OPPOSITION No B 3 052 022

Quiris Healthcare GmbH & Co. KG, Isselhorster Str. 260, 33334 Gütersloh, Germany (opponent), represented by Baker & Mckenzie, Bethmannstr. 50-54, 60311 Frankfurt/Main, Germany (professional representative)

a g a i n s t

Genlife SAGL, Via Calprino 7, 6900 Paradiso Switzerland (applicant), represented by Brema S.r.l., Via Vega 39, 47924 Rimini, Italy (professional representative).

On 28/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 052 022 is upheld for all the contested goods.

2. European Union trade mark application No 17 763 004 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 17 763 004 for the word mark ‘ELASTEM’. The opposition is based on, inter alia, German trade mark registration No 302 013 019 538 for the word mark ‘ELASTEN’ 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s German trade mark registration No 302 013 019 538.

1. The goods

The goods on which the opposition is based are, inter alia, the following:

Class 5: Pharmaceutical and veterinary medicinal preparations.

The contested goods are the following:

Class 5: Pharmaceutical drugs.

Class 10: Medical and veterinary apparatus and instruments.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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 in Class 5

The contested pharmaceutical drugs are identically contained in both lists of goods (including synonyms).

Contested goods in Class 10

The contested medical and veterinary apparatus and instruments are similar to a low degree to the opponent’s pharmaceutical and veterinary medicinal preparations since they usually coincide in relevant public and distribution channels. Furthermore they are complementary.

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.

The relevant goods target the public at large and a specialist public in the health and medical sector.

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.

As regards the other relevant goods in Class 10, the degree of attention is also relatively high, as, first, health issues are concerned, and, second, usually these are expensive goods, which will be bought infrequently and after a thorough inspection.

3. The signs

ELASTEN	ELASTEM
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).

Both signs are word marks consisting of a single element. Neither ‘ELASTEN’ in the earlier sign nor ‘ELASTEM’ in the contested sign has a meaning for the relevant public as a whole and they are, therefore, distinctive.

Visually and aurally, the signs coincide in the letters ‘ELASTE*’, i.e. six out of seven letters, present identically in both signs and placed in the same order. However, they differ in their last letters/sounds i.e. ‘N’ in the earlier mark and ‘M’ in the contested sign, which however could easily be overlooked by consumers, as consumers tend to pay much less attention to letters that appear at the end of signs. This is all the more possible as the letters ‘M’ and ‘N’ are quite close to each other, both from the visual and aural points of view.

Therefore, the signs are visually and aurally similar at least to a high degree.

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.

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 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.

5. Global assessment, other arguments and conclusion

According to settled case-law, the likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C-39/97, Canon, EU:C:1998:442, §16).

The goods and services at issue have been found to be partly identical, partly similar to a low degree. The relevant public is both the public at large and the professional public and their degree of attention is relatively high. The distinctiveness of the earlier mark is normal.

The signs are visually and phonetically similar at least to a high degree. The marks differ only in their final letters, ‘N’ in the earlier mark and ‘M’ in the contested sign respectively. That is not sufficient to clearly differentiate between the marks. Consumers generally tend to focus on the initial part of a sign when being confronted with a trade mark. This is justified by the fact that 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 the 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).

Therefore, it is likely that the consumer, on encountering use of both signs in relation to identical or lowly similar goods and having an imperfect recollection of the earlier mark, might think that the goods originate from the same undertaking or from economically linked undertakings.

The abovementioned conclusion also takes into account the principle that a likelihood of confusion implies some interdependence among the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa. In the present case, this principle is of particular importance considering that the signs under comparison are visually and aurally similar at least to a high degree.

Considering all the above, there is a likelihood of confusion on the part of the public and the opposition is well founded on the basis of the opponent’s German trade mark registration No 302 013 019 538. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right German trade mark registration No 302 013 019 538 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Michele M. BENEDETTI-ALOISI

Riccardo RAPONI

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.