OPPOSITION No B 3 076 823

Fertypharm S.L., Avda Josep Tarradellas 84, 08029 Barcelona, Spain (opponent), represented by Marqués & Ferrer, Marqués de Campo Sagrado, 8 Ático 2, 08015 Barcelona, Spain (professional representative)

a g a i n s t

Phaidros Healthcare Private Ltd., 52 Chin Swee Road #03-33, 160052 Singapore (applicant), represented by Lichtnecker & Lichtnecker, Im Schlosspark Gern 2, 84307 Eggenfelden, Germany (professional representative).

On 21/09/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 076 823 is upheld for all the contested goods.

2. European Union trade mark application No 17 933 624 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 of European Union trade mark application No 17 933 624 ‘FERTIPREP’ (word mark). The opposition is based on, inter alia, European Union trade mark registration No 14 200 604 ‘FERTYBIOTIC’ (word mark). 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.

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 14 200 604.

a) The goods

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

Class 5: Pharmaceutical preparations; dietary and nutritional supplements; sanitary preparations for medical purposes.

The contested goods are the following:

Class 5: Pharmaceutical products for treating fertility disorder; fertility enhancement preparations; dietary food supplement for fertility enhancement.

The contested pharmaceutical products for treating fertility disorder; fertility enhancement preparations are included in the broad category of, or overlap with, the opponent’s pharmaceutical preparations. Therefore, they are identical.

The contested dietary food supplement for fertility enhancement preparations are included in the broad category of the opponent’s dietary and nutritional supplements. 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 at the public at large and at business customers with specific professional knowledge in pharmaceutical products.

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 is also applicable to dietary food supplements, which have an impact on the consumer’s health.

c) The signs and distinctiveness of the earlier mark

FERTYBIOTIC	FERTIPREP
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The common elements ‘FERTY’ and ‘FERTI’ are not meaningful for some parts of the relevant public, for example for the Polish-speaking part of the public. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Polish-speaking part of the public.

It should be noted that 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). Even though the earlier mark has no meaning as a whole, it is possible that at least part of the public will dissect the ending part of the sign ‘BIOTIC’ as relating to or resulting from living organisms, due to the close resemblance with other existing words in Polish such as probiotyk (probiotic) and antybiotyk (antibiotic). However, while most of the relevant public are used to encountering the component ‘biotic’ for composite words such as the mentioned probiotic, it does not necessarily mean that they clearly understand the meaning of ‘biotic’ on its own. Therefore, it is likely that the public that do not understand the meaning of ‘biotic’ will not artificially split the element ‘FERTYBIOTIC’, but rather understand it as a whole, as a coined word without any clear concept. For this part of the public, this element as a whole remains with a normal degree of distinctiveness.

However, it cannot be excluded that part of the public, such as the professional public, might be aware of the meaning of ‘biotic’ on its own. Therefore, considering the relevant goods (pharmaceutical preparations and dietary food supplements) the term ‘BIOTIC’ will be associated with individualised products containing, or based on, living organisms. For this part of the public, the element ‘BIOTIC’ of the earlier mark will be considered as weak, while the initial part ‘FERTI’ remains distinctive.

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion. Since the opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation, 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 clear or direct meaning for any of the goods in question from the perspective of the public under analysis. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a weak element in the mark for part of the relevant public, as stated above.

The verbal element ‘FERTIPREP’ of the contested sign will be considered by the relevant public as meaningless, and therefore has a normal 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, the signs coincide in the initial letters ‘FERT’. However, they differ in the fifth letter ‘Y’ and ‘I’, respectively; and in the ending letters ‘*BIOTIC’ of the earlier mark, that is considered weak for part of the public, and the ending letters ‘*PREP’ of the contested sign.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the initial letters ‛FERT’, present identically in both signs. The pronunciation differs in the sound of the letters ‛*YBIOTIC’ of the earlier mark, which is weak for part of the public, and ‘*IPREP’ of the contested sign.

Therefore, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the part of the public that perceives the meaning of ‘BIOTICS’ in the earlier mark, since the contested sign will not be associated with any meaning, the signs are not conceptually similar. However, for the part of the public that do not perceive any meaning in the signs, 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 goods have been found identical. They target both the general and professional public, who will pay a higher degree of attention. The distinctiveness of the earlier mark is normal.

The signs are visually and aurally similar to an average degree, since they coincide in the initial element ‘FERT’, which is the part that first catches the attention of the reader, as mentioned above. From the conceptual perspective, the signs are not conceptually similar for part of the public, although the differentiating concept is introduced by the weak element ‘BIOTIC’ which does not have a strong impact on the overall comparison. For the other part the conceptual aspect does not influence the assessment of the similarity of the signs.

Indeed, likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods covered are from the same undertaking or economically linked undertakings.

Even for the consumers who will pay a high degree of attention, it is highly conceivable that they will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that many European Union trade marks include ‘FERTI’ in the EUIPO register.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that this statement does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘FERTI’. Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, there is a likelihood of confusion on the part of the Polish-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 14 200 604. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier European Union trade mark leads to the success of the opposition and to the rejection of the contested trade mark for all the goods 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).

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

Valeria ANCHINI

Cristina SENERIO LLOVET

Sylvie ALBRECHT

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.