OPPOSITION No B 3 070 978

ANGELINI FARMACEUTICA, S.A., Calle Osi, 7-9, 08034 Barcelona, Spain (opponent), represented by CON LOR S.P.A., Avda Aguilera, 19 ‑ 1ºB, 03007 Alicante, Spain (professional representative)

a g a i n s t

MUDITA TRADING SL, Impresores 20, 28660 Boadilla del Monte, Spain (applicant), represented by NEWPATENT, Puerto 34, 21001 Huelva, Spain (professional representative).

On 20/03/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 070 978 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 939 524, for the figurative mark , namely against all the goods in Classes 3 and 5 and against some of the services in Class 35. The opposition is based on European Union trade mark registration No 17 680 323 for the word mark ‘FIGU10’. 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 and services

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

Class 3: Abrasives; essential oils and aromatic extracts; tailors’ and cobblers’ wax; cleaning and fragrancing preparations; animal grooming preparations; toiletries; massage creams, not medicated; cosmetics and cosmetic preparations; body cleaning and beauty care preparations; oils for cosmetic purposes; massage oils, not medicated.

Class 5: Dietary supplements and dietetic preparations; dental preparations and articles, and medicated dentifrices; sanitary preparations and articles; pest control preparations and articles; dental preparations and articles; hygienic preparations and articles; medical dressings, coverings and applicators; pharmaceuticals and natural remedies; live organs and tissues for surgical purpose; diagnostic preparations and materials; mineral food preparations for medical purposes; preparations for use in naturopathy; medical preparations; dietetic foods adapted for medical purposes; dietetic foods for use in clinical nutrition; dietary supplements for humans; food for medically restricted diets; powdered nutritional supplement drink mix; dietary food supplements used for modified fasting; food supplements; dietary and nutritional supplements; medicated food supplements; dietary supplements for humans not for medical purposes; food supplements for non-medical purposes; health food supplements for persons with special dietary requirements; prebiotic supplements; probiotic supplements; mineral nutritional supplements.

The contested goods and services are the following:

Class 3: Adhesives for affixing false hair; adhesives for cosmetic purposes; adhesives for cosmetic purposes; adhesive removers; eyelashes (adhesives for affixing false -); facial concealer; concealers; oils for cosmetic purposes; impregnated cleaning pads impregnated with cosmetics; cosmetics; functional cosmetics; nonmedicated cosmetics; cosmetics for use on the skin; cosmetic kits; body and facial creams [cosmetics]; face creams for cosmetic use; toning creams [cosmetic]; skincare cosmetics; cosmetic moisturisers; moisturising gels [cosmetic]; lint for cosmetic purposes; cosmetic kits.

Class 5: Adhesive bands for medical purposes; adhesive bands for medical purposes; medical adhesives for binding internal tissue; adhesives for affixing prostheses; surgical glues; adhesive dressings; double sided adhesive tapes for medical use; adhesive bands for medical purposes; adhesive compositions for medical use; adhesive bands for medical purposes; adhesive skin patches for medical use; adhesive films for medical use; adhesive bands for medical purposes; adhesive bands for medical purposes; ear bandages; dressings, medical; dressings, medical; dressings, medical; materials for dressings; pharmaceuticals; sterile plastic films for use as bandaging.

Class 35: Promoting the goods and services of others, product marketing, advertising relating to pharmaceutical preparations; retailing, wholesaling and sale via the internet of cosmetics and beauty products, pharmaceuticals, parapharmaceuticals; all the aforesaid services relating to cosmetics and beauty products, pharmaceuticals, parapharmaceuticals; retailing and wholesaling in shops and via global computer networks of cosmetics and beauty products, pharmaceuticals, parapharmaceuticals.

Some of the contested goods and services are identical or similar to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 assumed to be identical are directed at the public at large and professional consumers. The degree of attention may vary from average to high, depending on the various goods and services, the specialised nature of the goods and services, the frequency of purchase, and their price.

For example, in relation to pharmaceutical preparations, the relevant public’s level 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 and quoted case-law), whilst it must be considered average in relation to certain inexpensive and/or frequently used products such as cosmetics.

c) The signs

FIGU10
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 relevant consumers, when perceiving the signs, will break down their verbal elements into the elements ‘FIGU’ and ‘10’ in the earlier mark and ‘FIX’ and ‘10’ in the contested sign, as the number ‘10’ suggests a concrete meaning. Although in the contested sign, in the element ‘FIX’, the letter ‘X’ is depicted in two colours, which distinguishes it from the previous two letters, the overall stylisation of this string of letters is such that none of the letters will be singled out by the relevant public as an individual element.

As the common element ‘10’ is placed after the word elements in both signs, it is likely to be associated with the quantity in which the goods are sold (e.g. 10 units or ml) or the quantity of active substance in them, especially in connection to goods in Class 3. It can also be related to some characteristics of the contested goods in Class 5 such as the length, width or thickness of the bands. This numeral may also be seen as an indication of a line, series or version of the goods as this is common practice for the relevant market sectors. Therefore, this number has reduced distinctiveness in relation to both the opponent’s and the contested goods in Classes 3 and 5. However, with regard to the contested services in Class 35, the number ‘10’ does not have any clear and direct meaning, therefore it is distinctive.

The verbal element ‘FIGU’ of the earlier mark is meaningless and does not describe any characteristics of the goods in question. Therefore, it is distinctive.

The English word ‘FIX’ of the contested sign is likely to be understood in the relevant territories as ‘to fasten (something) securely in a particular place or position; a measure taken to resolve a problem or correct a mistake; a solution or remedy’ (information extracted from Lexico on 03/03/2020 at https://www.lexico.com/definition/fix) due to its common usage all over Europe, (e.g. in the popular expression ‘fix it’). Moreover, it can also be found in most European languages such as Czech, French, German and Hungarian (where it is commonly used as the synonym of ‘constant’), and in Dutch and Finnish, mostly in connection with the concept of correction or repair. Due to its basic nature, it is likely to be recognised and understood by the majority of the relevant public, with this meaning (19/01/2016, R 640/2015‑5, Herbapax / Herba Fix et al.). Therefore, this element is non-distinctive in relation to all the goods in Classes 3 and 5, as it indicates that the goods are intended to attach something securely to a specific surface (all goods that contain adhesive) or to resolve a problem (e.g. cosmetics; pharmaceuticals). However, in relation to the services in Class 35, the distinctiveness of this element is of an average degree, as it does not indicate clearly and directly any specific characteristic of the services.

The contested sign does not have any dominant element. The figurative element is in the upper part of the sign and will not go unnoticed. 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).

The figurative element will be perceived as an illustration that alludes to the purpose of the goods, namely that they relate to the ears. Moreover, it is usual that medical products include a depiction of the relevant part of the body in their signs or packaging. Therefore, the distinctiveness of this element is limited in relation to the goods in Class 5 and to some goods in Class 3, for which the same principle can be applied. However, for other goods in Class 3 (e.g. adhesive removers), and for the services in Class 35, its distinctiveness is normal, as it does not directly indicate characteristics of the goods or services and it is not a usual indication in these market sectors.

The General Court has held that 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 share some of them, but they cannot, for that reason alone, be regarded as visually similar (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).

As the signs are not long and their verbal elements are rather short, the small differences between them will be easily noticed by the public and may frequently lead to a different overall impression.

Aurally, the signs are similar to the extent that they both contain the numerical element ‘10’, which will be pronounced in an identical way in the respective languages. However, this element is of reduced distinctiveness in the earlier mark and, moreover, it is placed at the end of the signs. The signs also have the first two letters, ‘FI’, of their verbal elements in common. The mere coincidence in those two letters, regardless of the fact that they are at the beginning of the signs, does not stand out. Considering that the elements ‘FIGU’ and ‘FIX’ are rather short verbal elements, the differences between them will not go unnoticed. Moreover, the earlier mark contains two syllables (FI-GU), whereas the contested sign has only one (FIX) and this is reflected in a different rhythm and pronunciation. Therefore, the signs are similar to a low degree.

Visually, the signs coincide in the same elements as in the aural comparison. However, they differ in the overall stylisation of the contested sign (colours and typeface) and in the presence of the figurative depiction of an ear, which, regardless of its distinctiveness in relation to some of the goods and services, has no counterpart in the earlier mark. Therefore, the signs are similar to a low degree.

Conceptually, the signs coincide in the concept of the number ‘10’, which is of limited distinctiveness in relation to all of the opponent’s goods.

The signs differ in all of the remaining elements. Independently from the manner in which they are understood and their degree of distinctiveness, the signs are similar to a low degree due to ‘10’ being present in both of them.

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, despite the presence of a weak element in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

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).

The goods and services are assumed to be identical; the degree of attention varies from average to high and the distinctiveness of the earlier mark is normal. The signs are visually, aurally and conceptually similar to a low degree, mainly due to the common element ‘10’ which has a low degree of distinctiveness in relation to the opponent’s goods.

The similarities between the signs originate from an element that is of limited distinctiveness in relation to the opponent’s goods and will not be perceived by the relevant consumer as an element that can identify the commercial origin of the goods. As regards the coincidence in the letters ‘FI’, this will not retain the attention of the relevant public, as there is no reason why the relevant public would artificially single out these two letters and attach any particular importance to them. Additionally, there is no reason for the relevant public to connect a meaningless string of letters (FIGU) with any other word with a concept (FIX) merely because they have some letters in common. Therefore, the similarities are not sufficient to lead to a likelihood of confusion on the part of the public.

The different elements in the contested sign are clearly perceivable and they do not have a counterpart in the earlier mark. Therefore, although they may have a low degree of distinctiveness (or even not be distinctive at all) in relation to some of the goods, they create a totally different overall impression which is sufficient to exclude any likelihood of confusion between the signs.

Therefore, it can reasonably be concluded that consumers will clearly be able to distinguish between the marks and will perceive them as coming from different undertakings. Considering all the above, there is no likelihood of confusion, including likelihood of association, on the part of the public. The opposition must be rejected.

Furthermore, it must be taken into account that the existence of conceptual differences between the signs can counteract the visual and phonetic similarities between them when at least one of the two signs has a sufficiently clear and specific meaning that the public is capable of grasping immediately (22/06/2004, T‑185/02, Picaro, EU:T:2004:189, § 56). This principle is fully applicable in the present case, where the contested sign contains the word ‘FIX’ whereas ‘FIGU’, in the earlier mark, has no meaning. The relevant consumers will immediately grasp those meanings and distinguish the words making up the signs.

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

Irena LYUDMILOVA LECHEVA

Maria Slavova

Francesca CANGERI

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.