DECISION

of the Second Board of Appeal

of 18 November 2020

In case R 1476/2019-2

Azanta A/S
Tranegårdvej 20 2900 Hellerup Denmark	Opponent / Appellant

represented by Otello Lawfirm, Dalgasgade 25, 8., 7400, Herning, Denmark

v

LABORATORIOS CINFA, S.A.
Travesía de Roncesvalles, 1 Polígono Industrial de Olloki 31699 Olloki (Navarra) Spain	Applicant / Defendant

represented by AB Asesores, Calle Bravo Murillo, 219 - 1º B, 28020, Madrid, Spain

APPEAL relating to Opposition Proceedings No B 2 926 080 (European Union trade mark application No 16 646 119)

The Second Board of Appeal

composed of S. Stürmann (Chairperson), S. Martin (Rapporteur) and H. Salmi (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 26 April 2017, LABORATORIOS CINFA, S.A. (‘the applicant’) sought to register the word mark

RESPIDINA

for the following list of goods as limited on 24 January 2018:

Class 5 - Tablets for the treatment of nasal congestion; Decongestant nasal sprays.

2. The application was published on 5 May 2017.

3. On 12 July 2017, Azanta A/S (‘the opponent’) filed an opposition against the registration of the published trade mark application for all the above goods.

4. The grounds of opposition were those laid down in Article 8(1)(b) EUTMR.

5. The opposition was based on EUTM registration No 8 721 425 for the word mark

REPADINA

filed on 30 November 2009 and registered on 4 May 2010 for the following goods:

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.

6. At the request of the applicant, the opponent had to submit proof of use of the invoked earlier right. On 7 September 2018 the opponent submitted a total of 22 appendixes with evidence to prove use.

7. By decision of 16 May 2019 (‘the contested decision’), the Opposition Division rejected the opposition its entirety on the grounds that there was no likelihood of confusion. It gave, in particular, the following grounds for its decision:

Proof of use

• The Opposition Division did not consider it appropriate to undertake an assessment of the evidence of use submitted. The examination of the opposition proceeded 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

The goods

• 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.

The relevant public and its level 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. The degree of attentiveness is high.

The signs

• The relevant territory is the European Union.

• 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 as they are allusive to the characteristics of the goods involved (i.e. their purpose). Therefore, in this scenario the coinciding beginnings have a 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 found 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 on 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. The impact of the ending ‘DINA’ is reduced, also as consumers generally tend to focus on the beginning of a sign when they encounter a trade mark.

• Visually and aurally, the signs coincide in the last two syllables and sounds ‘DINA’. However, this has a reduced impact.

• 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 for which the signs are meaningless, a conceptual comparison is not possible. The conceptual aspect does not influence the assessment of the similarity of the signs.

Distinctiveness of the earlier mark

• The distinctiveness of the earlier mark must be seen as normal.

Conclusion

• 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.

8. On 11 July 2019, the opponent filed an appeal against the contested decision, requesting that the decision be entirely set aside. The statement of grounds of the appeal was received on 11 July 2019.

9. In its response received on 12 September 2019, the applicant requested that the appeal be dismissed, and an award of costs be made in its favour.

Submissions and arguments of the parties

10. The arguments raised in the statement of grounds may be summarised as follows:

• As the Office confirms, the mark REPADINA gives no information of the kind, quality, quantity, intended purpose, value or geographical origin of the goods. The earlier mark therefore has a high and not only normal degree of distinctiveness.

• The opponent maintains that the degree of attention of the general public is normal as the goods are sold without medical prescription. The professional public is not to be taken into account. The case-law cited by the Opposition Division is not applicable to the case at hand, as the products concerned are different.

• The opponent agrees with the findings in the contested decision that the goods under comparison are identical.

• The findings of the Opposition Division, that consumers are accustomed to seeing the ending ‘DINA’ on pharmaceutical products are not substantiated. The opponent contends that, contrary to the contested decision, ‘DINA’ is an actual name with no relation to the goods in question and it must be considered as a strong element when comparing the marks.

• Visually, the structure of the marks is identical, the number of word elements in the marks is identical and the marks coincide in seven out of eight or nine letters. There is therefore a high degree of visual similarity between the marks. Contrary to the findings in the contested decision, if the identity in ‘DINA’ is too weak to make a difference, surely the difference in REPA/RESPI is too. Furthermore, the decision fails to consider that the marks are in fact visually identical in their first two letters – and thereby not differing, in their beginnings.

• Phonetically, contrary to the Office’s findings, both marks consist of four syllables: RE-PA-DI-NA and RE-SPI-DI-NA. The marks are identical in 3 out of their 4 syllables and the differing syllables both contain a very significant letter P, which gives the overall phonetic impression of the marks the same sound. There is a high degree of phonetic similarity between the marks.

• Conceptually, contrary to the Office’s findings, both marks contain the name DINA, which will be perceived as the feminine given name ‘Dina’. There is at least some conceptual similarity.

• The opponent concludes that, as the earlier mark has a high distinctiveness, the relevant public has a normal degree of attention, the goods are identical, and the marks are highly similar, there is indeed a risk of confusion between the marks.

11. The arguments raised in response may be summarised as follows:

• The argument on the high degree of distinctiveness of the earlier mark is completely unfounded.

• Contrary to the findings of the opponent, the public consists of both professionals and the general public with a high degree of attention.

• As to the comparison of the signs, the different beginnings ‘RESPI’ – ‘REPA’ make the signs phonetically dissimilar. The applicant refers to the findings in the contested decision, and concludes that the signs are visually dissimilar and that a conceptual comparison is not possible.

• Thus, the coincidence in the signs’ endings, is not deemed sufficient in this case to overcome their visual and aural differences. Therefore, there is no likelihood of confusion or association on the part of the public, as correctly stated in the contested decision.

12. On 8 November 2019, the rapporteur sent a communication to the applicant asking it to comment on the following issues:

• Is the additional evidence admissible in view of Article 95(2) EUTMR?

• Does the additional evidence prove genuine use of the earlier mark in relation to ‘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’?

13. The applicant responded to the communication on 27 November 2019.

Reasons

14. All references made in this decision should be seen as references to the EUTMR (EU) No 2017/1001 (OJ 2017 L 154, p. 1), codifying Regulation (EC) No 207/2009 as amended, unless specifically stated otherwise in this decision.

15. The appeal complies with Articles 66, 67 and Article 68(1) EUTMR. It is admissible

On the admissibility of the additional evidence filed by the opponent on 12 February 2019

16. On 12 February 2019 (before the issuance of the contested decision), the opponent filed additional evidence of use (Appendix 23 to Appendix 25), the additional evidence consisting of a total of 82 invoices.

17. The additional evidence was effectively transmitted to the applicant but the Opposition Division did not provide the applicant with the opportunity to comment on the admissibility and the relevance of the additional evidence.

Scope of appeal

18. In the present case, the contested decision was appealed in its entirety. Therefore, the appeal at hand regards whether or not the Opposition Division correctly found that there was no likelihood of confusion between the marks within the meaning of Article 8(1)(b) EUTMR. Thus, the Board finds it appropriate to ascertain whether the reasoning and outcome of the contested decision can be confirmed and hence whether the use of the earlier mark needs to be assessed.

Proof of use

19. Having been requested by the applicant to provide proof of use of its earlier mark pursuant to Article 47(2) EUTMR, the opponent furnished a number of exhibits of evidence. However, since the Opposition Division concluded that the marks were not confusingly similar, no examination of the proof of use was carried out.

Relevant public and its level of attention

20. The earlier mark is an EUTM and as a result the relevant consumer resides within the territory of the EU.

21. In the present case, the goods are directed at both, the public at large and at business customers with specific professional knowledge or expertise in the pharmaceutical and medical fields. The degree of attentiveness is high (07/05/2015, T-599/13, GELENKGOLD / FORM EINES TIGERS et al., EU:T:2015:262, § 23-24; 20/09/2018, T-266/17, UROAKUT / UroCys (fig.) et al., EU:T:2018:569, § 26; 14/04/2020, R 1794/2019-5, Dinabium / Dynabiane, § 25).

Comparison of the goods

The goods to be compared 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.	Class 5 ‑ Tablets for the treatment of nasal congestion; Decongestant nasal sprays.
Earlier goods	Contested goods

22. The contested goods are covered within the broader term ‘pharmaceutical preparations’. These goods could not be dissected ex officio and they are considered identical to the goods covered by the earlier mark. It is settled case-law that if the goods designated in the contested mark are covered by a general indication or broad category used in the earlier mark, these goods must be considered identical since the Office cannot dissect ex officio the broad category of the applicant’s or holder’s goods and services (07/09/2006, T-133/05, Pam-Pim’s Baby-Prop, EU:T:2006:247, § 29). In addition, the applicant did not provide any evidence to the contrary.

Comparison of the marks

23. The signs to be compared are:

    REPADINA	RESPIDINA
    Earlier mark	Contested sign

24. According to case-law, when evaluating the overall impression created by the signs at issue, the assessment of the visual similarity of those signs may take account, where they are word marks, of aspects such as their length, the letters of which they are composed and the order of those letters (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 55; 20/11/2007, T-149/06, Castellani, EU:T:2007:350, § 54; 25/03/2009, T-402/07, Arcol II, EU:T:2009:85, § 83).

25. Visually and aurally, the signs coincide in the first syllable ‘RE’ and the last two syllables and sounds ‘DINA’. Therefore, the signs are visually and aurally similar to an average degree and not a low degree as found by the Opposition Division.

26. In particular, the Opposition Division does not seem to have fully taken into account the fact that the structure of the marks at issue is the same, since they are both composed of a single word element. In addition, even if the number of letters is not considered particularly decisive, the fact remains that the signs have very similar lengths as the earlier mark is composed of eight letters, whereas the mark applied for comprises nine. Finally, it must be pointed out that the presence, in each sign, of several letters in the same order may influence the assessment of the visual similarity of two word marks (25/03/2009, ARCOL / CAPOL, EU:T:2009:85, § 83; 06/04/2017, T-49/16, NIMORAL / NEORAL, EU:T:2017:259; § 38).

27. In that respect, it can be seen that the first 2 letters and the last four letters of the marks at issue are identical and placed in the same order. It could thus be convincingly argued that they constitute most of the letters of the signs and thus have a substantial impact on their overall impression that cannot be disregarded.

28. Conceptually, it must be borne in mind that, in order to have a counteraction of the visual and aural similarities, at least one of the marks at issue must have, from the point of view of the relevant public, a clear and specific meaning so that the public is capable of grasping it directly and immediately (17/03/2004, T-183/02 & T-184/02, Mundicor, EU:T:2004:79, § 93 and the case-law cited; 06/03/2015, T-257/14, BLACK JACK TM, EU:T:2015:141, § 44). This is not the case.

29. For part of the relevant consumers, for example the German public, the Czech public and the Latvian public (for whom the word ‘breathe’ is atmen, dýchat and elpot respectively), that does not 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), the signs remain entirely meaningless and a conceptual comparison is therefore not possible (22/05/2012, T-371/09, RT, EU:T:2012:244, § 41).

30. While it is true that the word element ‘dina’ stands for ‘Drug Identification Number Application’, the Board is not convinced that the term is known to a significant part of the non-professional group of consumers.

Distinctive character of the earlier mark

31. The Board endorses the conclusion of the Opposition Division that taken as a whole the earlier mark enjoys an average distinctive character. For part of the relevant consumers, the sequence of the letters “R-E-P-A” will not be seen as an abbreviation of the verb “repair”. In Croatian the verb ‘repair’ is popravak, in Czech opravit, in Hungarian javítás, in Turkish tamir etmek, in Lithuanian remontas, in Latvian remonts and in Estonian remont.

Conclusion

32. In view of the aforesaid considerations, the Board is of the opinion that the Opposition Division erred in not carrying out any assessment of the proof of use for the earlier mark’s goods in circumstances where, had it done so, it might have found, by a proper comparison of the marks, that the degree of similarity existing between the signs was sufficient to lead to a likelihood of confusion.

33. According to Article 64(1) EUTMR, following the examination as to the admissibility of the appeal, the Board of Appeal shall decide on the appeal. It may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution pursuant to Article 71(1) EUTMR.

34. The identity or similarity between the goods in conflict is a mandatory requirement for the evaluation of a likelihood of confusion under Article 8(1)(b) EUTMR. However, in order to assess whether such similarity or identity indeed exists, it first needs to be established if the opponent can rely on the goods registered for the earlier EUTM, in the course of the opposition proceedings.

35. In view of the above and given the parties’ legitimate interest that the case be examined by both instances of the Office, the Board considers it appropriate to remit the case in order for the Opposition Division to perform a complete assessment of Article 47(2) EUTMR and, if applicable, of Article 8(1)(b) EUTMR (26/06/2020, R 2190/2019-5, C (fig.) / C (fig.), § 37; 09/10/2019, R 606/2019-2, Damin / Dynamin, § 46; 24/09/2019, R 2388/2018-5, GAULOS Extra Virgin Olive Oil (fig.) / GALLO DESDE 1919 (fig) et al., § 57; 13/10/2020, R 219/2020-1, Mezzion / Ozzion, § 40).

36. According to Article 72 (2) EUTMR, ‘if the Board of Appeal remits the case for further prosecution to the department whose decision was appealed, that department shall be bound by the ratio decidendi of the Board of Appeal, in so far as the facts are the same’. In this regard the Opposition Division is bound by the present decision, in particular regarding the level of attention of the relevant consumer, the comparison of the signs and the distinctive character of the earlier mark.

37. The contested decision is consequently annulled.

Costs

38. Since no decision has been rendered as regards the relative ground for refusal that has been invoked as the basis of the opposition, there is not yet a losing or winning party within the meaning of Article 109(1) EUTMR.

39. In these circumstances, the Board applies Article 109(3) EUTMR and orders that for reasons of equity each party bears its own costs in the opposition and appeal proceedings.

Order

On those grounds,

THE BOARD

hereby:

1. Annuls the contested decision;

2. Remits the case to the Opposition Division;

3. Orders the parties to bear their own costs of the opposition and the appeal proceedings.

Signed S. Stürmann

Signed S. Martin

Signed H. Salmi

Registrar: Signed p.o. N. Granado Carpenter