OPPOSITION No B 3 087 605

Omega Pharma Innovation & Development NV, Venecoweg 26, 9810 Nazareth, Belgium (opponent), represented by Altius, Avenue du Port 86 C B414, 1000 Brussels, Belgium (professional representative)

a g a i n s t

Laboratorios Vanguard S.L., C/Alcala 87-1º, 28009 Madrid, Spain (applicant), represented by Pilar López Moreno, Mallorca 272, 7º 3ª, 08037 Barcelona, Spain (professional representative).

On 04/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 087 605 is partially upheld, namely for the following contested goods and services:

Class 5: all the contested goods in this class.

Class 35: all the contested services in this class save for import-export, advertising.

2. European Union trade mark application No 18 022 917 is rejected for all the above goods and services. It may proceed for the remaining services.

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 18 022 917 ‘PARANAT’. The opposition is based on international trade mark registration No 929 392 ‘PARANIT’.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.

1. The goods and services

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

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

The contested goods and services are the following:

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 supplements for humans and animals, plasters, Materials for dressings; Material for stopping teeth, dental wax; Disinfectants; Preparations for destroying vermin; Fungicides, Herbicides, Herbal medicine, Homeopathic pharmaceuticals, Medicines for veterinary purposes, Medical preparation for slimming purposes, Mineral drinks (Medicated -), Bath preparations for medical purposes, Beverages adapted for medicinal purposes, Extracts of medicinal herbs, Extracts of medicinal plants, Medicated body gels, Ginseng for medicinal use, Medicated lozenges, Medicinal herbs, Medicinal infusions, Medicated soap, Medicated lotions, Beverages adapted for medicinal purposes, Medicinal healthcare preparations.

Class 35: Retailing in shops and via global telematic networks of all kinds of pharmaceuticals, medical and veterinary preparations; Sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; Food supplements for humans and animals; Plasters, materials for dressing; Material for stopping teeth; Disinfectants; Preparations for killing vermin; Fungicides, Herbicides, Herbal medicines, homeopathic medicines, medical preparations for slimming, Medicated mineral drinks, Medicated bath preparations, Medicinal beverages, Extracts of medicinal herbs, Extracts of medicinal plants, Medicated body gels, ginseng for medical use, medicated pastilles, Medicinal herbs, Medicinal infusions, Medicated soap, Medicated lotions, medicated health care preparations, import-export, advertising.

Class 39: Transport, storage, packaging and distribution of all kinds of pharmaceuticals, medical and veterinary preparations; Sanitary preparations for medical purposes; Dietetic food and substances adapted for medical or veterinary use, food for babies; Dietary supplements for human beings and animals; Plasters, materials for dressings; Material for stopping teeth, dental wax; Cleaning, polishing, scouring and abrasive preparations; Preparations for destroying vermin; Fungicides, herbicides, herbal medicines, homeopathic medicines, medicines for animals, medical preparations for slimming purposes, medicated mineral waters, bath preparations for medical purposes, medicated beverages, medicinal herbal extracts, medicinal plant extracts, medicated body gels, ginseng for medical use, medicated pastilles, medicinal herbs, medicinal infusions, medicated soap, medicated lotions, medicinal drinks, medicated healthcare preparations.

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 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 supplements for humans and animals, plasters, Materials for dressings; Material for stopping teeth, dental wax; Disinfectants; Preparations for destroying vermin; Fungicides, Herbicides are identically included in both list of goods (despite some minor variations of wording).

The contested herbal medicine, homeopathic pharmaceuticals, medicines for veterinary purposes, medical preparation for slimming purposes, mineral drinks (medicated -), beverages adapted for medicinal purposes, extracts of medicinal herbs, extracts of medicinal plants, ginseng for medicinal use, medicinal herbs, medicated lozenges, medicinal infusions, beverages adapted for medicinal purposes, Medicinal healthcare preparations are included within, or overlap with, the opponent’s pharmaceutical and veterinary preparations. Therefore, they are identical.

The contested bath preparations for medical purposes; medicated body gels; medicated soap; medicated lotions are included within the broader category of the opponent’s sanitary preparations for medical purposes. Therefore, they are identical.

Contested services in Class 35

The use of the semi colons in the list of products set out in the contested services would not make sense given that such goods are all proper to Class 5. Therefore, the Opposition Division shall proceed on the basis that all such semi colons are intended to operate, and in fact operate, as if they were commas.

Retail services concerning the sale of specific goods are similar to an average degree to these specific goods (20/03/2018, T-390/16, DONTORO dog friendship (fig.)/TORO et al., EU:T:2018:156, § 33; 07/10/2015, T-365/14, TRECOLORE / FRECCE TRICOLORI et al., EU:T:2015:763, § 34). Although the nature, purpose and method of use of these goods and services are not the same, it should be noted that they display similarities, having regard to the fact that they are complementary and that the services are generally offered in the same places as those where the goods are offered for sale. Furthermore, they are directed at the same public.

The goods covered by the retail services and the specific goods covered by the other mark have to be identical in order to find an average degree of similarity between the retail services of those goods and the goods themselves, that is to say, they must either be exactly the same goods or fall under the natural and usual meaning of the category.

There is a low degree of similarity between the retail services concerning specific goods and other specific similar or highly similar goods, because of the close connection between them on the market from the perspective of the consumer. Consumers are accustomed to the practice that a variety of similar or highly similar goods are brought together and offered for sale in the same shops or in the same sections of department stores or supermarkets. Furthermore, they are of interest to the same consumer.

A low degree of similarity between the goods sold at retail and the goods themselves may also be sufficient to lead to a finding of a low degree of similarity with the retail services provided that the goods involved are commonly offered for sale in the same shops or in the same sections of department stores or supermarkets, belong to the same market sector and, therefore, are of interest to the same consumer.

Such goods and services are dissimilar, when the goods at issue are not offered in the same places, do not belong to the same market sector and target a different consumer.

On the basis that all of the goods covered by the contested retailing in shops and via global telematic networks of all kinds are at least similar to the opponent’s pharmaceutical and veterinary preparations; sanitary preparations for medical purposes in Class 5, it follows that the contested Retailing in shops and via global telematic networks of all kinds of pharmaceuticals, medical and veterinary preparations; Sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; Food supplements for humans and animals; Plasters, materials for dressing; Material for stopping teeth; Disinfectants; Preparations for killing vermin; Fungicides, Herbicides, Herbal medicines, homeopathic medicines, medical preparations for slimming, Medicated mineral drinks, Medicated bath preparations, Medicinal beverages, Extracts of medicinal herbs, Extracts of medicinal plants, Medicated body gels, ginseng for medical use, medicated pastilles, Medicinal herbs, Medicinal infusions, Medicated soap, Medicated lotions, medicated health care preparations are similar at least to a low degree to the said goods of the opponent in Class 5 as they are commonly sold in the same retail outlets (e.g. pharmacies), belonging to the same relevant market sector, and are of interest to the same consumer.

With respect to the contested import-export services, even if the subject matter of the import-export services and the opponent’s goods in question in Classes 3 and 5 were the same, this would not be a relevant factor for finding similarity, as such services would be preparatory or ancillary to the commercialisation of such goods and are considered to relate to business administration (see, for example, the decision dated 05/12/2018 of the Opposition Division in Opposition no B 2 990 185). Therefore, they are dissimilar to the opponent’s goods in Classes 3 and 5.

The remaining contested services – advertising – do not share relevant trade mark points of contact with the goods of the opponent in Class 3 or Class 5 such as to justify a finding of similarity. Such services and the said goods have a different nature, purpose and method of use, being neither in competition nor complimentary, normally having different distribution channels and providers/producers. Therefore, they are dissimilar.

Contested services in Class 39

The contested distribution, transport, storage, packaging of all kinds of pharmaceuticals, medical and veterinary preparations; Sanitary preparations for medical purposes; Dietetic food and substances adapted for medical or veterinary use, food for babies; Dietary supplements for human beings and animals; Plasters, materials for dressings; Material for stopping teeth, dental wax; Cleaning, polishing, scouring and abrasive preparations; Preparations for destroying vermin; Fungicides, herbicides, herbal medicines, homeopathic medicines, medicines for animals, medical preparations for slimming purposes, medicated mineral waters, bath preparations for medical purposes, medicated beverages, medicinal herbal extracts, medicinal plant extracts, medicated body gels, ginseng for medical use, medicated pastilles, medicinal herbs, medicinal infusions, medicated soap, medicated lotions, medicinal drinks, medicated healthcare preparations do not share relevant trade mark points of contact to justify a finding of similarity.

In particular, transport services are not considered similar to goods in Classes 3 or 5. Transport services refer, for example, to a fleet of lorries or ships used for moving goods from A to B. These services are provided by specialist transport companies whose business is not the manufacture and sale of the goods that are transported. The services differ from the goods in terms of their nature, purpose and method of use. They do not have the same distribution channels and are not in competition. Therefore, they are dissimilar.

Moreover, packaging and storage services refer to services whereby a company’s merchandise is packed and kept in a particular place for a fee. Those services are not similar to the goods in Classes 3 or 5, which could be packed or stored. The nature, purpose and method of use of these services and goods are different. They do not have the same providers/producers or distribution channels, and are not in competition. Therefore, these services are dissimilar.

The remaining contested services in this class are also dissimilar to the opponent’s goods on the basis that they do not share the same nature, purpose and their methods of use of these services and goods are different. They do not have the same providers/producers or distribution channels, and are not in competition.

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 and services found to be identical or similar are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention is high. In that regard, 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.

3. The signs

PARANIT	PARANAT
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).

Both the earlier mark and the contested sign are word marks, neither of which has a meaning for the relevant public and, therefore, each is a word that is normally distinctive of the goods and services in question.

Visually and aurally, the signs consist of the same letters/sounds save for the different penultimate letter, being the letter ‘I’ in the earlier mark and the letter ‘A’ in the contested sign. On this basis, the Opposition Division considers that the signs ‘PARANIT’ and ‘PARANAT’ are highly similar, both visually and phonetically.

Conceptually, as neither sign has a meaning for the relevant public, no semantic assessment is possible.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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.

5. 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).

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.

The signs have been found to be visually and phonetically highly similar with no semantic assessment possible. The goods and services are partly identical, partly similar (to a least a low degree), and partly dissimilar. The earlier mark has normal distinctive character and the degree of attention is high.

Taking the relevant factors into consideration, the Opposition Division considers that the similarities between the signs clearly outweigh the differences pertaining only to a different penultimate vowel letter. Indeed, the signs at issue - ‘PARANIT’ and ‘PARANAT’ - are almost identical save for the differing penultimate letter which concerns the vowels ‘I’ and ’A’ respectively. Given the high degree of visual and aural similarity between the signs, the words ‘PARANIT’ and ‘PARANAT’ are likely to be directly confused by the relevant public.

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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the relevant public and therefore the opposition is partly well founded on the basis of the opponent’s said international trade mark registration No 929 392 designating the European Union.

It follows from the above that the contested trade mark must be rejected for the contested goods and services found to be identical or similar to the goods of the earlier trade mark, including for the services found to be similar only to a low degree.

The rest of the contested services are dissimilar. As the 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 services 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 services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Angela DI BLASIO

Kieran HENEGHAN

María del Carmen COBOS PALOMO

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.