OPPOSITION No B 3 020 487

Swiss Pharma International AG, Waldmannstrasse 8, 8001, Zürich, Switzerland (opponent), represented by Kondrat & Partners, Al. Niepodległości 223/1, 02-087, Warszawa, Poland (professional representative)

a g a i n s t

Guangdong Handsome Biological Technology Co. Ltd, Number 6, Keji 9th Road, Songshan Lake Sci&Tech Park, 503808 Dongguan, Guangdong, People’s Republic of China (applicant), represented by Teodoru I.P. SRL, 12 Nerva Traian Street, Building M37, 1st Entrance, 1st Floor, Suite 1, District 3, 031176 Bucharest, Romania (professional representative).

On 31/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 020 487 is upheld for all the contested goods, namely:

Class 5: Medicines for human purposes; nutraceutical preparations for therapeutic or medical purposes; vaccines; drugs for medical purposes; biological preparations for medical purposes; chemicals for pharmaceutical use; enzyme preparations for medical purposes; stem cells for medical purposes; medicated skin care preparations; acne treatment preparations; disinfectants for sanitary use; disinfectants; nutritional supplements made of starch adapted for medical use; dietary supplements for medical use; dietary supplements for humans; medical dressings; dietary and nutritionally fortified food products adapted for medical purposes.

2. European Union trade mark application No 17 129 801 is rejected for all the contested goods. It may proceed for the remaining, non-contested goods.

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

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 129 801, for the word mark ‘VINING’, namely against all the goods in Class 5. The opposition is based on Polish trade mark registration No 229 142, for the word mark ‘VIBIN’. 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.

The contested goods are the following:

Class 5: Medicines for human purposes; nutraceutical preparations for therapeutic or medical purposes; vaccines; drugs for medical purposes; biological preparations for medical purposes; chemicals for pharmaceutical use; enzyme preparations for medical purposes; stem cells for medical purposes; medicated skin care preparations; acne treatment preparations; disinfectants for sanitary use; disinfectants; nutritional supplements made of starch adapted for medical use; dietary supplements for medical use; dietary supplements for humans; medical dressings; dietary and nutritionally fortified food products adapted for medical purposes.

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 medicines for human purposes; vaccines; drugs for medical purposes; biological preparations for medical purposes; chemicals for pharmaceutical use; enzyme preparations for medical purposes; stem cells for medical purposes; medicated skin care preparations are all substances used for therapeutic or medical purposes. As such, they are included in, or overlap with, the broad category of the opponent’s pharmaceutical preparations. Therefore, they are identical.

The contested acne treatment preparations overlap with the opponent’s pharmaceutical preparations, as all these products can be pharmaceutical preparations for treating acne. Therefore, they are identical.

The contested disinfectants for sanitary use; disinfectants; medical dressings are similar to the opponent’s pharmaceutical preparations because they have the same health-related purpose. Furthermore, they have the same distribution channels and end users. Their producers can also be the same.

The contested nutraceutical preparations for therapeutic or medical purposes; nutritional supplements made of starch adapted for medical use; dietary supplements for medical use; dietary supplements for humans; dietary and nutritionally fortified food products adapted for medical purposes are all substances prepared for special dietary requirements with the purpose of treating or preventing disease. Bearing this in mind, their purpose is similar to that of pharmaceutical products (substances used in the treatment of diseases), as they are all used to improve a patient’s health. The relevant public is the same and the goods generally have the same distribution channels. Therefore, these goods are considered similar.

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 business customers with specific professional knowledge or expertise, such as doctors and pharmacists. Some of the goods at issue may be sold on prescription and some over the counter without a prescription. According to case-law, the general public cannot be excluded from the relevant public, including for pharmaceuticals that require a doctor’s prescription prior to their sale to end users in pharmacies. Therefore, the relevant public comprises both the general public and health professionals, such as doctors and pharmacists. Consequently, even though the choice of those products is influenced or determined by intermediaries, a likelihood of confusion can also exist for the general public, since they are likely to be faced with those products, even if that takes place during separate purchasing transactions for each of those individual products at various times (09/02/2011, T‑222/09, Alpharen, EU:T:2011:36, § 42-45; 26/04/2007, C‑412/05 P, Travatan, EU:C:2007:252, § 56-63).

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.

These considerations also apply to dietary products, disinfectants and medical dressing products in Class 5, which also have an impact on human health (see, by analogy, 10/02/2015, T‑368/13, ANGIPAX, EU:T:2015:81, § 46).

Given that the general public is more prone to confusion, the examination will proceed on this basis.

3. The signs

VIBIN	VINING
Earlier trade mark	Contested sign

The relevant territory is Poland.

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 signs under comparison are word marks. The words ‘VIBIN’ and ‘VINING’, composing the earlier mark and the contested sign, respectively, are meaningless for the relevant public and, therefore, they have an average degree of inherent distinctiveness.

Visually, the marks are similar to the extent that four out of five letters of the earlier mark, ‘VI*IN’, are reproduced in the same order in the contested sign.

The fact that the signs coincide in their first two letters, ‘VI’, is particularly relevant, since 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.

However, the signs differ in their third letters, which are ‘B’ (in the earlier mark) and ‘N’ (in the contested sign), placed in the middle of the signs, where they are more likely to be overlooked, and in the last letter, ‘G’, of the contested sign, which has no counterpart in the earlier mark.

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

Aurally, the marks are similar in that both signs are composed of two syllables (‘VI-BIN’ and VI-NING), and their pronunciation coincides in the sound of four out of five letters of the earlier mark, ‘VI*IN’, which are reproduced in the same order in the contested sign.

This commonality results in the signs having similar intonations and rhythms, in particular because they have an identical vowel pattern.

However, the signs differ in the sounds of their third letters, ‘B’ (in the earlier mark) and ‘N’ (in the contested sign), and in the last letter, ‘G’, of the contested sign, which has no counterpart in the earlier mark.

Therefore, the signs are aurally similar at least to an average degree.

Conceptually, neither of the signs has a meaning for the relevant public. 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 relevant public. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

According to settled case-law, the likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C‑39/97, Canon, EU:C:1998:442, §16).

Furthermore, 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).

In the present case, the goods are identical or similar. The degree of attention is higher than average.

The earlier mark has an average degree of inherent distinctiveness.

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).

The signs are visually similar to an average degree and aurally similar at least to an average degree.

Concerning the marketing of the goods in question, pharmaceutical preparations, disinfectants and medical dressing products are generally ordered orally at the counter of a pharmacy, while dietetic substances are sometimes placed in self-service displays in pharmacies or other health stores. Although the goods in question may be directly visible and accessible to clients, the consumer is, in most instances, advised and guided by a professional, who will refer orally to the names of the various products. Therefore, for the goods in question, the aural aspect plays a significant role in the global assessment of the likelihood of confusion.

Moreover, the differences between the signs, namely in their third letters and in the last letter of the contested sign, would not allow consumers to safely distinguish between the earlier mark and the contested sign, even when the degree of attention is higher than average.

Considering all the above, the Opposition Division considers that the signs create similar overall impressions and that there is a likelihood of confusion on the part of the general public, even with a high degree of attention. Therefore, the opposition is well founded on the basis of the opponent’s Polish trade mark registration No 229 142.

Given that a likelihood of confusion for only part of the relevant public in the relevant territory is sufficient to reject the contested application, there is no need to analyse the remaining part of the public (professionals in the medical/pharmaceuticals sector, such as doctors or pharmacists).

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

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

Gueorgui IVANOV

Rosario GURRIERI

Jakub MROZOWSKI

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.