OPPOSITION No B 2 601 378

Merck Consumer Healthcare Limited, Hedon Road, Hull, East Yorkshire HU9 5NJ, United Kingdom (opponent), represented by Best Rechtsanwälte PartmbB, Hostatostr. 26, 65929 Frankfurt am Main, Germany (professional representative)

a g a i n s t

Anil K Sharma, Unit 15, Moorcroft, Harlington Road, Hillingdon UB8 3HD, United Kingdom (applicant), represented by Sonia Jutla Sharma, Unit 15, Moorcroft, Harlington Road, Hillingdon UB8 3HD, United Kingdom (employee representative).

On 21/10/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 601 378 is rejected in its entirety.

2. The opponent bears the costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 394 704. The opposition is based on 1) Greek trade mark registration No 128 515, 2) Irish trade mark registration No 45 875 and 3) United Kingdom trade mark registration No 1 320 958. 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

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

Greek trade mark registration No 128 515

Class 5: Pharmaceutical and veterinary preparations and substances; infants’ and invalids’ foods; specific health foods; herbs and herbal preparations; supplements for food, mineral salts and preparations of vitamins and/or minerals; Foodstuffs containing oils or fats; edible oils and edible fats.

Irish trade mark registration No 45 875

Class 5: Medicinal and pharmaceutical preparations.

United Kingdom trade mark registration No 1 320 958

Class 5: Pharmaceutical and veterinary preparations and substances; infants’ and invalids’ foods; vitamins; herbs and herbal preparations; all for medicinal purposes; laxatives; deodorants; supplements for food; minerals, mineral salts and preparations of vitamins and/or minerals; all included in class 5.

Preliminary remark – scope of protection of earlier marks No 128 515 and No 1 320 958

In the notice of opposition, the opponent based the opposition on all goods in Class 5 in relation to, inter alia, earlier marks No 128 515 and No 1 320 958 and listed the goods.

Together with the notice of opposition, the opponent filed an extract from TMView as regards earlier mark No 128 515, with an English translation of the list of goods in Class 5, and an extract from the UK Intellectual Property Office in relation to earlier mark No 1 320 958.

A close examination of the two documents shows that the lists of goods are broader than the goods listed by the opponent in the notice of opposition.

Where the opponent indicates in the opposition form that the opposition is based on ‘all goods and services for which the earlier right is registered’ but then lists only ‘part’ of these goods and services (when compared with the registration certificate or relevant official extract attached to the opposition form), the Office will, to overcome the contradictory information contained in the notice of opposition, assume that the opposition is based on ‘all goods and services for which the earlier right is registered’.

Therefore, the Opposition Division will consider that the opposition is based on all the goods as listed in the extracts submitted by the opponent in relation to these two earlier marks.

The contested goods are the following:

Class 5: Medical and veterinary preparations and articles.

The contested medical and veterinary preparations and articles include, as a broader category, the opponent’s pharmaceutical and veterinary preparations and substances protected by earlier mark No 1 320 958. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods mentioned above.

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 business customers with specific professional knowledge or expertise in the pharmaceutical field for both humans and animals. In particular, medical professionals have a high degree of attentiveness when prescribing medicines. Non-professionals also show a higher than average degree of attention, regardless of whether the pharmaceuticals are sold with or without prescription, as these goods affect their state of health.

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).

3. The signs

MINADEX	Kinedexe
Earlier trade marks	Contested sign

The relevant territories are the United Kingdom for earlier trade mark No 1 320 958, Ireland for earlier trade mark No 45 875 and Greece for earlier trade mark No 128 515.

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).

Both signs are word marks, ‘MINADEX’ in the case of the earlier marks and ‘Kinedexe’ as regards the contested sign. Therefore, they have no element that could be considered more dominant (visually eye-catching) than other elements. The use of upper or lower case letters in a word mark (as in the contested sign) is irrelevant, since protection is sought for the word as such and not for the word in a particular typeface.

Neither of the words that form the signs have a meaning in relation to the relevant goods for the English- or Greek-speaking publics. Therefore their degree of distinctiveness is average.

Visually, the signs coincide in the letters ‘*IN*DEX*’ and differ in the letters ‘M’ and ‘A’ of the earlier marks and ‘K’ and ‘E’ of the contested sign. The marks differ in their lengths, seven letters in the earlier marks and eight in the contested sign.

Therefore, the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘*IN*DEX*’. For the English-speaking part of the public, the earlier marks will be pronounced as ‘mi-na-deks’ and the contested sign will be pronounced as ‘ki-ne-deks’, since the last letter ‘e’ of the contested sign will be silent in English. The pronunciation differs in the sound of the letter ‘m’ of the earlier marks and of the ‘k’ of the contested sign.

Therefore, for the English-speaking part of the public, there is an average degree of aural similarity.

For the Greek-speaking part of the public, on the other hand, the last letter ‘e’ of the contested sign will be pronounced. Moreover, in the Greek pronunciation the fourth letter, ‘a’, of the earlier marks will be stressed more and the ‘e’ will be stressed less.

Therefore, there exists a low degree of aural similarity between ‘mi-ná-deks’ and ‘ki-nè-deksè’ for the Greek-speaking part of the public.

Conceptually, neither of the signs has a meaning for the public in the relevant territories. 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 marks

The distinctiveness of the earlier marks 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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on its distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal.

5. Global assessment, other arguments and conclusion

The 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, a similarity between the marks and 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). This principle of interdependence is crucial to the analysis of likelihood of confusion.

The interdependence of those factors is expressly referred to in recital 8 of the preamble to the EUTMR, according to which the concept of similarity is to be interpreted in relation to the likelihood of confusion, the assessment of which depends on numerous elements and, in particular, on the recognition of the mark on the market, the association which can be made with the used or registered sign, the degree of similarity between the mark and the sign and between the goods or services identified (10/09/2008, T‑325/06, Capio, EU:T:2008:338, § 72 and the case law cited).

In the present case, the goods are identical. The degree of attention paid by the relevant public in relation to the goods is high.

For the Greek-speaking part of the public, the signs are visually and aurally similar to a low degree. For the English-speaking part of the public, the signs are visually similar to a low degree and aurally similar to an average degree. Conceptually, the signs are dissimilar.

The visual and aural coincidences in the letters ‘in*dex’ and their corresponding sounds cannot be denied; however, the signs have – contrary to the opponent’s arguments – noticeable and striking differences that, given the high degree of attention paid when purchasing the relevant goods, will not go unnoticed. The Opposition Division considers that these differences are sufficient to enable both the English- and Greek-speaking parts of the public not to confuse or associate the signs, even considering that the goods are identical.

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

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 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 Rule 94(7)(d)(ii) EUTMIR, 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. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Finn PEDERSEN

Cynthia DEN DEKKER

Carmen SANCHEZ PALOMARES

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.