OPPOSITION No B 3 048 337

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

SC Mediplus Exim SRL, Str. Ciobanului nr. 133, Mogosoaia Jud. Ilfov, Mogosoaia, Romania (applicant), represented by Alexander Popa, Str. Bibescu Voda nr. 2, Bl. P5, sc. 2, ap. 25, 040152 Bucharest, Romania (professional representative).

On 21/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 048 337 is upheld for all the contested goods, namely

Class 5: Pharmaceuticals; homeopathic pharmaceuticals; antibacterial pharmaceuticals; antidiabetic pharmaceuticals; ocular pharmaceuticals; cardiovascular pharmaceuticals; injectable pharmaceuticals; bandages (hygienic -); hygienic bandages; hygienic lubricants; hygienic preparations and articles; dietetic substances adapted for medical use; food for infants; dietetic foods adapted for infants; powdered milk foods for infants; transdermal patches; vitamin supplement patches; adhesive patches for medical purposes; eye patches for medical purposes; transdermal patches for medical treatment; all the above mentioned goods not for veterinary use.

2. European Union trade mark application No 17 445 404 is rejected for all the contested goods. It may proceed for the remaining 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 17 445 404 , namely against all the goods in Class 5. The opposition is based on Polish trade mark registration No 210 125 ESPIRO (word mark). 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 on which the opposition is based are the following:

Class 5: Pharmaceutical preparations.

The contested goods are the following:

Class 5: Pharmaceuticals; homeopathic pharmaceuticals; antibacterial pharmaceuticals; antidiabetic pharmaceuticals; ocular pharmaceuticals; cardiovascular pharmaceuticals; injectable pharmaceuticals; bandages (hygienic -); hygienic bandages; hygienic lubricants; hygienic preparations and articles; dietetic substances adapted for medical use; food for infants; dietetic foods adapted for infants; powdered milk foods for infants; transdermal patches; vitamin supplement patches; adhesive patches for medical purposes; eye patches for medical purposes; transdermal patches for medical treatment; all the above mentioned goods not for veterinary use.

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 pharmaceuticals; homeopathic pharmaceuticals; antibacterial pharmaceuticals; antidiabetic pharmaceuticals; ocular pharmaceuticals; cardiovascular pharmaceuticals; injectable pharmaceuticals; all the above mentioned goods not for veterinary use are included in the broad category of the opponent’s pharmaceutical preparations. Therefore, they are identical.

The contested bandages (hygienic -); hygienic bandages; hygienic lubricants; hygienic preparations and articles; dietetic substances adapted for medical use; dietetic foods adapted for infants; transdermal patches; vitamin supplement patches; adhesive patches for medical purposes; eye patches for medical purposes; transdermal patches for medical treatment; all the above mentioned goods not for veterinary use are similar to the opponent’s pharmaceutical preparations. They can have the same purpose, namely to increase the general health and well-being of the human body. Moreover, they can target the same public and can have the same points of sale.

The contested food for infants and powdered milk food for infants; all the above mentioned goods not for veterinary use have the same purpose and are sold at the same points of sale as the opponent’s pharmaceutical preparations. They are considered similar to a low degree.

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 and similar to various degrees are directed at the public at large and at professionals with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

It is apparent from the case-law that, insofar as pharmaceutical preparations are concerned, whether or not they are 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 high degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health.

Moreover, with regard to babies’ food, attention will tend to be higher than average given that the kind of products chosen could affect the health of the baby and therefore consumers will think carefully when choosing or prescribing such goods.

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

c) The signs

ESPIRO
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 figurative elements in the contested sign, namely the element on the left-hand side of the verbal element and the frame around the sign, seem to represent capsules. Since they can be associated with the goods in question, they are of low distinctive character.

The word ‘respiro’ is meaningless and therefore not related to the relevant goods; it therefore enjoys a normal degree of distinctiveness. The word element is clearly the most dominant and eye-catching element of the contested sign.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37). Therefore, the figurative elements of the contested sign are of reduced impact.

The earlier mark consists of the sole verbal element ‘ESPIRO’, which has no meaning and no relation to the relevant goods and therefore is of normal distinctive character.

Visually, the marks coincide in the sequence of letters ‘e-s-p-i-r-o’, which constitutes the entire earlier right and is also contained in the contested sign. The signs differ in the first letter ‘R’ and in the figurative elements of the contested sign, the latter being of reduced impact for the reasons explained above. They also differ in the colours and typeface used. The signs are therefore visually similar to an average degree.

Aurally, the signs coincide in the sound of the letters ‘espiro’, present identically in both signs. The pronunciation differs in the sound of the first letter of the contested sign which has no counterpart in the earlier mark. Therefore, the signs are aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The only concepts conveyed by the signs are those found in the figurative elements of the contested sign, which will convey to the public the concepts of the shapes they represent (a pill or capsule with medicine). Therefore, the signs are conceptually not similar. However, as the elements creating the concepts are of low distinctiveness and have a secondary role, the impact of these conceptual differences is limited.

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

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The goods under comparison are partly identical and partly similar to various degrees. As explained in section b) of this decision, the likelihood of confusion will be assessed against the perception of the general public, which is more prone to confusion. The degree of attention may vary from average to high.

The signs are visually similar to an average degree, aurally highly similar and conceptually not similar. The earlier mark has a normal degree of distinctiveness for the relevant public.

The commonalities between the marks lie in the word ‘espiro’, which constitutes the entire earlier mark and almost the entire verbal element in the contested sign (with the exception of one letter).

The differences are found in the figurative elements of the contested sign, which are considered to have a reduced impact for the reasons mentioned above, and in the first letter of that same mark.

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).

Taking into account the abovementioned principles, the differences are not sufficient to counteract the similarities and to exclude the possibility that consumers might confuse the signs. Therefore, there is a likelihood of confusion between the signs for the relevant goods.

Considering all the above, the Opposition Division finds that 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 is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Polish trade mark registration No 210 125. It follows that the contested trade mark must be rejected for all the contested goods.

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

María del Carmen SUCH SÁNCHEZ

Sylvie ALBRECHT

Vita VORONECKAITE

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.