OPPOSITION No B 3 036 640

Apogepha Arzneimittel GmbH, Kyffhäuserstr. 27, 01309, Dresden, Germany (opponent), represented by Kailuweit & Uhlemann Patentanwälte Partnerschaft mbB, Bamberger Str. 49, 01187 Dresden, Germany (professional representative)

a g a i n s t

Avia Pharma AB, Svärdvägen 3 B, 182 33 Danderyd, Sweden (applicant), represented by Advokatbyrån Gulliksson AB, Carlsgatan 3, 211 20 Malmö, Sweden (professional representative).

On 10/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 036 640 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 437 311, VAGITIN. The opposition is based on two earlier marks, German trade mark registrations No 20 007 00 and No 6 352 45 (both “Vagimid”, both registered for goods in Class 5). The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

Proof of use of the earlier marks was requested by the applicant. However, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T 296/02, Lindenhof, EU:T:2005:49, § 41, 72). The examination of the opposition will proceed as if genuine use of the earlier marks had been proven for all the goods invoked, which is the best light in which the opponent’s case can be considered.

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:

German trade mark registration No 20 007 00

Class 5: Pharmaceutical, veterinary and chemical products as well as preparations for health care; disinfectants; plasters; dressings; preparations for destroying noxious animals and herbicides.

German trade mark registration No 6 352 45

Class 5: Medicines; chemical products for medical and hygienic purposes; pharmaceutical drugs; disinfectants.

The contested goods are the following:

Class 5 Pharmaceuticals.

The contested pharmaceuticals include, as a broader category, or overlap with, the opponent´s pharmaceutical products/pharmaceutical drugs. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

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

The degree of attention is higher than average.

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

Vagimid	VAGITIN
Earlier trade mark	Contested sign

The relevant territory is Germany.

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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive or very weak elements.

Both signs are word marks. It should be noted that 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 which that mark might possess (22/05/2008, T 254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is irrelevant that the signs under comparison are depicted in lower or upper case letters.

The marks are both one word marks, which do not exist as such in the relevant territory.

It is however settled case-law that although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, he will break it down into elements which, for him, suggest a specific meaning or which resemble words known to him (judgment of 13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57)

To this extent, although the marks are composed of one verbal element, the relevant public is likely to perceive the first four letters as a direct reference to the word ‘vagina’ (Latin root word with the same meaning in English and German) but in truncated form. These letters will be seen as indicating the intended treatment area and are therefore very weak in the context of pharmaceuticals. The remaining three letters of the earlier mark have no meaning for the relevant public and are relatively distinctive. The remaining three letters of the contested mark have no meaning for the relevant public in relation to the goods. This element is, therefore, distinctive.

Visually, aurally and conceptually, the signs coincide in ‘vagi’ which, though placed at the beginning of the sign, is, contrary to the applicant’s submission, very weak in the context of the goods. They differ in ‘mid’ of the earlier mark which is distinctive and ‘tin’ of the contested sign which is also distinctive.

Therefore, the signs are similar to a low degree.

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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on its distinctiveness per se. In the present case, the earlier trade marks as a whole are meaningless. Therefore, the very weak beginning of the sign is not such that it materially affects its distinctiveness. As a consequence, the distinctiveness of the earlier marks must be seen as normal.

5. 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).

Although the goods are identical and the signs have a low degree of similarity from a visual, aural and conceptual perspective, there is no likelihood of confusion as both marks contain an additional distinctive element which serves to clearly differentiate them from each other. Consumers displaying a higher degree of attention are not likely to confuse two marks which share nothing more than a reference to the treatment area of those goods, and which is, therefore, of limited distinctiveness. In those circumstances, the differences are sufficient to exclude any likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR, it is unnecessary to examine the evidence of use filed by the opponent.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Riccardo RAPONI

Keeva DOHERTY

Edith Elisabeth VAN DEN EEDE

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.