OPPOSITION No B 2 655 929

Health Advisors SRL, B-dul Ghica Tei nr. 10, subsol, camera nr. 2 (camera administrator), sector 2, Bucharest, Romania (opponent), represented by Agentia de Propritate Industriala - APIA S.R.L., Str. Romancierilor nr. 5, Bl. C14. Sc. B, Ap.41, Sector 6, OP 23 CP 11, Bucharest, Romania (professional representative)

a g a i n s t

SC Solacium Pharma SRL, Str. Turturelelor nr. 11A, birou B16 Et. 2, Sector 3, Bucharest, Romania (applicant).

On 28/04/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 655 929 is partially upheld, namely for the following contested goods:

Class 5: Pharmaceutical preparations; dietetic food and substances adapted for medical use; dietary supplements for humans.

2. European Union trade mark application No 14 757 801 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 757 801. The opposition is based on Romanian trade mark registration No 98 476. The opponent invoked Article 8(1)(b), 8(5) 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 and services on which the opposition is based are the following:

Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

Class 35: Advertising; business management; business administration; office functions.

The contested goods are the following:

Class 5: Pharmaceutical preparations; dietetic food and substances adapted for medical use; dietary supplements for humans.

Class 30: Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; edible ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice.

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 5

The contested pharmaceutical preparations; dietetic food and substances adapted for medical use; dietary supplements for humans are identically contained in both lists of goods.

Contested goods in Class 30

The earlier goods are pharmaceutical preparations; dietetic food and substances adapted for medical use; dietary supplements for humans which are, in general, drugs or substances used for treating, preventing or alleviating the symptoms of diseases or injuries for human beings or animals. The contested goods are foodstuffs or food-related goods, such as ingredients for preparing food. The goods in question have different purposes (medical, curative, therapeutic versus nutritive) and are not likely to be manufactured by the same producers, marketed through the same distribution channels or placed on the same shelves in supermarkets; indeed, the opponent’s goods are mainly sold in pharmacies and specialist health care shops, in contrast to the applicant’s goods, which are sold in supermarkets and other food outlets. As a consequence, all the contested goods are dissimilar. The contested goods are also dissimilar to all earlier services in Class 35 since they differ in their nature and purpose, the distribution channels, the sales outlets, the producers, the method of use. They are also not in competition with each other or complementary to each other.

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 professionals in the field of medical care. The degree of attention may vary from relatively high to high.

It is apparent from the case-law that, insofar as pharmaceutical preparations are concerned, the relevant public’s degree of attention is relatively high, whether or not issued on prescription (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 cited case-law).

In particular, medical professionals have a high degree of attentiveness when prescribing medicines. Non-professionals also have a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health.

Given that the general public is more prone to confusion, the examination will proceed on this basis.

3. The signs

DIGESTDUO
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 common element ‘digest’ means ‘summary’ (see https://dexonline.ro/definitie/digest). However, for part of the public it alludes to the meaning of the word digestion on account of its closeness to the Romania word digestie (see https://dexonline.ro/definitie/digestie) and, therefore, it is weak for that part of the public.

The verbal element ‘duo’ of the earlier mark refers to double or the number two (https://dexonline.ro/definitie/duo). The verbal element ‘uno’ will be understood as referring to the number one, since it is close to the Romanian equivalent ‘unu’. These two elements referring to numbers are weak since it is common in the field of pharmaceutical preparations; dietetic food and substances adapted for medical use; dietary supplements for humans to indicate the level or suggested dosage, such as one or two tablets per day.

The earlier mark is a word mark. Therefore, it is irrelevant whether the word mark is depicted in lower or upper case letters. Word marks have no dominant element because by definition word marks are written in standard typeface. The contested sign has also no dominant (eye-catching) element.

The blue colour frame of the verbal element ‘uno’ in the contested sign is a less distinctive figurative element of a purely decorative nature.

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).

Since for a substantial part of the public the common element ‘digest’ means only ’summary’ which is distinctive for the goods at hand, the Opposition Division finds it appropriate to focus the comparison of the signs on this part of the public.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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.

Visually, the signs coincide in the distinctive element ‘digest’ and in the final letter ‘o’. However, they differ in the letters ‘du’ of the earlier mark and the letters ‘un’ of the contest sign as well as in the stylisation of the letter ‘d’, the colours and the frame of the verbal element ‘uno’ of the contested sign.

Therefore, the signs are similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘digest’ and the ending sound of the signs ‘o’. The pronunciation differs in the sound of the letters ‘du’ of the earlier mark and the sound of the letters ‘un’ of the contested sign. Therefore, the signs are highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning with regard to ‘digest’ (‘summary’), the signs are conceptually similar to a high 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 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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, despite the presence of a weak element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

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).

Account is 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 (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, §  54).

There is a likelihood of confusion for the identical goods because the differences between the signs are mainly confined to weak elements and aspects. Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods covered are from the same or economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s Romanian trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical to those of the earlier trade mark. The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent and in relation to identical goods. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08, & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

2. Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

 it takes unfair advantage of the distinctive character or the repute of the earlier mark;

 it is detrimental to the repute of the earlier mark;

 it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

In the present case, apart from claiming a reputation and arguing that the signs are similar and consumers will establish a link between the trade marks because of the similarities between them, the opponent did not submit any facts, arguments or evidence that could support the conclusion that use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark. The opponent did not submit any argument or evidence which message or image to the consumer the earlier mark may convey and forms part of its distinctiveness and repute.

Article 8(5) EUTMR is not intended to prevent the registration of all marks identical or similar to a mark with reputation. According to established case-law, ‘once the condition as to the existence of reputation is fulfilled, the examination has to proceed with the condition that the earlier mark must be detrimentally affected without due cause’ (14/09/1999, C‑375/97, Chevy, EU:C:1999:408, § 30).

Even though consumers may or are likely to establish a link between the two trade marks, in the sense, for example, that the contested trade mark would bring the earlier trade mark to the minds of consumers, it does not follow automatically that the former will take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 71).

As mentioned above, the opponent should have submitted evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, which could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

This is confirmed by Rule 19(2)(c) EUTMIR, which establishes that if the opposition is based on a mark with a reputation within the meaning of Article 8(5) EUTMR, the opponent must submit evidence showing that the mark has a reputation, as well as evidence or arguments demonstrating that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

In the present case, the opponent merely claims that use of the contested trade mark would take unfair advantage of, and be detrimental to, the distinctive character or repute of the earlier trade mark. The circumstances described as being ‘detrimental to the repute’, ‘detrimental to the distinctive character’, or taking ‘unfair advantage of the distinctive character or repute of the earlier trade mark’, are in fact very different from each other. In its submissions, the opponent refers to them without any distinction, treating the whole as an unavoidable effect of the similarity of the signs and the reputation of the earlier trade mark. However, there seems to be no good reason to assume that use of the contested trade mark will result in any such events occurring. Although potential detriment or unfair advantage cannot be completely excluded, this is insufficient, as seen above.

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

Given that the opponent could not establish that the contested sign would take unfair advantage of, or be detrimental to the distinctive character or repute of the earlier trade mark, the opposition is considered not well founded under Article 8(5) EUTMR.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Beatrix STELTER

Martin EBERL

Claudia MARTINI

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.