OPPOSITION No B 2 926 080

Azanta A/S, Tranegårdvej 20, 2900 Hellerup, Denmark (opponent), represented by Otello Lawfirm, Dalgasgade 25, 8., 7400 Herning, Denmark (professional representative)

a g a i n s t

Laboratorios Cinfa, S.A.,Travesía de Roncesvalles, 1, Polígono industrial de Olloki, 31699 Olloki (Navarra), Spain (applicant), represented by AB Asesores, Calle Bravo Murillo, 219 - 1º B, 28020 Madrid, Spain (professional representative).

On 16/05/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 926 080 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 646 119 for the word mark ‘RESPIDINA’. The opposition is based on European Union trade mark registration No 8 721 425 for the word mark ‘REPADINA’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

Proof of use of the earlier mark was requested by the applicant. However, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted. 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.

1. The goods

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

Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; 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.

The contested goods, after the limitation made by the applicant on 24/01/2018, are the following:

Class 5: Tablets for the treatment of nasal congestion; decongestant nasal sprays.

The contested tablets for the treatment of nasal congestion; decongestant nasal sprays are medicines for human purposes, which are included in the opponent’s pharmaceutical preparations. Therefore, they are identical.

2. Relevant public — degree of attention

In the present case, the goods assumed to be identical are directed at both, the public at large and at business customers with specific professional knowledge or expertise in the pharmaceutical and medical fields.

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 (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/pharmaceutical 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

REPADINA	RESPIDINA
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).

Part of the public will perceive the beginning of the contested sign ‘RESPI’ as an abbreviation of ‘respire’ (breathe) in English or other similar equivalents in other languages (e.g. respirar in Spanish), and the beginning of the earlier mark ‘REPA’ as an abbreviation of ‘repair’ in English or other similar equivalents in other languages (e.g. reparar in Spanish). For this part of the relevant public, bearing in mind that the relevant goods include medication, medical apparatus and instruments for the respiratory system, with the purpose of repairing/healing a certain physical problem, the beginnings ‘REPA’/’RESPI’ are weak for being allusive to the characteristics of the goods involved (i.e. their purpose). Therefore, in this scenario the coinciding beginnings have reduced impact.

For the part of the public perceiving both signs as invented words, without any meaning, the marks are, in their entirety, distinctive to an average degree, including the beginnings in which some of the coincidences are found. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on this part of the public, being the best-case scenario for likelihood of confusion to arise.

The ending ‘DINA’ is commonly used in products belonging to the pharmaceutical field. Even if it has no specific meaning, consumers are accustomed to seeing this kind of suffixes in pharmaceutical products, and this leads them to focus their attention on the rest of the sign in order to identify the commercial origin of the goods.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Therefore, the impact of the ending ‘DINA’ is reduced.

Visually and aurally, the signs coincide in the last two syllables and sounds ‘DINA’. However, this has reduced impact for the reasons explained above.

The signs differ in their first syllables and sounds, ‘RE-PA’ of the earlier mark v ‘RES-PI’ of the contested sign. Although the first syllables have some letters in common, the Opposition Division is of the opinion that the commonality in the letters ‘RE’ and ‘P’ are insufficient to lead to any degree of visual similarity between the signs. Moreover, the General Court has held that two signs cannot be regarded as visually similar simply because they have identical letters (25/03/2009, T‑402/07, ARCOL / CAPOL, EU:T:2009:85, § 81-82; 04/03/2010, C‑193/09 P, ARCOL / CAPOL, EU:C:2010:121).

Therefore, the signs are visually and aurally similar to a low degree.

Conceptually, for the part of the public referred to above, the signs are meaningless and, since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 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

The goods are presumed to be identical.

The signs are visually and aurally similar to a low degree; a conceptual comparison is not possible. The degree of distinctiveness of the earlier mark is normal.

Considering all the above, and even assuming that the goods are considered to be identical, there is no likelihood of confusion on the part of the public, as the existing dissimilarities between the signs, together with a relatively high degree of attention paid by the public when purchasing the goods, are enough to counteract their similarities. Therefore, the opposition must be rejected.

This absence of a likelihood of confusion equally applies to the part of the public for which the elements ‘RESPI’/’REPA’ are weak. This is because, as a result of the character of these elements, that part of the public will perceive the signs as being even less similar.

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.

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

María del Carmen SUCH SÁNCHEZ

María Clara IBÁÑEZ FIORILLO

Sofía SACRISTÁN 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.