OPPOSITION No B 3 064 200

Cornelia Schielein, Eibacher Hauptstraße 52, 90451 Nürnberg, Germany (opponent), represented by Friedrich Graf Von Westphalen & Partner mbB, Kaiser-Joseph-Str. 284, 79098 Freiburg i. Br., Germany (professional representative)

a g a i n s t

Medican A/S, Skovgårdsvej 27, 3200 Helsinge, Denmark (applicant), represented by Otello Lawfirm, Dalgasgade 25, 8., 7400 Herning, Denmark (professional representative).

On 22/06/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 064 200 is upheld for all the contested goods and services.

2. European Union trade mark application No 17 902 821 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 and services of European Union trade mark application No 17 902 821 for the figurative mark , namely against all the goods and services in Classes 5 and 35. The opposition is based on German trade mark registrations No 302 009 051 781 and No 302 012 032 795 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based.

The date of filing of the contested application is 17/05/2018. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in Germany from 17/05/2013 to 16/05/2018 inclusive.

The request was submitted in due time and is admissible given that the earlier trade marks were registered more than five years prior to the relevant date mentioned above. Contrary to the opponent’s argument, the request was explicit, unambiguous and unconditional, and submitted – on the same day as the applicant’s first observations – by way of a separate document, as required by Article 10(1) EUTMDR.

Furthermore, the evidence must in principle show use of the trade marks for the goods and services on which the opposition is based, namely the following:

German trade mark registration No 302 009 051 781

Class 35: Advertising, in particular for pharmacy services; support for pharmacies with regard to marketing issues; design and conducting of customer loyalty initiatives for advertising and marketing purposes, issuing and distribution of customer cards without payment or discount functions for conducting customer loyalty schemes as part of marketing activities; assortment of goods for others for presentation and sales purposes; distribution wholesale, retail services and retail mail order services in relation to pharmaceutical preparations, veterinary preparations, sanitary preparations for medical purposes, dietetic preparations and substances for medical use, food for babies, plasters, materials for dressings, disinfectants, hygienic products for personal use, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, nutritional supplements, orthopedic bandages, medicinal teas, beverages adapted for medical purposes; shop window dressings; business management, in particular for pharmacies or pharmacy cooperatives; arranging of contracts for the buying and selling of medicines and standard pharmaceutical goods, in particular with wholesalers and pharmaceutical manufacturers; order placement, delivery services and invoice management in relation to medicines and standard pharmaceutical goods; business administration; office functions; invoice management for contracts with social security providers.

Class 41: Education; providing of training; training in the field of health care; publication of printed material in the field of health care, rehabilitation and care, in particular magazines and customer information; online publications in the field of health care, rehabilitation and care, other than for advertising purposes; arrangement of seminars and courses on health care, rehabilitation and nursing; arranging and conducting of conferences, congresses, colloquiums, electronic desktop publishing, seminars and workshops in the field of health care, rehabilitation and nursing.

Class 44: Medical services, in particular pharmacy services; pharmacy consultancy, namely by a pharmacist or chemist; pharmacy, namely preparation of pharmaceutical preparations and medicines for others on the basis of doctors’ prescriptions; hygienic and beauty care for human beings or animals; health consultancy, nutrition consultancy; hygiene/sanitary services, in particular conducting medical tests, medical laboratory experiments, investigations with regard to hygiene and assessment of pharmaceutical preparations; care services; physiotherapy; services of medical supply centers and outpatient nursing services in connection with the treatment of patients; health cure advice for hygienic purposes.

German trade mark registration No 302 012 032 795

Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; nutritional supplements; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; disinfectants; vitamin preparations; medicine cases, portable, filled.

Class 45: Personal and social services rendered by others to meet the needs of individuals; issuing licenses for franchising concepts; licensing of intellectual property.

However, even if the analysis of genuine use must, as stated above, in principle extend to all of the registered goods and/or services on which the opposition is based and for which the EUTM applicant has made an explicit request for proof of use, the Office’s analysis of genuine use need not extend to all the earlier goods and/or services in situations where it is clear that likelihood of confusion can be established on the basis of some of the earlier goods and/or services. Instead, it may only focus on those goods and/or services sufficient for establishing identity/similarity to the contested goods and/or services. In other words, since likelihood of confusion can be established on the basis of a finding of genuine use for some of the earlier goods and/or services, it is unnecessary to examine the evidence of use submitted by the opponent with respect to the remaining earlier goods and/or services.

In the present case, the Opposition Division finds it appropriate to focus the assessment of proof of use on retail services in relation to pharmaceutical preparations for which earlier mark No 302 009 051 781 is registered in Class 35.

According to Article 10(3) EUTMDR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 21/06/2019, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 26/08/2019 to submit evidence of use of the earlier trade marks. Upon the opponent’s request, the deadline to submit evidence of use was extended to 26/10/2019. On 28/10/2019, still within the time limit as 26/10/2019 was a Saturday, the opponent submitted observations and evidence of use.

The evidence to be taken into account, which is explained in more detail in the opponent’s observations, is the following:

 Attachment 1: a sworn declaration, dated 25/10/2019, and signed by Ms Verena Höllriegl, stating that she has been working for Medicon BRL GmbH since 2008 and is responsible for looking after the licensees of the brand ‘MEDICON APOTHEKE’.

It states that the earlier mark is licensed to independent pharmacies which pay a monthly license fee, and that at least 15 pharmacies have constantly operated under the earlier mark in the period from 2013 to 2018.

It also states that the earlier mark is regularly used on www.medicon-apotheke.de, operated by the opponent, and that the earlier mark is used in pharmacies on the outer façade of the stores, on pharmacy advertising materials (e.g. ballpoint pens, writing pads, bags, water balls, cups), on medicines and dietary supplements, and on business documents for the service of pharmacies (e.g. invoices, delivery notes).

A screenshot of the landing page of the aforementioned website has been included in the opponent’s observations, along with the opponent’s clarification that this screenshot informs the consumer that it can order pharmaceutical products and healthcare-related products online, and that it can register for the MEDICON newsletter (‘Der Medicon-Newsletter’).

 Attachment 2: a printout of the German Company Register at www.handelsregister.de, dated 27/10/2019, showing that 11 entries were found for Medicon Apotheke with 10 entries for ‘Medicon Apotheke’ at addresses in, near and around Nuremberg (e.g. Regensburg, Bamberg, Ansbach and Schweinfurt).

In its observations, the opponent explained that, as a result of the German national law concerning pharmacies, the different pharmacies need to be operated by independent pharmacists, and that licenses concerning the use of the earlier mark have been granted by the opponent to these pharmacists. She also explained that these licensees must register their pharmacies with the German Company Register, and that each pharmacy is entitled to operate up to three affiliates, which explains why more than 11 pharmacies have been operational.

 Attachment 3: printouts of seven individually registered ‘Medicon Apotheke’, indicating, inter alia, their date of registration with the German Company Register, namely:

o medicon-Apotheke, registered on 09/07/2014, with an address at Hefnersplatz 3, 90402 Nuremberg;

o Medicon-Apotheke, registered on 31/10/2007, with an address at Wallensteinstraße 28, 90439 Nuremberg;

o Medicon Apotheke, registered on 19/06/2013, with an address at Pödeldorfer Straße 142, 96052 Bamberg;

o MEDICON Apotheke, registered on 01/04/2016, with an address at Neumühle 2, 91056 Erlangen;

o Medicon Apotheke, registered on 20/04/2012, with an address at Maximilianstraße 26, 93047 Regensburg;

o MEDICON Apotheke, registered on 05/06/2012, with an address at Marktplatz 50, 91207 Lauf;

o MEDICON Apotheke, registered on 31/10/2014, with an address at Eibacher Hauptstraße 52-54, 90451 Nuremberg.

 Attachment 4: advertising material and advertisements clearly showing the earlier mark, namely:

o a picture of a writing pad depicting the earlier mark and mentioning the aforementioned website;

o an advertisement in ‘Der Lokalanzeiger’ of 25/09/2015;

o a vacancy announcement in ‘Der Lokalanzeiger’ of 23/02/2018;

o an advertisement in ‘Der Lokalanzeiger’ of 21/06/2019.

 Attachment 5: a decision of the German Supreme Court of 02/03/2017 with regard to Medicon-Apotheke / Medico Apotheke.

Furthermore, the opponent’s observations include many pictures that demonstrate the earlier mark, in particular, pictures of the inside and outside of the pharmacies in Nuremberg (there appear to be seven different pharmacies), Bamberg, Schwabach, Lauf, Zirndorf, Fürth, Erlangen (two different pharmacies), Regensburg, Ansbach, Stein, Schweinfurt and Oberasbach, as well as pictures of the personnel’s working clothes (pharmacists’ white coats), pictures of stickered vehicles, a picture of an order form for a loyalty card, other pictures of advertising material and of a spring catalogue of the ‘MEDICON’ pharmacies. Finally, the opponent also included pictures of some goods branded with the earlier mark, such as a hand cream, a nose spray, vitamins and magnesium.

As far as the sworn declaration and explanation in the opponent’s observations are concerned, Article 10(4) EUTMDR expressly mentions written statements referred to in Article 97(1)(f) EUTMR as admissible means of proof of use. Article 97(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.

However, this does not mean that such statements do not have any probative value at all.

The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources.

Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.

The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods and services for which the earlier marks are registered, and in particular that none of the pictures are dated and show use of the earlier mark on or before the application date of the contested sign.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

The sworn declaration and the extracts of the German Company Register show that the place of use is Germany, more precisely various locations in Germany. This can be inferred from the language of the extracts (German) and all addresses mentioned therein. Therefore, the evidence relates to the relevant territory.

The extracts of the German Company Register (Attachment 3) show the date on which the opponent’s licensees, that is to say, the individual pharmacists as explained above, have obtained their registration. Four out of seven of these registrations were done during the relevant period (on 19/06/2013, 09/07/2014, 31/10/2014 and 01/04/2016, respectively). The remaining three registrations predate the relevant period, but, as attested in the sworn declaration, the pharmacies at issue were still active during the relevant period. Therefore, at least part of the evidence is dated within the relevant period.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, and its commercial volume, duration and frequency.

The Court has held that ‘[u]se of the mark need not … always be quantitatively significant for it to be deemed genuine, as that depends on the characteristics of the goods or service concerned on the corresponding market’ (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, § 39).

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

As mentioned above, use of the mark need not be quantitatively significant for it to be deemed genuine. In addition, it should be remembered that evidence of use may be of an indirect/circumstantial nature. Such indirect evidence can play a decisive role in the overall assessment of the evidence submitted. The relevant case-law demonstrates, for instance, that, under certain circumstances, even circumstantial evidence such as catalogues featuring the trade mark, while not providing direct information on turnover, can also be sufficient for proving extent of use in an overall assessment (08/07/2010, T‑30/09, Peerstorm, EU:T:2010:298, § 42 et seq.). Moreover, when it comes to the requirement to prove use in opposition proceedings before the Office, it is important to bear in mind that the purpose of Article 47(2) and (3) EUTMR is not to assess commercial success or to review the economic strategy of an undertaking, nor is it to restrict trade-mark protection to only large-scale commercial use of the marks (08/07/2004, T‑334/01, Hipoviton, EU:T:2004:223, § 32; 08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225, § 38).

The documents filed, namely the sworn declaration and the extracts from the German Company Register, in combination with the pictures of the inside and outside of the pharmacies where the earlier mark has been affixed and the screenshot of the website, www.medicon-apotheke.de, provide the Opposition Division with sufficient information concerning the extent of use. These documents, especially the extracts and the pictures of the outside of the pharmacies, show that at least a dozen pharmacies were operational during the relevant period in various locations in Germany. For several pharmacies to remain operational, at least a minimal commercial volume must have been achieved. As retailing pharmaceutical preparations is the main activity for pharmacies to make money, the longevity of these pharmacies is, although circumstantial, considered sufficient evidence for proving retail services in relation to pharmaceutical preparations. Consequently, in view of the particular market sector concerned, it can be deduced from the material submitted that the opponent has seriously tried to acquire a commercial position in the relevant market.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of use of the earlier mark.

In the context of Article 10(3) EUTMDR, the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

As marks cannot be directly used ‘on’ services, use of marks registered for services will generally be on business paper, in advertising, or in some other way directly or indirectly related to the services. In the present case, the evidence, and in particular the pictures of the inside and outside of the pharmacies in combination with the extracts from the German Company Register, in combination with the advertisements (in particular the advertisement in ‘Der Lokalanzeiger’ of 25/09/2015 and the vacancy announcement in ‘Der Lokalanzeiger’ of 23/02/2018), and the screenshot of the website, www.medicon-apotheke.de, show use of the sign as a trade mark for pharmacies. Consequently, the opponent has provided sufficient indications concerning the nature of the use of the earlier mark.

The applicant contended that most of the pictures, and in particular those of the outside of the ‘MEDICON’ pharmacies, show a sign that is not identical to the earlier marks, arguing that the pharmacies display the words ‘MEDICON’ and ‘APOTHEKE’ in continuation of each other and also include a distinctive figurative element. According to Article 18(1), second subparagraph, point (a), EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements that do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 47(2) and (3) EUTMR, Article 18 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

The Opposition Division first of all notes that many of the pictures submitted with the opponent’s observations display the earlier mark as registered, for instance:

o on a direction indicator

o on the personnel’s white coats

o on an advertisement banner

Moreover, in contrast with the applicant’s argument, the sign as displayed on the outside of the pharmacies, for instance and , does not alter the earlier mark’s distinctive character. The assessment of the distinctive or dominant character of one or more components of a complex trade mark must be based on the intrinsic qualities of each of those components, as well as on the relative position of the different components within the arrangement of the trade mark (24/11/2005, T‑135/04, Online Bus, EU:T:2005:419, § 36). The fact that the words ‘MEDICON’ and ‘APOTHEKE’ are depicted in continuation of, or next to each other, and include a figurative element, as shown on the pictures above, does not alter the earlier mark’s distinctive character. Indeed, ‘MEDICON’, being the first and – as will be explained below in section c) – the only distinctive element, maintains its decisive position, whereas only the second element, which – as will be explained below in section c) – is non-distinctive, has changed its position, however, still maintaining its second position (positioned below ‘MEDICON’ in the earlier mark and behind ‘MEDICON’ on the outside of the pharmacies). The addition of the figurative element, placed between ‘MEDICON’ and ‘APOTHEKE’, is not capable of affecting the distinctive character of the earlier mark, since it merely is the hallmark used to designate German pharmacies, as explained by the opponent.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory at least for retail services in relation to pharmaceutical preparations in Class 35.

At this point, the Opposition Division does not consider it necessary to undertake an assessment of the proof of use in relation to the rest of the goods and services covered by the earlier marks.

Therefore, the Opposition Division will only consider German trade mark registration No 302 009 051 781 for the abovementioned services for which genuine use has been established in its further examination of the opposition.

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 and services

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

Class 35: Retail services in relation to pharmaceutical preparations.

The contested goods and services, after a limitation, are the following:

Class 5: Pharmaceutical, medicinal and veterinary preparations, namely cannabis preparations; dietetic food products and preparations adapted for medical or veterinary use, namely cannabis preparations adapted for medical use.

Class 35: Retail and wholesale services relating to pharmaceutical, veterinary and sanitary preparations and medical articles, namely cannabis preparations and articles.

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.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘namely’, used in the applicant’s list of goods and services 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 and services specifically listed.

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.

Contested goods in Class 5

Retail services concerning the sale of specific goods are similar to an average degree to these specific goods. Although the nature, purpose and method of use of these goods and services are not the same, they are similar because they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested pharmaceutical, medicinal and veterinary preparations, namely cannabis preparations are similar to the opponent’s retail services in relation to pharmaceutical preparations in Class 35.

There is a low degree of similarity between the retail services concerning specific goods and other goods which are either highly similar or similar to those specific ones. This is because of the close connection between them on the market from the consumers’ perspective. Consumers are used to a variety of highly similar or similar goods being brought together and offered for sale in the same specialised shops or in the same sections of department stores or supermarkets. Furthermore, they are of interest to the same consumers.

The contested dietetic food products and preparations adapted for medical or veterinary use, namely cannabis preparations adapted for medical use and the opponent’s retail services in relation to pharmaceutical preparations are closely connected from the consumers’ perspective. They belong to the same market sector, and it is customary practice to market veterinary preparations, dietetic food products and preparations adapted for medical or veterinary use and pharmaceutical preparations together, as well as in the same specialised shops, such as pharmacies or chemist shops, or in the same sections of department stores.

Therefore, the contested dietetic food products and preparations adapted for medical or veterinary use, namely cannabis preparations adapted for medical use are similar to a low degree to the opponent’s retail services in relation to pharmaceutical preparations in Class 35.

Contested services in Class 35

The contested retail services relating to pharmaceutical and veterinary preparations, namely cannabis preparations and articles are included in the broad category of the opponent’s retail services in relation to pharmaceutical preparations. Therefore, they are identical.

Retail services of specific goods and retail services of other goods have the same nature as both are retail services, the same purpose of allowing consumers to conveniently satisfy different shopping needs, and the same method of use.

Similarity is found between those retail services where the specific goods concerned are commonly retailed together in the same outlets and they target the same public. However, the degree of similarity between retail of specific goods and retail of other goods may vary depending on the proximity of the retailed goods and the particularities of the market sectors.

Here, the contested retail services relating to sanitary preparations and medical articles, namely cannabis preparations and articles and the opponent’s retail services in relation to pharmaceutical preparations concern goods that are closely related and, as explained above with regard to the contested goods in Class 5, commonly retailed together in the same places, such as pharmacies and chemist shops, and they target the same public. Therefore, these services are similar at least to an average degree.

The contested wholesale services relating to pharmaceutical, veterinary and sanitary preparations and medical articles, namely cannabis preparations and articles are also similar at least to a low degree to the opponent’s retail services in relation to pharmaceutical preparations. Although wholesale services and retail services target a different public, they have the same nature and purpose, since both are aimed at bringing together, for the benefit of others, a variety of goods, enabling customers to conveniently view and purchase those goods. Furthermore, the subject of these services (the goods themselves) is either the same or, while not being exactly the same, still concerns goods which are closely connected in the market. The public could take the view that a wholesaler also offers retail services relating to, not only the same, but also similar categories of goods, and vice versa.

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 and services found to be identical and similar to varying degrees are directed at the public at large (e.g. pharmaceutical, medicinal and veterinary preparations, namely cannabis preparations in Class 5) and at business customers with specific professional knowledge or expertise, such as pharmacists (e.g. wholesale services relating to pharmaceutical, veterinary and sanitary preparations and medical articles, namely cannabis preparations and articles in Class 35).

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). The same applies to the services at issue.

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 is relatively high.

c) The signs

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 words ‘MEDICON’ and ‘Medican’ have no meaning for the relevant public. However, their component ‘MEDI’ is likely to be perceived by a significant part of the public as alluding to the German word ‘Medizin’ or ‘Medikament’, meaning ‘medicine’. Bearing in mind that the relevant goods and services are, as specified above, generally related to taking care of human (or animal) well-being, it is considered that the distinctive character of the component ‘MEDI’ is non-distinctive for all these goods and services, as it merely provides information about the medical or therapeutic purpose of the goods and services or of their general reference to the medical field. The remaining components, ‘CON’ of the earlier mark and ‘can’ of the contested sign, have no particular meaning for the relevant public and have therefore an average degree of distinctiveness.

The earlier mark is a figurative mark consisting of the verbal elements ‘MEDICON’, written in a large, blue, bold, standard, upper-case typeface, and ‘APOTHEKE’, written below it in a much smaller, red, standard, upper-case typeface. The alteration of colours, red and blue, is decorative in nature, and therefore plays a secondary role in the overall impression of the earlier mark. The verbal element ‘APOTHEKE’ is the German word for pharmacy, and therefore non-distinctive, as it will automatically be associated with the kind of establishment that provides the services at issue. As the element ‘MEDICON’ is clearly more eye-catching than the element ‘APOTHEKE’, it is considered the dominant element.

The contested sign is a figurative mark consisting of the verbal element ‘Medican’, written in a rather standard dark green title-case typeface, and placed underneath a light green figurative element that looks like a slightly stylised cannabis leaf. This figurative element describes the kind of the goods (to which the services relate), however, its stylisation endows it with some, although very limited, degree of distinctiveness. The different shades of green are decorative in nature, and therefore play a secondary role in the overall impression of the contested sign. The contested sign has no element that could be considered more dominant than other elements, as the verbal and figurative elements visually play an equally important role. However, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37). As a result, the figurative element will have a lesser impact on the consumer than the verbal element.

It is underlined that 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 and aurally, the signs coincide in the letters ‘MEDIC*N’, which are six out of seven letters of the earlier mark’s more distinctive and dominant element, and occupy an equally significant proportion in the contested sign’s only verbal element, and their sound. Even though the prefix ‘MEDI’ is non-distinctive, the signs’ verbal elements’ ‘MEDICON’ and ‘MEDICAN’ differ only in their penultimate letters, ‘O’ versus ‘A’, and their sound. The difference in sound of these letters is not particularly striking, taking into account that both are vowels, and play the same role within these elements, where they are situated at the ends thus catching less attention.

They also differ in the earlier mark’s non-distinctive verbal element ‘APOTHEKE’ and its sound, in the signs’ different colours, which are of a secondary nature, and in the contested sign’s very weak figurative element.

Therefore, the signs are visually and aurally similar to at least an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the component ‘MEDI’ of both marks, which is found to be non-distinctive for the relevant part of the public. Therefore, it is impossible to establish any degree of conceptual similarity. This outcome is not altered by the presence of the contested sign’s figurative element as the concept it conveys is descriptive.

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 services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of the non-distinctive element ‘APOTHEKE’ in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The contested goods and services target the general public and business customers, whose degree of attention is relatively high. The earlier mark enjoys an average degree of inherent distinctiveness, which affords it a normal scope of protection. The signs are visually and aurally similar to at least an average degree, and it is conceptually impossible to establish any degree of similarity.

The dominant and, taken as a whole, the only distinctive element of the earlier mark and the only verbal and distinctive element of the contested sign are composed of seven letters, and six of them are identical and in the same order. Although the common prefix ‘MEDI’ is non-distinctive, the differences between the signs only lie in the presence of a different penultimate letter in the elements ‘MEDICON’ and ‘MEDICAN’, and in the colours and in the addition of a non-distinctive verbal element in the earlier mark and a very weak figurative element in the contested sign.

Account is taken of the fact that 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).

Taking into account that the goods and services are identical and similar to varying degrees, it is recalled that evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17). In the present case, the similarity between the signs is sufficient to outweigh the low degree of similarity that exists between some of the goods and services, and a likelihood of confusion exists also in relation to them. Therefore, and as a result of the aforementioned imperfect recollection, there is even a likelihood of confusion for a public who have a relatively high degree of attention.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 302 009 051 781. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the German trade mark registration No 302 009 051 781 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services 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) and to proceed to an assessment of proof of use submitted by the opponent regarding the rest of the goods and services on which the opposition is based, as the outcome of these proceedings would be the same.

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, 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

Zuzanna STOJKOWICZ

Christophe DU JARDIN

Ferenc GAZDA

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.