OPPOSITION No B 3 079 786

F. Hoffmann-La Roche AG, Grenzacher Str. 124, 4070 Basel, Switzerland (opponent), represented by Gevers, Brussels Airport Business Park, Holidaystraat, 5, 1831 Diegem, Belgium (professional representative)

a g a i n s t

Cesa Alliance S.A., 45 route d’Arlon, 8009 Strassen, Luxembourg (applicant), represented by Dennemeyer & Associates, 55, rue des Bruyères, 1274 Howald, Luxembourg (professional representative).

On 02/04/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 079 786 is partially upheld, namely for the following contested goods:

Class 5: Oral pharmaceutical preparations for preserving and improving memory.

2. European Union trade mark application No 18 006 320 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 18 006 320 ‘RELUMINOL’. The opposition is based on European Union trade mark registration No 16 590 184 ‘PRELUMINO’. 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 5: Pharmaceuticals.

The contested goods and services are the following:

Class 5: Oral pharmaceutical preparations for preserving and improving memory.

Class 44: Medical services.

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.

Preliminary remark

The applicant argued that the opponent’s goods are actually ophthalmic pharmaceutical preparations. In this regard, account must be taken that comparison of the goods and services must be based on the wording indicated in the respective lists of goods/services. Any actual or intended use not stipulated in the list of goods/services is not relevant for this comparison since it is part of the assessment of likelihood of confusion in relation to the goods/services on which the opposition is based and against which it is directed; it is not an assessment of actual confusion or infringement (16/06/2010, T‑487/08, Kremezin, EU:T:2010:237, § 71).

Contested goods in Class 5

The contested oral pharmaceutical preparations for preserving and improving memory are included in the broad category of the opponent’s pharmaceuticals. Therefore, they are identical.

Contested services in Class 44

The contested medical services include medical clinics, chiropractic services, hospitals, optician services, physical therapy, dentistry and nursing services. These are all activities that provide a direct benefit to an individual. Dissimilarity should be found when comparing pharmaceutical preparations and medical (including veterinary) services in Class 44. Even though a certain link cannot be denied, due to the common goal of treating disease, the differences in nature and especially in the usual origin, clearly outweigh any similarities. Although it is true that medical services generally use pharmaceutical products when offering their services, the fact remains that the relevant public does not expect a doctor or veterinarian to develop and market a drug. This is particularly so bearing in mind the stringent requirements that any medical product, whether for humans or animals, must comply with before it reaches the end users. None of the goods and services under comparison fulfils a similar function from the consumers’ point of view. Neither are they in competition with one another. In view of this, and contrary to the opponent’s submissions, the opponent’s goods and the contested services must be considered dissimilar.

The opponent referred to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

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 or expertise (doctors, medical professionals).

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. Therefore, the degree of attention is considered to be relatively high.

In any case, given that the general public is more prone to confusion, the examination will proceed on this basis.

c) The signs

PRELUMINO	RELUMINOL
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 earlier mark and the contested sign are word marks, ‘PRELUMINO’ and ‘RELUMINOL’ respectively. The applicant alleged that the earlier mark will be dissected by the public into ‘PRE’ and ‘LUMINO’ meaning ‘before the illumination’ or ‘before the vision’, arguing that the word ‘lumino’ is of Latin origin and means ‘lumen’, that is, ‘illuminate’, which concerns vision (eyes). The Opposition Division considers that the general public is not familiar with the Latin word ‘lumen’, even if it is the root of other words in some EU languages. The applicant further argued that the contested sign will be perceived as ‘RE’, ‘LUMIN’ and ‘OL’, where ‘RE’ indicates ‘revival of an action or result’ and ‘OL’ that the goods in question contain alcohol. Although it is true that consumers could dissect verbal 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), bearing in mind the goods in question, the Opposition Division considers it unreasonable to assume that the relevant general public will dissect the signs in this way, given the unclear and nonspecific nature of the suggested meanings. Moreover, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. It follows that in the absence of any hyphen, capitalisation or any other kind of indication in the signs to this end, the applicant’s submissions must be set aside as unfounded.

Since neither of the signs have a clear or specific meaning for the general public, the signs have a normal degree of distinctiveness.

Visually and aurally, the signs coincide in the string of letters ‘^*RELUMINO*’, and irrespective of the different pronunciation rules in different parts of the relevant territory, the signs also coincide in its corresponding pronunciation. The coinciding letters constitute eight out of nine letters of the signs. However, they differ in the first letter, ‘P’, of the earlier mark and the last letter, ‘L’, of the contested sign and in their respective sounds, which do not have counterparts in the contested sign and earlier mark respectively. Regardless of whether the accents of the signs fall on different syllables, as submitted by the applicant, and also bearing in mind that the signs fully coincide in their lengths, it can, nevertheless, be safely concluded that the overall impression created by the signs is that the signs are at least similar to an above average degree from a visual and aural perspective.

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.

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.

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 partly identical and partly dissimilar. The degree of attention of the public at large is relatively high. The signs are aurally and visually similar to at least an above average degree, since they only differ in the first (of the earlier mark) and final (of the contested sign) letter (‘P’ and ‘L’ respectively).

Although it is settled case-law that the consumer generally pays greater attention to the beginning of a mark than to the end, it cannot be inferred that the additional first letter of the earlier mark can prevent the signs at issue from being perceived as at least similar to an above average degree. Since the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23), the consumer will not only look at the earlier sign’s first letter ‘P’ and the contested sign’s last letter ‘L’, but will also consider the letters ‘RELUMINO’, which wholly overlap in the conflicting signs. Therefore, the difference between the signs’ first and final letters is not enough to counteract the more significant similarities of the signs which resides in the other letters making up the majority of the signs (19/04/2013, T‑537/11, Snickers, EU:T:2013:207, § 41).

This is particularly so because 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).

In view of the foregoing, the Opposition Division finds that there is a likelihood of confusion on the part of the general public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 16 590 184. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical to those of the earlier trade mark.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Anna ZIOŁKOWSKA

María del Carmen COBOS PALOMO

Angela DI BLASIO

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.