OPPOSITION No B 2 971 672

Interpharma S.A., Santa Rosa 6, 08921 Santa Coloma de Gramanet (Barcelona), 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

Xarmadis Produtos Farmacêuticos Lda, Rua do Montijo 248 Trajouce, 2785-155 São Domingos de Rana, Portugal (applicant).

On 10/09/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 971 672 is upheld for all the contested goods.

2. European Union trade mark application No 16 814 221 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 16 814 221 for the word mark ‘INTERFAR’. The opposition is based on Spanish trade mark registration No 1 120 968 for the figurative mark . 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 products; veterinary products: medicinal intimate hygiene products; air purifiers; medicinal herbs and medicinal infusions; dietary products for medicinal use; insecticides; disinfectants (not soapy); bandages; gauzes; dressings; compresses; hydrofil cotton.

The contested good is the following:

Class 5: Medicine.

The contested medicine is included in, or overlaps with, the broad category of the opponent’s pharmaceutical products. 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 at medical professionals with specific professional knowledge or expertise.

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.

Therefore, as the goods in question relate to medicine and pharmaceutical products, both the general and professional public will exhibit a higher than average degree of attention.

3. The signs

	INTERFAR
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).

The earlier figurative mark is composed of an abstract graphical device and the verbal element ‘INTERPHARMA’ (in bold black typeface), beneath which the letters ‘sa’ are featured in smaller bold black lowercase font. The stylisation of the verbal elements of the earlier sign is standard and non-distinctive. The letters ‘sa’ refer to the company type of the undertaking, as an abbreviation for the term “Sociedad Anónima” (“limited company” or “joint-stock company”); given the common usage of this term on the market and the fact that the Spanish public will not perceive this element as having a trademark function, this element is deemed non-distinctive.

It must be borne in mind that when signs are composed of figurative and verbal elements, the verbal element of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37). Whilst the graphical device of the earlier sign is a fanciful element per se, within the sign considered as a whole it performs an essentially ornamental function vis-à-vis the verbal element ‘INTERPHARMA’. In the case at hand, the public will more readily refer to the earlier mark by referencing the more dominant (visually eye-catching) and distinctive verbal element of the earlier sign, ‘INTERPHARMA’, depicted in bold.

The contested sign is composed of a single verbal element, ‘INTERFAR’. In the case of word marks, it is the word as such that is protected and not its written form, therefore, their representation in upper or lower cases letters is irrelevant. Additionally, as a word mark, the earlier sign has no elements that could be considered more dominant (visually eye-catching) than other elements.

The terms ‘INTERPHARMA’ and ‘INTERFAR’, have no meaning as a whole for the relevant public. Despite being formed of a single verbal element, they will be perceived by the public as the combination of the words ‘INTER’ and ‘PHARMA/FAR’ respectively. This is because although the average consumer normally perceives a mark a whole and doesn’t proceed to analyse its various details, when perceiving a word sign, they will break it down into elements which suggest a specific meaning or resemble words known to the them (06/10/2004, T-356/02, Vitakraft EU:T:2004:292, § 51).

The common prefix in both signs, ‘INTER-’, could be perceived by part of the Spanish public as an allusion to the word “internacional” (“international”). However, even then, this element bears no obvious relationship to nor is it descriptive of the goods at issue; nonetheless, it might be perceived as alluding to the fact that the undertaking responsible for the marketing of the goods operates internationally.

The suffix ‘-PHARMA’ of the earlier sign and ‘-FAR’ of the contested mark will be perceived by the Spanish public as referring to “farmacéutico” or “farmacia” (“pharmaceuticals” and “pharmacy”), especially considering the nature of the goods at issue. Although the diagraph ‘ph’ does not exist in Spanish orthography rules, the Spanish-speaking public is used to associating it with the phoneme of the letter ‘f’, due to the influence of foreign words denoting everyday or commonplace objects, such as ‘smartphone’ and established trademarks on the Spanish market, such as ‘Philips’.

With reference to the meaning of “PHARMA” and “FAR” as “pharmaceuticals” and “pharmacy”, there is established case law in this regard (19/01/2016, RO434/2015-2, makerpharma / K KERN PHARMA; 20/05/2016, R2176/2015-2 and R 2178/2015-2, f missfarma health & beauty (fig.) / mifarma (fig.) et al, § 44; 08/04/2013 R1612/2011-4 and R1833/2011-4, Pharma 3 / Pharmadus; 23/04/2008, R0780/2007-2, PHARMION / PHARMATON). It follows that the Spanish-speaking public will perceive the element “PHARMA” of the earlier sign and “FAR” of the contested sign as descriptive of the nature of the goods covered, rendering these elements non-distinctive.

Visually, the signs coincide in the letters ‘INTER**AR’. The signs differ in the presence of the letters ‘PH’ in the earlier sign, whilst the contested sign features the letter ‘F’ in the same place amongst the string of identical letters. The common prefix ‘INTER’ is distinctive, whilst the suffixes ‘PHARMA’ and ‘FAR’ are descriptive of the goods covered, as previously mentioned, therefore their impact on consumers perception is very limited, if any.

The signs also differ in the graphical device present in the earlier sign and in the additional final letters ‘-MA’ and ‘SA’ present therein, which have no counterparts in the contested sign. As discussed above, whilst the graphical element of the contested sign will be clearly perceived by the public, it performs an essentially ornamental role in relation to the verbal element ‘INTERPHARMA’; consequently, the public will afford more trade mark significance to the verbal element ‘INTERPHARMA’, as the badge of origin of the goods. Equally, the letters ‘sa’, present in the earlier sign, will not be endowed with trademark significance by the relevant public, as they will perceive it as a reference to the type of undertaking rather than as a badge of origin, meaning this element does not come into play in the current assessment.

It follows that the overlap between the key verbal elements of the signs in a total of seven letters, which includes the coincidence in their visually more conspicuous beginnings ‘INTER-’ renders them visually similar to an average degree.

Aurally, the Spanish public will perceive the letters ‘ph’ as equivalent to the letter ‘f’, leading to the dominant and distinctive element of the earlier mark being effectively nearly fully reproduced in the contested sign. Consequently, the pronunciation of the signs coincides fully in the sound of the letters ‛INTER(PH/F)AR’, where the common element ‘INTER-’ is the most distinctive part. Whilst the subsequent ‘PHARMA/FAR’ is descriptive of the goods and thus lacks distinctive character, it will nonetheless be pronounced by the public when referring to the sign.

The pronunciation of the signs differs solely in the sound of the letters ‛ma’, present at the end of the earlier sign, which has no counterpart in the contested mark. However, 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, consumers will pay less attention to this element.

In addition, as noted above, the earlier sign differs in the element ‘SA’ which, however, is non-distinctive as it merely indicates legal form of the company. Therefore, the element ‘SA’ in the earlier is not likely to be pronounced at all by the relevant public.

Therefore, despite the additional letters final letters ‘-MA’ and ‘SA’ in the earlier sign, the aural overlap in the sound of the initial three syllables of the earlier mark, which are completely reproduced by the contested sign, will significantly impact the consumers’ perception.

Therefore, the signs are aurally highly similar.

Conceptually, although neither of the signs as a whole have a clear meaning for the public in the relevant territory, both signs evoke the concept of “pharmaceuticals” or “pharmacy” via the elements “PHARMA” and “FAR”, as explored above. The element ‘’INTER’, contained in both marks may be seen as a reference to the term “international”, however as previously covered, this connection is not immediately obvious and therefore is of limited importance in the current assessment. The signs differ in the concept of the element ‘SA’ in the earlier sign, which however is non-distinctive and its impact on the public’s perception is very limited, if any.

Therefore, considering that both signs allude essentially to the same concepts, even considering the non-distinctive or allusive character of these common concepts, it must be deemed that the signs are conceptually similar to a high degree.

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. Although the term ‘INTERPHARMA’ has no clear meaning as a whole, it does convey a suggestion of a ‘pharmaceutical operating internationally’, considering what has been stated above in section c) of this decision regarding the meaning conveyed by the element ‘PHARMA’ and the allusion conveyed by the element ‘INTER-’; therefore, the distinctiveness of the earlier mark must be seen as lower than average for the relevant goods.

5. 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 contested medicine has been found identical to the opponent’s pharmaceutical preparations. These goods are directed at both the general public and at professionals in the medical field, who will exhibit a higher than average degree of attention. The earlier mark has been deemed to possess a lower than average distinctiveness in relation to the relevant goods.

The signs coincide in their initial and more distinctive element ‘INTER-’ and also in their subsequent element ‘PHAR/FAR’, the latter being non-distinctive for the goods at issue, as a direct reference to “pharmaceuticals” or “pharmacy”; nonetheless, even this non-distinctive element contributes to the overall similarity between the marks, as it points to the same semantic content and is placed in the same position in both signs. As explained before, the different spelling of the letters (‘PH’ vs ‘F’) is a feature that might go unnoticed to consumers, as they will be pronounced in the say way by the relevant public.

As for the graphic device in the earlier sign, which performs an essentially ornamental role within the sign, it must be noted that the public’s attention will be drawn mainly to the verbal element ‘INTERPHARMA’, to which consumers will attribute the role of main indicator of commercial origin. Furthermore, as mentioned before, the letters ‘sa’, which merely indicate the type of undertaking producing the goods and fail to function as a trade mark, are a non-distinctive feature of the sign. Consequently, the almost complete overlap in the signs’ key elements, ‘INTERPHARMA’ and ‘INTERFAR’, render the overall visual impression of the marks similar.

From an aural perspective, the impact of the coinciding beginnings of both signs (in the element ‘INTER-’) will mark the public’s overall impression of the signs significantly. Furthermore, as previously covered, the Spanish public are familiar with the sound of the letters ‘ph’ being pronounced as the letter ‘f’, meaning the further overlap in the elements ‘PHARMA’ and ‘FAR’ will not escape the public when perceiving these signs, despite the non-distinctive nature of these elements in relation to the goods at issue. When pronouncing the signs, the public will thus identify the clear overlap in the sound of the letters ‘INTER(PH/F)AR’, rending the signs aurally highly similar overall. In addition, the importance of the beginnings of the signs, which coincide significantly, offsets the differing letters of the earlier mark ‘-MA’ located in its final section.

Furthermore, despite the overall lack of meaning in the signs, the concepts conveyed to the public via the shared elements ‘INTER’ and ‘(PH/F)AR’, as explained in section c) cannot be ignored, as they are essentially the same, while there are no other concepts present in the marks, that could assist consumers in successfully distinguishing between them.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Indeed, as highlighted by the opponent, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49), such as, for instance, a slightly shortened version of the earlier sign.

Although the distinctive character of an earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, on the one hand, and a trade mark applied for which is not a complete reproduction of it, on the other, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (16/03/2005, T‑112/03, Flexi Air, EU:T:2005:102, § 61).

Therefore, although the earlier mark has a lower than average distinctiveness, in light of the overall similarity between the marks (in particular, taking into consideration the high degree of aural and conceptual similarity between them) and of the identity of the goods at issue, the Opposition Division considers that there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 1 120 968. It follows that the contested trade mark must be rejected for all the contested goods.

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

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Jakub MROZOWSKI

Gueorgui IVANOV

Manuela RUSEVA

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.