OPPOSITION No B 3 086 326

Laboratorios Normon, S.A., Ronda de Valdecarrizo, 6, 28760 Tres Cantos (Madrid), Spain (opponent), represented by Vadimark, S.L., Bravo Murillo, 373, 3º A, 28020 Madrid, Spain (professional representative)

a g a i n s t

Vipharm S.A., ul. A. F. Radziwiłłów 9, 05-850 Ożarów Mazowiecki, Poland (applicant), represented by Maciej Bocheński, ul. Julianowska 72P lok. 4, 05-500 Julianów, Poland (professional representative).

On 05/01/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 086 326 is upheld for all the contested goods.

2. European Union trade mark application No 18 026 601 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 18 026 601 for the word mark ‘FALOTAMA’. The opposition is based on European Union trade mark registration No 17 762 171 for the word mark ‘GALOTAM’. 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

The goods on which the opposition is based 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, herbicide.

The contested goods are, after a limitation by the applicant on 30/10/2019, the following:

Class 5: Pharmaceutical products for use in treating Sclerosis Multiplex disease.

The contested goods are included in the broad category of the opponent’s pharmaceutical preparations for medical use. Therefore, these goods are identical.

The applicant argued that its mark applies to pharmaceutical products for use in treating Sclerosis Multiplex disease, whereas the opponent uses its pharmaceutical products on the market for erectile dysfunction. Therefore, the marks are intended to treat completely different diseases.

However, the applicant’s argument must be dismissed. The comparison of the goods must be based on the wording indicated in the lists of goods. Any actual or intended use not stipulated in the list of goods/services is not relevant for the comparison, since this comparison is part of the assessment of likelihood of confusion in relation to the goods/services on which the opposition is based and directed against; it is not an assessment of actual confusion or infringement (16/06/2010, T‑487/08, Kremezin, EU:T:2010:237, § 71).

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 both directed at the public at large and at business customers with specific professional knowledge or expertise, in, for example, the medical and healthcare fields, such as doctors and pharmacists.

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 high degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health.

c) The signs

GALOTAM	FALOTAMA
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 is the word mark ‘GALOTAM’. The contested sign is the word mark ‘FALOTAMA’.

Both the earlier mark and the contested sign will be perceived as meaningless, at least by the majority of the relevant public. Therefore, these elements have a normal degree of distinctiveness.

The Opposition Division finds it appropriate, for reasons of procedural economy, to first examine the opposition in relation to the part of the general public, as this part is more prone to confusion. Therefore, the examination will proceed on this basis.

Visually and aurally, the signs coincide in the letters/sound of the letters ‘*ALOTAM*’. However, they differ in the first letters/sounds of the letters ‘G’ of the earlier mark versus ‘F’ and also in the final letter/sound of the letter ‘A’ of the contested sign.

Therefore, taking all the aforementioned into account, the signs are visually and aurally similar to a low 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.

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

A likelihood of confusion (including a likelihood of association) 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.

The appreciation of a likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association that can be made with the used or registered sign, and the degree of similarity between the trade mark and the sign and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The goods are identical. They target the public at large (the one examined here) and a more professional public who have a high level of attention. The earlier mark has a normal degree of distinctiveness.

The signs are visually and aurally similar to a low degree and their conceptual comparison remains neutral.

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).

Taking into account all the circumstances, the Opposition Division finds that the differences between the signs are not enough to counteract the similarities and to safely exclude a likelihood of confusion. It can reasonably be concluded that consumers will not be able to distinguish between the marks in dispute for the goods that are identical and will perceive them as having the same origin, even taking into account a high degree of attention from the general public.

Taking into account all relevant factors, it is considered that the relevant public might be led to believe that the relevant goods come from the same undertaking or economically linked undertakings, even with a high degree of attention. The identity of the goods will counterbalance the low degree of visual and aural similarity between the signs, this according to the interdependence principle mentioned above.

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 of the European Union 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 European Union trade mark registration No 17 762 171 for the word mark ‘GALOTAM’. 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

Saida CRABBE

Chantal VAN RIEL

Michal KRUK

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.