OPPOSITION No B 3 062 193

Apogepha Arzneimittel GmbH, Kyffhäuserstr. 27, 01309 Dresden, Germany (opponent), represented by Kailuweit & Uhlemann Patentanwälte Partnerschaft mbB, Bamberger Str. 49, 01187 Dresden, Germany (professional representative)

a g a i n s t

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

On 16/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 062 193 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 17 874 517 for the word mark ‘PIVMYO’. The opposition is based on German trade mark registration No 302 016 102 881 for the word mark ‘Pivmelam’. 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 products.

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.

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

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 are directed both at the public at large and the professional public in the medical sector. The section of the public that pays the lowest level of attention must be taken into consideration (14/06/2017, T‑95/16, ROYAL & CAPORAL / KAPORAL, EU:T:2017:388, § 29). Given that the general public is more prone to confusion, the examination will proceed on this basis.

The opponent’s view that the degree of attention of ‘the group of non-professionals’ is average cannot be followed. It is apparent from the case-law that, in cases where pharmaceutical products are sold without prescription, it must be assumed that those goods will be of concern to consumers, who are deemed to be reasonably well informed and reasonably observant and circumspect, particularly when these goods affect their state of health, and that these consumers are less likely to confuse different versions of such goods. Furthermore, even assuming that a medical prescription is mandatory, consumers are likely to have a high degree of attentiveness upon prescription of the goods at issue, in the light of the fact that those goods are pharmaceutical products (15/12/2010, T‑331/09, Tolposan, EU:T:2010:520, § 26).

c) Comparison of the signs and distinctiveness of the earlier mark

Pivmelam	PIVMYO
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).

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 earlier mark is composed of a single verbal element consisting of eight letters ‘Pivmelam’. 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. Indeed, the applicant asserts that the earlier mark will be understood by a large part of the consumers as the contraction of the term ‘pivmecillinam’ which designates an active substance used for the treatment of urinary tract infections. To prove this the applicant has merely submitted information on ‘pivmecillinam’ obtained from the websites www.onmeda.de and www.wikipedia.com. However, this evidence does not show how the relevant general public will perceive this word. Moreover, it is doubtful that the general public will have specific knowledge of active substances for a very specific category of pharmaceutical preparations (for the treatment of urinary tract infections), let alone that it will be able to recognize contractions or abbreviations of these terms. As such, this argument must be rejected and the distinctiveness of the earlier mark must be seen as normal.

The contested sign is composed of a single verbal element of six letters ‘PIVMYO’. The applicant claims that the last part “MYO” has a Greek origin and refers to “muscle”, and is likely to be understood by the relevant public because of its common use in different languages of the European Union. The Opposition Division cannot agree with this view. Even if it is true that part of the relevant public (e.g. medical professionals, such as doctors and pharmacists) will recognise this element and understand its meaning, the general public is not necessarily familiar with this element nor with its meaning. Moreover, there are no elements in the word ‘PIVMYO’ that the general public would readily understand and as such they would not proceed to make an artificial dissection thereof, especially since the element ’PIV’ has – as the applicant admits – no particular meaning. Therefore, for the general public the contested sign as a whole, being a fanciful word, is distinctive to an average degree.

As both signs are word marks, neither has an element which is more dominant than others. The contested sign is written in upper case letters, whereas the earlier trade mark consists of lower case letters, except for its first letter that is written in uppercase. However, in relation to word marks, differences in the use of lower or upper case letters are immaterial, even if lower case and upper case letters alternate.

Visually and aurally, both signs differ in their length, the contested sign consisting of 6 letters, whereas the earlier mark consists of 8 letters. The signs coincide in their first four letters ‘PIVM*’ and their sound, and differ in their last letters, namely ‘*ELAM’ in the earlier mark and ‘*YO’ in the contested sign, and their sound.

Even if it is true that consumers generally tend to focus on the beginning of a sign and in spite of the fact that the differentiating letters do not occupy a prominent position as they are placed at the end of the signs, they are perceivable at first glance, without any extra effort, and will not escape the attention of the consumer. This is because the presence of the sequence of letters ‘YO’ in the contested sign will be clearly perceived, heard and retained by the German public, as the letter ‘Y’ (let alone the letter ‘Y’ followed by a vowel) is not common in German. In addition, the fact that the earlier mark and the contested sign end in a consonant and a vowel respectively will visually and aurally not go unnoticed.

The earlier mark is longer than the contested sign and as such, the signs will aurally have a slightly different rhythm and intonation.

Therefore, contrary to the opponent’s assertion that the signs are highly similar, they are visually and aurally similar only to a below average degree.

Conceptually, neither of the signs has a meaning for the general 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) Global assessment, other arguments and conclusion

The contested goods are identical to those covered by the earlier mark, and they target medical professionals and the general public, whose degree of attention in relation to these purchases will be high. For the general public the earlier mark enjoys an average degree of inherent distinctiveness, which affords it a normal scope of protection.

The signs have been found to be visually and aurally similar to a below average degree, they cannot be compared conceptually. Even if consumers generally tend to focus on the beginning of a sign, the fact that the marks have a different ending and the earlier sign is longer than the contested sign has a decisive influence on their overall impression in the case at hand, so its presence will not be ignored.

The coincidence in the beginning of the signs does not play an independent role in the signs for the general public as it cannot be identified in an isolated manner in either of the marks, because it is not separated from the rest of the sign by any visible mark (space, hyphen, different type, size or colour of lettering, etc.), nor otherwise (because of its clear meaning) identified as an individual element. There is therefore nothing that would make it stand out and permit the public to split the words.

However, even if the last letters ‘ELAM’ of the earlier mark and the last letters ‘YO’ of the contested sign do not play an independent role in the signs, they are visually and aurally strikingly different, especially because of the presence of the letter ‘Y’ which is uncommon in German (and is followed by a letter ‘O’). The higher degree of attention of the average consumer will allow them to perceive and retain these differences which serve to distinguish the signs.

This absence of a likelihood of confusion equally applies to the professional consumers who may prescribe, dispense or administer pharmaceutical goods. These consumers will very likely understand the element ‘PIVM’ in both signs as relating to the active substance ‘pivmecillinam’ and as such this is weak in relation to the goods, and will also understand ‘myo’ as referring to ‘muscle’, and as such this is also weak in relation to the goods.

For these consumers the common element in both signs ‘PIVM’ is weak and therefore, the signs overlap only in a weak element and the impact of this overlap is limited due to the weak distinctiveness of that element. Moreover, these consumers are used to distinguishing between many similar marks containing similar elements as they often allude or refer to active ingredients. Moreover, they have a high degree of attention. Therefore, the professional consumers will also readily be able to distinguish the signs and will not confuse them.

In light of the above, the Opposition Division considers that the signs will not be confused by the relevant consumers and consequently that there is no likelihood of confusion on the part of the public in Germany. 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 (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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

Nicole CLARKE

Christophe DU JARDIN

Biruté SATAITE-GONZALEZ

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.