OPPOSITION No B 2 583 337

Biofarma, société par actions simplifiée, 50, rue Carnot, 92284 Suresnes cedex, France (opponent), represented by Charlotte Courcelle, 50 rue Carnot, 92284 Suresnes cedex, France (professional representative)

a g a i n s t

Paratek Pharmaceuticals, Inc., 75 Kneeland Street, Boston, MA 02111, United States of America (applicant), represented by Hofstetter, Schurack & Partner, Patent- und Rechtsanwaltskanzlei, PartG mbB, Balanstrasse 57, 81541 Munich, Germany (professional representative).

On 18/10/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 583 337 is upheld for all the contested goods.

2. European Union trade mark application No 14 294 508 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 14 294 508. The opposition is based on, inter alia, European Union trade mark registration No 14 096 457. 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 European Union trade mark registration No 14 096 457.

1. The goods

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

Class 5: Pharmaceutical preparations; Veterinary preparations; Sanitary preparations for medical purposes; Pharmaceutical implants; Implantable medicines; Dietetic substances adapted for medical use; Dietetic substances adapted for veterinary use; Baby food; Dietary supplements and dietetic preparations; Dietary supplements for animals; Plasters, materials for dressings; Material for stopping teeth; Dental impression materials; Disinfectants; Preparations for destroying noxious animals; Fungicides; Herbicides; The aforesaid goods not including any kind of preparations for preventing and/or treating diseases of the central nervous system or for preventing and/or treating insomnia.

The contested goods are the following:

Class 5: Pharmaceutical preparations; antibiotics.

Preliminary remark

On 13/04/2016, the applicant limited its list of goods to the following:

Class 5: Antibiotics, namely for acute bacterial skin and skin structure infections, community acquired bacterial pneumonia, urinary tract infections, sinusitis, and other community acquired bacterial infections.

The Opposition Division will therefore consider this limited list in its further assessments.

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 and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

The contested antibiotics, namely for acute bacterial skin and skin structure infections, community acquired bacterial pneumonia, urinary tract infections, sinusitis, and other community acquired bacterial infections, are specific pharmaceuticals. These are considered included in the broader category of the opponent’s pharmaceutical preparations. They are, therefore, 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 are directed at the public at large and at healthcare professionals, such as doctors and pharmacists. Considering the importance given to health matters, the degree of attention will be high.

3. The signs

NOALTA	NUALTO
Earlier trade mark	Contested sign

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 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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a 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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the Swedish-speaking part of the relevant public.

The earlier mark is a word mark, ‘NOALTA’.

The contested sign is a word mark, ‘NUALTO’.

Neither the earlier nor the contested mark has any meaning in the relevant territory in relation to the relevant goods.

Neither the earlier nor the contested mark has any element that could be considered clearly more distinctive than other elements.

Neither the earlier nor the contested mark has any element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs are similar to the extent that they are both single words consisting of six letters, and they coincide in five of their letters, namely ‘N*ALT*’ and the letter ‘O’, this being the second letter in the earlier mark and the final letter in the contested mark. They differ in the letter ‘U’, this being the second letter in the contested sign, which has no counterpart in the earlier sign, and in their final letters, namely ‘A’ in the earlier mark and the abovementioned letter ‘O’ in the contested sign.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘N*ALT*’, present identically in both signs, and to that extent the signs are aurally similar. They differ in the sound of the letters ‘*O***A’ in the earlier sign and ‘*U***O’ in the contested sign. However, the letters ‘O’ and ‘U’ are pronounced similarly in Swedish. Furthermore, the signs have the same vowel structure, rhythm and intonation.

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

According to the case law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, Sàbel, EU:C:1997:528, § 22). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods and 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).

Account should also be 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. In addition, consumers tend to remember similarities rather than dissimilarities between signs.

The goods are identical. Both signs are word marks consisting of a single word and they have five out of six letters in common, four being in the same position. They differ only in their final letters and in the aurally similar letters ‘O’ and ‘U’ that are placed second in each mark. The signs have the same vowel structure, rhythm and intonation.

Considering all the above, and even considering the high degree of attention of the relevant public, the Opposition Division finds that there is a likelihood of confusion on the part of the Swedish-speaking part of the 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 reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 14 096 457. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right, European Union trade mark registration ‘NOALTA’, 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 right 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

Agueda MAS PASTOR

Lena FRANKENBERG GLANTZ

Martin EBERL

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.