OPPOSITION No B 3 001 966

Matthias Oehlmann, Hirschwlese 62, 59379, Gelm, Germany (opponent), represented by Spieker & Jaeger, Kronenburgallee 5, 44139, Dortmund, Germany (professional representative)

a g a i n s t

4480 Farmácia, Lda., Praça Luís de Camões, 20, 4480-719, Vila do Conde, Portugal, (applicant).

On 17/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 001 966 is upheld for all the contested services, namely

Class 35: Online retail store services relating to cosmetic and beauty products; Retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies; Retail services relating to food; Retail services in relation to hair products; Wholesale services in relation to toiletries; Wholesale services in relation to dietetic preparations; Wholesale services in relation to dietary supplements; Retail services in relation to toiletries; Retail services in relation to dietary supplements; Retail services in relation to dietetic preparations.

Class 44: Human healthcare services; Human hygiene and beauty care.

2. European Union trade mark application No 16 886 211 is rejected for all the contested services. It may proceed for the remaining goods.

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

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 16 886 211 for the figurative mark , namely against all the services in Classes 35 and 44. The opposition is based on German trade mark registrations No 30 569 508 and No 30 2015 033 915 for the word marks ‘pharmeo’. 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 services

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

German trade mark registration No 30 569 508

Class 44: Services of a pharmacist; Pharmacy advice; Consultancy in the field of pharmacy, medicine, cosmetics; Human hygiene and beauty care; Health counselling.

German trade mark registration No 30 2015 033 915

Class 35: Retail services via the Internet in the fields of: pharmaceutical and veterinary articles, sanitary preparations and medical articles, goods for the health sector, infant formula, nutritional supplements, pharmaceuticals, cosmetics; rental of advertising space on the Internet.

The contested services are the following:

Class 35: Online retail store services relating to cosmetic and beauty products; Retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies; Retail services relating to food; Retail services in relation to hair products; Wholesale services in relation to toiletries; Wholesale services in relation to dietetic preparations; Wholesale services in relation to dietary supplements; Retail services in relation to toiletries; Retail services in relation to dietary supplements; Retail services in relation to dietetic preparations.

Class 44: Human healthcare services; Human hygiene and beauty care.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested services in Class 35

The contested retail services for pharmaceutical, veterinary and sanitary preparations and medical supplies include, as a broader category the opponent’s retail services via the Internet in the fields of: pharmaceutical and veterinary articles, sanitary preparations and medical articles. Since the Office cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested online retail store services relating to cosmetic and beauty products; retail services relating to food; retail services in relation to hair products; retail services in relation to toiletries; retail services in relation to dietary supplements; retail services in relation to dietetic preparations  are at least similar to the opponent’s retail services via the internet in the fields of: pharmaceutical, veterinary and sanitary preparations and medical supplies, goods of the health sector, infant formula, nutritional supplements, pharmacy products, cosmetics. Retail services relating to specific goods are considered to be similar to retail services relating to other specific goods independently of whether or not there is similarity between the goods in question. The services under comparison share the same nature as both are retail services, have the same purpose of allowing consumers to conveniently satisfy different shopping needs, and have the same method of use. Furthermore, depending on whether the goods in question are commonly retailed in the same outlets, they may coincide in relevant public and distribution channels, in which case they must be considered highly similar.

The contested wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies; wholesale services in relation to toiletries; wholesale services in relation to dietetic preparations; wholesale services in relation to dietary supplements are  similar to the opponent’s retail services via the internet in the fields of: pharmaceutical, veterinary and sanitary preparations and medical supplies, goods of the health sector, infant formula, nutritional supplements, pharmacy products, cosmetics.  Wholesaling is selling goods to other undertakings (retailers) which then sell the goods to end consumers. Even though the relevant public and distribution channels are different, these services have the same nature and purpose and they are complementary to each other. Moreover, wholesalers sometimes also provide retail services and thus, the commercial origin of these services can be the same.

Contested services in Class 44

Human hygiene and beauty care are identically contained in both lists of services.

The contested human healthcare services include, as a broader category the opponent’s health counselling. Since the Office cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

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 services found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise (for example medical professionals).

Depending on the nature or price of the services, the degree of attention is likely to vary from average (e.g. for human hygiene in Class 44) to higher than average (e.g. for wholesale services for pharmaceutical preparations in Class 35, irrespective of whether the preparations are issued on prescription or not, as these services can affect the user’s health).

3. The signs

pharmeo
Earlier trade marks	Contested sign

The relevant territory is Germany.

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).

Since the earlier marks protect the same word sign, ‘pharmeo’, they will be referred to hereafter as ‘the earlier mark’.

Both the earlier mark (word mark) and the contested sign (figurative mark) consist of a single verbal element. In the case of the contested sign, the typeface is slightly stylised. As a whole, the marks are meaningless and as such distinctive to an average degree for the services in question. Although each sign is composed of one verbal element that has no meaning as a whole, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58).

In the present case, bearing in mind that some of the relevant services relate to the medical and pharmaceutical field, it is likely that the consumers will perceive the element ‘pharm’ in the signs as referring to the pharmaceutical industry. ‘PHARMA’ is a German prefix meaning ‘medicinal product’ (information extracted from Duden Dictionary on 09/10/2018 at http://www.duden.de/rechtschreibung/Pharma_). Therefore, this part of the signs is weak for the relevant services related to medicine and pharmaceuticals in Classes 35 and 44. For the rest of the services, it has a normal degree of distinctiveness.

Visually and aurally, the signs coincide in the string of six letters ‘pharme*’ and differ only in the seventh letter, ‘o’ in the earlier mark versus ‘e’ in the contested sign and the slight stylisation in the typeface of the contested sign.

Even for the relevant services in relation to which ‘pharm’ is weak, although both signs begin with this weak element, the differentiating vowel at the end of the signs has a very limited impact on the overall impression of the marks. Therefore, the signs are visually and aurally highly similar.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the element ‘pharm’, included in both signs, will be associated with the meaning given above. Therefore, for the services for which this element is weak, the signs are conceptually similar to a low degree.

For the rest of the services, in relation to which the element ‘pharm’ is distinctive, the signs are conceptually highly 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 as a whole has no meaning for any of the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a weak element in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

In the present case the services are partly identical and partly similar. The signs are visually and aurally highly similar and conceptually similar to a low degree or highly similar depending on the distinctiveness of the element ‘pharm’. The relevant public’s degree of attention will vary between average and high, and the earlier mark has a normal degree of distinctive character.

Account must also be 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).

This is particularly relevant in the present case, in which the signs are similar on account of the letter sequence ‘pharme*’ at the beginning of the signs, differing mainly only in one vowel at the end of the signs.

Therefore, even for those services for which ‘pharm’ is weak, the visual and aural commonalities are so overwhelming that a likelihood of confusion cannot be ruled out.

Considering all the above, 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 German trade mark registrations No 30 569 508 and No 30 2015 033 915. It follows that the contested trade mark must be rejected for all the contested services.

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

Frédérique SULPICE

Jorge ZARAGOZA GOMEZ

Anna BAKALARZ

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.