OPPOSITION No B 3 055 720

Terapia S.A., Str. Fabricii no.124, Cluj-Napoca, jud. Cluj, Romania, 400632 Cluj-Napoca, Romania (opponent)

a g a i n s t

IBSA Institut Biochimique S.A., Via al Ponte, 13, 6900 Massagno, Switzerland (applicant), represented by Luca Crippa, Via Martiri di Cefalonia 2, 26900 Lodi, Italy (employee representative).

On 19/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 055 720 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 866 710 for the word mark ‘ALTERFLEX’, namely against all goods in Class 5. The opposition is based on Romanian trade mark registration No 120 343 for the word mark ‘ArtroFlex’. 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 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, 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:

Class 5: Pharmaceutical and veterinary products, food supplements; hygienic products for medical use; dietetic substances adapted for medical use, food for babies; plasters and materials for dressings; materials for stopping teeth and dental molds; disinfectants; products for vermin, fungicides, herbicide.

The contested goods are the following:

Class 5: Pharmaceutical drugs; medicated plasters; pharmaceuticals; chemico-pharmaceutical preparations; dietary supplements and dietetic preparations.

The contested pharmaceutical drugs; pharmaceuticals and chemico-pharmaceutical preparations are identical to the opponent’s pharmaceutical products, either because they are identically contained in both lists (including synonyms) or because they overlap.

The contested medicated plasters are included in the broad category of the opponent’s pharmaceutical products. Therefore, they are identical.

The contested dietary supplements are included in the broad category of, or overlap with, the opponent’s food supplements. Therefore, they are identical.

The contested dietetic preparations include, as a broader category, the opponent’s dietetic substances adapted for medical use. 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 in the medical, nutritional and pharmaceutical fields.

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. The same reasoning applies to dietetic preparations and dietary supplements because they also have an impact on the consumer’s health.

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

3. The signs

ArtroFlex	ALTERFLEX
Earlier trade mark	Contested sign

The relevant territory is Romania.

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 marks are word marks and, therefore, the use of upper- or lower-case letters is irrelevant.

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 elements.

Although as a whole the earlier mark ‘ArtroFlex’ does not have a clear and unequivocal meaning, it will most likely be dissected by the relevant public in Romania into ‘Artro’ and ‘Flex’, as they will associate these with the words ‘artróză’ and ‘flexibil’. This is because the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58).

The element ‘ARTRO’ will be perceived as a reference to arthrosis, ‘joint disease’. Not only due to the fact that it forms a root of the Romanian equivalent ‘artróză’ (information extracted from the Romanian language dictionary Dexonline on 15/07/2019 at https://dexonline.ro/definitie/artr%C3%B3z%C4%83), but also because the word ‘artro’ is understood by itself as a short way of referring to ‘artróză’ (information extracted from the Romanian language dictionary Dexonline on 15/07/2019 at https://dexonline.ro/definitie/artro).

The element ‘FLEX’ will be perceived as a reference to flexibility, ‘something that can be bent easily without breaking’. The Romanian equivalent being ‘flexibil’ (information extracted from the Romanian language dictionary Dexonline on 15/07/2019 at https://dexonline.ro/definitie/flexibil).

The distinctiveness of the element ‘ARTRO’ is therefore very low (if any) with regard to pharmaceutical products, food supplements and dietetic substances adapted for medical use, as an indication (‘ARTRO’) suggesting that it could help to ease joint pain. Similarly, the ending ‘FLEX’ will be associated by the relevant consumer with flexibility. In relation to the abovementioned goods, the element could indicate joints’ flexibility (considering that it is preceded by the element ‘ARTRO’). Therefore, as the understanding of this abbreviation is straightforward and it describes the characteristics of the goods, this element is considered non-distinctive in relation to pharmaceutical products, food supplements and dietetic substances adapted for medical use.

The earlier mark as a whole describes the purpose of the pharmaceutical and dietary products for increasing the flexibility of the articulations, avoiding or diminishing arthrosis. Therefore, the Opposition Division does not concur with the opponent that the Romanian public will not perceive a concept behind the earlier mark. Considering the above, the distinctiveness of the earlier mark as a whole is very low.

The contested sign ‘ALTERFLEX’ also contains a single element, which will be understood by the relevant public, namely ‘FLEX’ from ‘flexibil’, which will be associated with the same meaning as explained above for the earlier mark. As this element will be associated by the relevant consumers with flexibility and, therefore, describing the characteristics of the relevant goods, this is considered to be a non-distinctive element. However, the first part of the verbal element ‘ALTER’ has no meaning for the overwhelming majority Romanian public. Having no meaning, the contested sign as a whole has a normal degree of distinctiveness as it may be considered only allusive for the relevant goods.

Visually and aurally, the signs coincide in the first letter ‘A’ and the ending ‘FLEX’, which, however, is non-distinctive for both signs as argued above. Therefore, the relevant public will focus on the beginning of the signs, namely ‘ARTRO’ and ‘ALTER’, which have no further similarities apart from the same starting letter. The signs differ in the four letters following the initial letter ‘A’, having either different vowels (‘O’ and ‘E’) or partly different consonants (‘R’ and ‘L’), and therefore emphasizing the overall differences between the signs.

Taking into account that the signs only coincide in the first letter and in the non-distinctive endings ‘FLEX’, the signs are similar to a low degree.

Conceptually, although the public in the relevant territory will perceive the meaning of the earlier mark as explained above, the other sign as a whole has no meaning in that territory. Even though the coinciding term ‘FLEX’ will evoke a concept, it is not sufficient to establish any conceptual similarity, as this element is non-distinctive and cannot indicate the commercial origin. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as very low for some of the goods in question, namely pharmaceutical products; food supplements and dietetic substances in Class 5.

5. Global assessment, other arguments and conclusion

The goods are identical and the degree of attention of the relevant public is relatively high. For the relevant public, the signs are visually and aurally similar to a low degree as they coincide in the first letter ‘A’ and in the non-distinctive component ‘FLEX’ and are conceptually not similar. Furthermore, the distinctiveness of the earlier mark is very low in relation to the relevant goods.

The Opposition Division does not concur with the opponent that the same length of the signs is decisive as the General Court has held in numerous cases that the same number of letters in two marks is not, as such, of any particular significance for the relevant public, even for a specialised public. Since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar. In addition, the public is not, in general, aware of the exact number of letters in a word mark and, consequently, will not notice, in the majority of cases, that two conflicting marks have the same number of letters (25/03/2009, T‑402/07, ARCOL / CAPOL, EU:T:2009:85, § 81-82; 04/03/2010, C‑193/09 P, ARCOL / CAPOL, EU:C:2010:121).

Consequently, the differences outweigh the similarities between the signs, which are primarily focused on the equal use of the non-distinctive element ‘FLEX’ at the end. The relevant public with a high level of attention will attach little significance to the element ‘FLEX’, which is descriptive/indicative and as such does not enable identification of the commercial origin of the trade marks at issue. The relevant public will therefore focus on the first part of the marks, which however only coincide in their first letters. Furthermore, the contested sign has no meaning, whereas the earlier mark has a clear meaning for the relevant public. According to settled case-law, where the meaning of at least one of the two signs at issue is clear and specific so that it can be grasped immediately by the relevant public, the conceptual differences observed between those signs may counteract the visual and phonetic similarities between them (12/01/2006, C‑361/04 P, Picaro, EU:C:2006:25, § 20; 23/03/2006, C‑206/04 P, Zirh, EU:C:2006:194, § 35).

Considering all the above, even for identical goods, there is no likelihood of confusion on the part of the general public with a high level of attention, therefore, with more reason there will be no likelihood of confusion for the professional public either. Therefore, the opposition must be rejected.

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, 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

Renata COTTRELL

Astrid Victoria WÄBER

Martin EBERL

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.