OPPOSITION No B 3 063 144

Sopharma AD, 16, Iliensko shausse str., Sofia, Bulgaria (opponent), represented by Rumiana Hristova Peycheva, 16, Iliensko shausse, 1220 Sofia, Bulgaria (professional representative)

a g a i n s t

Afyx Therapeutics A/S, Lergravsvej 57, 2. Tv, 2300, Copenhagen S, Denmark (applicant), represented by Cooley (UK) LLP, Dashwood 69 Old Broad Street, EC2M 1QS London, United Kingdom (professional representative).

On 22/10/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 063 144 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 17 896 509 for the word mark ‘RIVELIN’. The opposition is based on, inter alia, European Union trade mark registration No 3 983 426 for the word mark ‘NIVALIN’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

Proof of use of the earlier mark was requested by the applicant. However, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T‑296/02, Lindenhof, EU:T:2005:49, § 41, 72). The examination of the opposition will proceed as if genuine use of the earlier mark had been proven for all the goods invoked, which is the best light in which the opponent’s case can be considered.

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 European Union trade mark registration No 3 983 426.

a) The goods

The goods on which the opposition is based are the following:

Class 5: Pharmaceutical preparations, namely drugs for treatment of the degenerative and functional diseases of central and peripheral nervous system.

The contested goods are the following:

Class 5: Medical and pharmaceutical preparations and articles, namely mucous membrane- and skin- adhesive patches for coverage of lesions and/or efficient and uniform drug delivery; patches; medical patches; medical wound dressing; medical bandages; transdermal and/or transmucosal patches for medical treatment.

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 opponent and applicant’s list of goods to show the relationship of individual goods 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 contested goods include a variey of medical/pharmaceutical articles, namely patches, wound dressings and bandages. The opponent’s goods are very specific pharmaceuticals for the treatment of degenerative and functional diseases.

These goods are related, broadly speaking, to the same healthcare sector, have a similar general purpose (the restoration or preservation of health), may be distributed through the same distribution channels and coincide in relevant public, as the opponent points out. However, they do not coincide in the remaining relevant criteria such as nature, complementarity and method of use. None of the contested goods can be considered identical, as claimed.

Given the above and the specific nature of the opponent’s pharmaceutical products, the contested goods are considered at most similar.

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, at most, similar are directed at the public at large and at professionals in the medical field.

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, the degree of attention for the opponent’s goods is high.

A similar reasoning applies for some of the applicant’s goods (e.g. adhesives patches for efficient and uniform drug delivery), taken into account their potential impact on the patient’s health while for others (e.g. medical bandages), not necessarily related to diseases but to minor injuries or treatments, the degree of attention may be average.

c) The signs

NIVALIN	RIVELIN
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).

Neither of the signs has a meaning for the public in the relevant territory and therefore, they both have an average degree of distinctiveness.

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, both signs consists of seven letters, five of which, ‘*IV*LIN’, are identical. Two letters in each of the signs differ, that is to say, the first letters and the fourth letters of each: ‘N’ vs ‘R’ and ‘A’ vs ‘E’, respectively. These letters bear no resemblance to each other. While it is true that the marks share five out of the seven letters of which they consist, the differences between them occur early in each of the marks, where they are likely to make the greatest impression as noted above, namely in the first syllables ‘NIVA’ vs ‘RIVE’.

The General Court has held 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).

Therefore, and despite the coincidences between the sgins, they are visually similar to a low degree.

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 ‘*IV*LIN’, present identically in both signs as well as in number of syllables. They differ in the sound beween the letters ‘N’ and ‘R’ and ‘A’ and ‘E’ which are placed in the first part of each of the sgins, having a stronger impact. Particularly relevant is that their initial consonants’ sound is strikingly different -in all the relevant languages- which constiutes a noticeable and determinant difference between the signs.

Therefore, the signs are aurally similar to below-average 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.

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 Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, §22).

The goods are similar, at most, and they target both the public at large and professional public, whose degree of attention may vary from average to high. The distinctive character of the earlier mark is normal.

The signs are visually similar to a low degree and aurally similar to a below-average degree. The conceptual aspect does not influence the assessment of the similarity between the signs. Although the signs have in common five out of seven letters, the coincidences are counterbalanced by the sign’s striking -visual and phonetic- differences, quite evident to an attentive consumer in the particular context and even more so to a professional of the medical or pharmaceutical field. These dissimilarities, moreover, will have an important impact in the overall impression given by the signs since they are placed at their beginning, where the consumer normally attaches more importance when encountering marks, as explained above.

In the Opposition Division’s view the differences between the signs are suffiicient to dispel a likelihood of confusion, particularly taking into account the public’s high degree of attention -at least in relation to the opponent’s goods-, and the fact that consumers are normally assisted by professionals in the medical and pharmaceutical field. Given this, and the distance and differences between the relevant goods (i.e. specific pharmaceutical products vs patches, bandages and wound dressings), the public is not likely to confuse or make an association between the marks.

The opponent refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same. The decisions referred to are related to the present case in respect of the signs, the coincidences and dissimilarities between them as well as the position thereof. However, none of them concern all the relevant circumstances applicable to the present case simultaneously, namely the public’s higher degree of attention, relative distance between the specific goods (which result in an average similarity between them, in the best case scenario) and the striking differences between the differing letters in the initial part of the signs. For instance, in all except one of the decisions, other types of goods are involved (e.g. paints, fabrics, clothing and paints in Classes 2, 24 and 25, respectively). As noted above, likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; the Opposition Division considers that the outcome in the present case should not be the same on account of the particular factual elements, already explained in detail.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR, it is unnecessary to examine the evidence of use filed by the opponent.

The opponent has also based its opposition on Bulgarian trade mark registration No 46 025 for the word mark ‘NIVALIN НИВАЛИН’, registered for pharmaceutical, veterinary and hygienic preparations, dietetic substances for medical use. The degree of similarity between these goods and those applied for cannot be higher than that found with the earlier mark analysed in the present decision. This is because, although the goods are not concretely described, the only relevant coinciding criteria (i.e. purpose, distribution channels and relevant public) are (still) the same. Moreover, this earlier mark includes the additional element ‘НИВАЛИН’ which, despite being the Cyrillic transliteration of the word ‘NIVALIN’, introduces to some extent a differing element. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those 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 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

Michele M. BENEDETTI - ALOISI

Birgit FILTENBORG

Keeva DOHERTY

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.