OPPOSITION No B 2 454 646

Paul Hartmann AG, Paul-Hartmann-Str. 12, 89522 Heidenheim, Germany (opponent), represented by Wolpert Rechtsanwälte, Kaiser-Friedrich-Promenade 87, 61348 Bad Homburg, Germany (professional representative)

a g a i n s t

La Foret (Suisse) Ltd., RG Hodge plaza, 2nd Fl Wickhams Cay, Upper Main Street,

Road Town, Tortola, British Virgin Islands (applicant), represented by Ipamark S.L.,

Paseo de la Castellana, 72-1º, 28046 Madrid, Spain (professional representative).

On 14/12/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 454 646 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods of Community trade mark application No 13 182 415. The opposition is based on Community trade mark registration No 2 976 850. The opponent invoked Article 8(1)(b) CTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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: Plasters of all kinds, materials for dressings of all kinds, bandages for sanitary and medical purposes (included in class 5); dressings for wounds, granular insert and padding material (included in class 5), compresses, swabs, sanitary tampons, cotton wool for medical use, embrocation dressings.

Class 10: Orthopaedic bandages, plaster, fixing, support and padded bandages, universal bandages; sleeve and gauze bandages; compression stockings; synthetic resin dressings, including thermoplastic synthetic resin dressings, Unna's paste dressings.

The contested goods are the following:

Class 5: Medicated creams; Antifungal creams for medical use; Medicated skin creams; Acne creams [pharmaceutical preparations]; Hand creams for medical use; Medicinal creams for the protection of the skin; Medicated creams for the care of the feet; Skin care creams for medical use; Capillary lotions (Medicated -); Medicated skin lotions; Medicated skin lotions; Skin care lotions [medicated]; Cooling sprays for medical purposes.

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 opponent’s goods plasters, dressings and bandages are medical goods to cover wounds, with the purpose of protecting and healing wounds. Bearing this in mind, their purpose is similar to that of all contested goods which represent medical creams and lotions as well as cooling sprays insofar as they can be used to improve the skin conditions as well as cooling of painful areas of patients. The relevant public coincides and these goods generally have the same distribution channels. Therefore, these goods are considered similar.

2. The signs

Permafoam
Earlier trade mark	Contested sign

The relevant territory is the European Union.

Visually, the signs are similar to the extent that they coincide in the letters ‘*-e-r-m-a-f-o-a-m’. The marks differ in their initial letters ‘P’ versus ‘D’ and in the fact that the contested mark is a figurative mark while the earlier mark is a word mark; they also differ in their structure: the contested sign appears as two verbal elements, one placed on the other and represented in different font. The marks also differ in the abstract figurative element included in the contested mark which consists of five horizontal lines of different heights and four circles to the left of these lines (see above).

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛*-e-r-m-a-f-o-a-m’, present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the first letters ‛P’ of the earlier sign and ‘D’ of the contested mark.

Conceptually, the word ‘permafoam’ has no dictionary meaning. However, part of the relevant public may perceive one-word signs as being composed of different words, in particular where one of the parts (or all) have a clear and evident meaning such as in the present case.

The word ‘perma’ in the earlier sign will be associated by part of the public with the Latin prefix ‘perma-’, used to indicate ‘a fixed, not temporary state’ (see Collins English Dictionary Online) or, moreover, with the word ‘permanent’ in the sense of ‘everlasting, durable, constant’ that has the same or a closely similar word in most European languages (for example, ‘permanent’ in German, Dutch, French, ‘permanente’ in Spanish, ‘permanentny’ in Polish, ‘permanentno’ in Slovenian, ‘permanentný’ in Slovak, etc.). The word ‘foam’ included in both marks refers to ‘The aggregation of minute bubbles formed in water or other liquids by agitation, fermentation, effervescence, ebullition’ in English. A part of the public, for example the English-speaking public, will therefore naturally dissect the expression ‘permafoam’ and perceive it with the meaning ‘permanent foam’. The German-speaking part of the public will only understand the word “perma” and will dissect the mark while for another part of the relevant public the earlier sign is meaningless.

The contested sign ‘derma foam’ will be understood as ‘skin foam’ in English. The word ‘DERMA’ included in the contested mark originates from Greek (‘derma-’) and refers to dermatology which is the branch of medicine concerned with the diagnosis and treatment of diseases and disorders of the skin (Collins English Dictionary) and it will be understood in the relevant territory as a prefix which refers to the skin.

A part of the relevant public (for example, the English-speaking public), the signs will be similar to the extent as they both refer to “foam”, while the earlier sign refers to ‘permanent foam’ the other refers to ‘skin foam’. For another part of the relevant public that will only perceive the word ‘DERMA’ of the contested mark or ‘PERMA’ of the earlier mark, the signs are not conceptually similar.

The figurative element in the contested sign will not be perceived as having any particular meaning besides a representation of circles and lines.

Taking into account the abovementioned visual, aural and for a part of the public conceptual coincidences, the signs under comparison are similar.

3. Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

The element ‘DERMA’, derived from the Greek word δέρμα (‘skin’) of the contested sign will be associated throughout the European Union with the term “skin” as such terms, or similar terms, exist in several languages apart from Greek, they are invariably employed as prefixes or suffixes to modify medical or anatomical terms in relation to the skin (see decision of 08/11/2010, R 769/2010-2, ‘dermapura’, para. 24). Bearing in mind that the relevant goods are creams and lotions for the skin it is considered that this element is non‑distinctive for all contested goods in Class 3.

The common element ‘FOAM’ of both signs will be associated by the English-speaking public as ‘The aggregation of minute bubbles formed in water or other liquids by agitation, fermentation, effervescence, ebullition’. Bearing in mind that the relevant goods are plasters, bandages, creams and lotions for the skin it is considered that this element is non‑distinctive for all earlier and all contested goods as it only describes that these lotions are in the form of foam or can be used as foam or that the bandages and plasters contain medical or medicated foam to cure wounds.

A part of the public may perceive the element ‘perma’ in the earlier sign as the commonly used prefix ‘perma-’, describing a ‘fixed, not temporary state’ or as allusive to the abbreviated form of ‘permanent’. Bearing in mind that the relevant goods are plasters and bandages it is considered that this element is non‑distinctive for all earlier goods as it only describes that these bandages and plasters can stay very long on the patient’s body as if they were permanent.

The public that understands the meaning of these elements (‘derma’, ‘foam’ and ‘perma’) will not pay as much attention to these non‑distinctive elements as to the other, if applicable, more distinctive elements of the marks. Consequently, the impact of these non‑distinctive elements is limited when assessing the likelihood of confusion between the marks at issue.

For the remaining part of the public, that does not understand the word ‘FOAM’ or associate the word ‘PERMA’ with something permanent, these elements have an average degree of distinctiveness.

The marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.

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 a meaning for the goods in question from the perspective of the English-speaking public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as low for the English-speaking public, its distinctiveness only lies in the specific combination of the two word elements. The level of distinctiveness is normal for the remaining part of the public for which the sign has no meaning for the goods in question.

5. 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 similar are directed at the public at large and at a professional medical public. The degree of attention will vary from average to high.

6. Global assessment, other arguments and conclusion

The goods under comparison are similar.

As has been concluded in part b) of this decision, the signs are visually and aurally similar to the extent that they have the letters ‘*-e-r-m-a-f-o-a-m’ in common. However, this similarity is not sufficient to find a likelihood of confusion, as there are also important differences between the signs.

The signs differ in their first letters ‘P’ versus ‘D’. Although the word elements of the marks only differ in one single letter, such difference is at the beginning of the signs on which the consumers tend to focus more when being confronted with a trade mark. Similarly, the different beginning has an important impact on the phonetic aspect of the signs. Consequently, the different first letters of the marks create a sufficiently different overall impression. Furthermore, the earlier sign is composed of one word, while the contested mark consists of two words, placed one above another, and an additional figurative element placed at the beginning of the contested mark.

The fact that the signs have, except for the English-speaking public, a different concept or are not conceptually similar plays an important role in the comparison in favour of the finding of no likelihood of confusion, since a conceptual similarity normally contributes to rendering the signs more similar. In the present case, the earlier mark will only be perceived by a part of the relevant public that will see the expression ‘PERMAFOAM’ as the combination of the meaningful words while for the other part of the relevant public, the earlier mark is meaningless. On the other hand, the verbal element placed in the upper part of the contested sign, ‘DERMA’, conveys a clear concept for the entire relevant public and so does the word ‘FOAM’, although only by the part of the relevant public. Therefore, for the part of the relevant public there exists a conceptual difference between the marks that will help to differentiate them and for the remaining part the signs are not conceptually similar. Even though for the English-speaking part of the public the signs are conceptually similar with regard to the element ‘foam’, this similarity is neutralised by the fact that their common element ‘foam’ is non-distinctive for the goods at stake and the further elements, while they are either also not distinctive or play a minor role (figurative element), they convey a different concept, while one mark refers to ‘permanent foam’ while the other mark refers to ‘skin foam’.

Taking into consideration all of the above, it is reasonable to conclude that the consumers will perceive the visual and conceptual differences in the signs at issue, which create different overall impressions. Consequently, the Opposition Division concludes that in the present case the similarity deriving from the sequence of letters ‘ermafoam’ is not enough for there to exist a likelihood of confusion, including a likelihood of association.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) CTMR it is unnecessary to examine the evidence of use filed by the opponent.

COSTS

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

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

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

The Opposition Division

Sigrid DICKMANNS

Lars HELBERT

Justas IVANAUSKAS

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 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) CTMIR, 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 (Article 2(30) CTMFR) has been paid.