OPPOSITION No B 3 040 840

Synergia, Le Poyet, 43 500, Beaune Sur Arzon, France (opponent), represented by Gerard Haas, 32 Rue La Boétie, 75008 Paris, France (professional representative)

a g a i n s t

Synergy Pharm s.r.o., Nam. Bedricha Hrozneho 183, 28922 Lysa nad Labem, Czech Republic (applicant).

On 18/12/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 040 840 is partially upheld, namely for the following contested goods:

Class 5: Dietary supplements and dietetic preparations; sanitary preparations; pharmaceuticals and natural remedies.

2. European Union trade mark application No 17 473 919 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 all the goods of European Union trade mark application No 17 473 919 . The opposition is based on European Union trade mark registration No 12 872 396 ‘SYNERGIA’. 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: Foodstuffs and dietetic substances for medical or veterinary purposes; dietary supplements for humans and animals; foodstuffs and nutraceutical preparations, namely capsules, powders, ampoules or syrups containing edible oils and fats and/or plant fibres and/or micronutrients including vitamins and/or minerals and/or amino acids and/or fatty acids; nutritional (or food) preparations and supplements containing proteins and/or carbohydrates and/or lipids and/or fibres and/or edible oils and fats and/or micronutrients including vitamins and/or minerals and/or amino acids and/or fatty acids, not for medical purposes.

The contested goods are the following:

Class 5: Dietary supplements and dietetic preparations; pest control preparations and articles; sanitary preparations and articles; pharmaceuticals and natural remedies.

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

The term ‘including’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, 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 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 dietary supplements and dietetic preparations include as a broader category the opponent’s dietary supplements for humans. Therefore, they are identical.

The contested pharmaceuticals and natural remedies are similar to the opponent’s dietetic substances for medical purposes. They have the same purpose. They usually have the same relevant public and distribution channels.

The contested sanitary preparations are similar to the opponent’s foodstuffs and dietetic substances for veterinary purposes, which form veterinary preparations. The goods have the same purpose. They usually have the same producers, relevant public and distribution channels.

The contested pest control preparations and articles; sanitary articles are dissimilar to the opponent’s goods, contrary to the opponent’s arguments. The goods have different natures, purposes and methods of use. They have different manufacturers and consumers. The goods are not complementary.

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 are directed at the public at large and at medical professionals 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). The same also applies to all the other goods, all of which are health related.

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

SYNERGIA
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 earlier mark is a word mark, ‘SYNERGIA’. In the case of word marks, the word as such is protected and not its written form. Therefore, it is immaterial whether the earlier mark is depicted in upper or lower case letters.

The contested sign is a figurative mark containing two word elements, ‘Synergy Pharm’, depicted in a standard black typeface. The verbal elements are preceded by a green logo composed of four letters ‘S’ linked to each other and are followed by a small registered trade mark symbol, ®. This ® symbol is an informative indication that the sign is purportedly registered and it is not part of the trade mark as such. Consequently, this symbol will not be taken into consideration for the purposes of comparison. The figurative element of four ‘S’-shaped lines linked to each other might be associated with a stylised depiction of the pharmaceutical cross due to the green colour and the layout of the four ‘S’-shaped lines, and it is considered to have a lower than average degree of distinctiveness.

The verbal element ‘Synergy’ of the contested sign will be understood in particular by the English-speaking public as ‘any interaction or cooperation which is mutually reinforcing; a dynamic, productive, or profitable affinity, association, or link’ (information extracted from Oxford English Dictionary on 23/11/2018 at http://www.oed.com/view/Entry/196482?redirectedFrom=synergy#eid). Bearing in mind that the word ‘synergy’ derives from the Latin ‘synergia’ and has identical or very similar equivalents in the other EU languages, for instance ‘synergie’ in French, German, Czech, Dutch and Romanian, ‘sinergia’ in Italian, Spanish and Portuguese, ‘synergia’ in Finnish, Slovak and Polish, ‘sinergija’ in Croatian, Lithuanian and Slovenian, ‘szinergia’ in Hungarian, ‘синергия’ (transliterated as ‘sinergija’) in Bulgarian and ‘sünergia’ in Estonian, this element will be understood throughout the relevant territory.

Therefore, despite some differences in the phonetic equivalents of this word in the different languages, it is reasonable to assume that both the word ‘SYNERGIA’ of the earlier mark and the word ‘Synergy’ of the contested sign will be perceived as conveying the same meaning, of ‘synergy’, throughout the relevant territory. As they do not describe or allude to any characteristics of the goods in question, the degree of distinctiveness of the words ‘SYNERGIA’ of the earlier mark and ‘Synergy’ of the contested sign is seen as normal.

The verbal element ‘Pharm’ in the contested sign will be perceived as an abbreviation for ‘pharmaceutical’ or ‘pharmacy’ by the public in the relevant territory because it is identical or similar to the prefixes ‘pharm’ or ‘farm’ of the equivalent words in different languages, and because these prefixes are commonly used throughout the European Union in trade names or company names of pharmaceutical companies to indicate their sector of activity. Consequently, this element will be understood as referring to ‘pharmaceutical’ or ‘pharmacy’ by the relevant public throughout the European Union (08/04/2013, R 1612/2011-4 and R 1833/2011-4, Pharma 3 (fig.) / Pharmadus (fig.), § 23; 23/04/2008, R 780/2007-2, PHARMION / PHARMATON, § 41). Bearing in mind that the relevant goods are dietary supplements, pharmaceuticals and natural remedies that can be sold in pharmacies, it is reasonable to assume that the relevant public will perceive the element ‘Pharm’ as descriptive of the nature of the goods in question and therefore as non-distinctive. Consequently, the element ‘Synergy’ is considered the most distinctive element of the contested sign.

The contested sign has no element that could be considered more dominant than other elements.

In addition, account must be taken of the fact that 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.

Furthermore, 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). In the present case, the figurative element preceding the verbal elements of the contested sign will have less impact on the overall perception of the mark than the verbal elements, and the stylisation of the contested sign serves only to embellish the verbal elements.

Visually, the signs coincide in the first six letters, ‘SYNERG’, of the only verbal element of the earlier mark and of the first verbal element of the contested sign. However, they differ in the last parts of these verbal elements, namely ‘IA’ in the earlier mark and ‘Y’ in the contested sign. In addition, the signs differ in the second verbal element ‘Pharm’, found to be non-distinctive, in the contested sign, as well as in the figurative element and colours of the contested sign.

Considering the weight attributed to the differing elements of the contested sign (as explained above) and the fact that the most distinctive element of the contested sign reproduces six letters out of eight of the only element of the earlier mark, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the string of letters ‛SYNERG’, present identically in the earlier mark and in the first verbal element of the contested sign. The pronunciation differs in the sound of the last letters of these verbal elements, namely ‛IA’ of the earlier mark and ‘Y’ of the contested sign. It cannot be excluded, however, that some parts of the public may pronounce the final syllables of the signs almost identically. The signs differ in the verbal element ‘Pharm’ of the contested sign, found to be non-distinctive, which has no counterpart in the earlier mark.

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The differing verbal element ‘Pharm’ is considered non-distinctive in relation to the goods and therefore will not have any impact on the conceptual comparison of the signs. As the distinctive verbal elements in both signs will be perceived as conveying the same concept referred to above, and the figurative element has less impact than the verbal elements of the contested sign, the signs are conceptually highly similar.

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 goods are partly identical, partly similar and partly dissimilar. The degree of attention is high, and the degree of distinctiveness of the earlier mark is normal.

Despite the differences in the ends of the words ‘SYNERGIA’ of the earlier mark and ‘Synergy’ of the contested sign and in the non-distinctive verbal element ‘Pharm’ and the figurative element (which are less distinctive) in the contested sign, the overall similarity between the signs in question is evident due to the commonalities at the beginnings of their distinctive verbal elements.

Account must also be 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) and 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).

Therefore, the differences in the final letters of the coinciding elements ‘SYNERGIA’/ ‘Synergy’ may even go unnoticed by the relevant consumers, as they will have much less impact than the initial, coinciding parts, ‘SYNERG’. In addition, consumers when encountering the marks will be likely to recognise the concept of ‘synergy’ conveyed by them both and therefore link the signs conceptually. Bearing in mind the abovementioned principle of imperfect recollection, it is highly conceivable that, when encountering the signs, the relevant consumers will make a connection between them or believe that they originate from the same undertaking or economically linked undertakings. Consequently, it cannot be safely excluded that the relevant consumers, even considering their high degree of attention, will confuse the marks or alternatively perceive the contested sign as a sub-brand or variation of the earlier mark (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

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 European Union trade mark registration.

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

The rest of the contested goods 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 goods cannot be successful.

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

Cristina CRESPO MOLTO

Erkki MUNTER

Rasa BARAKAUSKIENE

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.