OPPOSITION No B 2 682 576

PARI Pharma GmbH, Moosstr. 3, 82319 Starnberg, Germany (opponent), represented by Hoffmann Eitle Patent- und Rechtsanwälte PartmbB, Arabellastr. 30, 81925 München, Germany (professional representative)

a g a i n s t

Mundipharma AG, St. Alban-Rheinweg 74, 4020 Basel, Switzerland (applicant), represented by Elkington and Fife LLP, Prospect House, 8 Pembroke Road, Sevenoaks, Kent, TN13 1XR, United Kingdom (professional representative).

On 06/11/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 682 576 is partially upheld, namely for the following contested goods:

Class 5: Pharmaceutical and veterinary preparations and substances; pharmaceutical preparations for the treatment of respiratory diseases and disorders, and for the treatment of asthma; drug delivery agents that facilitate the delivery of pharmaceuticals for the treatment of respiratory diseases and disorders, and for the treatment of asthma.

Class 10: Inhalers and parts and fittings therefor.

2. European Union trade mark application No 15 107 221 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 15 107 221 ‘GOFLOW’. The opposition is based on European Union trade mark registration No 1 947 134 ‘E-FLOW’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, that is, European Union trade mark No 1 947 134 ‘E‑FLOW’.

The date of filing of the contested application is 15/02/2016. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 15/02/2011 to 14/02/2016 inclusive.

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 5: Pharmaceutical, veterinary and sanitary preparations; dietetic substances and food supplements adapted for medical use; all aforementioned goods not in the form of injection solutions; food for babies; plasters, materials for dressings.

Class 10: Medical and healthcare apparatus and equipment, in particular for applying substances to the lungs and respiratory tract; dental instruments and appliances as well as syringes and intravenous infusion sets excepted.

According to Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 05/01/2017, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 05/03/2017 to submit evidence of use of the earlier trade mark. Upon the opponent’s request, the deadline was extended until 05/05/2017.

On 02/05/2017, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• affidavit dated 02/05/2017 and signed by Dr Martin Knoch, President of PARI Pharma GmbH since 2007, explaining the distribution channels of the goods. It states that the mark ‘E-FLOW’ has been continuously used since at least 2005; the nebulisers are destined for the application of substances to the lungs and the respiratory system; the trade mark owner sells nebulisers to its affiliated company PARI GmbH, which organises the further distribution into various European countries through other distribution companies;

• product leaflet in French dated 04/2011 on which the mark is depicted in relation to an inhaler device;

• invoice dated 18/07/2011 issued by PARI Pharma GmbH to PARI GmbH indicating the sale of ‘eFlow rapid’ goods for EUR 102 187.20;

• product leaflet in French dated June 2012 depicting the mark , issued with the product, published by PARI Pharma GmbH;

• notice of use in French dated 2012, published by PARI Pharma GmbH and distributed by PulmoMed SARL, mentioning the product ‘eFlow®rapid’;

• invoice in the name of PARI Pharma GmbH to PARI GmbH dated 11/07/2012 indicating the sale of ‘eFlow rapid’ goods for EUR 106 445.00;

• booklet of instructions for use in English and German dated March 2012 depicting the mark , published by PARI Pharma GmbH;

• invoice dated 08/07/2013 from PARI Pharma GmbH to PARI GmbH indicating the sale of ‘eFlow rapid’ goods for EUR 46 905.60;

• invoice dated 10/10/2013 from PARI GmbH to PARI PulmoMed SARL indicating the sale of ‘eFlow rapid with eBase Control Unit’ for EUR 46 905.60;

• product leaflet in French dated November 2013 depicting the mark , sent by PARI PulmoMed SARL, presenting the new product to be launched in 2014;

• invoice dated 08/07/2014 from PARI GmbH to PARI PulmoMed SARL indicating the sale of ‘eFlow rapid with eBase Controller’ for EUR 21 459.36;

• invoice dated 15/07/2014 from PARI Pharma GmbH to PARI GmbH indicating the sale of ‘eFlow rapid’ goods for EUR 212 038.44;

• instructions for use of the goods dated October 2014, in several languages — German, English, Spanish, French, Italian, Dutch, Polish and Romanian — showing the marks and ;

• invoice dated 07/07/2015 from PARI Pharma GmbH to PARI GmbH indicating the sale of ‘eFlow rapid’ goods for EUR 127 734.00;

• invoice dated 21/07/2015 from PARI GmbH to PARI PulmoMed SARL indicating the sale of ‘eFlow rapid with eBase Controller’ for EUR 21 459.36;

• invoice dated 22/07/2015 from PARI GMBH to PARI MEDICAL LIMITED indicating the sale of ‘eFlow rapid with eBase Controller’ for EUR 11 726.40 and ‘eFlow rapid Nebuliser Handset’ for EUR 6,956.25;

• product overview 2015/2016 dated 01/09/2015 for Germany and Austria, presenting products sold by PARI, among them the nebuliser system; published by PARI GmbH.

On 14/12/2017, after the expiry of the time limit to submit evidence of use, the opponent submitted the following evidence:

• six invoices issued by PARI PulmoMed SARL to consumers in France:

• one dated 08/03/2011 to ANTADIR ASSISTANCE for ‘eFlow rapid’ totalling EUR 1,460.00;

• one dated 12/03/2012 to DDS Assistance SASU for ‘eFlow rapid’ totalling EUR 730.00;

• one dated 14/10/2013 to ORKYN’Pharmadom for ‘eFlow rapid’ totalling EUR 730.00;

• one dated 05/09/2014 to Vitalaire for ‘eFlow rapid’ totalling EUR 749.00;

• one dated 13/03/2015 to SOS OXYGENE PYRENEES CENTRE for ‘eFlow rapid’ totalling EUR 1 498.00;

• one dated 12/02/2016 to OXYPHARM for ‘eFlow rapid’ totalling EUR 760.00;

• five invoices issued by PARI Medical Ltd to consumers in the UK:

• one dated 24/03/2011 to BCH Charity for ‘eFlow rapid’ totalling GBP 2 740.00;

• one dated 23/03/2012 to Norfolk & Norwich University Hospital NHS Trust for ‘eFlow rapid’ totalling GBP 2 372.00;

• one dated 05/03/2013 to Papworth Hospital for ‘eFlow rapid with eBase Control Unit’ totalling GBP 2 965.00;

• one dated 13/03/2015 to Heart of England NHS Trust for ‘eFlow rapid with eBase Control Unit’ totalling GBP 5 930.00 and ‘eFlow rapid nebuliser handset’ totalling GBP 1 398.20;

• one dated 15/03/2016 to NHS Supply Chain for ‘eFlow rapid with eBase Control Unit’ totalling GBP 1 743.45;

• one invoice issued by media agency Universal Medien GmbH to PARI GmbH dated 17/09/2015 for an amount of EUR 14,438.50 in German; according to the opponent, this evidence demonstrates that 15 000 copies of the catalogue submitted in the first set of evidence were printed to be distributed to potential consumers; the opponent also submitted the last page of the product catalogue already filed in the earlier evidence.

Finally, on 25/06/2018, the opponent submitted an extract from the website www.pari.com listing the companies affiliated to the opponent’s company in the European Union, in reply to the applicant’s argument about the absence of a link between the companies appearing on the invoices and the owner of the earlier mark.

As regards the belated evidence, even though, according to Rule 22(2) EUTMIR (in force at the moment of filing the request for proof of use), the opponent has to submit proof of use within a time limit set by the Office, this cannot be interpreted as automatically preventing additional evidence from being taken into account (18/07/2013, C‑621/11 P, Fishbone, EU:C:2013:484, § 28). The Office has to exercise the discretion conferred on it by Article 95(2) EUTMR (18/07/2013, C‑621/11 P, Fishbone, EU:C:2013:484, § 30).

The factors to be evaluated when exercising this discretion are, first, whether the material that has been produced late is, on the face of it, likely to be relevant to the outcome of the proceedings and, second, whether the stage of the proceedings at which that late submission takes place, and the circumstances surrounding it, do not argue against these matters being taken into account (18/07/2013, C‑621/11 P, Fishbone, EU:C:2013:484, § 33). The acceptance of additional belated evidence is unlikely where the opponent has abused the time limits set by knowingly employing delaying tactics or by demonstrating manifest negligence (18/07/2013, C‑621/11 P, Fishbone, EU:C:2013:484, § 36).

In this regard, the Office considers that the opponent did submit relevant evidence within the time limit initially set by the Office and, therefore, the later evidence can be considered to be additional.

In the present case, the fact that the applicant disputed the initial evidence submitted by the opponent justifies the submission of additional evidence in reply to the objection (29/09/2011, T‑415/09, Fishbone, EU:T:2011:550, § 30, 33; 18/07/2013, C‑621/11 P, Fishbone, EU:C:2013:484, § 36).

The additional evidence merely strengthens and clarifies the evidence submitted initially, as it does not introduce new elements of evidence but merely enhances the conclusiveness of the evidence submitted within the time limit.

For the above reasons, and in the exercise of its discretion pursuant to Article 95(2) EUTMR, the Office therefore decides to take into account the additional evidence submitted on 14/12/2017.

Preliminary remarks

In its observations on proof of use, the applicant claims that the affidavit is a contestable piece of evidence, since it comes from the opponent itself.

Article 10(4) EUTMDR (former Rule 22(4) EUTMIR, in force before 01/10/2017) expressly mentions written statements referred to in Article 97(1)(f) EUTMR as admissible means of proof of use. Article 97(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.

However, this does not mean that such statements do not have any probative value at all.

The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources.

Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.

The applicant also argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods for which the earlier mark is registered.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

The applicant also considers that the invoices are insufficient to demonstrate actual sales of the goods, as they are addressed to companies affiliated to the opponent.

However, the Opposition Division recalls that relevant evidence can also validly come from a distribution company forming part of a group. Distribution is a method of business organisation that is common in the course of trade and implies use of the mark that cannot be regarded as purely internal use by a group of companies, since the mark is also used outwardly and publicly (17/02/2011, T‑324/09, Friboi, EU:T:2011:47, § 32).

Use by companies economically related to the trade mark proprietor, such as members of the same group of companies (affiliates, subsidiaries, etc.), is similarly to be considered authorised use (30/01/2015, T‑278/13, now, EU:T:2015:57, § 38). Where goods are produced by the trade mark proprietor (or with its consent), but subsequently placed on the market by distributors at wholesale or retail level, this is to be considered use of the mark (17/02/2011, T‑324/09, Friboi, EU:T:2011:47, § 32; 16/11/2011, T‑308/06, Buffalo Milke, EU:T:2011:675, § 73).

Moreover, in the present case, the opponent submitted invoices showing sales by the affiliated companies to end consumers in two Member States, evidencing the distribution organisation that was explained in the affidavit.

Assessment of the evidence

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, and 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

As regards the place of use, the evidence filed in the present case shows that the earlier mark has been used in several countries within the European Union, although mainly in France, Germany and the United Kingdom. This can be inferred from the languages of the documents (mainly French, German and English), the currencies mentioned in the invoices (euros and pounds sterling) and the addresses appearing on the invoices (mostly in the UK and France).

The applicant claims that the place of use cannot be deduced from the language of the evidence (e.g. French). However, in the present case, the documents, such as booklets and instructions for use, are corroborated by the other documents filed and in particular the invoices. Therefore, this argumentation must be disregarded.

Considering that France, Germany and the United Kingdom constitute a significant part of the European Union, it has to be considered that the use of the earlier mark in these countries is use in the European Union (see by analogy 15/07/2015, T‑398/13, TVR ITALIA, EU:T:2015:503, § 57; 30/01/2015, T‑278/13, now, EU:T:2015:57). Therefore, the evidence relates to the relevant territory.

As regards the time of use, the Opposition Division notes that most of the documents are dated within the relevant period, that is, from 15/02/2011 to 14/02/2016, and viewed together they demonstrate that use has taken place throughout the entire relevant period.

The applicant points out that documents dated outside the relevant period, namely the invoice submitted by the opponent dated 15/03/2016, must be disregarded.

However, evidence referring to use made outside the relevant timeframe is disregarded unless it contains conclusive indirect proof that the mark must have been put to genuine use during the relevant period of time as well. Events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50).

In the present case, the evidence referring to use outside the relevant period confirms use of the opponent’s mark within the relevant period. This is because it refers to the use of the mark just after the end of the relevant period.

Therefore, the Opposition Division considers that the time of use has been proven.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, and its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

Under certain circumstances, even circumstantial evidence such as catalogues featuring the trade mark, despite not providing direct information on the quantity of goods actually sold, can be sufficient by themselves to prove the extent of use in an overall assessment (15/07/2015, T‑398/13 TVR ITALIA (fig.) / TVR et al., EU:T:2015:503, § 57-58; 08/07/2010, T‑30/09, Peerstorm, EU:T:2010:298, § 42 et seq.).

However, as the applicant points out, genuine use cannot be proven by means of probabilities or suppositions, but has to be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (see 08/05/2017, T‑38/13, PEDRO, EU:T:2014:241, § 32 and the case-law cited).

Contrary to the applicant’s claim, the documents submitted by the opponent, taken in combination, in particular the invoices and the extracts from product booklets, supported by the affidavit, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration and the frequency of use.

Use of the mark need not be quantitatively significant for it to be deemed genuine.

In the present case, although the evidence indicates a relatively low commercial volume of use, it shows use of the earlier EUTM in two Member States, namely France and the United Kingdom, and during all the relevant period (e.g. one invoice per relevant year addressed to consumers in France). Moreover, taking into account that the products concerned are sophisticated medical and expensive goods, it is not necessary to demonstrate a massive volume of commercial use. Indeed, with regard to expensive goods or an exclusive market, low turnover figures can be sufficient (04/09/2007, R 35/2007-2, Dinky, § 22). It is, therefore, always necessary to take the characteristics of the market in question into account (08/07/2004, T‑334/01, Hipoviton, EU:T:2004:223, § 51).

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of use of the earlier mark.

Finally, as regards the nature of use, in the context of Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

Moreover, according to Article 18(1), second subparagraph, point (a), EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements that do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 47(2) EUTMR, Article 18 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, the earlier mark is used together with ‘rapid’, ‘technology’, ‘nebuliser system’ or the symbol ®. Moreover, the mark is sometimes depicted in a stylised way: .

However, according to settled case-law, if the addition is not distinctive, is weak and/or is not dominant, it does not alter the distinctive character of the registered trade mark (30/11/2009, T‑353/07, Coloris, EU:T:2009:475, § 29-33 et seq.; 10/06/2010, T‑482/08, Atlas Transport, EU:T:2010:229, § 36 et seq.).

Considering that the additions mentioned above are either negligible (the symbol ®) or descriptive (and therefore non-distinctive), at least for the English-speaking consumers, and, in any event, are not dominant but, in view of both their position and their size, secondary. Accordingly, the Opposition Division considers that the earlier mark has been used in a form that does not alter its distinctive character.

Finally, the way the element ‘E-FLOW’ is depicted is merely decorative and therefore it cannot affect the distinctive character of the earlier mark as registered but is an acceptable variation of it.

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 18(1), second subparagraph, point (a), EUTMR.

Taking into account the evidence in its entirety, although the documents submitted by the opponent are not particularly exhaustive, they do reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

In the present case, the evidence shows genuine use of the trade mark for the following goods:

Class 10: Medical and healthcare apparatus and equipment, in particular for applying substances to the lungs and respiratory tract.

However, there is no evidence as regards the remaining goods. All the invoices and products booklets refer to only a medical device used to deliver medical preparations into the lungs and respiratory tract. That is in particular evidenced in the product instructions for use and corroborated by the affidavit.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

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:

Class 10: Medical and healthcare apparatus and equipment, in particular for applying substances to the lungs and respiratory tract.

The contested goods are the following:

Class 5: Pharmaceutical and veterinary preparations and substances; pharmaceutical preparations for the treatment of respiratory diseases and disorders, and for the treatment of asthma; carriers for pharmaceutical preparations; drug delivery agents that facilitate the delivery of pharmaceuticals for the treatment of respiratory diseases and disorders, and for the treatment of asthma.

Class 10: Inhalers and parts and fittings therefor.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘in particular’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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 and veterinary preparations and substances; pharmaceutical preparations for the treatment of respiratory diseases and disorders, and for the treatment of asthma; drug delivery agents that facilitate the delivery of pharmaceuticals for the treatment of respiratory diseases and disorders, and for the treatment of asthma are various pharmaceutical and veterinary medicines that can be used alone or together with medical apparatus. Therefore, they are similar to a low degree to the opponent’s medical and healthcare apparatus and equipment, in particular for applying substances to the lungs and respiratory tract, as they usually have the same relevant public and distribution channels. Furthermore, they are complementary.

The contested carriers for pharmaceutical preparations are designed to hold a certain dose of active medicine (in the form of a powder or liquid). Although it could be claimed that the purpose of the contested goods, broadly speaking, is medical, the specific purpose of each of these items differs. It follows that they differ from the opponent’s goods, as they do not have the same purpose. The producers, target public and distribution channels of the contested goods are also different from those of the opponent’s goods. Finally, they are not in competition or complementary. Therefore, these goods are dissimilar.

Contested goods in Class 10

The contested inhalers and parts and fittings therefor are included in the opponent’s broader category medical apparatus and equipment. 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 and similar to a low degree are specialised pharmaceutical and medical goods directed at the public at large and at business customers with specific professional knowledge or expertise.

It is apparent from the case-law that, insofar as pharmaceutical preparations and the contested goods in Class 5, whether or not issued on prescription, are concerned, the relevant public’s degree of attention is relatively high (15/12/2010, T‑331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T‑288/08, Zydus, EU:T:2012:124, § 36). 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.

For the goods in Class 10, the degree of attention is also considered high, taking into account the specialised nature of the goods and their potential impact on the health of the patients.

3. The signs

E-FLOW	GOFLOW
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).

The coinciding element ‘FLOW’ is meaningful for the English-speaking part of the public. Considering that this meaning has an impact on the distinctiveness of the element, as correctly pointed out by the applicant, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the public, such as French-speaking part, for which the coinciding element is meaningless and therefore distinctive.

The signs are both word marks, the earlier mark consisting of the elements ‘E-FLOW’ and the contested sign being ‘GOFLOW’.

As stated above, the word ‘FLOW’ has no meaning for the relevant public and is, therefore, distinctive to a normal degree.

The earlier mark contains a letter ‘E’ at the start followed by a hyphen. This element, ‘E-’, is generally used as a prefix for ‘electronic’, indicating that an action can be conducted electronically. Therefore, and considering that the relevant goods are medical apparatus and instruments operated electronically, the element ‘E-’ is non­distinctive, as it refers to one of their characteristics.

The contested sign comprises a single verbal element, ‘GOFLOW’, which is distinctive as a whole for the relevant goods, as it does not convey any meaning for the relevant public. However, although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57). Consequently, while as a rule marks are perceived as a whole, the exception to this rule is that, under certain circumstances, consumers may break down marks into smaller parts. In the present case, the verbal element ‘GOFLOW’ is likely to be dissected by part of the public, since the word ‘GO’ is a basic English word commonly used by the general public in expressions (e.g. ‘let’s go’, ‘let it go’), even though the second part, ‘FLOW’, will not be understood by the relevant public, as explained above. It follows that both the words ‘GO’ and ‘FLOW’ are distinctive in relation to the relevant goods, since the first does not refer to any characteristic of the goods (even for the part of the public that will understand its meaning) and the second will be seen as a fanciful meaningless word.

Visually, the signs coincide in the string of letters ‘FLOW’, that is, four letters out of five and six respectively. They differ in their first elements, ‘E’ followed by a hyphen in the earlier mark and the letters ‘GO’ in the contested mark.

In this regard, the applicant rightly points out that usually consumers pay more attention to the beginning of words. However, the difference between the beginnings of the marks in the present case is insufficient to clearly differentiate the marks, considering the number of coinciding letters compared with the number of differing ones.

Consequently, taking into account the lack of distinctiveness of the differing element ‘E-’ and the length of the coinciding string of letters, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛FLOW’, present identically in both signs, and differs in their first syllables, that is, ‘E’ in the earlier mark and ‘GO’ in the contested sign.

Considering the non-distinctive character of the element ‘E-’, and the fact that the signs coincide in the sound of four letters out of five and six respectively, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

The coinciding element ‘FLOW’ is meaningless for the relevant public. The other element in the earlier sign, ‘E-’, will evoke the concept of electronic devices. However, since it is non-distinctive, it is incapable of indicating a commercial origin. Since one of the signs, namely the earlier mark, will not be associated with any distinctive meaning, the signs 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 relevant public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal despite the presence of a non-distinctive element in the mark as stated in section c) of this decision.

5. Global assessment, other arguments and conclusion

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/services covered are from the same or economically linked undertakings.

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). In this regard, it must be remembered, however, that 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).

The goods are partly identical, partly similar to a low degree and partly dissimilar. The degree of attention of the relevant public is higher than average and the distinctiveness of the earlier mark is normal.

The signs are visually and aurally similar to an average degree, since they coincide in four letters out of five and six respectively. Conceptually, they are not similar because the coinciding element ‘FLOW’ is meaningless for the relevant public and the additional element, ‘E-’, in the earlier mark is non-distinctive and thus has no impact in the conceptual comparison, as detailed in section b) of this decision.

Consequently, the differences between the signs, even though they are at the beginnings of the marks, are insufficient to counteract the visual and aural similarities between them and to allow consumers to safely distinguish between the signs, even when their degree of attention is enhanced, contrary to the applicant’s argument.

Considering all the above, there is a likelihood of confusion on the part of the French-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.

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 opposition is also successful in relation to the goods that are similar to a low degree, since, applying the principle of interdependence stated above, the similarities between the signs offset the low degree of similarity between the goods.

The rest of the contested goods are dissimilar. As the similarity of the 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.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) 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 for only some 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

Carmen SÁNCHEZ PALOMARES

Julie, Marie-Charlotte HAMEL

Paloma PERTUSA MARTÍNEZ

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.