OPPOSITION No B 3 018 622

Bluestar Silicones France SAS, 21, avenue Georges Pompidou, 69003 Lyon, France (opponent), represented by Cabinet Plasseraud, Immeuble le Rhône Alpes, 235, Bis cours Lafayette, 69006 Lyon, France (professional representative)

a g a i n s t

Shenzhen Sibiono GeneTech Co. Ltd., 19 Science & Tech Middle 1st Road, Nanshan District, Shenzhen (Guangdong) 310052, People’s Republic of China (applicant), represented by Arpe Patentes y Marcas S.L., C/Proción, 7, Edificio América II, Portal 2, 1ºC, 28023 Madrid-Aravaca, Spain (professional representative).

On 28/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 018 622 is partially upheld, namely for the following contested goods:

Class 1: Cryogenic preparations; biochemical catalysts; chemical preparations for scientific purposes, other than for medical or veterinary use; chemical reagents, other than for medical or veterinary purposes; preparations of microorganisms, other than for medical and veterinary use; test paper, chemical; biological preparations, other than for medical or veterinary purposes; bacteriological preparations, other than for medical and veterinary use; bacterial preparations, other than for medical and veterinary use; chemical substances for analyses in laboratories, other than for medical or veterinary purposes.

Class 5: Medicines for human purposes; vaccines; biological preparations for medical purposes; bacterial poisons; drugs for medical purposes; pharmaceutical preparations; diagnostic preparations for medical purposes; tonics [medicines]; preparations of microorganisms for medical or veterinary use.

Class 10: Medical apparatus and instruments; physical exercise apparatus for medical purposes; testing apparatus for medical purposes; surgical apparatus and instruments; dental apparatus and instruments; ultraviolet ray lamps for medical purposes; veterinary apparatus and instruments; diagnostic apparatus for medical purposes.

2. European Union trade mark application No 17 165 705 is rejected for all the above goods. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 165 705 for the figurative mark . The opposition is based on international trade mark registration No 480 994 designating the European Union for the figurative mark . The opponent invoked Article 8(1)(a) and (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.

a) The goods and services

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

Class 1: Chemical products for use in industry, science, photography, agriculture, horticulture and forestry; artificial and synthetic resins, unprocessed plastics (in powder, liquid or paste form); soil fertilizers (natural and artificial); fire extinguishing compositions; chemical preparations for tempering and soldering; chemical products used for preserving foodstuffs; tanning materials; adhesive substances for industrial use.

Class 5: Pharmaceutical, veterinary and sanitary products; dietetic products for children and sick persons; plasters, materials for dressings; material for dental fillings and dental impressions; disinfectants; preparations for destroying weeds and vermin.

The contested goods and services are the following:

Class 1: Cryogenic preparations; biochemical catalysts; chemical preparations for scientific purposes, other than for medical or veterinary use; chemical reagents, other than for medical or veterinary purposes; preparations of microorganisms, other than for medical and veterinary use; test paper, chemical; biological preparations, other than for medical or veterinary purposes; bacteriological preparations, other than for medical and veterinary use; bacterial preparations, other than for medical and veterinary use; chemical substances for analyses in laboratories, other than for medical or veterinary purposes.

Class 5: Medicines for human purposes; vaccines; biological preparations for medical purposes; bacterial poisons; drugs for medical purposes; capsules for medicines; pharmaceutical preparations; diagnostic preparations for medical purposes; tonics [medicines]; preparations of microorganisms for medical or veterinary use.

Class 10: Medical apparatus and instruments; physical exercise apparatus for medical purposes; testing apparatus for medical purposes; surgical apparatus and instruments; dental apparatus and instruments; ultraviolet ray lamps for medical purposes; veterinary apparatus and instruments; diagnostic apparatus for medical purposes.

Class 35: Advertising; demonstration of goods; publicity; business management assistance; marketing; organization of exhibitions for commercial or advertising purposes; commercial administration of the licensing of the goods and services of others; import-export agency services; Provision of an on-line marketplace for buyers and sellers of goods and services; sponsorship search.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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 goods in Class 1

The contested cryogenic preparations; biochemical catalysts; chemical preparations for scientific purposes, other than for medical or veterinary use; chemical reagents, other than for medical or veterinary purposes; preparations of microorganisms, other than for medical and veterinary use; test paper, chemical; biological preparations, other than for medical or veterinary purposes; bacteriological preparations, other than for medical and veterinary use; bacterial preparations, other than for medical and veterinary use; chemical substances for analyses in laboratories, other than for medical or veterinary purposes are included in the broad category of, or overlap with, the opponent’s chemical products for use in industry and science. Therefore, they are identical.

Contested goods in Class 5

Pharmaceutical preparations are identically contained in both lists of goods (although worded differently).

The contested medicines for human purposes; vaccines; biological preparations for medical purposes; drugs for medical purposes; tonics [medicines]; preparations of microorganisms for medical or veterinary use are included in the broad categories of, or overlap with, the opponent’s pharmaceutical and veterinary products. Therefore, they are identical.

The contested bacterial poisons overlap with the opponent’s preparations for destroying vermin. Therefore, they are identical.

The contested diagnostic preparations for medical purposes are related to the opponent’s pharmaceutical preparations. These goods are chemical products used to improve health directly or indirectly and they are distributed through the same channels. Moreover, they also target the same public. Therefore, they are similar.

The contested capsules for medicines are designed to hold a certain dose of medicine. Although it could be claimed that the purpose of the goods, very broadly speaking, is medical, the specific purpose of each of these items differs. None of the opponent’s goods in Classes 1 and 5 has the same purpose as the capsules in question, namely to hold a certain dose of medicine (in the form of a powder or liquid) allowing it to be taken orally. However, the medicine (in Class 5) could be offered to consumers in the form of tablets. The producers, target public and distribution channels of these contested goods are also different from those of the opponent’s goods. Therefore, these goods are dissimilar.

Contested goods in Class 10

The contested medical apparatus and instruments; veterinary apparatus and instruments; surgical apparatus and instruments, which may include goods related to dentistry, and the contested dental apparatus and instruments are highly related to the opponent’s material for dental fillings and dental impressions in Class 5, as they may be complementary and serve the same purpose and can have the same producers, distribution channels and relevant consumers. Therefore, they are highly similar.

The contested testing apparatus for medical purposes; ultraviolet ray lamps for medical purposes; diagnostic apparatus for medical purposes are related to the opponent’s pharmaceutical and veterinary products in Class 5, since they may serve the same purpose and be in competition. Moreover, these goods may have the same distribution channels and relevant consumers. Therefore, they are similar.

The contested physical exercise apparatus for medical purposes is linked to the opponent’s pharmaceutical and veterinary products in Class 5, since they may have the same purpose, distribution channels and relevant public. Therefore, they are similar to a low degree.

Contested services in Class 35

The contested advertising; demonstration of goods; publicity; business management assistance; marketing; organization of exhibitions for commercial or advertising purposes; commercial administration of the licensing of the goods and services of others; import-export agency services; provision of an on-line marketplace for buyers and sellers of goods and services; sponsorship search are essentially types of advertising, business management and commercial trading services.

Advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, websites, videos, the internet, etc.

Business management services are usually rendered by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. The services include activities such as business research and assessments, cost and price analyses, organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a business, such as advice on how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, market products, research consumer trends, launch new products, create a corporate identity, etc.

Commercial trading is, in its broadest sense, operating a business for profit, although it usually refers to those activities involving buying and selling as opposed to industry. It also includes import-export agency services, which relate to the movement of goods and normally require the involvement of customs authorities in both the country of import and the country of export.

The Opposition Division considers that there is no connection between the contested services and the opponent’s goods. They are fundamentally different in nature and purpose and are neither complementary to nor in competition with each other. Moreover, they are provided by different undertakings and through different distribution channels. The fact that some goods may appear in advertisements, for instance, is insufficient for finding similarity. Consequently, the contested services are dissimilar to all the opponent’s goods and services in Classes 1 and 5.

b) 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 to various degrees are mostly specialised goods targeting medical staff and scientists with specific professional knowledge or expertise in the medical or scientific field. However, some of the goods also target the public at large (e.g. pharmaceutical products).

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase, their price and the consequences that they can have for the consumer, for instance in relation to the consumer’s health.

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 and cited case-law). 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, considering this, the degree of attention in this case is rather high, as the relevant goods in Classes 5 and 10 concern human or animal health. As far as the goods in Class 1 are concerned, it may be assumed that chemicals also attract a higher than average degree of attention, particularly in the context of complying with safety requirements in industry and science.

c) The signs

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).

Both signs are figurative marks composed of a single verbal element: ‘SILBIONE’ (the earlier mark) and ‘Sibiono’ (the contested sign). Their graphic depictions are so standard that they lack distinctiveness.

Contrary to the applicant’s assertions, it is unlikely that the relevant public will mentally single out the prefix ‘bio’ in the signs. Mental dissection of a sign is likely to occur only when, on perceiving a word sign, consumers break it down into elements that, for them, suggest a specific meaning or that resemble words known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57). However, the rule is that marks are perceived as a whole, and exceptions to the rule has to be applied restrictively. In the present case, the element ‘bio’ in both signs is embedded in the middle of the words, and the remaining elements do not suggest any specific meaning. Therefore, the signs, ‘SILBIONE’ and ‘Sibiono’, will be mentally registered as a whole. Since these words are perceived as meaningless, their distinctiveness is average.

Visually and aurally, the signs coincide in the sequence of letters ‘SI(*)BION*’. However, they differ in the third letter, ‘L’, of the earlier mark (which has no counterpart in the contested sign) and in their last letters (‘E’ versus ‘O’). Visually, the signs differ in their graphic depictions, which impact is very limited. Aurally, the signs also coincide in the number of syllables, namely three or four (i.e. SIL-BIO-NE’ or ‘SIL-BI-O-NE’ versus ‘Si-bio-no’ or ‘Si-bi-o-no’).

Given the above, and taking into account that the small differences are in the middles and at the ends of the signs, and therefore more likely to go unnoticed, the signs are visually and aurally similar to at least 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.

d) 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.

e) 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 goods and services are partly identical, partly similar (to different degrees) and partly dissimilar. They target the public at large, as well as business customers with specific professional knowledge or expertise, and the degree of attention is high for most of the conflicting goods, for the reasons indicated above. The degree of distinctiveness of the earlier mark is average.

The signs are visually and aurally similar to at least an average degree, as they coincide in the string of letters ‘SI(*)BION*’, that is, six out of eight letters. The differences, which are in positions where they might go easily unnoticed (i.e. in the middles and at the ends of the signs) are not enough to offset the overwhelming commonalities between the signs. The conceptual aspect does not influence the assessment of the similarity of the signs.

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).

In the light of the above, and considering the consumer’s imperfect recollection of signs and the principle of interdependence, the Opposition Division considers that the differences between the signs may easily be overlooked, and are not sufficient to outweigh the similarities between them or to exclude any likelihood of confusion.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s international trade mark registration No 480 994 designating the European Union.

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

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these services cannot be successful.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining services because the signs and the services are obviously not identical.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Andrea VALISA

Birgit FILTENBORG

Riccardo RAPONI

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.