OPPOSITION No B 3 086 128

Kern Pharma, S.L., Pol. Ind. Colon II, Calle Venus 72, 08228 Terrassa (Barcelona), Spain (opponent), represented by Sugrañes Patentes y Marcas, Calle de Provenza 304, 08008 Barcelona, Spain (professional representative)

a g a i n s t

Kent Pharmaceuticals Limited, Westminster Industrial Estate, Repton Road, Measham, DE12 7DT Swadlincote, Derbyshire, United Kingdom (applicant), represented by Pinsent Masons LLP, 30 Crown Place, Earl Street, EC2A 4ES London, United Kingdom (professional representative).

On 21/04/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 086 128 is upheld for all the contested goods.

2. European Union trade mark application No 18 033 519 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 18 033 519 ‘KENT PHARMACEUTICALS’ (word mark). The opposition is based on, inter alia, Spanish trade mark registration No 2 938 187 ‘KERN PHARMA’ (word mark). 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Spanish trade mark registration No 2 938 187 ‘KERN PHARMA’.

1. The goods

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

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

The contested goods are the following:

Class 5: Medical preparations; pharmaceutical preparations; pharmaceuticals and natural remedies; dietary supplements and dietetic preparations; dietary supplements for humans; dietetic food and substances adapted for medical use, food for babies; sanitary preparations and articles; disinfectants and antiseptics; medicated and sanitizing soaps and detergents; medical dressings, coverings and applicators; plasters, materials for dressings; material for stopping teeth, dental wax.

Dietetic substances adapted for medical use, food for babies; disinfectants and antiseptics; plasters, materials for dressings; material for stopping teeth, dental wax are identically contained in both lists of goods (including synonyms).

The contested dietary supplements and dietetic preparations; dietary supplements for humans; dietetic food adapted for medical use are included in the broad category of, or overlap with, the opponent’s dietetic substances adapted for medical use. Therefore, they are identical.

The contested medical preparations; pharmaceutical preparations; pharmaceuticals and natural remedies are included in the broad category of, or overlap with, the opponent’s pharmaceutical and veterinary products. Therefore, they are identical.

The contested sanitary preparations and articles; medicated and sanitizing soaps and detergents overlap with the opponent’s hygienic and sanitary products for medical use. Therefore, they are identical.

The contested medical dressings, coverings and applicators are included in the broad category of, or overlap with, the opponent’s plasters, materials for dressings. Therefore, they are identical.

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.

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.

The same applies to those goods that, although not medicines in a strict sense, can also impact consumers’ health, like dietetic foods, foods for babies, disinfectants and antiseptics, or goods that are closely linked to the treatment of injuries or diseases such as medical dressings or sanitary preparations and articles.

3. The signs

KERN PHARMA	KENT PHARMACEUTICALS
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 verbal element ‘KERN’ of the earlier mark has no meaning for the relevant public and is, therefore, distinctive.

Most of the relevant public will perceive the verbal element ‘KENT’ of the contested sign as meaningless. A small part of the public might perceive it as referring to the title of the dukedom of Kent. Although the term is distinctive in both scenarios, the opposition will first be examined in relation to the part of the public for whom ‘KENT’ has no meaning.

The relevant public will understand the verbal element ‘PHARMA’ of the earlier mark and ‘PHARMACEUTICALS’ of the contested sign. These elements are basic English words that will be understood in all Member States, including Spain. They are also very close to the equivalent words ‘FARMA’ or ‘FARMACEUTICOS’ in the official language in the relevant territory. Although the Spanish word for ‘pharmacy’ (as the field of business) is spelt with the letter ‘F’ instead of ‘PH’, the spelling with ‘PH’ is ubiquitous throughout the relevant territory and would be immediately recognised as such. Considering that the goods in question are all related to the fields of health and medicine, the verbal element ‘PHARMA’ will be perceived as being descriptive and devoid of any distinctive character, inasmuch as it is an abbreviation of the word ‘pharmaceutical’. In the same way, the word ‘PHARMACEUTICALS’ is descriptive and devoid of distinctive character, since it is a very well-known term designating companies that belong to the pharmaceutical industry (17/06/2009, T‑464/07, PharmaResearch, EU:T:2009:207).

Account must be taken of the fact that both marks are word marks. 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 which that mark might possess (22/05/2008, T‑254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is irrelevant whether the word marks are depicted in lower- or upper-case letters.

Visually, the signs coincide in the letters ‘KE**’ and in the letter ‘N’, although in a different position, of their first verbal elements. The signs differ in the letter ‘R’ in third position of the earlier mark and the letter ‘T’ in fourth position of the contested sign.

Although the marks have in common the term ‘PHARMA’ (the second verbal element of the earlier mark, and the first part of the second verbal element ‘PHARMACEUTICALS’ of the contested sign), this element is non-distinctive. Since the beginnings of the signs are almost identical, differing only in the letters ‘R’ and ‘T’, the signs are visually similar to an above average degree.

Aurally, the signs coincide in the sound of the letters ‘K’, ‘E’ and ‘N’, although ‘N’ is in a different position in each sign. The signs also coincide in the beginning of their second verbal elements, ‘PHARMA’. The signs differ in the additional letters ‘R’ and ‘T’ of their distinctive elements. They also differ in the sound of the remaining syllables of the second verbal element of the contested sign, ‘CEUTICALS’. Nevertheless, the second verbal elements of the signs are devoid of distinctive character; therefore, the signs are aurally similar to an average degree.

Conceptually, neither of the signs has a meaning as a whole. Although the coinciding verbal element ‘PHARMA’ will evoke a concept, it is not sufficient to establish any conceptual similarity, as this element is non-distinctive and cannot indicate the commercial origin. The attention of the relevant public will be attracted by the additional fanciful verbal elements, which have no meaning. 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.

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, despite the presence of a non‑distinctive element in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

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 are identical, the signs are visually and aurally similar to an average degree and they have no dominant elements (visually eye-catching). The level of attention of the relevant public is high.

The similarities of the signs lie in their most distinctive elements, which are placed at their beginnings. 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. Moreover, the beginnings of the signs are characterised by the grapheme ‘KE’, which is rather unusual in Spanish and would make the visual coincidences more noticeable and memorable.

The signs also coincide in the beginnings of their second verbal elements, which are, however, non‑distinctive.

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).

Despite the differences between the signs and the high level of attention of the relevant public, there is a likelihood of confusion. This is because of the identity of the goods and the signs’ visual and aural coincidences, in particular the visual similarities at the beginning of the most distinctive elements of the signs, which would be noticeable and memorable for the reasons stated above.

Considering all the above, there is a likelihood of confusion on the part of the public for whom the verbal element ‘KENT’ of the contested sign has no meaning. 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 Spanish trade mark registration No 2 938 187 ‘KERN PHARMA’. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Claudia MARTINI

Octavio MONGE GONZALVO

Lars HELBERT

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.