OPPOSITION No B 2 944 182

Novartis AG, 4002 Basel, Switzerland (opponent), represented by Boehmert & Boehmert Anwaltspartnerschaft mbB — Patentanwälte Rechtsanwälte, Kurfürstendamm 185, 10707 Berlin, Germany (professional representative)

a g a i n s t

Pharnext, 11 rue des Peupliers, 92130 Issy-Les-Moulineaux, France (applicant), represented by Cabinet Lavoix, 62, rue de Bonnel, 69448 Lyon Cédex 03, France (professional representative).

On 12/09/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 944 182 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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 16 724 924 for the word mark ‘RYQLIAM’, namely against all the goods in Class 5. The opposition is based on European Union trade mark registration No 16 016 751 for the word mark ‘REQUILMA’. The opponent invoked Article 8(1)(b) EUTMR.

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 preparations for human use.

The contested goods are the following:

Class 5: Medicine; Pharmaceuticals; Pharmaceutical preparations; Medical preparations; Biological preparations for medical purposes; all of these products being treatments of neurodegenerative diseases.

The contested medicine; pharmaceuticals; pharmaceutical preparations; medical preparations; biological preparations for medical purposes; all of these products being treatments of neurodegenerative diseases are all included in the broad category of, or overlap with, the opponent’s pharmaceutical preparations for human use. Therefore, they are identical.

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 found to be identical are directed at the public at large and medical professionals. 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 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

REQUILMA	RYQLIAM
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).

The verbal elements ‘REQUILMA’ of the earlier mark and ‘RYQLIAM’ of the contested sign have no meaning for the relevant public and are, therefore, distinctive.

Visually, the signs have in common six letters out of eight in the earlier mark and out of seven in the contested sign. However, only two of those six letters, the first and the third, are placed in the same positions in both marks, ‘R*Q*’. Consequently, although the endings of the signs are composed of the same letters, the letters do not appear in the same order (‘LIAM’ in the contested sign and ‘ILMA’ in the earlier mark). Moreover, the second letters of the marks are different: ‘E’ in the earlier mark and ‘Y’, (which is visually outstanding), in the contested sign. It must be borne in mind that the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency; therefore, it is inevitable that many words will share some of them, but they cannot, for that reason alone, be regarded as visually similar.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛R*Q*’, present identically in both signs. Although the signs also coincide in four other letters, those letters are placed in different positions in the two marks and, therefore, they make up different syllables that produce different sounds. Moreover, the pronunciation differs in the sound of the letters ‛E’ in the earlier sign and ‘Y’ in the contested mark. There is no reason to believe, as the opponent claims, that the relevant public will pronounce the beginnings of the signs in the same way, that is, as ‘REKI’. Firstly, as mentioned above, ‘Y’ will not be pronounced in the same way as ‘E’. The opponent did not specify in what language the pronunciation of those letters would be the same. Secondly, in the contested sign, between the letters ‘Q’ and ‘I’ is a letter ‘L’, which significantly affects how the mark is pronounced.

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

Conceptually, neither of the signs has a meaning for 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.

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 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.

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, C‑251/95, Sabèl, EU:C:1997:528, § 23).

In the present case, the goods are identical. The relevant public’s degree of attention ranges from relatively high to high. The signs are visually and aurally similar to a low degree. The conceptual aspect does not influence the assessment of the similarity of the signs. The distinctiveness of the earlier sign is normal.

Although the comparison of the signs has shown that the marks have six letters in common, some additional factors must be taken into account and weighed against the similarity between the marks. Firstly, the Office is unaware of any language in which the public would pronounce the beginnings of the marks under comparison in the same way, as the opponent claims, that is, as ‘REKI’. Therefore, the signs will not have identical beginnings for any parts of the public as far as the Office is aware. Moreover, the second letter, ‘Y’, of the contested mark is visually clearly noticeable and is quite distinct from the letter ‘E’, present in the same position in the earlier sign. Secondly, the fact that the last four letters of the contested mark coincide with the last four letters in the earlier mark is insufficient to give rise to an association between the trade marks, as they are all placed in different positions, which has a significant impact on the pronunciation of the marks. Moreover, it must be borne in mind that in the present case the degree of attention of the consumers will be high. Therefore, although the relevant consumers rarely have the chance to make a direct comparison between different marks, it is not likely that they will immediately and unambiguously connect or confuse these two signs. In the view of the Opposition Division, the few similarities are not sufficient to lead to a likelihood of confusion on the part of the public.

Considering all the above, there is no likelihood of confusion on the part of the public. 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

Claudia MARTINI

Marta Maria CHYLIŃSKA

Octavio MONGE GONZALVO

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.