OPPOSITION No B 2 637 125

LEK Farmacevtska Druzba D.D., Verovskova 57, 1526 Ljubljana, Slovenia (opponent), represented by Boehmert & Boehmert Anwaltspartnerschaft Mbb - Patentanwälte Rechtsanwälte, Kurfürstendamm 185, 10707 Berlin, Germany (professional representative)

a g a i n s t

Michael Merzhäuser, Am Weingarten 7, 35415 Pohlheim, Germany (applicant).

On 07/12/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 637 125 is rejected in its entirety.

2. The opponent bears the costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 627 707, namely against some of the goods and services in Classes 5 and 44. The opposition is based on international trade mark registration No 447 361 designating Romania, Polish trade mark registration No R 057 157, Slovenian trade mark registration No 7 780 456, Bulgarian trade mark registration No 11 818 and Croatian trade mark registration No Ž950 326. The opponent invoked Article 8(1)(b) EUTMR.

SUBSTANTIATION

International trade mark registration No 447 361 DERMAZIN designating Romania.

According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party shall also file proof of the existence, validity and scope of protection of his earlier mark or earlier right, as well as evidence proving his entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered -Rule 19(2)(a)(ii) EUTMIR.

On 19/01/2016 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the required evidence and respective translations. This time limit expired on 24/05/2016.

According to Rule 19(3) EUTMIR, the information and evidence referred to in paragraphs 1 and 2 shall be in the language of the proceedings or accompanied by a translation. The translation shall be submitted within the time limit specified for submitting the original document.

According to Rule 98(1) EUTMIR, when a translation of a document is to be filed, the translation shall identify the document to which it refers and reproduce the structure and contents of the original document.

In the present case the evidence filed by the opponent is partially not in the language of the proceedings.

On 23/05/2016 the opponent filed a document, WIPO Romarin extract, which was partially in the language of the proceedings containing data concerning the international registration on which the opposition is based. However, such document does not meet the requirements set in Rule 98(1) EUTMIR. Under INID code 897, it can be seen, that the list of goods has been limited to Préparations pour le traitement des brûlures in Class 5. The limitation is in French. The opponent included a translation, according to which the goods of its mark were Pharmaceutical products in class 5. The same appears in the opposition notice. The translation does not correspond to the goods of the earlier right.

According to Rule 19(4) EUTMIR, the Office shall not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office.

It follows that the evidence filed by the opponent cannot be taken into account.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of his earlier mark or earlier right, as well as his entitlement to file the opposition, the opposition shall be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on this earlier mark.

The opposition will continue with the other earlier rights.

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 5: Pharmaceutical products.

The contested goods and services are the following:

Class 5: Hygienic preparations and articles; medical and veterinary preparations and articles; dental preparations and articles.

Class 44: Human healthcare services.

Some of the contested goods are identical to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark.

Although the services in question are not identical to the earlier goods, it is clear that some of the contested services are similar to the goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested services were similar to those of the earlier mark.

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 and services assumed to be identical or similar are directed at the public at large and business customers with specific professional knowledge or expertise. The degree of attention ranges from average to high due to the health related nature of the goods/services concerned.

3. The signs

DERMAZIN	Dermacy
Earlier trade marks	Contested sign

The relevant territories are Poland, Slovenia, Bulgaria and Croatia.

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. The marks have no dominant elements.

The marks contain a clearly perceivable letter sequence DERMA.

On numerous occasions the Boards of Appeal have established that ‘DERMA’ is a term of Greek origin widely understood to denote ‘skin’, ‘cutis’ or ‘dermis’. It forms words in English such as ‘dermatologist’, ‘dermatoid’, ‘dermatitis’, ‘dermatologist or ‘dermabrasion’. The same or similar equivalents exist in other languages, including Polish (‘dermatolog’), Bulgarian (‘dermatologia’) or Slovenian ‘dermatologija’, dermatolog’.

(‘Not only is it a term used in medical circles, it is also known to the population at large. Thus it is a ‘generally known fact that “DERMA” is a term interchangeable with “skin”’ (31/05/2001, R 645/2000-1, Dermo-Gel, § 15; 22/02/2006, R 1006/2005-2, Dermacare, § 14; 22/04/2009, R 1715/2008-2, Derma Comfort, § 12 And 29/04/2015, R 2030/2014-2, Dermabrilliance, § 21. The General Court has also confirmed that ‘DERMA’ is used in the formation of adjectives which describe the skin (21/02/2013, T-427/11, Bioderma, EU:T:2013:92, § 44).

From the foregoing analysis, it is found that ‘DERMA’, contained within ‘DERMAZIN’ and ‘DERMACY’, is weak in distinctive character with respect to the identical goods in Class 5, all of which may be either used on the skin or are kind to the skin. Equally, the term must be deemed weak for the healthcare services in Class 44, since such services must also include those dealing with the treatment of dermatological conditions (by analogy to decision of 18 March 2016 – R 1399/2015-2 – Dermal Medical Division (Fig.) / Dermasil).

Visually, the signs coincide in the weak element DERMA in their beginnings. However, they differ in their endings ZIN/CY.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in their weak elements DERMA. In Slovenian, for example, the signs are similar in respect of the sounds produced when pronouncing the letters Z/C and I/Y, while differing in the pronunciation of the letter N. In Bulgarian, the aural similarity lies in the sound produced when pronouncing the letters I/Y, while differing in the pronunciation of the remaining letters.

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

Conceptually, neither of the signs has a meaning as a whole for the public in the relevant territory. Although the coinciding element DERMA will evoke a concept, as explained above, it is considered weak and it does not serve to establish any conceptual similarity because this element is not capable of indicating the commercial origin in any of the marks. The attention of the public will be attracted by the additional, different verbal elements, which have no meanings. Therefore, the signs are conceptually similar only to a low degree.

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 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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their 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 territories. Therefore, the distinctiveness of the earlier marks must be seen as normal, despite the presence of a weak element in the marks as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

Although signs cannot be artificially dissected, it must be taken into account that when a sign contains sequences of letters that constitute words, prefixes or suffixes that are known for the public perceiving it, it is likely that they will mentally divide the mark into the recognized terms or familiar parts forming it (e.g. prefixes or suffixes). Therefore, and considering what has been stated above in section c) of this decision, the distinctiveness of the component DERMA, forming the first part of the earlier mark, must be seen as low in relation to all the relevant goods and services from the perspective of the public in the relevant territories.

The goods assumed to be identical and the services assumed to be similar are mainly health related products and services, aimed at professionals (medical professionals, hospitals) and users with specific medical needs that pay close attention to the goods. The level of attention of the relevant public will be mostly higher than average.

The signs are similar to the extent that they share the sequence of letters DERMA which were found to be weak for all the relevant goods and services, and therefore, to have a low degree of distinctiveness. Since the marks share an element with low distinctiveness, the assessment of likelihood of confusion will focus on the impact of the non-coinciding components or the overall impression conveyed by the marks.

The signs differ in the elements ZIN in the earlier mark and CY in the contested sign. These short elements have their differences creating visual and aural distance between the signs at issue. The Opposition Division considers that, despite the assumed identity and similarity of some of the goods and services at issue, these visual and aural differences suffice to offset the similarities between the signs that lie in their weak elements.

Considering all the above, even assuming that the goods and services are identical and similar, 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

Justyna GBYL

Erkki Münter

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.