Class 5: Medical and veterinary preparations and articles; Pest control preparations and articles; Dental preparations and articles; Hygienic preparations and articles; Dietary supplements and dietetic preparations.

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

The term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

Furthermore, the word ‘articles’ in the expression ‘medical and veterinary preparations and articles’ in the EUTM proprietor’s list is to be interpreted in a broad sense, namely as meaning ‘products’ or ‘goods’. Likewise, the word ‘preparations’ in both lists is also to be understood in a broad sense. In other language versions of the Nice Classification (e.g. in the French, Spanish, German and Italian versions), the word ‘preparations’ in Class 5 is translated as ‘products’. There is, therefore, no material difference between pharmaceutical/veterinary preparations and pharmaceutical/veterinary articles.

The contested medical and veterinary preparations and articles include, as a broader category, for instance, the applicant’s pharmaceutical and veterinary preparations, namely, dietetic foods adapted for medical purposes. Although the word ‘medical’ is used in the EUTM proprietor’s list, whereas the word ‘pharmaceutical’ is used in the applicant’s list, the applicant’s goods clearly are medical products (for medical purposes). Since the Cancellation Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the applicant’s goods.

The contested hygienic preparations and articles include, as a broader category, the applicant’s pharmaceutical and veterinary preparations, namely disinfectant for hygiene purposes. Since the Cancellation Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the applicant’s goods.

The contested dental preparations and articles include dental preparations for hygiene purposes, such as mouthwash; therefore, these goods overlap with the applicant’s pharmaceutical and veterinary preparations, namely disinfectant for hygiene purposes and are identical.

The contested dietary supplements and dietetic preparations refer to the same goods as or are included in the applicant’s pharmaceutical preparations, namely dietetic substances for medical purposes, and are, therefore, identical.

The English word ‘pest’ refers to any animal, especially an insect, that attacks or infests crops, livestock, stored goods (information extracted from the Oxford English Dictionary on 16/11/2016 at http://www.oed.com). Therefore, the contested pest control preparations are highly similar to the applicant’s veterinary preparations, namely disinfectant for hygiene purposes because these goods have the same sanitary purpose, are sold through the same distribution channels and may be manufactured by the same companies. Furthermore, their target public is the same.

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 highly similar are directed at the public at large and at professionals in the medical field. The EUTM proprietor suggests that the goods are intended only for general practitioners; however, this is not the case, given the broad wording of the goods in both specifications (which are pharmaceutical and veterinary preparations, dietetic substances, dental preparations and disinfectants).

The Cancellation Division agrees with the EUTM proprietor that the degree of attention is higher than average.

It is apparent from the case law that, insofar as pharmaceutical preparations are concerned, the relevant public’s degree of attention is relatively high, whether or not the goods 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. Non-professionals also have a higher than average degree of attention in relation to medicines, regardless of whether they are sold with or without prescription, as these goods affect their state of health. This applies also to veterinary preparations.

The Court has held that dietetic products and sanitary products for medical purposes (including disinfectants for hygiene purposes), as well as food for babies, may be regarded as products to which consumers pay a high degree of attention (10/02/2015, T‑368/13, ANGIPAX, EU:T:2015:81, § 42-46).

3. The signs

LITHOS	LITHOREN
Earlier trade mark	Contested trade mark

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, bearing in mind 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 proceedings for a declaration of invalidity against any 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, by analogy). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to declare the contested trade mark invalid. In the present case, the Cancellation Division finds it appropriate to focus the comparison of the signs on the non-Greek-speaking part of the relevant public

The earlier mark is a word mark consisting of the word ‘LITHOS’, which consumers will perceive as a whole; that is, they will not break it down into separate components.

As argued by the EUTM proprietor, the word ‘LITHOS’ means ‘stone’ in Greek and is used as a prefix with that meaning. However, this meaning is unlikely to be known by the part of the public that is formed of non-Greek-speaking consumers who are not professionals in the medical field. The prefix ‘lithos’ is not commonly used in everyday medical discourse (or even in geological discourse) in any of the relevant languages. In English, for instance, the medical words in which the prefix is used are very specialised terms, such as ‘lithodialysis’, ‘lithotomy’, etc. The only fairly common word using the prefix that the public is likely to know is ‘lithography’, which does not relate to the medical field and in which the meaning ‘stone’ is not obvious (‘lithography’ means ‘the art or process of making a drawing, design or inscription on a special kind of stone so that impressions in ink can be taken from it’).

In any case, the Cancellation Division is of the opinion that, even if the word were understood as ‘stone’, the link with the goods would not be particularly obvious for people who are not specialists in the medical field, because it requires the consumer first to relate ‘stones’ to those stones that can be present in the body, such as kidney stones, and then to infer that the goods in question are intended to prevent or eliminate such stones.

Furthermore, the Cancellation Division notes that the EUTM proprietor’s argument that the product ‘LITHOS’ that is available on the market is indeed a dietetic supplement for eliminating kidney stones is irrelevant. Since the applicant’s trade mark is not subject to obligation of use, the issue of distinctiveness is to be examined in relation to the goods as described in the specification, not the actual goods for which the mark is used on the market.

For reasons of procedural economy, bearing in mind that a likelihood of confusion must be established for only part of the relevant public, the assessment will focus on the non-professional, non-Greek-speaking part of the public in the relevant territories, for which the word ‘LITHOS’ is meaningless and therefore distinctive to an average degree.

The contested sign is formed of the word ‘LITHOREN,’ which the relevant public, as defined above, will perceive as a whole, that is, not as formed of several components, and as being of average distinctiveness.

Both trade marks are word marks; therefore, there are no issues of visual dominance to be taken into account in the assessment of the similarity between the signs.

Before proceeding to the actual comparison, the Cancellation Division notes that the EUTM proprietor’s argument regarding the differences arising from the ways in which the signs are used on the market is not relevant, since the signs must be compared as registered.

Visually, the signs coincide in their first letters, ‘LITHO’, and differ in their final letters, namely the letter ‘S’ in the earlier mark and the letters ‘REN’ in the contested trade mark.

The EUTM proprietor argues that the signs are dissimilar because the coinciding component is not distinctive; it also argues that, because the earlier mark is short, the public will immediately perceive the differences between the signs.

However, as explained above, the Cancellation Division considers the coinciding element to be of average distinctiveness. Furthermore, the earlier mark is not short according to the Office’s current standards (short marks are those consisting of up to three letters).

In the present case, the differing letters and the ensuing difference in the lengths of the signs will probably not go unnoticed, but the public will no doubt also perceive the commonality. The coinciding string of letters will not be overlooked; five letters in common will not go unnoticed, particularly given that they are placed at the beginnings of the trade marks. 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.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the syllables ‘LI-THO’, present identically in both signs, and differs in the sounds of the letter ‘S’ in the earlier mark (if pronounced, which may not be the case for part of the French-speaking public) and of the letters ‘REN’ in the contested mark.

The contested trade mark is composed of three syllables whereas the earlier mark has two syllables, and the additional vowel ‘E’ in the contested mark is audible. However, the distinctiveness of the coinciding part, its position and the fact that the signs differ in only one sound increase the degree of aural similarity, which is therefore considered average.

Conceptually, neither sign 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 and, contrary to the EUTM proprietor’s arguments, are therefore not dissimilar overall, 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 applicant did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, 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 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 likelihood of confusion must be appreciated globally, taking into account all factors relevant to the circumstances of the case (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

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.

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).

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 essential factors to be taken into account in the present case are, as established above, that the goods are identical or highly similar, that the signs are visually highly similar and aurally similar to an average degree and that the earlier mark is of normal distinctiveness. Furthermore, the public’s degree of attention is considered higher than average.

In this regard, it is noted that the relevant public will still need to rely on its imperfect recollection, notwithstanding their higher than average degree of attention (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

Furthermore, the findings regarding the identity or similarity between the goods and the similarity between the signs both weigh in favour of a likelihood of confusion, and the similarity between the signs is considered particularly relevant for this global appreciation given the normal degree of distinctive character of the earlier mark.

In view of the foregoing, the Cancellation Division is of the opinion that the coincidences between the signs clearly outweigh the differences, which are not sufficient to eliminate the risk that a significant proportion of the relevant consumers might confuse the signs or at the very least might perceive the identical or highly similar goods marketed under the signs as originating from the same undertaking or from economically-linked undertakings.

The EUTM proprietor refers to previous Office decisions to support its arguments. 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 Court, which stated that it is settled case-law that the legality of decisions is to be assessed purely by reference to the EUTMR, and not Office practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In any event, the factual circumstances in the decisions cited by the EUTM proprietor are not identical to those in the present case, since the signs at issue were different.

The EUTM proprietor also argues that the earlier trade mark has a weak distinctive character, since many trade marks include the element ‘LITHO’, and it refers to three European Union trade marks.

The existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, it cannot be assumed on the basis of registry data only that such trade marks have been effectively used. Consequently, and also bearing in mind that the EUTM proprietor refers to only three trade marks, the evidence does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element ‘LITHO’. Under these circumstances, the EUTM proprietor’s claims must be set aside.

Considering all the above, there is a likelihood of confusion on the part of the non-Greek-speaking part of the non-professional public. 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 declare the contested trade mark invalid.

Therefore, the application is well founded on the basis of the applicant’s international registration designating the European Union. It follows that the contested trade mark must be declared invalid for all the contested goods.

COSTS

According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(iii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

José Antonio GARRIDO OTAOLA

Catherine MEDINA

Richard BIANCHI

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 Cancellation 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.