OPPOSITION No B 2 916 917

Alter, S.L., Calle Mateo Inurria, 30, 28036 Madrid, Spain (opponent), represented by Ryo Rodriguez Oca, S.L., Calle Juan Hurtado de Mendoza, 9 Apto. 507, 28036 Madrid, Spain (professional representative)

a g a i n s t

Omega Pharma A.S., Drážní 253/7, 62700 Brno, Czech Republic (applicant), represented by Altius, Avenue du Port 86 C B414, 1000 Brussels, Belgium (professional representative).

On 28/08/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 916 917 is rejected in its entirety.

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

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 481 616   16 481 616. The opposition is based on, inter alia, Spanish trade mark registration No 364 923 ‘ALTER’. 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.

Proof of use of the earlier mark was requested by the applicant. However, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T‑296/02, Lindenhof, EU:T:2005:49, § 41, 72). The examination of the opposition will proceed as if genuine use of the earlier mark had been proven for all the goods invoked, which is the best light in which the opponent’s case can be considered.

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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Spanish trade mark registration No 364 923 ‘ALTER’.

1. The goods

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

Class 3: All class of cosmetics and perfumery products, deodorants, lotions, cocoa butter, products for massages, hygienic salts.

Class 5: Deodorants.

The contested goods are the following:

Class 3: Cosmetics; body and skin care products; suncare preparations.

Class 5: Pharmaceutical preparations for skin care; food supplements; vitamin preparations.

Some of the contested goods are identical or similar to goods on which the opposition is based. For example, cosmetics are identically listed in both lists of goods (including synonyms), the contested suncare preparations are identical to the opponent’s cosmetics products and the contested pharmaceutical preparations for skin care are similar to the opponent’s cosmetics products in class 3. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 assumed to be identical are directed at the public at large and at a professional public as far as goods in Class 5 are concerned. The degree of attention is considered to range from average to high.

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.

3. The signs

ALTER
Earlier trade mark	Contested sign

The relevant territory is Spain.

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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The earlier mark is a word mark, ‘ALTER’, which has no meaning for the relevant goods and is therefore distinctive.

The contested mark is a figurative mark comprising three verbal elements, placed vertically and written from the bottom to the top. The central word ‘PANTHENOL’ is written in a big and bold orange typeface. The words ‘altermed’ and ‘FORTE’ placed to its right and left are much smaller and non-bold. Below these verbal elements is an orange-coloured squared figurative element, with the top being shaped as a wave.

The word ‘altermed’ of the contested sign has no meaning in the relevant territory and is therefore distinctive for the goods in question. However, part of the public could break it down into two parts, as they would associate ‘MED’ with medicine or medical. In such a case, this element is weak for the products in question, as it provides information to the relevant public about the medical or therapeutic purpose of the goods or about their general reference to the medical field.

The word ‘PANTHENOL’ (pantenol in Spanish) is the alcohol from pantothenic acid, more familiar as provitamin B5. It is a moisturizing agent used in shampoos and conditioners. It will be associated with this meaning at least by part of the relevant public. Bearing in mind all the relevant goods in Classes 3 and the pharmaceutical preparations for skin care in Class 5, this element is weak. For the remaining goods in Class 5, namely food supplements; vitamin preparations, it is normally distinctive.

The word element ‘FORTE’ is an Italian word that means ‘strong’ and which is very similar to the equivalent word in Spanish, ‘fuerte’. Moreover, it is derived from the Latin word ‘fortis’ and is often used in Spain to indicate that a line of medicine is particularly stronger, more effective than the regular line. Therefore, it will evoke the concept of strength or vigour (06/12/2013, T-361/12, ECOFORCE / ECO FORTE (fig.), EU:T:2013:630, § 34). Thus, it is considered weak as it will be seen as a reference to a characteristic of the goods, notably that the medicines are fortified.

The figurative element and the word PANTHENOL, placed in the centre, written in bold and capital letters and in a much bigger typeface, are immediately perceptible. They are the most prominent and most eye-catching elements. Therefore, they are the dominant elements of the contested mark.

Visually, the signs coincide in the string of letters ‘ALTER’, which, even if it constitutes the earlier mark in its entirety, it will not catch the attention of the public because of its non-dominant position within the sign and because it is not individualized and the vertical orientation does not help to read it.

Moreover, the signs differ in the verbal element ‘PANTHENOL’ and in the orange figurative element that have a dominant position within the contested sign and no equivalent in the earlier mark. They further differ in the term ‘FORTE’, in the letters ‘MED’ which are not separate from the common part ‘ALTER’ and in their structure, since the verbal elements of the contested mark are placed vertically.

Finally, it has to be recalled that the contested mark will be assessed as it appears on the register.

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

Aurally, it has been confirmed by case-law that consumers tend to shorten marks containing several words. In the present case, the public will refer to the only word that is directly perceptible in the contested sign, namely the dominant term ‘PANTHENOL’. Consumers will not bother pronouncing the remaining word elements ‘altermed’ and ‘FORTE’ which are hardly visible and mostly weak. Thus, the fact that ‘PANTHENOL’ may be perceived as weak would not lead to a different conclusion

In addition, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. In the present case, the earlier mark consists of the sole word ‘ALTER’ and the pronunciation of the contested sign will begin with ‘PANTHE’. Therefore, the signs do not in any way coincide in their beginnings.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The earlier mark has no meaning, while the public will perceive one or more concepts in the contested sign. 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.

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 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.

5. Global assessment, other arguments and conclusion

According to the case law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components’ (11/11/1997, C251/95, Sabèl, EU:C:1997:528, § 22 et seq.). A likelihood of confusion (including a likelihood of association) 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.

The appreciation of likelihood of confusion must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C251/95, Sabèl, EU:C:1997:528, § 22).

In the present case, the goods are assumed to be identical. The degree of attentiveness of the public may vary from average to high and the distinctiveness of the earlier mark is normal.

The signs have different overall impressions which play a significant role in the assessment of the case. At best, there is a low degree of visual and aural similarity. In particular, the earlier mark is not individually present in the contested sign on these two levels, since ‘ALTER’ is only part of the term ‘altermed’ and will be perceived as such for a sufficient part of the public. In addition, the coinciding element which position within the sign is in any case non-dominant because of its size and of the light grey used to represent it.

Moreover, the contested sign is a complex sign and consumers will not use all the verbal elements to refer to the mark. Since ‘PANTHENOL’ is dominant, the public will tend to focus its attention on this element (which has nothing in common with the earlier mark), even if it may be perceived as weak for part of the goods. This is all the more likely to happen taking into account that the beginning of a sign has a significant influence on the general impression made by the mark (15/12/2009, T-412/08, Trubion, EU:T:2009:507, § 40; 25/03/2009 T-109/07, Spa Therapy, EU:T:2009:81, § 30). The remaining elements of the contested sign will certainly not even be pronounced.

In any case, consumers will not use the least impacting element ‘altermed’ to refer to the contested sign. Moreover, as seen above, the five letters corresponding to the earlier mark are diluted within the overall impression conveyed by the contested sign.

In addition, the signs are not conceptually similar, which will further enable the consumer to distinguish them. Moreover, at least with regards to the goods in Cl 5, the higher attention from the public will also make them pay more attention the differences between the signs

It will also be remembered that the comparison must consider the signs in their entirety, not, for example, on only one of their two elements. Indeed, the assessment must take account of the overall impression of the signs since the average consumer normally perceives a trade mark as a whole and does not proceed to analyse its various details.

In view of all the above, the additional elements of the contested mark are clearly sufficient to exclude any likelihood of confusion between the marks, including the risk that consumers, even assuming that the goods are identical, might believe that the goods come from the same undertaking or from economically linked undertakings.

Finally, the opponent stated that the applicant intended to register the word ALTERMED without right to do it and that is a fraud of law. This cannot be a basis for the opposition. Article 46 EUTMR states that an opposition can only be filed on the grounds set forth in Article 8 EUTMR. Since this Article does not include bad faith as a ground for opposition, this point will not be addressed.

Therefore, there is no likelihood of confusion on the part of the public. The opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR, it is unnecessary to examine the evidence of use filed by the opponent.

The opposition is based on four other earlier trade marks:

• European Union trade mark registration No 1 542 646 , registered for the following goods:

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations, soaps; perfumery, essential oils, articles for body- and beauty-care; hair lotions; dentifrices.

Class 5: Pharmaceutical, veterinary and sanitary preparations, dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants, preparations for destroying vermin; fungicides, herbicides; expressly excluding vaccines.

• Spanish trade mark registration No 2 296 877 , registered for the following goods:

Class 5: Pharmaceutical, veterinary and hygienic products, dietetic substances for medical use, baby foods; plasters, matrial for dressings; material for filling teeth and dental wax; disinfectants, products for the destruction of harmful animals; fungicides, herbicides.

• Spanish trade mark registration No 2 296 878 , registered for the following goods:

Class 3: Preparations for bleaching and other substances for washing; preparations for cleaning, pulsing, delegating and scrapping; soaps; perfumery, essential, cosmetic oils; lotions for hair; tooth pastes.

• Spanish trade mark registration No 364 579 for the word mark ‘ALTER’, registered for the following goods:

Class 5: Phosphovitaminized salts, litanical salts, phosphorraded salts.

These earlier rights are either identical or include additional elements and particular graphic depictions which have a significant impact on the visual and conceptual aspects.

Therefore, it is clear that the assessment of the word mark would be the same and that the three figurative marks are less similar to the contested sign than earlier Spanish trade mark registration No 364 923 ‘ALTER’, which has already been compared above. The additional elements and different structure further differentiate the marks. Moreover, the presence of a stylised bird in these marks leads to conceptually dissimilar signs.

Therefore, further assessment of the other earlier marks is not necessary since the outcome cannot be different.

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

Christian RUUD

Steve HAUSER

Sandra IBAÑEZ

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.