OPPOSITION No B 3 062 649

Grünenthal GmbH, Zieglerstr. 6, 52078, Aachen, Germany (opponent), represented by Maria Josefa Fernandez Marques, Zieglerstr. 6, 52078, Aachen, Germany (employee representative)

a g a i n s t

Genzyme Corporation, 50 Binney Street, 02142 Cambridge, United States of America (applicant), represented by Casalonga Alicante S.L., Avenida Maisonnave 41-6C, 03003 Alicante, Spain (professional representative).

On 12/09/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 062 649 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 874 511 for the word mark ‘XOMYO’. The opposition is based on European Union trade mark registration No 2 127 967 for the word mark ‘ZOMIG’, in relation to which 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 and substances for the treatment of migraines.

The contested goods are the following:

Class 5: Pharmaceuticals for the prevention and treatment of cardiovascular diseases and diseases of the central nervous system; pharmaceuticals for the treatment of cancer, thrombosis and respiratory diseases; pharmaceuticals for the treatment of lysosomal diseases; pharmaceuticals for the prevention and treatment of infectious diseases, namely viral and bacterial infection.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods. The term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods and services 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 goods under comparison are pharmaceuticals that are used to prevent and/or treat various specific diseases. Although it is true, as claimed by the applicant, that the opponent’s mark only relates to the treatment of migraines, while the contested sign covers a broader spectrum of diseases, such as cancer, respiratory diseases and infectious diseases, it is noted that all these goods share the same nature (as they are healthcare products) and purpose which is, broadly speaking, to prevent and/or treat disease. They are sold in the same places, typically pharmacies, and the relevant public, composed of medical professionals and patients, overlaps. Furthermore, these goods usually come from the same economic operators, namely pharmaceutical companies, which are known to manufacture a wide variety of medical products with various therapeutic indications. Therefore, despite having different therapeutic indications, the contested goods are considered similar to the opponent’s goods.

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 relevant public comprises both the general public and health professionals, such as doctors and pharmacists. According to case-law, the general public cannot be excluded from the relevant public for, inter alia, pharmaceuticals that require a doctor’s prescription prior to their sale to end users in pharmacies. Consequently, even though the choice of those products is influenced or determined by intermediaries, a likelihood of confusion can also exist for the general public, since they are likely to be faced with those products, even if that takes place during separate purchasing transactions for each of those individual products at various times (09/02/2011, T‑222/09, Alpharen, EU:T:2011:36, § 42-45; 26/04/2007, C‑412/05 P, Travatan, EU:C:2007:252, § 56-63).

As regards the degree of attention, 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.

c) The signs

ZOMIG	XOMYO
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 signs are word marks composed of single words, ‘ZOMIG’ and ‘XOMYO’. In the case of word marks, it is the word as such that is protected and not its written form. These terms are meaningless in all the languages of the relevant territory. The applicant argued that some elements of the signs might be associated with certain meanings, which could introduce conceptual differences between the signs. However, the Opposition Division is of the opinion that the public will not dissect the signs, but will perceive them as a whole. Therefore, the inherent distinctive character of the signs for the relevant goods is average.

Visually, the signs coincide only in two out of their five letters, ‘*OM**’, located in their middle parts. Notably, they differ in their beginnings, namely the letters ‘Z’ and ‘X’, the graphemes of which are entirely different. As noted by the applicant, this difference is of particular importance, 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. In addition, placement of the letter ‘X’ at the beginning of the word is quite unusual and the public will notice this difference very easily. The signs also differ in their endings, ‘IG’ and ‘YO’, respectively.

Overall, the signs produce a different visual impression and are, therefore, considered visually dissimilar.

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 letters ‘*-O-M-*-*’, present identically in the middle of the signs.

In majority of the relevant languages, the initial letters ‘Z’ and ‘X’ will produce quite distinct sounds. However, as argued by the opponent, it cannot be excluded that a part of the public (e.g. a part of the English-speaking public) may pronounce the letter ‘X’ at the beginning of the word in the same way as the letter ‘Z’. The signs differ in their endings, ‘I-G’ and ‘Y-O’, which is especially perceivable in the part of the territory where ‘Y’ is pronounced as /y/ or /ʏ/. However, in some parts, like the English-speaking part, the letter ‘Y’ may be pronounced as /j/, /aɪ/ or even /i/, which increases the aural similarity between the signs.

Therefore, depending on the part of the relevant territory, the degree of aural similarity between the signs ranges from low to average.

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.

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 that can be made with the registered mark and the degree of similarity between the marks and between the goods or services identified (Recital 11 of the EUTMR). 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 similar. The signs are visually dissimilar, while the degree of aural similarity ranges from low to average. As explained above in section c) of this decision, a conceptual comparison is not possible and the conceptual aspect does not influence the assessment of the similarity of the signs. The earlier mark as a whole has a normal degree of distinctiveness for the public.

The relevant public is composed of the general public and health professionals, displaying a relatively high degree of attention.

The Opposition Division is of the opinion that the earlier mark and the contested sign are not similar enough to lead to a likelihood of confusion and the differences allow consumers to safely distinguish between them.

The signs are relatively short, as they are composed of five letters. Visually, they coincide only in two of these letters, ‘OM’, located in their middle parts, while they differ in all the remaining elements. Most notably, they differ in their first letters, ‘Z’ and ‘X’, namely a part where consumers normally focus their attention (21/05/2015, T‑420/14, Wine in Black / NOVAL BLACK, EU:T:2015:312, § 25). Placement of the letter ‘X’ at the beginning of the word is unusual; therefore, the public displaying a relatively high degree of attention will easily notice such a difference. This public will also easily notice that the endings of the signs are composed of different letters, namely ‘IG’ and ‘YO’. Although it is true that the aural similarity is stronger (an average degree) in some parts of the relevant territory (e.g. the English-speaking part), it cannot compensate for important visual differences and the overall visual dissimilarity of the signs.

Even if the goods were ordered aurally, they would be served by health professionals who have a good knowledge of the pharmaceuticals available on the market and pay enhanced attention to their names to provide the correct product. Moreover, in such a case the possibility of visual inspection of the goods by end consumers is not excluded. In addition, the goods are not identical, but only similar, and as they would be used for different medical problems, they would appear in different contexts, which additionally helps to distinguish them.

Therefore, in view of the enhanced degree of attention of the relevant public and important differences between the signs, in particular on the visual level, as well as the fact that the goods are similar (and not identical), the Opposition Division takes the view that the public will be able to safely distinguish the marks under comparison.

Considering all the above, there is no likelihood of confusion on any part of the relevant public. 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

Liliya YORDANOVA

Jakub MROZOWSKI

Reiner SARAPOGLU

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.