OPPOSITION No B 3 049 231

NTD Labs, S.L., Ronda de Ponent, 247, 08225 Terrassa, Spain (opponent), represented by Ingenias, Av. Diagonal, 421, 2º, 08008 Barcelona, Spain (professional representative)

a g a i n s t

Bioleaders Corporation, 13, Techno 8-ro, Yuseong-gu, 34028 Daejeon, Republic of Korea (applicant), represented by Patentanwälte Geyer Fehners & Partner mbB, Perhamerstr. 31, 80687 München, Germany (professional representative).

On 05/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 049 231is upheld for all the contested goods.

2. European Union trade mark application No 17 567 124 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 17 567 124 for the word mark ‘Hupavac’, namely all the goods in Class 5. The opposition is based on Spanish trade mark registration No 3 599 399 for the figurative 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: Vitamin drinks; vitamin preparations in the nature of food supplements; food supplements, consisting of vitamins, amino acids, minerals and trace elements; protein dietary supplements; nutritional supplements; amino acids for medical purposes; dietary supplemental drinks; health food supplements made principally of minerals; nutritional supplements; mineral food supplements; dietary and nutritional supplements; dietary and nutritional supplements; health food supplements made principally of vitamins.

The contested goods are the following:

Class 5: Pharmaceutical products for the treatment of infectious diseases; vaccines; oral vaccine preparations; human vaccine preparations; pharmaceutical compositions; pharmaceuticals; pharmaceutical and veterinary preparations; pharmaceutical preparations for the prevention of diseases of the genitourinary system; pharmaceutical preparations for the treatment of diseases of the genitourinary system; pharmaceutical preparations and substances for the prevention of cancer; pharmaceutical preparations for the treatment of cancer; medical preparations for the mouth to be applied in the form of drops, capsules, tablets and compressed tablets; biological preparations for medical or veterinary purposes; pharmaceutical preparations for the treatment of infectious diseases, pharmaceutical preparations for tumor treatment; antiviral preparations; viral vaccines.

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.

Contested goods

The contested pharmaceutical products for the treatment of infectious diseases; vaccines; oral vaccine preparations; human vaccine preparations; pharmaceutical compositions; pharmaceuticals; pharmaceutical and veterinary preparations; pharmaceutical preparations for the prevention of diseases of the genitourinary system; pharmaceutical preparations for the treatment of diseases of the genitourinary system; pharmaceutical preparations and substances for the prevention of cancer; pharmaceutical preparations for the treatment of cancer; medical preparations for the mouth to be applied in the form of drops, capsules, tablets and compressed tablets; biological preparations for medical or veterinary purposes; pharmaceutical preparations for the treatment of infectious diseases, pharmaceutical preparations for tumor treatment; antiviral preparations; viral vaccines are various pharmaceutical and veterinary preparations for treating diseases (in humans or animals). The opponent’s nutritional supplements are substances intended to provide nutrients that are claimed to have a biologically beneficial effect (on humans or animals). Bearing this in mind, and contrary to the applicant’s claims, the contested goods and the opponent’s goods have similar purposes, as they are all used to improve medical conditions (of humans or animals). The goods under comparison can coincide in the same relevant public, and are generally distributed through the same trade channels, such as pharmacies, regardless of whether or not they are sold on prescription as contended by the applicant. Therefore, these goods are considered at least 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 similar are directed at the public at large and at specialists with specific knowledge or expertise. The applicant argued that the relevant public for pharmaceuticals sold via prescription consists only of professionals. However, such pharmaceuticals, even if prescribed by doctors and dispensed by pharmacists or other professionals, are still purchased by the end consumer who will also be exposed to the trade marks concerned. Therefore, all the goods at issue, including those which may be sold only on prescription, target the general public, which is the end consumer.

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.

Therefore, as the goods in Class 5 relate to pharmaceutical and nutritional products which may affect the state of health of consumers, both the general and the professional public will exhibit a high degree of attention in relation to these goods.

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

c) The signs

	Hupavac
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 figurative mark consisting of the verbal element ‘HuPaVir’ depicted in a combination of upper- and lower-case letters in a bold typeface on a light grey rectangular background. The contested sign is the word mark ‘Hupavac’.

Since the contested mark is a word mark, it is the word itself that is protected and not the way it is presented. Therefore, differences in case-lettering with the earlier mark have no impact on the visual comparison.

The applicant argued that the verbal element ‘HuPa’/‘Hupa’ in both signs is the abbreviation of the Human Papillomavirus and that the verbal element of the contested sign ‘HUPAVAC’ is the abbreviation of Human Papillomavirus vaccine. In view of this, the applicant contends that the similarities of the trade marks are mainly confined to the descriptive element ‘HuPa’.

However, the Opposition Division notes that ‘HPV’, not ‘HuPa’/‘Hupa’, is normally used as the abbreviation in the area of medicine for Human Papillomavirus and the applicant has not submitted any evidence to prove that ‘HuPa’/‘Hupa’ would also be used as an established abbreviation with this meaning. Nevertheless, in particular in relation to the earlier mark, since the three letters ‘HPV’ are depicted as upper-case letters in the verbal element ‘HuPaVir’, it cannot be excluded that this meaning might be understood by medical professionals such as doctors and pharmacists. However, as previously mentioned, the assessment is made in relation to the general public as there is no need to establish that all actual or potential consumers of the relevant goods are likely to be confused (20/07/2017, T‑521/15, D (fig.) / D (fig.) et al., EU:T:2017:536, § 69). It is not likely that the Spanish general public would typically be aware of the abbreviation ‘HPV’ for this disease, as in Spain the Human Papillomavirus (virus del papilloma humano in Spanish) is usually abbreviated as VPH. Additionally, the abbreviation is not readily perceptible since the letters are separated by other letters. As a result, the prefix ‘HuPa-’/‘Hupa’ in both signs, will be perceived as meaningless for at least a significant part of the general public under analysis in the relevant territory and is, therefore, distinctive to a normal degree.

The suffix ‘vac’ of the contested sign is an allusive element that is likely to be understood by the relevant Spanish consumers as concerning vaccines (see to this effect 07/06/2012, R 1221/2011‑1, Femivac, § 43). Therefore, since the element ‘vac’ will be perceived as an abbreviation for ‘vaccine’, the consumers will infer that the goods at issue are vaccines or are administered through vaccines and, therefore, it has a low degree of distinctive character.

By analogy with these findings, the suffix ‘-Vir’ of the earlier mark is also an allusive element that is likely to be understood by the relevant Spanish consumers as concerning viruses, due to its closeness to the commonly used Spanish word. Therefore, as it indicates that the nutritional supplements in question are intended to prevent or treat some viral infection, the element ‘-Vir’ of the earlier mark also has a low degree of distinctiveness in relation to the goods in Class 5. The stylisation of the earlier mark, including the capitalisation of some letters, will be perceived as an essentially decorative feature, which will not draw the public’s attention away from the verbal element.

The earlier mark has no elements that could be considered clearly more dominant (visually eye-catching) than other elements.

Finally, the rectangular background of the earlier mark is of a purely decorative nature and is, therefore, non-distinctive.

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 and aurally, the contested sign and the verbal element of the earlier mark are the same length, that is seven letters/sounds (three syllables), out of which the first five letters/sounds (and the first two syllables) are identical. The signs differ in their last two letters/sounds as well as, visually, in the stylisation of the earlier mark, which has a reduced impact for the reasons previously mentioned. The more distinctive parts of the signs, namely ‘HuPa’/‘Hupa’, fully coincide, whereas the difference lies in the parts which are less distinctive (Vir/VAC).

Therefore, the signs are visually and aurally similar to at least an above average degree.

Conceptually, neither of the signs has a meaning as a whole for the public under analysis in the relevant territory. The elements ‘Vir’ in the earlier mark and ‘vac’ in the contested sign evoke different concepts, hence the signs are not conceptually similar. However, this does not constitute a significant difference between the signs given that the concepts they convey are distinctive to a low degree and do not sufficiently indicate the commercial origin of the goods concerned.

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 general public under analysis in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a weak element as indicated above.

e) 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).

Account should 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). 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).

In the present case, the goods have been found similar to at least a low degree and the degree of attention of the general public under analysis will be high. The earlier mark as a whole is distinctive to a normal degree, the signs are visually and aurally similar to at least an above average degree and there is no relevant conceptual difference between the signs that could otherwise help consumers to more easily distinguish between them.

The similarities between the signs lie in their beginnings, ‘HuPa’/‘Hupa’, which will be perceived as the most distinctive part of both signs for the reasons set out above in section c) of this decision. Furthermore, the rectangular background of the earlier mark, which has no counterpart in the contested sign, and the combined upper- and lower-case letters of the verbal element of the earlier mark will not draw the relevant public’s attention of the relevant public under analysis away from the verbal element as such. Therefore, the differences between the signs do not allow the general public under analysis to safely distinguish between the marks.

Taking into account the fact that average consumers must trust in their imperfect recollection of signs (even those who pay a high degree of attention), the degree of similarity between the marks is sufficient for it to be concluded that the general public under analysis may reasonably believe that the goods found to be similar originate from the same undertaking or economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as 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).

Therefore, there is a likelihood of confusion on the part of the general public in the relevant territory. 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 professional part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 3 599 399.

It follows from the above 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

Sam GYLLING

Martin INGESSON

Catherine MEDINA

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.