DECISION

of the Fourth Board of Appeal

of 25 March 2021

In case R 1627/2020-4

Laboratorio Genové, S.A.
Avda. Carrilet, 293 08907 L’Hospitalet de Llobregat Spain	Applicant / Appellant

represented by Canela Patentes y Marcas, S.L., Girona, 148 1-2, 08037 Barcelona, Spain

v

Dermapharm AG
Lil-Dagover-Ring 7 82031 Grünwald Germany	Opponent / Defendant

represented by Dr. Kunz-Hallstein Rechtsanwälte, Galeriestr. 6A, 80539 München, Germany

APPEAL relating to Opposition Proceedings No B 3 082 289 (European Union trade mark application No 18 001 610)

The Fourth Board of Appeal

composed of D. Schennen (Chairman), L. Marijnissen (Rapporteur) and A. González Fernández (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 18 December 2018, Laboratorio Genové, S.A. (‘the applicant’) sought to register the word mark

GENOVÉ GENOCUTAN

as a European Union trade mark for goods in Classes 3 and 5 including 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.

2. On 6 May 2019, Dermapharm AG (‘the opponent’) filed an opposition against the registration of the published trade mark application based on earlier international registration No 1 403 812 designating Poland, Croatia, the UK, Austria and Italy, registered on 6 April 2018 and its basic German registration No 3020 17 025 592 for the word mark

Gentacutan

applied for on 10 October 2017 and registered on 23 October 2017 for ‘pharmaceutical preparations; medicines’ in Class 5.

3. The grounds of opposition were those laid down in Article 8(1)(b) EUTMR. The opposition was directed against part of the goods of the application, namely those specified in paragraph 1 above, and based on all the earlier goods.

4. By decision of 29 June 2020 (‘the contested decision’), the Opposition Division upheld the opposition for all the contested goods (i.e. those specified in paragraph 1 above), rejected the application for all these goods and ordered the applicant to bear the costs.

5. The Opposition Division first examined the opposition in relation to the earlier German trade mark. It reasoned that the conflicting goods were identical or similar to various degrees. They were directed at the public at large and at health professionals. The degree of attention varied from average (Class 3) to high (Class 5).

6. For the comparison of the signs, the relevant territory was Germany. The applicant’s argument that ‘Genta’ in the earlier mark would be associated with the antibiotic ‘Gentamicin’ was unsupported by any evidence. Also as ‘Genta’ was significantly shorter, the claimed association was not self-evident. The applicant’s argument 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) also failed. The evidence submitted concerning Germany referred to specialised websites in the medical or scientific field. Even if health professionals might possibly associate ‘CUTAN’ with such a meaning, this reasoning does not apply to the general public, who will not associate ‘CUTAN’ with any meaning. As regards the screenshots related to products that include ‘CUTAN’ in their names: these did 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, it could not be concluded that the public would immediately dissect the contested mark and perceive the component ‘CUTAN’, and even it were perceived, it is not clear if the component would be understood with any particular meaning. The relevant public at large would perceive the earlier mark ‘Gentacutan’ as a fanciful inseparable unit with no meaning with a normal level of distinctiveness. The same applied to the two word elements of the contested mark. Visually and aurally, the marks were similar to an average degree. A conceptual comparison was not possible.

7. The Opposition Division concluded that there was a likelihood of confusion on the part of the general public, even taking into account a high degree of attention and also for the goods that were similar to a low degree. In this respect it was pointed out that it was common in the pharmaceutical sector, as well in the cosmetic sector, to have a house mark and a mark for a product range. As the opposition was fully successful on the basis of the earlier German trade mark, there was no need to assess the opposition based on the other earlier rights invoked by the opponent.

Submissions and arguments of the parties

8. On 4 August 2020, the applicant filed an appeal against the contested decision, followed by its statement of grounds on 29 October 2020. The applicant requests that the Board annul the contested decision and allow the contested mark to be registered for all the goods applied for.

9. The applicant argues that the earlier goods are broadly speaking for healing and/or curing, while the contested goods in Class 3 are intended for personal hygiene and beauty care, not being used in treatments intended for human healing. As a consequence, they are sold in totally different establishments. Reference is made to two previous decisions of the Boards of Appeal (one from 2001 and one from 2016) and two opposition decisions of the Office (one from 2008 and one from 2009).

10. It further argues that it cannot be ruled out that the relevant public will be capable of perceiving the suffix ‘CUTAN’ as a reference to ‘skin’, especially considering that the word KUTAN is a German word meaning ‘cutaneous’ (belonging to or related to the skin) which is not only a medical term. The fact that it is used fundamentally in the field of medicine does not imply that only professionals in that sector know its meaning. Internet printouts were submitted which refer to kutane Atmung, kutanescher Atmung and Tiere die die Fähigkeit haben, ihren Atmungsprozess kutan durchzuführen.

11. Therefore, ‘KUTAN’ / ‘CUTAN’ is understood by the general German public as a descriptive adjective for the products, more so when it comes to people who buy pharmaceutical preparations. The applicant shows search results from online pharmacy websites using the keywords kutanes Pflaster, subkutane, perkutane. It argues that the word refers to a specific way of administering pharmaceutical products and is even used in the field of cosmetics (e.g. kutane Alterungsprozesse, kutane und zellulare Versorgung der Haut, kutanen Fettgewebes, etc.).

12. The applicant concludes that when comparing the marks, decisive weight cannot be attributed to the element ‘CUTAN’ since the relevant public will see it as a descriptive particle referring to skin-related pharmaceutical preparations. As regards the other components, it argues that ‘in aural and visual comparison it is plain to see the differences’.

13. In its response received on 30 December 2020, the opponent requests that the Board confirm the contested decision.

14. It argues that the contested goods in Class 3 are similar, in line with the standing practice of the Office. As regards the comparison of the signs, it emphasises that the average consumer perceives a mark as whole and does not analyse its various details. Therefore, any potential meaning of ‘KUTAN’ is irrelevant. In any event, the potential meaning of ‘KUTAN’ in German does not justify the conclusion that the consumer would entirely ignore the part ‘CUTAN’ when perceiving the trade marks. Especially for the public at large, it cannot be assumed that it will split the earlier mark into ‘GENTA’ and ‘CUTAN’. The German word KUTAN is a medical term, the Duden dictionary does mention it as a medical word and points out that it is only rarely used (extract attached).

15. In sum, the public at large will not perceive ‘CUTAN’ as an independent element in the conflicting marks and will perceive the earlier mark as a fanciful inseparable unit without meaning. The Opposition Division correctly found that there was a likelihood of confusion based on the earlier German trade mark.

Reasons

16. The appeal is not well founded. The opposition succeeds on the grounds of Article 8(1)(b) EUTMR.

17. According to Article 8(1)(b) EUTMR, upon opposition of the proprietor of an earlier trade mark, the trade mark applied for shall not be registered if, because of its identity with or similarity to the earlier trade mark and, cumulatively, the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected.

18. One of the earlier rights is German trade mark No 3020 17 025 592. Like the Opposition Division did, the Board will first examine the opposition based on this earlier mark. The relevant territory for analysing the likelihood of confusion is Germany. The relevant public includes the public at large and the professional public in the medical and pharmaceutical field.

Comparison of the goods

19. Goods and services are identical when they appear with the same wording in both lists of goods and services or when they are included in a more general category designated by the other mark (05/02/2020, T-44/19, TC Touring Club, EU:T:2020:31, § 91; 13/09/2018, T-94/17, Tigha, EU:T:2018:539, § 46).

20. In assessing the similarity of goods and services, all the relevant factors pertaining to the relationship between those goods and services should be taken into account. Those factors include their nature, their purpose and method of use, and whether they are in competition with, or complementary to, each other (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 23). Other factors may also be taken into account such as, for example, their distribution channels (11/07/2007, T‑443/05, Pirañam, EU:T:2007:219, § 37). The reference point is whether the relevant public would perceive the relevant products as having a common commercial origin (04/11/2003, T-85/02, Castillo, EU:T:2003:288, § 38).

21. As reasoned by the Opposition Division, and not disputed by the parties, the contested goods in Class 5 are identical (‘pharmaceutical preparations for medical and veterinary use; preparations for the care and treatment of the skin, nails and hair for medical and pharmaceutical use’), highly similar (‘sanitary preparations for medical purposes; disinfectants; medicated soap; anti-bacterial soap; disinfectant soap; medicated cosmetic soaps’), similar (‘dietetic food and substances adapted for medical or veterinary use; dietary and nutritional supplements for humans or animals; plasters, materials for dressings’) or similar to a low degree (‘food for babies’). The Board endorses this reasoning which forms an integrated part of this decision.

22. As also correctly reasoned by the Opposition Division, the contested goods in Class 3 ‘non-medicated cosmetics, non-medicated hair lotions; non-medicated preparations for skin and hair hygiene and care; sun creams; tanning preparations; skin cleansing masks; non-medicated shampoos’ are similar, to an average degree, to the earlier ‘pharmaceutical preparations’ in Class 5. The contested goods concern preparations used to enhance or protect the appearance of the human body such as skin lotions, skin cleaners, haircare preparations and sun protectors. ‘Pharmaceutical preparations’, on the other hand, comprise products such as skin lotions and cleaners, haircare preparations and preparations to reduce sun allergies with medical properties. They have the same method of use and may coincide in purpose with the contested goods. 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 (Office Guidelines, Part C, Opposition, Section 2, Chapter 2, Comparison of Goods and Services, annex II, par 5.1.4; 13/05/2015, T‑363/12, CLEANIC Natural Beauty / CLINIQUE, EU:T:2015:278, § 42, 43).

23. The same reasoning applies to the contested ‘non-medicated soaps; deodorant soap’ including those meant for instance for a sensitive skin. These goods coincide in method of use and may have the same purpose as the earlier ‘pharmaceutical preparations’ which contain dermatological products such as soaps with medical properties meant for instance to prevent skin conditions such as acne or other skin disorders.

24. The applicant seems to argue that the contested goods in Class 3 are not similar; its arguments in this respect fail. As reasoned above, the conflicting goods overlap in purpose and method of use and can both be found in pharmacies and other specialised shops. With regard to its reference to two previous decisions of the Boards of Appeal, one twenty years and the other five years old and two decisions from the Opposition Division, both more than ten years old, the Board notes that the legality of decisions is to be assessed pure­ly with reference to the Regulations as interpreted by the Court, and not to the Office practice in earlier decisions, in particular not when these are very limited in number, outdated and not in accordance with the current practice of the Office as outlined in the reasoning above.

Comparison of the signs

25. The assessment of the visual, phonetic 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. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (06/10/2005, C-120/04, Thomson Life, EU:C:2005:594, § 28-29; 28/04/2004, C-3/03 P, Matratzen, EU:C:2004:233, § 32).

26. The word marks to be compared are:

    Contested mark	Earlier mark
    GENOVÉ GENOCUTAN	Gentacutan

27. For the two word marks to be compared, it is irrelevant whether they are written in upper- or lower-case letters. The earlier mark consists of the single word ‘GENTACUTAN’. The contested mark consists of two words, ‘GENOVÉ’ and ‘GENOCUTAN’, which are co-dominant and equally distinctive.

28. The applicant argues that the last part ‘CUTAN’ in which the marks coincide is weakly distinctive for the goods concerned: Due to the meaning of the word kutan in German as belonging to, or concerning, the skin, it would be perceived as descriptive for the goods concerned, not only by the professional public, but also by the public at large. This argument fails. First of all, the word kutan is not the same as ‘CUTAN’. Moreover, the assessment of the similarity must be based on the overall impression given by the marks. Even in the unlikely event the word ‘cutan’ were to be perceived as allusive to the skin, within the words ‘GENTACUTAN’ and ‘GENOCUTAN’, it remains that the five last letters ‘CUTAN’ of the words form an integrated part with the preceding letters ‘GENTA-’ and ‘GENO-’ respectively, both without any obvious meaning for the relevant German consumer for which there is no reason to dissect the words in different parts. In fact, both words will be seen as an indivisible part without any meaning as a whole. The conclusion that the words ‘GENTACUTAN’ and ‘GENOCUTAN’ will be perceived as a meaningless whole, applies to the professional public in the medical and pharmaceutical field, and all the more so to the public at large not having specific knowledge of medical or scientific terminology; in layman’s terms, the German word for skin is Haut.

29. What is more, the words ‘GENTACUTAN’ and ‘GENOCUTAN’ are not only identical in their respective endings ‘CUTAN’, they are also identical in their first three letters ‘GEN’. The only difference lies in the respective middle letters ‘TA’ and ‘O’.

30. Visually, the earlier mark ‘GENTACUTAN’ is highly similar to the word ‘GENOCUTAN’ which plays an inherent and distinctive role within the contested mark. The marks differ in the word ‘GENOVÉ’ of the contested mark which has no counterpart in the earlier mark, but which still contributes to the visual similarity between the signs as it starts with the same three letters ‘GEN’. It follows that the marks are visually similar to an average degree.

31. Aurally, the earlier mark ‘gen-ta-cu-tan‘ and the word ‘ge-no-cu-tan’ of the contested mark are pronounced in a very similar way having the same number of syllables the first ones being highly similar, the last two being identical. The word ‘ge-no-vé’ in which the contested mark differs from the earlier mark starts with the same sound. The marks are aurally similar to an average degree as well.

32. Conceptually, as neither the earlier mark as a whole, nor the respective words of the contested mark as a whole convey any meaning, the comparison of the signs remains neutral.

Overall assessment of the likelihood of confusion

33. According to the case-law of the Court of Justice, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion. It follows from the very wording of Article 8(1)(b) EUTMR that the concept of a likelihood of association is not an alternative to that of a likelihood of confusion, but serves to define its scope (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 29; 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17).

34. A likelihood of confusion on the part of the public must be assessed globally. That global assessment implies some interdependence between the factors taken into account and in particular similarity between the trade marks and between the goods or services covered. Accordingly, a lesser degree of similarity between these goods or 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; 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19). The more distinctive the earlier mark, the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

35. For the purpose of that global appreciation, the average consumer of the category of goods or services concerned is deemed to be reasonably well informed and reasonably observant and circumspect. The level of attention of the relevant consumer is likely to vary according to the category of goods or services in question and the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his or her trust in the imperfect picture of them that he or she has kept in mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26; 30/06/2004, T-186/02, Dieselit, EU:T:2004:197, § 38).

36. The relevant public in relation to the conflicting goods include the professional medical public as well as the public at large whose level of attention will be high as well, taking into account the nature of the goods, which are health-related.

37. In the absence of the earlier mark having any meaning as a whole, its inherent distinctiveness is normal. An enhanced level of distinctiveness of the earlier mark was not claimed by the opponent.

38. Taking into account the identity and similarity between the conflicting goods, the average level of visual and aural similarity between the conflicting signs and the normal inherent distinctiveness of the earlier mark, there exists a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR, even taking into account a higher level of attention of the relevant public.

39. This conclusion applies not only to the relevant public at large, which in itself already suffices for the success of the opposition as correctly reasoned by the Opposition Division, but also to the relevant professional public.

40. As correctly found by the Opposition Division, the opposition succeeds for all the contested goods on the basis of earlier German trade mark No 3020 17 025 592. There is no need to examine the opposition on the basis of the other earlier rights invoked.

41. The appeal shall be dismissed.

Costs

42. Pursuant to Article 109(1) EUTMR, the applicant (appellant), as the losing party, must bear the costs of the opposition and appeal proceedings.

43. In accordance with Article 109(1), (7) EUTMR and Article 18(1)(c)(i),(iii) EUTMIR, these are fixed in favour of the opponent (defendant) at EUR 300 for professional representation in the opposition proceedings, EUR 550 for professional representation in the appeal proceedings and EUR 320 for the opposition fee, in total EUR 1 170.

Order

On these grounds,

THE BOARD

hereby:

1. Dismisses the appeal;

2. Orders the appellant to bear the costs of the opposition and appeal proceedings, which are fixed at EUR 1 170.

Signed D. Schennen

Signed L. Marijnissen

Signed A. González Fernández

Registrar: Signed p.o. P. Nafz