OPPOSITION No B 3 043 232

Stada Arzneimittel AG, Stadastr. 2‑18, 61118 Bad Vilbel, Germany (opponent), represented by Harmsen Utescher, Neuer Wall 80, 20354 Hamburg, Germany (professional representative)

a g a i n s t

Farmasierra Laboratorios S.L., Carretera de Irún, km. 26,200, 28700 San Sebastian de los Reyes (Madrid), Spain (applicant), represented by Elzaburu S.L.P., Miguel Angel 21, 28010 Madrid, Spain (professional representative).

On 11/02/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 043 232 is upheld for all the contested goods.

2. European Union trade mark application No 17 382 821 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 17 382 821 for the word mark ‘IBUSTICK’. The opposition is based on, inter alia, European Union trade mark registration No 13 657 242 for the word mark ‘IBUGRIPP’. 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 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, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

a) The goods

The goods on which the opposition is based are, inter alia, the following:

Class 5: Pharmaceutical preparations.

The contested goods are the following:

Class 5: Pharmaceuticals.

Pharmaceuticals are identically included in both lists of goods (including synonyms).

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 in question.

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 for the goods in Class 5 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 encounter those products, even though they may purchase each of them separately and at various times (by analogy, 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). In the present case, the goods found to be identical are directed at the public at large and at a professional public with specific professional knowledge or expertise in the medical sector.

It is apparent from the case-law that, insofar as pharmaceutical preparations are concerned, whether or not issued on prescription, 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.

c) The signs

IBUGRIPP	IBUSTICK
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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The components of the earlier mark, ‘IBUGRIPP’, and the contested sign, ‘IBUSTICK’, are meaningful in certain territories, such as those countries where French is understood. This affects the perception of the signs by that public and influences the assessment of likelihood of confusion. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the public in the European Union.

The verbal elements constituting the signs are, taken as a whole, meaningless for the public in the relevant territory, since there are no identical or closely related words in French. However, although the signs each contain one verbal element, 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).The component ‘IBU’, which the signs have in common, will be separated by part of the relevant public, who will understand it as – bearing in mind that the relevant goods are pharmaceutical preparations – a reference to ‘ibuprofen’, a white powder or crystalline compound (C13H1802) with analgesic and anti-inflammatory properties, commonly given orally as a painkiller and non-steroidal anti-inflammatory agent.

It should be recalled that, as recognised by case-law, in the pharmaceutical sector it is common to use so-called evocative trade marks, that is to say, trade marks which evoke, in a more or less explicit manner, the therapeutic application or active principle of the pharmaceuticals (14/07/2011, T‑160/09, Oftal Cusi, EU:T:2011:379, § 80). Consequently, the signs’ component ‘IBU’ is considered to have a weak distinctive character for the relevant public because it suggests to consumers that the goods are ibuprofen-containing medicinal products. These considerations are applicable to only a part of the targeted public (i.e. doctors, pharmacists and a general public with a certain knowledge of pharmaceutical ingredients), while another part of the general public will probably not be aware of this meaning and will not dissect the signs’ verbal elements. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, the Opposition Division finds it appropriate to focus the examination on the substantial part of the general French-speaking part of the relevant public for which the coinciding component ‘IBU’ will be associated with ‘ibuprofen’. Therefore, the signs will be seen as combinations of the meaningful components ‘IBU’, ‘GRIPP’ and ‘STICK’, since all these components are known to this part of the public.

The contested sign’s component ‘STICK’ will be perceived by the French-speaking part of the public, as referring to the shape of some of the relevant goods in Class 5, being pharmaceuticals, which can be produced and sold in the form of sticks (information extracted from Dictionnaire Le Robert on 02/02/2021 at https://dictionnaire.lerobert.com/definition/stick). Therefore, this verbal element has a weak distinctive character for the relevant goods in Class 5.

The relevant public under examination will associate the earlier mark’s component ‘GRIPP’ with the word ‘grippe’, which means: ‘infectious, contagious disease characterized by fever, general depression and symptoms such as colds, bronchitis, etc.’ (information extracted from Dictionnaire Le Robert on 02/02/2021 at https://dictionnaire.lerobert.com/definition/grippe). Bearing in mind that the relevant goods are pharmaceutical preparations in Class 5, this verbal element has a weak distinctive character, since it suggests to the consumers that the purpose of these goods is to treat influenza.

The signs under comparison are word marks. The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics that the mark might possess (22/05/2008, T‑254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is generally irrelevant whether word marks are in upper- or lower-case letters. Neither of the signs in question departs from the usual way of writing since both the signs are entirely in upper-case letters, which is a fairly common way of depicting words. Furthermore, word marks have no elements that could be considered more dominant (eye-catching) than other elements.

The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words, small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs. In the present case, the signs are relatively long since they both have eight letters.

Visually and aurally, the signs are similar insofar as they have the same number of letters (eight) and they coincide in their beginnings, ‘IBU’, and the letter ‘I’ (and their sounds). However, they differ in the signs’ endings (and their sounds): ‘GR*PP’ in the earlier mark and ‘ST*CK’ in the contested sign.

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 more attention to the coinciding beginning of the signs, despite its weak distinctive character, than their differing endings, which are also weak. Furthermore, the signs have an identical vowel sequence (I-U-I) and a highly similar rhythm, as they both have three syllables of identical structure (‘I-BU-GRIPP’ versus ‘I-BU-STICK’). These are all features that contribute to the overall impression of the signs.

Taking into account the weight of each of the elements for the reasons described above (i.e. their position and degree of distinctive character), it is considered that the signs are visually and aurally similar to a lower-than-average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs will be associated with a similar meaning on account of the coinciding verbal element ‘IBU’ (albeit weak). The additional elements that differentiate the marks to a certain degree, ‘GRIPP’ in the earlier mark and ‘STICK’ in the contested sign, are likewise weak. Therefore, since both signs include the concept of ‘IBU’, they are conceptually similar to an average degree.

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 under examination in the relevant territory. Nonetheless, considering that it is composed of components with a weak distinctive character, its overall inherent distinctiveness must be seen as lower than average.

e) Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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 goods are identical. In cases where the goods are identical, the differences between the signs should be significant and relevant to a degree that allows consumers to safely distinguish the signs and to exclude the likelihood of confusion between them.

The earlier mark has a lower-than-average degree of inherent distinctiveness. The goods target the public at large and the professional public in the medical sector. The public’s degree of attentiveness may vary between higher than average and high. 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 and aurally similar to a lower-than-average degree and conceptually similar to an average degree. As correctly argued by the opponent, the main similarity between the signs results from the fact that they contain the identical, albeit weak, component ‘IBU’ at their beginnings. The differences between the signs are limited to their additional components – ‘GR*PP’ of the earlier mark and ‘ST*CK’ of the contested mark – which, as mentioned above, are also weak in relation to the relevant goods. The coincidence in the initial component of the signs (‘IBU’) has a greater impact on the public, as this is usually the part of the signs that first catches the consumers’ attention.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods. Therefore, a lesser degree of similarity between goods 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). In the present case, the identity between the goods compensates for a lowered level of visual and aural similarity between the signs.

Taking into account all the above, and especially the similarities between the signs and the identity between the goods, it is considered that there is a likelihood of confusion in the form of a likelihood of association. 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 covered are from the same or economically linked undertakings.

The relevant goods in Class 5 belong to a market sector in which it is common to create sub-brands, namely variations of the main brand that include additional verbal elements. Indeed, due to the use of the identical component ‘IBU’, which is located in a prominent position at the beginning of the signs, 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 that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

This finding is not called into question by the lower than average distinctiveness of the earlier mark. Indeed, according to established case-law, a finding of a lower-than-average degree of distinctiveness for the earlier mark does not prevent a conclusion that there is a likelihood of confusion. 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. Therefore, even in a case involving an earlier mark of lower than average distinctiveness and an trade mark applied for that is not a complete reproduction of it, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods covered (see, to this effect, 16/03/2005, T‑112/03, Flexi Air, EU:T:2005:102, § 61).

The applicant argues that there is no likelihood of confusion between the signs because they coincide only in the prefix ‘IBU’ (which has a weak distinctive character), while there are significant differences caused by the remaining parts of the signs. In support of this, it refers to previous decisions of the Office, namely ‘CYCLOFERON’ versus ‘CYCLICON’ (30/07/2002, B 532 764), ‘GASTROSTAD’ versus ‘GASTROGARD’ (15/07/2004, B 711 665) and ‘Arterioflow’/’Arteriofree’ versus ‘ARTERIONAT’ (26/10/2017, B 2 983 222). However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the Opposition Division’s view, the current case bears more resemblance to the case versus ‘IMMODEX’ (11/03/2019, R 1735/2018‑4, immonext (fig.) / immodex). In that case, the Board of Appeal found a likelihood of confusion between the signs and stated that even if the prefix ‘IMMO’ were understood, this would not automatically lead to the conclusion that the consumers would entirely neglect the initial component of the signs. The descriptive or weak(er) distinctive character of a mark’s element does not necessarily mean that that element cannot constitute a dominant element because it may make an impression on consumers and be remembered by them due, in particular, to its size or position within the sign (11/03/2019, R 1735/2018‑4, immonext (fig.) / immodex, § 35; 10/12/2014, T‑605/11, Biocert, EU:T:2014:1050, § 36; 11/02/2015, T‑395/12, Solid Floor, EU:T:2015:92, § 32). The fact that part of the relevant public will be more attentive does not mean that they will examine the mark before it in the slightest detail. Even for a public with a high level of attentiveness, the fact remains that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place their trust in the imperfect picture of them that they have kept in their mind (11/03/2019, R 1735/2018‑4, immonext (fig.) / immodex, § 36; 16/07/2014, T‑324/13, Femivia, EU:T:2014:672, § 48).

In the cases invoked by the applicant, the differences between the signs are significant. In particular, the coinciding prefix has a low distinctiveness (30/07/2002, B 532 764), is descriptive (15/07/2004, B 711 665) or very weak, and the earlier mark, taken as a whole, has a low degree of distinctiveness (26/10/2017, B 2 983 222). In the present case, all the signs’ components have a weak distinctive character, and the earlier mark, taken as a whole, is distinctive to a lower than average degree, which influences the likelihood of confusion.

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions.

In view of the above, it follows that, even if the previous decision submitted to the Opposition Division is to some extent factually similar to the present case, the outcome may not be the same.

Considering all the above, there is a likelihood of confusion on the general part of the French-speaking part of the relevant 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, there is no need to analyse the remaining parts of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 13 657 242 for the word mark ‘IBUGRIPP’. It follows that the contested trade mark must be rejected for all the contested goods.

As earlier European Union trade mark registration No 13 657 242, ‘IBUGRIPP’, leads to the success of the opposition and to the rejection of the contested sign 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, 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

Anna PĘKAŁA

Lars HELBERT

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.