OPPOSITION No B 2 469 594

Sanacorp Pharmahandel GmbH, Semmelweisstr. 4, 82152, Planegg, Germany (opponent), represented by Unverzagt Von Have Rechtsanwälte Partnerschaftsgesellschaft Mbb, Heimhuder Straße 71, 20148, Hamburg, Germany (professional representative)

a g a i n s t

Plastimea, 112 Rue Saint Denis, 1190 Brussels, Belgium (applicant), represented by Cabinet Germain & Maureau, 12, rue Boileau, 69006 Lyon, France (professional representative).

On 11/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 469 594 is upheld for all the contested goods and services, namely

Class 5: Dietary supplements and dietetic preparations; medical and veterinary preparations and articles.

Class 35: Advertising, marketing and promotional services; commercial trading and consumer information services; business analysis, research and information services.

2. European Union trade mark application No 13 131 321 is rejected for all the contested goods and services. It may proceed for the remaining goods.

3. The applicant bears the costs, fixed at EUR 650.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application 13 131 321, namely against all the goods and services in Classes 5 and 35. The opposition is based on, inter alia, German trade mark registration No 302 014 025 551, . 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s German trade mark registration No 302 014 025 551.

a) The goods and services

The goods and services on which the opposition is based are inter alia the following:

Class 5: Pharmaceutical and veterinary preparations as well as preparations for health care; dietetic substances adapted for medical use.

Class 35: Advertising; business management; business administration and advice; office functions; marketing, merchandising (sales promotion, product range design) for pharmacies; market analysis and research services; organization consultancy; professional business consulting; arranging and concluding of contracts, for others, for the buying and selling of goods, namely medicines and cosmetic supplies; business investigations, collecting of data in computer databases and statistical analysis, and providing of commercial information in the chemical and pharmaceutical sector and in the health sector.

The contested goods and services are the following:

Class 5: Dietary supplements and dietetic preparations; medical and veterinary preparations and articles.

Class 35: Advertising, marketing and promotional services; commercial trading and consumer information services; business analysis, research and information services.

Contested goods in Class 5

The contested medical and veterinary preparations and articles include as a broader category, the opponent’s pharmaceutical and veterinary preparations. 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 dietary supplements and dietetic preparations are included in the broad category of, or overlap with, the opponent’s dietetic substances adapted for medical use. Therefore, they are identical.

Contested services in Class 35

Advertising is identically contained in both lists of services.

The contested marketing and promotional services include, as a broader category, or overlap with, the opponent’s marketing, merchandising (sales promotion, product range design) for pharmacies. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested commercial trading and consumer information services overlap with the opponent’s providing of commercial information in the chemical and pharmaceutical sector and in the health sector. Therefore, they are identical.

The contested business analysis, research and information services include, as a broader category, or overlap with, the opponent’s business investigations, collecting of data in computer databases and statistical analysis, and providing of commercial information in the chemical and pharmaceutical sector and in the health sector. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

b) 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 the goods found to be identical are directed at the public at large as well as at business customers with specific professional knowledge or expertise and the services found to be identical are rather directed at business customers with specific professional knowledge or expertise.

It is apparent from the case-law that, insofar as pharmaceutical preparations, whether or not issued on prescription, are concerned, the relevant public’s degree of attention is relatively high (15/12/2010, T‑331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T‑288/08, Zydus, EU:T:2012:124, § 36).

In particular, medical professionals have a high degree of attentiveness in relation to medicines. Non-professionals also have a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health. Regarding the remaining goods in Class 5, these may also affect one's state of health and a higher degree of attention can therefore also be expected from the relevant public in relation to these goods.

In relation to the services, the degree of attention may vary from average to high, depending on the specialised nature, or terms and conditions of the services purchased.

c) The signs

Earlier trade mark	Contested sign

The relevant territory is Germany.

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).

As regards the earlier sign, it is composed of a verbal element, 'mea' and a less distinctive figurative element, namely a series of three green squares. Whichever meaning it may have in Latin, as contended by the applicant, and taking into account that the average consumer is not per se proficient in Latin, the element ‘mea’ of the earlier mark has no meaning for the relevant public and is, therefore, distinctive to an average degree whereas the device is of a purely decorative nature and is, therefore, weak.

Although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details the fact remains that, when perceiving a verbal sign, he will break it down into elements which, for him, suggest a concrete meaning or which resemble words known to him (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57). In the contested sign, taking in particular into account the differences in stylization, the relevant public will break down the element 'PLASTImea' into two components, and perceive ‘PLASTI’ as an evocation of the German words 'plastisch' and 'plastik', revealing a relationship or a connection between the goods and the medical field of plastic surgery or their suitability to obtain results that are either close to those provided by plastic surgery or that enhance or complement the results of such an intervention (see also (see also https://www.duden.de/suchen/dudenonline/plastik). Therefore, this component is of little distinctiveness in relation to these goods. However, in relation to the contested services, the element 'PLASTI' will not evoke anything in relation to such services and therefore, it is distinctive to a normal degree in relation to these. Finally, the component 'mea' has no meaning whatsoever in the relevant territory, as already indicated above in relation to the earlier mark, and is considered distinctive to an average degree.

Regarding the English expression 'BEAUTY SIMPLIFIED' in the contested sign, regardless of whether it is or not understood by the relevant public, and therefore regardless of its distinctiveness, it clearly occupies a secondary place in the contested sign given its reduced size and the use of small thin characters to represent it for which it is overshadowed the dominant element 'PLASTImea'.

As both signs are figurative marks it should further be noted 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).

Visually, the signs coincide in their distinctive elements 'mea', albeit that these are represented differently. The signs differ for the remainder. Taking into account the degree of distinctiveness, the position and/or impact of the differing elements, as explained above, the signs are similar to a low degree, at least.

Aurally, the signs coincide in their distinctive elements 'mea'. The pronunciation of the signs differs in the sounds of the letters 'PLASTI' in the contested sign. Regarding the expression 'BEAUTY SIMPLIFIED' of the contested sign, it has been confirmed by case-law that consumers generally only refer to the dominant elements in trade marks (03/07/2013, T-206/12, LIBERTE american blend, EU:T:2013:342, § 43-44) and in any case, that they tend to shorten marks containing several words. Therefore, the public under analysis is unlikely to pronounce this expression in the contested sign and the signs at issue are aurally similar to an average degree, at least.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As seen above, even if understood, the English expression 'BEAUTY SIMPLIFIED' in the contested sign is hardly perceptible on account of its reduced size and the squares in the figurative element of the earlier mark are of a purely decorative nature. Finally, the element 'PLASTI' evokes a concept which is of little distinctiveness in relation to the goods in Class 5. Therefore, these elements are not sufficient to establish that the signs, altogether, are conceptually dissimilar, at least in relation to the goods in Class 5. In relation to the services in Class 10, 'PLASTI' will not be associated with any meaning. In view of the foregoing and taking into account that the coinciding distinctive element 'MEA' conveys no concept and that the signs, each as a whole, have no meanings, 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.

d) 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, despite the presence of a weak element in the mark, as stated above in section c) of this decision.

e) 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. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C251/95, Sabèl, EU:C:1997:528, § 22).

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).

In addition, the global assessment of the risk of confusion entails certain interdependence between the factors taken into account and, in particular, between the similarity of the trademarks and the similarity of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 25).

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that many trade marks include 'mea'. In support of its argument the applicant refers to several trade mark registrations in different member states of the European Union.

The Opposition Division notes that, despite the arguments of the applicant to the contrary, 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, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include 'mea'. Under these circumstances, the applicant’s claims must be set aside and, as already indicated above, the earlier mark and its word element 'mea' are distinctive to a normal degree.

In the present case, the goods and services, found to be identical, are directed in part at the public at large as well as at business customers with specific professional knowledge or expertise and in part rather at the latter category. The degree of attention is deemed to be higher than average in relation to the goods whereas it varies from average to higher than average in relation to the services. The signs at issue are visually and aurally similar to an average degree, at least, in that they coincide in the distinctive verbal element 'mea'.

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 who pay 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).

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. In the present case, taking into account the limited distinctiveness of 'PLASTI' in relation to the contested goods in Class 5 and the secondary position of the expression 'BEAUTY SIMPLIFIED' in the contested sign, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49), for instance a sub-brand evoking a characteristic of the contested goods.

In relation to the contested services, while it is true that 'PLASTI' in the contested sign is distinctive to an average degree, it remains that 'mea' has a distinctive and independent role within the signs. Given the identity of the services at issue, the Opposition Division considers that the consumer may also make a connection between the conflicting signs and assumes that the services covered are from the same or economically linked undertakings.

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 German trade mark registration No 302 014 025 551. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the earlier German trade mark registration No 302 014 025 551 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268) or the evidence of use filed by the opponent in relation to such other earlier rights.

COSTS

According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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.

The Opposition Division

Begoña URIARTE VALIENTE

Martina GALLE

Maria del Carmen COBOS PALOMO

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.