OPPOSITION No B 2 577 933

Dr. Ausbüttel & Co. GmbH, Herdecker Str. 9-15, 58453 Witten, Germany (opponent), represented by Schneiders & Behrendt, Huestr. 23, 44787 Bochum, Germany (professional representative)

a g a i n s t

Genomma Lab Internacional, SAB de CV, Durango No. 332 Int. 102, Col. Roma, Del. Cuauhtémoc, Mexico D,F Mexico 06700, Mexico (applicant), represented by Casas Asin S.L., Av. San Francisco Javier, 9, Edificio Sevilla 2, 8ª Planta, Oficina 7, 41018 Sevilla, Spain (professional representative).

On 29/11/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 577 933 is upheld for all the contested goods.

2. European Union trade mark application No 14 097 521 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 097 521. The opposition is based on, inter alia, German trade mark registration No 302 011 067 360. 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 302 011 067 360.

1. The goods

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

Class 5: Pharmaceutical products and health-care products; plasters, materials for dressings; hygienic bandages; bandages for dressings; all aforementioned goods not for products and preparations (including reagents and diagnostic preparations) in connection with cancer research and cancer diagnostics.

Class 10: Cold/hot compresses; orthopaedic articles, except orthoses; hosiery for medical purposes; pumps for medical purposes; thermo-electric compresses for medical purposes; all aforementioned goods not for apparatus and instruments in relation to cancer research and cancer diagnostics.

Class 35: Wholesale and retail services in relation to pharmaceutical products, plasters and dressings, medical articles.

Following a limitation the contested goods are the following:

Class 5: Pharmaceutical preparations for treating sports injuries; pharmaceutical agents for treating physically caused lesions; analgesics; auxiliary medicines for relief of muscular pain caused by muscular lesions and bruises when practising any kind of sport or activity.

The contested pharmaceutical preparations for treating sports injuries; pharmaceutical agents for treating physically caused lesions; analgesics; auxiliary medicines for relief of muscular pain caused by muscular lesions and bruises when practising any kind of sport or activity are included in the opponent’s broader category of 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 directed at the public at large as well as at business customers with specific professional knowledge or expertise in the healthcare field. The degree of attention is relatively high, whether or not issued on prescription as the relevant goods affect the state of health (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).

3. The signs

DRACO	Dragón
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).

The marks are word marks. In the case of word marks, the word as such is protected, not its written form. Therefore, it is irrelevant whether the word mark is depicted in lower or upper case letters, or in a combination thereof.

The marks have no elements that could be considered clearly more distinctive than other elements. Furthermore, the marks have no element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the sequence of letters ‘D-R-A-*-O’. However, they differ in the letter ‘C’ of the earlier mark and the letters ‘G-*-N’ and the accent of the contested sign.

The beginning 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 similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛D-R-A-*-O’ present in both signs. The pronunciation differs in the sound of the letter ‛C’ of the earlier mark and the letters ‘G-*-N’ of the contested sign. The letter ‘C’ and ‘G’ have a rather similar sound. Furthermore, the relevant public is not accustomed to the accent as an indication of stress. The relevant public will stress the first syllable in both marks.

Therefore, the signs are similar to an average degree.

Conceptually, the earlier mark has no meaning for the public in the relevant territory. The contested sign could be associated by a part of the relevant public to ‘tarragon’. However, this meaning is not widely known because there is a more common name for this plant (Estragon). Therefore, for a substantial part of the relevant public the contested sign does not convey any concept either.

Therefore, for a part of the relevant public, since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs. For the remaining part of the relevant public the marks are not conceptually similar.

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

A likelihood of confusion (including a likelihood of association) 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. If a significant part of the relevant public of the goods or services at issue may be confused as to the origin of the goods or services, this is sufficient. Therefore, there is no need to establish that all actual or potential consumers of the relevant goods or services are likely to be confused.

The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

The Court has set out the essential principle that evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, between the previously established findings on the degree of similarity between the marks and that 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 goods are identical.

The marks are visually and aurally similar to an average degree. In particular, they have the same structure because both are composed by two syllables (DRA-CO versus DRA-GÓN) and have the same beginning that is where consumers tend to focus more their attention. Furthermore, they both have ‘O’ as fifth letter. They differ in the accent of the contested sign, in the fourth letter ‘C’ in the earlier mark versus ‘G’ in the contested sign (that have a rather similar sound and visually a rather similar shape), and in the ‘N’ the last letter of the contested sign. Additionally, for a significant part of the relevant public neither of the two signs has a meaning.

Although, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect, account is taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place trust in the imperfect picture of them that he or she has kept in mind. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (judgment of 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers with a high level of attention need to rely on their imperfect recollection of trade marks (judgment of 21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that there are many trade marks that include ‘DRACO’. In support of its argument the applicant refers to some trade mark registrations in the European Union registry.

The Opposition Division notes that 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 data concerning a register 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 ‘DRACO’. Under these circumstances, the applicant’s claims must be set aside.

The Opposition Division considers that the dissimilarities between the signs are not sufficient to overcome the similarities and to exclude likelihood of confusion on the part of the public in this case. .

Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 302 011 067 360. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier German trade mark registration No 302 011 067 360 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods 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).

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.

The Opposition Division

Beatrix STELTER

Francesca CANGERI SERRANO

Begoña URIARTE VALIENTE

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.