OPPOSITION Nо B 2 848 037

Anwerina AG, Felsenburgweg 8, 8280 Kreuzlingen, Switzerland (opponent), represented by Peter Kindermann, Karl-Böhm-Str. 1, 85598 Baldham, Germany (professional representative)

a g a i n s t

Accendatech Co. Ltd., Room 927,building C,5 Lanyuan Road,huayuan Industry Development Zone, Tianjin, People’s Republic of China (applicant), represented by Al & Partners S.R.L., Via C. Colombo Ang. Via Appiani (corte Del Cotone), 20831 Seregno (mb), Italy (professional representative).

On 18/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 848 037 is upheld for all the contested goods, namely:

Class 5: Pharmaceutical preparations; capsules for medicines; drugs for medical purposes; dietetic substances adapted for medical use; chemico-pharmaceutical preparations; plant extracts for pharmaceutical purposes; crude drugs; capsules for medicines; herbal medicine; antiepileptic drugs; vitamin tablets.

2. European Union trade mark application No 16 005 712 is rejected for all the contested goods. It may proceed for the remaining services, namely all the services in Class 35.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

On 15/02/2017, the opponent filed an opposition against some of the goods and services of European Union trade mark application No 16 005 712 for the figurative mark , namely against all the goods in Class 5. The opposition is based on German trade mark registration No 302 013 000 270 for the word mark ‘ascendra’. The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK

Ownership of the earlier mark has been transferred during the opposition proceedings and the transfer has been recorded in the register of the national office. Consequently, the new owner of the opposing marks, Anwerina AG, replaces the previous owner as the opponent in the present proceedings.

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.

a) The goods

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

Class 5: Pharmaceuticals and veterinary preparations; sanitary preparations for medical purposes; chemicals for medical purposes; biological substances for medical purposes; medical skin and oral care preparations; medicines for medical and veterinary purposes; filled medication sets; filled medicine sets; ointments for pharmaceutical purposes; tinctures for medical purposes; dietetic substances adapted for medical or veterinary use; food for babies; therapeutic food for medical purposes; medicinal tea; medicinal beverages; dietary supplements and chewing gum for medical purposes; vitamin and multi-vitamin preparations; minerals and mineral preparations for medical purposes; sweets for medical purposes, in particular chest and cough caramels; medical smoking cessation aids; diagnostic preparations for medical purposes; test strips for diabetes and pregnancy tests, test strips for cholesterol tests; plasters, materials for dressings; cotton wool for medical purposes; sanitary articles for women, namely sanitary towels, parity liners, tampons, menstruation knickers; napkins for incontinents; adhesives for dentures, material for stopping teeth, dental wax; dental mastics; disinfectants for sanitary purposes; detergents for medical purposes; biological and chemical preparations for medical and veterinary purposes for laboratories, pharmacies and doctors’ practices; chemical testing agents for medical purposes, in particular reagents, standard solutions, indicators and nutrient media; air deodorising preparations; yeast and yeast preparations for pharmaceutical purposes; glucose for medical purposes; pastilles for pharmaceutical purposes; adhesive tapes for medical purposes.

The contested goods are the following:

Class 5: Pharmaceutical preparations; capsules for medicines; drugs for medical purposes; dietetic substances adapted for medical use; chemico-pharmaceutical preparations; plant extracts for pharmaceutical purposes; crude drugs; capsules for medicines; herbal medicine; antiepileptic drugs; vitamin tablets.

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).

However, the term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

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.

The contested pharmaceutical preparations; drugs for medical purposes; chemico-pharmaceutical preparations; crude drugs; herbal medicine; antiepileptic drugs are identical to the opponent’s pharmaceuticals, either because they are identically contained in both lists of goods (including synonyms) or because the opponent’s goods include, are included in, or overlap with, the contested goods.

The contested capsules for medicines (listed twice) are a broad term which, without any restriction to the contrary, are considered to encompass filled capsules that contain, in principle, any sort of active ingredients or pharmaceutical preparations. Therefore, these goods are considered identical to the opponent’s pharmaceuticals (30/09/2015, T‑720/13, KARIS / CARYX et al., EU:T:2015:735, § 70, 75-76, 80).

Dietetic substances adapted for medical use are identically contained in both lists of goods.

The contested plant extracts for pharmaceutical purposes are at least similar to the opponent’s medicinal tea as they at least have the same purpose, relevant public, usual distribution channels and may be in competition.

The contested vitamin tablets are included in the broad category of the opponent’s vitamin and multivitamin preparations. Therefore, they are identical.

b) 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 or at least similar are directed at the public at large and professionals in the medical sector with specific professional knowledge or expertise.

It is apparent from the case-law that, insofar as pharmaceutical preparations, whether or not issued on prescription, are concerned, the relevant public’s degree of attention is relatively high (10/02/2015, T‑368/13, ANGIPAX, EU:T:2015:81, § 42-46; 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.

The degree of attention is also considered higher than average in relation to the remaining relevant goods, which may, to a lesser or greater extent, affect the state of human health (10/02/2015, T‑368/13, ANGIPAX, EU:T:2015:81, § 46; 23/01/2014, T‑221/12, Sun fresh, EU:T:2014:25, § 64).

c) The signs

ascendra
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 earlier mark is the word ‘ascendra’. The protection of a word mark concerns the word as such. Therefore, the use of lower- or upper-case letters is, in principle, irrelevant for the comparison, unless it departs from the usual way of writing (‘irregular capitalisation’) which is not the case here. The word ‘ascendra’ has no meaning in German and is distinctive to a normal degree in relation to the relevant goods.

The contested sign is a figurative mark. It contains the sequence of letters ‘Accenda’ where the letters ‘ccenda’ are depicted in lower-case letters on thick wavy lines which serve as a background. The first letter ‘A’ is depicted as an upper-case letter and is much larger than the remaining letters. In addition, the upper-case letter ‘A’ is stylised to the extent that the letter’s horizontal bar is in the form of thick wavy lines which serve as a background for the letters ‘ccenda’. Underneath these elements, there is the verbal element ‘ACCENDATECH’, written in standard, bold, black, upper-case letters. The words ‘Accenda’ and ‘ACCENDATECH’ of the contested sign have no meaning in German. It cannot be excluded that some relevant consumers associate the ending ‘TECH’ of the word ‘ACCENDATECH’ with ‘technical’. However, this meaning is not directly related to the relevant goods, which are not technical in nature. Therefore, it is unlikely that this concept is evoked in relation to the relevant goods, at least for a substantial part of the relevant public. It is more likely that the word ‘ACCENDATECH’ will be perceived as a meaningless term as a whole. Consequently, both words of the contested sign are distinctive to a normal degree in relation to the relevant goods.

Since the earlier mark is composed of one word, it does not have any elements that could be considered more eye-catching (visually dominant).

In the contested sign, although the letters ‘ccenda’ are smaller than the other letters of the sign, this letter sequence is set against the stylised horizontal bar of the large letter ‘A’ and is an integral part of this element, forming the word ‘Accenda’. The element ‘ACCENDATECH’ positioned below these elements occupies a relatively similar amount of space. Therefore, it is considered that none of the elements of the contested sign clearly overshadows the other elements.

The depiction of the letters in standard font is non-distinctive. When a sign consists 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). Therefore, the stylisation of the large letter ‘A’ of the contested sign and the overall arrangement of the letters within this element have less impact than the verbal element ‘Accenda’.

Visually, the signs coincide in the letters ‘a*cend*a’ which form words of very similar length (‘ascendra’ versus ‘Accenda’). These words differ in their second letters (‘s’ versus ‘c’) and the additional letter ‘r’ between the letters ‘d’ and ‘a’ of the earlier mark. As there are far fewer differing letters than coinciding ones, and the differences amounting to one letter replaced by another in the second position, with another being added before the final letter of the word ‘ascendra’, these differences are less noticeable than the larger coincidences at the beginning, in the middle, and at the end of the words. Furthermore, the word ‘ACCENDA’ is repeated in the second verbal element ‘ACCENDATECH’ of the contested sign. This amounts to some similarities as this word presents similarities with the earlier mark, but also differences in that the word is repeated in the contested sign (while the earlier mark is composed of one word) and that it has the additional ending ‘TECH’. Since ‘ACCENDA’ is placed at the beginning, it will attract the consumer’s attention, as they read from left to right, more than the differing ending ‘TECH’, which is much shorter. Furthermore, the signs differ in the stylisation of the first letter ‘A’ in the contested sign, but this stylisation is insufficient to divert the consumer’s attention away from the word ‘Accenda’ in the contested sign. Consequently, this difference has less impact.

Therefore, the signs are similar to a slightly below-average degree.

Aurally, the consumers tend to abbreviate a mark comprising a number of words to make it easier to pronounce (30/11/2006, T‑43/05, Brothers by Camper, EU:T:2006:370, § 75). Consequently, at least part of the relevant public will only pronounce the word ‘Accenda’ or the word ‘ACCENDATECH’ of the contested sign. Furthermore, at least part of the relevant German public is likely to pronounce the earlier mark ‘ascendra’ as /a-sen-dra/ and the word ‘Accenda’ of the contested sign as either /a-sen-da/ or /ac-zen-da/. Therefore, these words either share the sounds ‘a-sen-da’ or ‘a-en-da’ with similar other sounds of the first two syllables. The difference in the additional penultimate letter ‘r’ of the earlier mark is less noticeable due to its position in the last syllable. Furthermore, both words have a similar length, three syllables and the same sequence of vowels. Therefore, the rhythm and intonation of these words is similar. If the consumers pronounce the word ‘ACCENDATECH’ of the contested sign, there will be differences in the rhythm and intonation as this word is longer than the earlier mark ‘ascendra’ and an additional syllable is added by the component ‘TECH’. However, the similarities described above in the pronunciation of ‘ascendra’ and ‘ACCENDA’ concern the larger part of the verbal element ‘ACCENDATECH’ of the contested sign and are positioned at the beginning of this element, which will attract the consumer’s attention as they read from left to right.

Therefore, the signs are aurally similar at least to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Neither of the signs has a meaning for a substantial part of 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. If the ending ‘TECH’ of the element ‘ACCENDATECH’ of the contested sign is associated with the meaning explained above, the signs are not similar conceptually as the earlier mark has no meaning in the relevant territory.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) 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.

e) Global assessment, other arguments and conclusion

The goods are partly identical and partly at least similar. The signs are visually similar to a slightly below-average degree and aurally similar at least to an average degree. For a substantial part of the relevant public the conceptual comparison is neutral. For consumers for whom the signs are conceptually not similar, the additional concept created by the ending ‘TECH’ in the word ‘ACCENDATECH’ does not have a significant impact as the whole element ‘ACCENDATECH’ of the contested sign is meaningless and the concept evoked by the ending ‘TECH’ attracts less attention due to its position.

The earlier mark has a normal degree of inherent distinctiveness and the public’s degree of attention is higher than average.

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).

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.

In view of the foregoing and, especially, that the aural and visual similarity between the signs lies in the first element of the contested sign, positioned at the top of the sign and is repeated at the beginning of the second element positioned below, the Office is of the opinion that these similarities cannot be counteracted by the elements of difference which have less impact and that the relevant public, even with a heightened degree of attention, could believe that the identical or at least similar goods come from the same undertaking or from economically linked undertakings.

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

Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 302 013 000 270. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is 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 extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

COSTS

According to Article 109(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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(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

Ivo TSENKOV

Justyna GBYL

Anna PĘKAŁA

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.