OPPOSITION No B 2 573 577

Fiterman Pharma Limited, Str. Moara de Foc No 35, 700520 Iasi, Romania (opponent)

a g a i n s t

Allogenic AB, Sälgen AB Strandvägen 5 B, 114 51 Stockholm, Sweden (applicant), represented by Aktiebolagstjänst Leif Malmborg, Drottninggatan 104, 104 30 Stockholm, Sweden (professional representative).

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

DECISION:

1. Opposition No B 2 573 577 is upheld for all the contested goods and services, namely:

Class 3: Antioxidant preparations (cosmetics) not for medical purposes; Make-up removing preparations; Bath preparations; Deodorants; Toiletries; Ethereal oils; exfoliating preparations for the face and body; Essential oils; Moisturising emulsions for the face and body; Hand creams; Skin whitening creams; Soaps; Skin and hair masks; Depilatories; Hair preparations and treatments; Non-medicated toilet preparations; Cosmetics; After-sun cosmetic preparations; Cosmetic masks; Cosmetic preparations in all galenical forms; Cosmetics for therapeutic purposes, for care and beauty purposes for the body, face and hands and not for medical purposes, in particular creams, milks, lotions, gels and serums; Anti-wrinkle preparations; Sun-tanning preparations [cosmetics]; Cosmetic preparations; Body smoothers; lip balms and creams; Lotions, powders, creams and scrubbing preparations all for use on the skin; Face moisturisers and toners; Lip pomades; Nail care preparations; Oils for cosmetic purposes; Perfumery; Anti-aging preparations for the skin; Non-medicated preparations for the care of the skin; Cleaners for the skin, the body and the face; Cleansing milk for toilet purposes; Shampoos and hair conditioners; Preparations to protect the hair; Beauty preparations for men; Sun-protection and after-sun preparations (cosmetics); Sun-tanning preparations [cosmetics]; Soaps; Extracts of plant for cosmetic purposes.

Class 5: Dermatological preparations; Diagnostic preparations for medical purposes; Dietetic substances adapted for medical use; Pharmaceutical preparations for the skin and hair; Pharmaceutical preparations; skin cosmetic preparations for the hygiene and care of the skin and hair for medical purposes; Medicated preparations for the care of the skin; Chemical preparations for medical or pharmaceutical purposes; Dietary food supplements for human consumption; Vitamin preparations.

Class 35: Retail services in respect of soaps, perfumery, essential oils, cosmetics, hair care preparations and skin care preparations.

2. European Union trade mark application No 13 754 023 is rejected for all the contested goods and services. It may proceed for the remaining goods and services.

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

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 13 754 023, namely against some of the goods in Classes 3 and 5 and all the services in Class 35. The opposition is based on Romanian trade mark registration No 90 514. 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 and services

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

Class 3: Soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

Class 5: Pharmaceutical preparations for human use, in particular, antiphlebitis products (with tapioca-gel administration, ointment and with administration per bone).

The contested goods and services are the following:

Class 3: Antioxidant preparations (cosmetics) not for medical purposes; Make-up removing preparations; Bath preparations; Deodorants; Toiletries; Ethereal oils; exfoliating preparations for the face and body; Essential oils; Moisturising emulsions for the face and body; Hand creams; Skin whitening creams; Soaps; Skin and hair masks; Depilatories; Hair preparations and treatments; Non- medicated toilet preparations; Cosmetics; After-sun cosmetic preparations; Cosmetic masks; Cosmetic preparations in all galenical forms; Cosmetics for therapeutic purposes, for care and beauty purposes for the body, face and hands and not for medical purposes, in particular creams, milks, lotions, gels and serums; Anti-wrinkle preparations; Sun-tanning preparations [cosmetics]; Cosmetic preparations; Body smoothers; lip balms and creams; Lotions, powders, creams and scrubbing preparations all for use on the skin; Face moisturisers and toners; Lip pomades; Nail care preparations; Oils for cosmetic purposes; Perfumery; Anti-aging preparations for the skin; Non-medicated preparations for the care of the skin; Cleaners for the skin, the body and the face; Cleansing milk for toilet purposes; Shampoos and hair conditioners; Preparations to protect the hair; Beauty preparations for men; Sun-protection and after-sun preparations (cosmetics); Sun-tanning preparations [cosmetics]; Soaps; Extracts of plant for cosmetic purposes.

Class 5: Dermatological preparations; Diagnostic preparations for medical purposes; Dietetic substances adapted for medical use; Pharmaceutical preparations for the skin and hair; Pharmaceutical preparations; skin cosmetic preparations for the hygiene and care of the skin and hair for medical purposes; Medicated preparations for the care of the skin; Chemical preparations for medical or pharmaceutical purposes; Dietary food supplements for human consumption; Vitamin preparations.

Class 35: Retail services in respect of soaps, perfumery, essential oils, cosmetics, hair care preparations and skin care preparations.

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

The term ‘in particular’, used in the opponent’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).

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.

Contested goods in Class 3

Cosmetics; essential oils; perfumery; soaps (repeated) are identically included in both specifications.

The contested antioxidant preparations (cosmetics) not for medical purposes; make-up removing preparations; bath preparations; deodorants; toiletries; exfoliating preparations for the face and body; moisturising emulsions for the face and body; hand creams; skin whitening creams; skin masks; depilatories; after-sun cosmetic preparations; cosmetic masks; cosmetic preparations in all galenical forms; cosmetics for therapeutic purposes, for care and beauty purposes for the body, face and hands and not for medical purposes, in particular creams, milks, lotions, gels and serums; anti-wrinkle preparations; sun-tanning preparations [cosmetics]; cosmetic preparations; body smoothers; lip balms and creams; lotions, powders, creams and scrubbing preparations all for use on the skin; face moisturisers and toners; lip pomades; nail care preparations; oils for cosmetic purposes; anti-aging preparations for the skin; non-medicated preparations for the care of the skin; cleaners for the skin, the body and the face; cleansing milk for toilet purposes; shampoos and hair conditioners; preparations to protect the hair; beauty preparations for men; sun-protection and after-sun preparations (cosmetics); sun-tanning preparations [cosmetics]; extracts of plant for cosmetic purposes are included in the broad category of the opponent’s cosmetics. Therefore, they are identical.

The contested ethereal oils are included in the broad category of the opponent’s essential oils. Therefore, they are identical.

The contested hair preparations and treatments; hair masks are included in the broad category of the opponent’s hair lotions. Therefore, they are identical.

The contested non- medicated toilet preparations overlap with the opponent’s soaps. These goods are identical.

Contested goods in Class 5

The contested dermatological preparations; diagnostic preparations for medical purposes; pharmaceutical preparations for the skin and hair; skin cosmetic preparations for the hygiene and care of the skin and hair for medical purposes; medicated preparations for the care of the skin; chemical preparations for medical or pharmaceutical purposes are included in the broad category of, or overlap with, the opponent’s pharmaceutical preparations for human use, in particular, antiphlebitis products (with tapioca-gel administration, ointment and with administration per bone). Therefore, they are identical.

The contested pharmaceutical preparations include the opponent’s pharmaceutical preparations for human use, in particular, antiphlebitis products (with tapioca-gel administration, ointment and with administration per bone). Therefore, they are identical.

The contested dietetic substances adapted for medical use; dietary food supplements for human consumption; vitamin preparations are all types of dietary and nutritional supplements. These goods are products that benefit the body and a person’s health in a particular way, by providing micronutrients, vitamins and minerals to support, for example, bone growth and muscle development. Their purpose is similar to that of pharmaceutical preparations for human use (substances used to treat disease) insofar as they are used to improve a patient’s medical condition. The relevant public coincides and the goods generally have the same distribution channels. Therefore, these goods are considered similar.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested retail services in respect of soaps, perfumery, essential oils, cosmetics, hair care preparations and skin care preparations are similar to a low degree to the opponent’s soaps; perfumery, essential oils, cosmetics, hair lotions.

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.

The conflicting goods and services target the public at large and professionals in the medical and cosmetic fields. Taking into account the medical nature of the goods, the degree of attention of the relevant public will be higher than average with regard to pharmaceutical preparations and all goods identical thereto in Class 5. Medicines, whether or not issued on prescription, can be regarded as receiving a high degree of attention from consumers, who are reasonably well informed and reasonably observant and circumspect (15/12/2009, T‑412/08, Trubion, EU:T:2009:507, § 28). This is also more generally applicable to goods in the field of health (26/11/2013, T‑262/14, BIONECS / BIONECT, EU:T:2015:886, § 19). As regards the degree of attention in relation to the goods and services in Classes 3 and 35, some of the goods are purchased regularly as part of a weekly shop, so it is reasonable to expect the relevant public to be paying an average degree of attention.

3. The signs

	Allél
Earlier trade mark	Contested sign

The relevant territory is Romania.

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 earlier mark is a figurative mark consisting of the letters ‘Allé’ in rather standard characters. The mark also contains an indistinct figurative element behind the first letter, ‘A’. The contested sign is a word mark, ‘Allél’.

Neither of the signs contains elements that could be considered clearly more distinctive (at least for part of the public) or more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the letters ‘ALLÉ’ which form the whole verbal element of the earlier mark and almost the entire contested sign. The marks differ in the letter ‘L’ at the end of the contested sign and the stylisation and figurative device of the earlier mark.

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).

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 highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters [allé], present in both signs. The pronunciation differs in the sound of the letter ‛L’ of the contested mark, which has no counterpart in the earlier sign.

Therefore, the signs are aurally highly similar.

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 goods and services are identical, similar and similar to a low degree.

The signs are visually and aurally similar to a high degree; the dissimilarities are mainly in the additional letter ‘L’ of the contested sign and in the figurative elements of minor importance in the earlier sign. The verbal element of the earlier mark is entirely included in the contested sign. These similarities are not altered by any conceptual difference.

The additional letter ‘L of the contested sign, and the stylisation and figurative element of the earlier mark, are insufficient to distinguish the marks clearly from each other. These additions will not make an indelible impression on all consumers and may in fact be overlooked or go unnoticed by consumers who pay only an average degree of attention. This is particularly the case given that consumers must rely on their imperfect recollection when making purchasing decisions. Even paying a high degree of attention to some of the goods would not eliminate the likelihood that the consumer would think that the contested mark is in some way economically linked to the earlier mark, because the signs have the same distinctive element and refer to closely related products, all in the same specific field.

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 Romanian trade mark registration No 90 514. It follows that the contested trade mark must be rejected for all the contested goods and services. This conclusion holds for the contested services even though they have been found to be similar only to a low degree. This is because the similarity between the signs is significant enough to also lead to a likelihood of confusion in relation to the services that have only a low degree of similarity.

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

Natascha GALPERIN

Gonzalo BILBAO TEJADA

Janja FELC

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.