OPPOSITION No B 3 048 328

Sanofi, Société Anonyme, 54 rue La Boétie, 75008 Paris, France (opponent), represented by Casalonga Alicante, S.L., Avenida Maisonnave, 41-6C,
03003 Alicante, Spain (professional representative)

a g a i n s t

Propagroup S.P.A., Via Genova, 5/B, 10098 Rivoli, Torino, Italy (applicant), represented by Caramelli Lazzarotto Associati S.R.L., Corso Re Umberto 10,
10121 Torino, Italy (professional representative).

On 24/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 048 328 is partly upheld for the following contested goods in Class 5, namely sanitary preparations for medical purposes; disinfectants; bandages for antiseptic dressings; adhesive plasters; surgical glues; aseptic cotton; chemical preparations for pharmaceutical purposes; antibacterial handwashes; surgical dressings; antibacterial preparations in the form of film; disinfectant preparations in the form of film.

2. European Union trade mark application No 17 413 121 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 413 121 (figurative mark: ‘ ’), namely against all the goods in Class 5 (see restriction of the opposition in the opponent´s letter of 26/07/2018). The opposition is based on Swedish trade mark registration No 300 775 (word mark: ‘PROPAVAN’). 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.

a) The goods

The goods in Class 5 on which the opposition is based are the following:

Pharmaceutical preparations, namely analgesics that are used before anaesthesia.

The contested goods in Class 5 are the following (after two limitations of the applicant in its letters of 15/05/2018 and 24/11/2018):

Sanitary preparations for medical purposes; disinfectants; preparations for destroying vermin; fungicides, herbicides; bandages for antiseptic dressings; capsules for medicines; adhesive plasters; surgical glues; cachets for pharmaceutical purposes; aseptic cotton; air deodorising preparations; chemical preparations for pharmaceutical purposes; antibacterial handwashes; surgical dressings; antibacterial preparations in the form of film; disinfectant preparations in the form of film.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

The relevant factors relating to the comparison of the goods include, inter alia, the nature and purpose of the goods, 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 sanitary preparations for medical purposes; chemical preparations for pharmaceutical purposes are at least highly similar to the opponent’s goods as they have the same purpose. They usually coincide in producer, relevant public and distribution channels.

The contested disinfectants; disinfectant preparations in the form of film; antibacterial preparations in the form of film; antibacterial handwashes are similar to the opponent’s goods as they coincide in producer, relevant public and distribution channels.

The contested adhesive plasters; bandages for antiseptic dressings; surgical glues; aseptic cotton; surgical dressings are similar to a low degree to the goods of the earlier trade mark as they have the same purpose in medical terms. They usually coincide in relevant public and distribution channels.

The remaining contested preparations for destroying vermin; fungicides, herbicides; capsules for medicines; cachets for pharmaceutical purposes; air deodorising preparations have different natures and purposes from the opponent’s very specific goods in the area of pharmaceutical preparations. Furthermore, these contested goods are neither complementary nor in competition with the opponent’s goods. Their nature and producer are also different. Consumers would not think that these goods come from the same undertaking or economically linked undertakings. Therefore, they are dissimilar.

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 similar to varying degrees are directed at the public at large and at business customers from the medical field with specific professional knowledge or expertise.

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.

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

c) The signs

PROPAVAN
Earlier trade mark	Contested sign

The relevant territory is Sweden.

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 earlier word mark is protected in all different typefaces. The contested sign is a figurative mark. However, the figurative elements are limited to a special (different) typeface of the verbal elements ‘propa’ and ‘san’. Since the combination of the different typefaces, taken as a whole, is not basic, the figurative stylisation is distinctive but the consumer is still able to read the letters.

Both signs have no meaning for the relevant public and are, therefore, distinctive. As for the ending ‘san’ in the contested sign, at least part of the public will identify the concept of something ‘sanitary’. In this respect, the sign is not distinctive for the goods.

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 differ in the abovementioned stylisations of the contested sign. However, the earlier trade mark and the contested sign differ further only in their sixth letters, ‘V’ v ‘S’, the rest of the signs coincide. Therefore, the signs are visually similar to an above-average degree.

Aurally, the only difference between the signs lies in their sixth letters ‘V’ v ‘S’, which leads to a high degree of aural similarity.

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. The element ‘san’ of the contested sign cannot influence the outcome in a relevant manner being non-distinctive. For the other part of the public it is also meaningless.

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

A likelihood of confusion on the part of the public must be assessed globally. That global assessment implies some interdependence between the factors taken into account and in particular a similarity between the marks and between the goods or services covered. Accordingly, a lesser degree of similarity between these goods or 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; and 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19). The more distinctive the earlier mark, the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

For the purpose of the global appreciation, the average consumer of the category of goods or services concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. The consumer’s degree of attention is likely to vary according to the category of goods or services in question, and 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; and 30/06/2004, T‑186/02, Dieselit, EU:C:2011:238, § 38).

The contested goods are partly similar to varying degrees and partly dissimilar.

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since some of the goods are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected in regard to those goods.

Taking into account the above average degree of visual similarity, the high degree of aural similarity, the neutral outcome of the conceptual similarity, the average degree of distinctiveness of the earlier trade mark and the similarity between the goods, there is even for the public with a high degree of attention a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and, therefore, the opposition is upheld. This also applies for the goods, which are only similar to a low degree, because of the relevant visual and aural coincidences between the signs.

Considering all the above, there is a likelihood of confusion on the part of the general public. Given that a likelihood of confusion for only part of the relevant public of the Sweden is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

The applicant has not submitted any — with the exception of the abovementioned two limitations — observations. Therefore, its arguments cannot be examined.

Therefore, the opposition is partly well founded under Article 8(1)(b) EUTMR.

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

Swetlana BRAUN

Peter QUAY

Gonzalo BILBAO TEJADA

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.