OPPOSITION No B 3 082 289

Dermapharm AG, Lil-Dagover-Ring 7, 82031 Grünwald, Germany (opponent), represented by Dr. Kunz-Hallstein Rechtsanwälte, Galeriestr. 6A, 80539 München, Germany (professional representative)

a g a i n s t

Laboratorio Genové, S.A., Avda. Carrilet, 293, 08907 l’Hospitalet de Llobregat, Spain (applicant), represented by Canela Patentes y Marcas, S.L., Girona, 148 1-2, 08037 Barcelona, Spain (professional representative).

On 29/06/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 082 289 is upheld for all the contested goods, namely

Class 3: Non-medicated soaps; non-medicated cosmetics, non-medicated hair lotions; non-medicated preparations for skin and hair hygiene and care; sun creams; tanning preparations; deodorant soap; skin cleansing masks; non-medicated shampoos.

Class 5: Pharmaceutical preparations for medical and veterinary use; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary and nutritional supplements for humans or animals; plasters, materials for dressings; disinfectants; preparations for the care and treatment of the skin, nails and hair for medical and pharmaceutical use; medicated soap; anti-bacterial soap; disinfectant soap; medicated cosmetic soaps.

2. European Union trade mark application No 18 001 610 is rejected for all the contested goods. It may proceed for the remaining goods.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 18 001 610 for the word mark ‘GENOVÉ GENOCUTAN’ namely against some of the goods in Classes 3 and 5. The opposition is based on, inter alia, German trade mark registration No 3020 17 025 592 for the word mark ‘Gentacutan’. 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. For reasons of procedural economy, the Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s German trade mark registration No 3020 17 025 592 for the word mark ‘Gentacutan’.

1. The goods

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

Class 5: Pharmaceutical preparations; medicines.

The contested goods are the following:

Class 3: Non-medicated soaps; non-medicated cosmetics, non-medicated hair lotions; non-medicated preparations for skin and hair hygiene and care; sun creams; tanning preparations; deodorant soap; skin cleansing masks; non-medicated shampoos.

Class 5: Pharmaceutical preparations for medical and veterinary use; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary and nutritional supplements for humans or animals; plasters, materials for dressings; disinfectants; preparations for the care and treatment of the skin, nails and hair for medical and pharmaceutical use; medicated soap; anti-bacterial soap; disinfectant soap; medicated cosmetic soaps.

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.

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.

Contested goods in Class 3

The contested non-medicated cosmetics, non-medicated hair lotions; non-medicated preparations for skin and hair hygiene and care; skin cleansing masks; non-medicated shampoos are similar to the opponent’s pharmaceutical preparations. This is because the cosmetics listed above include preparations used to enhance or protect the appearance or odour of the human body and they are also often fragranced. Pharmaceuticals, however, comprise products, such as skincare or haircare preparations with medical properties and may coincide in purpose with cosmetics. Moreover, they share the same distribution channels since they can be found in pharmacies or other specialised shops. They target the same public and are often manufactured by the same companies.

The same reasoning applies to the contested sun creams; tanning preparations as some pharmaceuticals can be preparations to reduce sun allergies and/or to prepare the skin for exposure to sun. Therefore, they can have the same general purpose (protecting the skin from the possible negative effects of sun exposure), the same distribution channels, target the same public and be manufactured by the same companies. Therefore, they are also similar.

Finally, the contested non-medicated soaps; deodorant soap are similar to a low degree to the opponent’s pharmaceutical preparations. Indeed, the purpose of soap, broadly speaking, is to improve the appearance and odour of the body, through cleaning the skin by removing dead skin cells, oil, sweat, dirt and other impurities. For example, facial soaps are used to remove make-up residue, etc. and can be specifically intended for sensitive skin (hypoallergenic products); this helps to unclog pores and prevent skin conditions such as acne. Likewise, dermatological pharmaceutical preparations, which are included in the broad category of pharmaceutical preparations, are used for skin disorders that can affect one’s appearance or body odour. These goods are sold in the same places as pharmacies, and they are directed at the same public.

Contested goods in Class 5

The contested pharmaceutical preparations for medical and veterinary use; preparations for the care and treatment of the skin, nails and hair for medical and pharmaceutical use are included in the broad category of the opponent’s pharmaceutical preparations. Therefore, they are identical.

The contested sanitary preparations for medical purposes; disinfectants are highly similar to the opponent’s pharmaceutical preparations insofar as they have the same purpose, namely treating or preventing a disease. They can also be sold in the same distribution channels, such as pharmacies and they target the same public. Moreover, they are often manufactured by the same companies.

The same reasoning applies to the contested medicated soap; anti-bacterial soap; disinfectant soap; medicated cosmetic soaps, which are soaps with medical or sanitising properties. Therefore, they have the same purpose and distribution channels as the opponent’s pharmaceutical preparations. Moreover, they target the same public and are often manufactured by the same companies. These goods are therefore highly similar.

The contested dietetic food and substances adapted for medical or veterinary use; dietary and nutritional supplements for humans or animals are similar to the opponent’s pharmaceutical preparations. The contested goods are substances prepared for special dietary requirements with the purpose of treating or preventing a disease. Therefore, their purpose is similar to that of pharmaceutical products (substances used in the treatment of diseases) insofar as they are used to improve a patient’s health. They coincide in the relevant public and the goods generally share the same distribution channels.

The contested plasters, materials for dressings are also similar to the opponent’s pharmaceutical preparations as their purpose is to aid healing (a wound or a disease). They have the same relevant public and they can share the same distribution channels.

The contested food for babies is similar to a low degree to the opponent’s pharmaceutical preparations as they can have the same purpose: to prevent or to treat a disease, and target the same public.

2. 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 or similar to varying degree are directed at the public at large (goods in Class 3) and at the public at large and health professionals (goods in Class 5).

The degree of attention may vary from average to high. In particular, the degree of attention will be average for the goods in Class 3 and high for the goods in Class 5.

This is because, 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. A similar reasoning applies to the rest of the goods in Class 5, all of which have or may have a direct impact on human and/or animal health.

Given that the general public is more prone to confusion and in particular does not understand medical jargon, which might be relevant for the case in question, as will be seen below, the examination will proceed focusing on the general public.

In relation to the applicant’s claim that the relevant public would necessarily be medical professionals because the goods would include antibiotics, given the specification of the goods at issue, which are quite broadly formulated, this conclusion cannot be reached. It is clear from the case-law that outside the proof of use assessment, it is the goods and services as registered and/or listed in the application that are relevant and not any intended possible or actual uses of the signs at issue.

3. The signs and distinctiveness of the earlier mark

Gentacutan	GENOVÉ GENOCUTAN
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).

Both marks are word marks.

The applicant argues that the public will dissect the earlier mark into ‘GENTA’ and ‘CUTAN’ and that ‘Genta’ will be associated with the antibiotic ‘Gentamicin’. However, this is unsupported by any evidence to demonstrate that the German general public would perceive this string of letters as referring to this antibiotic. Therefore, and also as ‘Genta’ is significantly shorter than ‘Gentamicin’ the claimed association is not self-evident, the Opposition Division does not endorse this argument of the applicant.

The applicant argues that the public would perceive ‘CUTAN’ as a commonly used composite part, suggesting that the products are skin related (a prefix derived from the Latin ‘cutis’ meaning skin).

The evidence concerning Germany refers to specialised websites in the medical or scientific field (www.biologie-lexicon.de, www.healthy48.com, www.medizin-kompakt.de and www.wissen.de/medizin). Therefore, it is obvious that, even if health professionals might possibly associate ‘CUTAN’ with such a meaning, this reasoning cannot apply to the general public, who will not associate ‘CUTAN’ with any meaning.

Moreover, for the sake of completeness, the applicant provided some screenshots related to products that include ‘CUTAN’ in their names (‘Sensicutan’, ‘Cutanplast’, ‘Viacutan Plus’, ‘Cutan’, ‘Tricutan’). However, the low number of products does not imply a widespread use of goods containing this component in Germany. Moreover, without any information on the actual presence of these products on the market, such as sales, promotional activities and other relevant information to show that the consumers have experienced a wide exposure to these products, it cannot be concluded that the public would immediately dissect the contested mark and perceive the component ‘CUTAN’. Even if it were to be perceived, it is not clear if the component ‘CUTAN’ would be understood with any particular meaning.

Therefore, the Opposition Division considers that the relevant public, which for the purposes of the present analysis is the public at large, will not perceive the component ‘CUTAN’ in the mark because, for this part of the public, ‘CUTAN’ is meaningless and there is nothing else that might prompt it to do so.

Consequently, it is concluded that the relevant public would perceive the earlier mark ‘Gentacutan’ as a fanciful inseparable unit with no meaning.

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, as seen above, the earlier trade mark 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.

In addition, neither of the two elements of the contested sign ‘GENOVÉ GENOCUTAN’ has a meaning for the public in the relevant territory, therefore, both elements are distinctive. The fact that the applicant’s company name contains ‘GENOVÉ’ is not sufficient on its own for the public to see it as referring to the company at issue.

It should be noted that the protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics that the mark might possess (22/05/2008, T‑254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is irrelevant whether a word mark is depicted in lower- or upper-case letters, or in a combination thereof, such as in the case in question, insofar as the combination of upper- and lower-case letters does not depart from the usual way of writing.

Therefore, the fact that the earlier mark is in title case and the contested sign in upper-case letters is irrelevant.

Moreover, as the signs at issue are word marks, by definition, none of their element can be more dominant that another.

It should be recalled that while it is true that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark, as argued by the applicant, this argument cannot hold true in all cases and does not, in any event, cast doubt on the principle that the assessment of the similarity of marks must take account of the overall impression. Here, the contested sign is composed of two words only, and it is considered that there is nothing that would prevent the public from reading the sign as a whole.

Visually and aurally, the signs coincide in the strings of letters ‘GEN’ and ‘CUTAN’ and their sounds, which are eight out of the ten letters of the earlier mark and eight out of the nine letters of the second element of the contested sign. However, they differ in their central parts: the letters ‘TA’ of the earlier mark and the letter ‘O’ of the second element of the contested sign.

Moreover, although they differ in the first additional element of the contested sign, ‘GENOVÉ’, this also begins with the same letters, ‘GEN’, as the earlier mark.

As mentioned above, there is nothing in the contested mark that will prevent consumers from perceiving both its elements as inseparable and reading the sign as composed of these two elements. Its second element is a distinctive element that performs an independent role within the contested sign. Furthermore, the differences in the second element of the contested and the earlier mark are positioned in their central parts to which consumers tend not to give very much importance (01/02/2012, T‑353/09, mtronix, EU:T:2012:40, § 42). It is particularly striking that there is a coincidence in eight letters (out of nine or ten letters, respectively) that are in the same order.

Therefore, the signs are visually and aurally similar to an 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.

4. 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).

In the present case, the contested goods are identical and similar to varying degrees to the opponent’s goods. The present assessment proceeds on the public at large, who possesses a degree of attention varying from average to high.

The earlier mark is distinctive. The signs are visually and aurally similar to an average degree. They do not convey any concept, therefore, the conceptual aspect does not influence the assessment.

The similarities between the signs arise from the second element of the contested sign, which reproduces almost identically the sole element of the earlier mark. Account is taken of the fact that 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). Therefore, the differences stemming from the central parts of these elements are likely to go unnoticed.

Therefore, the main difference between the signs is the first additional element of the contested sign ‘GENOVÉ’. However, 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/services covered are from the same or economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive that the contested mark is the earlier mark represented with the house mark or the house mark depicted with the product range’s mark. It has to be pointed out that it is common in the pharmaceutical sector, as well as in the cosmetic sector, to have a house mark and a mark for a product range, therefore, the public, even displaying a high degree of attention, will make a connection between the signs. This is also true for the goods that are similar to a low degree.

Considering all the above, there is a likelihood of confusion on the part of the general public. Given that a likelihood of confusion for only part of the relevant public is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 3020 17 025 592. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right German 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

Teodora TSENOVA-PETROVA

Cindy BAREL

Saida CRABBE

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.