OPPOSITION No B 3 080 755

Ipsen Pharma GmbH, Willy-Brandt-Str. 3, 76275 Ettlingen, Germany (opponent), represented by Hélène Bernard-Boyle, 65, quai Georges Gorse, 92100 Boulogne-Billancourt, France (professional representative)

a g a i n s t

UAB ‘EVD Baltija’, Ozo g. 25, LT-07150 Vilnius, Lithuania (applicant), represented by Metida Law Firm Zaboliene and Partners, Business Center Vertas, Gynéjų str. 16, LT-01109 Vilnius, Lithuania (professional representative).

On 14/01/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 080 755 is upheld for all the contested goods.

2. European Union trade mark application No 18 013 613 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 18 013 613 for the word mark ‘PROCTANOL’. The opposition is based on European Union trade mark registration No 17 867 133 for the word mark ‘PRONTADOL’. 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 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, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

a) The goods

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

Class 5: Pharmaceutical preparations.

Following the limitation requested on 12/11/2019, the contested goods are the following:

Class 5: Antihemorrhoidal suppositories; in the form of solid medical preparations in a conical or cylindrical shape, designed to be inserted into the rectum, as well as cream/ointment/gel used in anal area for relief of symptoms and/or treatment of hemorrhoid.

The contested antihemorrhoidal suppositories; in the form of solid medical preparations in a conical or cylindrical shape, designed to be inserted into the rectum, as well as cream/ointment/gel used in anal area for relief of symptoms and/or treatment of haemorrhoid are included in the broad category of the opponent’s pharmaceutical preparations. 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 in question.

According to case-law, the general public cannot be excluded from the relevant public for pharmaceuticals that require a doctor’s prescription prior to their sale to end users in pharmacies. Therefore, the relevant public for the goods in Class 5 comprises both the general public and health professionals such as doctors and pharmacists. Consequently, even though the choice of those products is influenced or determined by intermediaries, a likelihood of confusion can also exist for the general public, since they are likely to encounter those products, even though they may purchase each of them separately and at various times (by analogy, 09/02/2011, T‑222/09, Alpharen, EU:T:2011:36, § 42-45; 26/04/2007, C‑412/05 P, Travatan, EU:C:2007:252, § 56-63).

Therefore, in the present case, the goods found to be identical are directed at the public at large and at a professional public with specific knowledge or expertise in the medical sector.

It is apparent from the case-law that, insofar as pharmaceutical preparations are concerned, whether or not issued on prescription, 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-than-average degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health.

Given that the general public is more prone to confusion, the examination will proceed on this basis. The degree of attention will vary between higher than average and high depending on the specific type and purpose of the pharmaceuticals.

c) The signs

PRONTADOL	PROCTANOL
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 verbal elements ‘PRONTADOL’ and ‘PROCTANOL’ and their components are not meaningful in certain territories, for example in those countries where Greek is not understood. This affects the perception of the signs by that public and therefore the assessment of likelihood of confusion in these territories.

In reply to the applicant’s argument, the Opposition Division considers that it cannot be completely excluded that the component ‘PROCT-’ of the contested sign, in the context of the goods in question, which are pharmaceutical preparations, may be perceived by a small part of the relevant general public (the part with a certain knowledge in the field of medicine and/or Greek) as the prefix relating to pharmaceuticals for the treatment of the anus. This is because prōktos is the Greek term for anus. However, only a small part of the relevant general public will be familiar with this meaning since in the respective languages of these countries the word ‘anus’ differs significantly from the Greek form (e.g. anus in French, odbyt in Polish).

Therefore, given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, the Opposition Division finds it appropriate to focus the examination on the substantial part of the French- and Polish-speaking parts of the general public, for which this component of the contested sign is meaningless and, therefore, the signs taken as a whole are devoid of any meaning. Consequently, they have a normal degree of distinctiveness in relation to the relevant goods.

Moreover, 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 generally irrelevant whether word marks are in upper- or lower-case letters. Neither of the signs in question deviates from the usual way of writing since both signs are entirely in upper-case, which is a fairly common way of depicting words. In addition, word marks have no elements that could be considered more dominant (eye-catching) than other elements.

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.

The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words, small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs. In the present case, the signs are relatively long, since they both have nine letters.

Visually and aurally, the signs coincide in the strings of letters ‘PRO*TA*OL’ (and their sounds). However, they differ in their respective fourth and seventh letters (and their sounds): ‘N’ and ‘D’ of the earlier mark, and ‘C’ and ‘N’ of the contested sign. The signs, which are distinctive, contain the same number of letters (nine). The differentiating letters appear in the central part and towards the end of the marks’ verbal elements. However, this difference will have a diminished impact on the impression given by the signs as consumers tend to focus on the initial parts of signs, which, in the case at issue, are identical (‘PRO’).

The length of the signs has to be taken into account, as the difference in some letters is less visible in long signs. Consumers are not in the habit of breaking down words of this length into individual letters and the fact that they have an identical structure (the same three letters at the beginning, the same two letters in the middle and the same two letters at the end) means that the overall impression is similar. Consequently, the letters that differentiate them (located in the middle) have less weight in this regard.

Furthermore, the signs have an identical vowel sequence (O-A-O) and a highly similar rhythm, as they both have three syllables of identical structure (PRON-TA-DOL v PROC-TA-NOL), which coincide almost entirely. These are all features that contribute to the overall impression of a heightened visual and aural similarity.

Consequently, the signs are considered visually and aurally similar to a high degree.

Conceptually, neither of the signs has a meaning for the public under examination 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 under examination in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

The likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case. This appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The earlier mark enjoys a normal degree of distinctiveness. The signs are visually and aurally similar to a high degree. The conceptual aspect does not influence the assessment of the similarity of the signs.

The goods are identical. In cases where the goods are identical, the differences between the signs should be significant and relevant to a degree that allows consumers to safely distinguish the signs and to exclude the likelihood of confusion between them.

The public’s degree of attentiveness may vary between higher than average and high. 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).

The signs display relevant visual and aural similarities due to their identical beginnings (‘PRO’), the letters they have in common in their middle part (‘TA’) and their identical endings (‘OL’). Although the signs display some differences with respect to the letters ‘N’ and ‘D’ of the earlier mark, and the letters ‘C’ and ‘N’ of the contested sign, these differences appear in less prominent and less striking positions. Moreover, their position between other identical letter strings or letters somewhat reduces their impact within the overall impression conveyed by these relatively long signs. They have the same number of letters and a highly similar structure, as well as an identical vowel sequence and syllabic structure.

In addition, the signs have no meaning that would help consumers differentiate between them. Therefore, on account of the overall similar impression conveyed by the signs and in light of the principle of imperfect recollection, consumers may be led to believe that they originate from the same or economically linked undertakings. In other words, even though the signs contain some visual and aural differences, these are not capable of substantially influencing the consumer’s overall perception and making the signs sufficiently different as to safely exclude a likelihood of confusion on the part of the public.

Considering all the above, there is a likelihood of confusion on the general part of the French- and Polish-speaking parts 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, 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 European Union trade mark registration No 17 867 133 for the word mark ‘PRONTADOL’. It follows that the contested trade mark must be rejected for all the contested goods.

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

Gueorgui IVANOV

Anna PĘKAŁA

Jakub MROZOWSKI

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.