OPPOSITION Nо B 2 876 194

Pharmadom, Société Anonyme Coopérative À Conseil D’administration, 66 rue Escudier, 92100 Boulogne-Billancourt, France (opponent), represented by Marie Paule Dauquaire, 9 rue de Montevideo, 75116 Paris, France (professional representative)

a g a i n s t

Wellstat Therapeutics Corporation, 14200 Shady Grove Road, Suite 600, 20850 Rockville, United States of America (applicant), represented by Mitscherlich, Patent- Und Rechtsanwälte, Partmbb, Sonnenstraße 33, 80331 München, Germany (professional representative).

On 29/06/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 876 194 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 16 152 803, ‘WELLMONDE’ (word mark), namely against all the goods in Class 5 and some of the services in Class 42. The opposition is based on French trade mark registration No 12 392 829, ‘WELL AND WELL’. 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, namely French trade mark registration No 12 392 829.

The date of priority of the contested trade mark is 10/06/2016, while the filing date is 12/12/2016. As French trade mark registration No 12 392 829 was registered on 19/10/2012, it is not deemed necessary to review the priority claim since the five-year grace period, calculated on the basis of these two dates, had not expired.

Therefore, the request for proof of use is inadmissible.

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 and services

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

Class 5: Pharmaceuticals; pharmaceutical preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical use; appetite suppressants for medical purposes; food for babies; dietary supplements; disinfectants; materials for dressings; plasters; medicines for human purposes; preparations for pharmaceutical purposes; lotions for pharmaceutical purposes; pharmaceuticals for body care; vaccines; disinfectants; preparations for destroying vermin; fungicides ; herbicides.

Class 44: Health care; medical assistance; advise and information relating to parapharmaceuticals; pharmaceutical assistance; pharmacy services; pharmacy advice; pharmaceutical services; pharmacists’ services; telepharmacy services; parapharmaceutical services; parapharmaceutical consultancy.

The contested goods and services, following a limitation by the applicant on 23/07/2018, are the following:

Class 5: Pharmaceutical preparations for treatment in the areas of oncology, hematology, neurology, dermatology, metabolic disorders, neurometabolic disorders and mitochondrial disorders, all of the foregoing goods excluding pharmaceutical preparations and substances for the treatment of depression; biological agents for treatment in the areas of oncology, anti-virals, infectious diseases and mitochondrial disorders; pharmaceuticals, medical and veterinary preparations, all of the foregoing goods excluding pharmaceutical preparations and substances for the treatment of depression; 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 42: Pharmaceutical and biological research and development services; scientific and technological services and research and design relating thereto.

Some of the contested goods and services are identical or similar to goods and services 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 goods and services were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 and services assumed to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise from pharmaceutical and health sector.

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased.

c) The signs

WELL AND WELL	WELLMONDE
Earlier trade mark	Contested sign

The relevant territory is France.

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 element ‘WELL’ of the earlier mark is an English adverb that has no meaning in French. It is not a basic English word and will be perceived as meaningless by a substantial part of the public. Its distinctiveness in relation to the relevant goods and services is average.

The verbal element ‘and’ of the earlier mark (‘et’ in French) is a basic English word and it can be safely assumed that the relevant public will understand it as a connector between the repeated verbal elements ‘WELL’. Since it has no relation with the relevant goods, it is of average distinctiveness.

Contrary to the opponent’s claims, although the word ‘MONDE’ exits as such in French, the fact that the first letters of the contested mark are meaningless and the contested sign is a word mark without irregular capitalisation, means that the relevant public will not artificially dissect it. Moreover, there are many words ending with ‘MONDE’ in French such as ‘IMMONDE’, ‘EDMONDE’, ‘RAYMONDE’. Therefore, the verbal element ‘WELLMONDE’ of the contested sign has no meaning for the relevant public and is, therefore, distinctive.

The earlier mark has no element that could be considered clearly more dominant than other elements as word marks do not have any dominant element.

Visually and aurally, the signs coincide in the sequence of letters ‘WELL’ (and their sound). However, in the earlier mark these letters form two independent words ‘WELL’ whereas in the contested sign they are part of the verbal element ‘WELLMONDE’, which, as explained above, will not be dissected. The signs differ in the verbal element ‘AND’ of the earlier mark and the ending ‘-MONDE’ of the contested sign (and their sounds). The signs also differ visually in their structure, since the earlier mark contains three relatively short words, whereas the contested sign contains one long word.

Bearing in mind the different structure of the signs and that the only coincidence between them lies in the fact that the contested sign incorporates one of the elements from the earlier mark – although the contested sign will not be perceived as containing this word – the signs are visually and aurally similar, at most, to a low degree.

Conceptually, although the public in the relevant territory will perceive the meaning of the conjunction ‘and’ in the earlier mark as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any 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.

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.

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 public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) 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).

The goods and services assumed to be identical target the public at large, as well as business customers with specific professional knowledge or expertise. The relevant public’s degree of attention may vary from average to high.

The signs are visually and aurally similar to only a low degree and conceptually not similar. As explained in section c) of this decision, the signs differ in their structure and composition. The earlier mark contains three short words whereas the contested sign contains one long word. Furthermore, the sole verbal element of the contested sign as a whole is meaningless in French and the relevant public will perceive it in its entirety without breaking it down into several elements.

Therefore, although this verbal element begins with the letters ‘WELL’, the relevant public will perceive it as part of a word, which is twice as long in the contested sign, whereas in the earlier mark these letters form an independent word that is repeated twice. Taking into account the differences between the signs described above, it is considered that the mere fact that the contested sign contains the letters ‘WELL’ at the beginning of its sole verbal element is not sufficient to conclude that consumers may confuse the signs or make a connection between them so as to assume that the goods and services are provided by the same or economically linked undertakings. Considering the structure of the signs and the overall impression that they produce because of their composition, it is likely that consumers will not make any link with the earlier mark when they see the letters ‘WELL’ in the contested sign.

Therefore, the presence of the letters ‘WELL’ is clearly not enough to outweigh the differences between the signs.

The opponent refers to previous decisions of the Office to support its arguments (23/11/2018, B 2 947 565; 23/08/2017, B 2 650 193; 16/06/2016, B 2 469 008; 28/06/2016, B 2 444 092; 16/10/2018, B 2 759 028; 17/02/2020, B 3 057 938; 19/02/2020, B 3 075 927; 06/06/2019, B 3 041 079; 12/08/2019, B 3 049 699). However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

The opponent also refers to previous decisions of the French Industrial Property Office (Institut National de la Propriété Industrielle) to support its arguments. However, it must be noted that decisions of national courts and national offices regarding conflicts between identical or similar trade marks at national level do not have a binding effect on the Office since the European Union trade mark regime is an autonomous system, which applies independently of any national system (13/09/2010, T‑292/08, Often, EU:T:2010:399).

Even though previous national decisions are not binding, their reasoning and outcome should be duly considered, particularly when the decision has been taken in the Member State that is relevant to the proceedings.

In the present case, the previous cases referred to by the opponent are not relevant to the present proceedings. The sign ‘WELLVITA’ was found to have a banal component ‘VITA’, which is an abbreviation of the common word ‘VITAMINS’. As regards the sign ‘WELLCLUB’, based on the translation provided by the opponent there is not enough information concerning the perception by the relevant public of the word ‘CLUB’ and its distinctiveness. No translation was provided of the opposition against the sign ‘ChloWell’.

Considering all the above, even assuming that the goods and services are identical there is no likelihood of confusion on the part of the public even for identical services. Therefore, the opposition must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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.

The Opposition Division

Cristina SENERIO LLOVET

Francesca DRAGOSTIN

Victoria DAFAUCE MENENDEZ

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.