OPPOSITION No B 3 006 221

Biofarma, 50 rue Carnot, 92284 Suresnes cedex, France (opponent), represented by Cabinet Germain & Maureau, 31-33 Rue de la Baume, 75008 Paris, France (professional representative)

a g a i n s t

Adventia Pharma S.L.U., C/ San Bernardo, Nº22 1º., 35010 Las Palmas de Gran Canaria, Spain (applicant), represented by Abelman Consultants, Calle Viera y Clavijo, 22 1ºExt., 35002 Las Palmas de Gran Canarias, Spain (professional representative).

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

DECISION:

1. Opposition No B 3 006 221 is upheld for all the contested goods.

2. European Union trade mark application No 17 083 321 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 083 321 (figurative mark). The opposition is based on, inter alia, international trade mark registration No 1 154 246 designating the European Union ‘BIPRESSIL’ (word 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s international trade mark registration No 1 154 246 designating the European Union.

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 food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; plasters, materials for dressings; material for stopping teeth; disinfectants; pesticides; fungicides, herbicides.

The contested goods are the following:

Class 5: Dietary supplements and dietetic preparations; sanitary preparations and articles; enema preparations; enzymes for medical purposes; intravenous fluids used for rehydration, nutrition and the delivery of pharmaceutical preparations; isotopes for medical purposes; biochemical preparations for medical use; biological preparations for medical purposes; chemical preparations for medical purposes; medicinal healthcare preparations; diagnostic radiopharmaceutical preparations; amino acid preparations for medical purposes; rehydration preparations; vaccines for human use.

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.

The contested dietary supplements and dietetic preparations include, as a broader category, the opponent’s dietary supplements for humans and animals. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested medicinal healthcare preparations are included in the broad category of, or overlap with, the opponent’s pharmaceutical and veterinary preparations. Therefore, they are identical.

The contested sanitary preparations and articles include, as a broader category, the opponent’s sanitary preparations for medical purposes. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested enema preparations are laxative preparations used in connection with a medical condition of constipation to stimulate the evacuation of faeces from the body. The contested vaccines for human use are biological preparations that provide active acquired immunity to a particular disease. As such, these goods are included in, or overlap with, the opponent’s broad category of pharmaceutical and veterinary preparations. Therefore, they are identical.

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The contested enzymes for medical purposes are macromolecular biological catalysts. Enzymes accelerate chemical reactions. Almost all metabolic processes in the cell need enzymes in order to occur at rates fast enough to sustain life. Some enzymes are used commercially, for example, in the synthesis of antibiotics. These goods are included in, or overlap with, the broad category of the opponent’s pharmaceutical and veterinary preparations. Therefore, they are identical.

The contested isotopes for medical purposes; biochemical preparations for medical use; biological preparations for medical purposes; chemical preparations for medical purposes; diagnostic radiopharmaceutical preparations; amino acid preparations for medical purposes are various medical preparations and articles and as such included in, or overlapping with, the broad category of the opponent’s pharmaceutical and veterinary preparations. Therefore, they are considered identical.

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The contested intravenous fluids used for rehydration, nutrition and the delivery of pharmaceutical preparations; rehydration preparations are at least similar to the opponent’s pharmaceutical and veterinary preparations. They have the same nature, purpose and methods of use, being both medical, to hydrate and give nutrition. Furthermore, they can have the same producers, distribution channels and end users.

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 or similar are directed at the public at large and at professionals with specific professional knowledge or expertise.

The degree of attention varies from average (for example for some sanitary articles) to high. 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

BIPRESSIL
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The element ‘prep’ is not meaningful in some languages, for example in Hungarian. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Hungarian-speaking part of the public.

The earlier mark is a word mark, consisting of the verbal element ‘BIPRESSIL’. In the case of word marks, it is the word as such that is protected, and not its written form. Therefore, the use of upper or lower case is irrelevant. It has no meaning for the relevant public and is, therefore, distinctive.

The contested sign is figurative, consisting of the verbal element ‘Biprep’ in slightly stylised, black title case letters, where the first letters ‘Bi’ are in rather standard font and the verbal element ‘prep’ a bit more stylised. The elements ‘Bi’ or ‘prep’ on their own have no meaning in the relevant language; therefore the verbal element will be perceived as a whole and not split by the public. It has no meaning for the relevant public and is, therefore, distinctive. The stylisation of the contested sign is of a purely decorative nature, therefore it is secondary in the mark.

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.

Visually, the signs coincide in the letters ‘BIPRE’, placed in the beginning of both signs. These letters forms the major part of the contested sign. However, the marks differ in their endings, ‘SSIL’ of the earlier mark and the last letter ‘P’ of the contested sign, and in the slight stylisation of the contested sign.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛BIPRE’, present identically in both signs. The pronunciation differs in the sound of the last letters ‛SSIL’ of the earlier sign and the ending letter ‘P’ of the contested sign.

Therefore, the signs are aurally similar to an average 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 claims that the distinctiveness of its mark is just above average, but did not file any evidence in order to prove such a claim.

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

The goods are partly identical and partly similar and directed at the public and large and professionals, with a degree of attention ranging from average to high.

The signs are visually and aurally similar to an average degree. The conceptual aspect does not influence the assessment of the similarity of the signs. The distinctiveness of the earlier mark is normal.

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 similarities between the signs are found in inherently distinctive verbal elements in both signs. The coinciding letters ‘BIPRE’ are placed in the beginning of the signs, where consumers are likely to focus their attention, and constitute five out of six letters in the distinctive contested sign. In the absence of conceptual aspects that would help the consumer to differentiate the signs, the different endings, lengths and the slight stylisation of the contested sign does not preclude a likelihood of confusion or association between the marks. The relevant public could be mistaken regarding the origin of the goods that are identical or similar.

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).

Considering all the above, there is a likelihood of confusion on the part of the Hungarian-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration No 1 154 246 ‘BIPRESSIL’ designating the European Union. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier international trade mark registration No 1 154 246 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Elena NICOLÁS GÓMEZ

Lena FRANKENBERG GLANTZ

Judit NÉMETH

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.