OPPOSITION No B 3 088 997

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

Xcelens International Sagl, Via Soldini 22, 6830 Chiasso, Switzerland (applicant), represented by Sergio Cosentini, Via Nuova del Campo 14, 80141 Napoli, Italy (professional representative).

On 25/09/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 088 997 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 18 048 406 ‘COSMOFILL’, namely against all the goods in Class 5. The opposition is based on the following earlier rights:

 Spanish trade mark registration No  2 863 783 ‘NORMOFILL’

 Spanish trade mark registration No  3 598 390 ‘NORMOFIT’

 Spanish trade mark registration No  3 632 775 ‘NORMOFARMA’

 Spanish trade mark registration No  2 402 142 ‘NORMON’

 Spanish trade mark registration No  2 402 143 ‘NORMON’

 Spanish trade mark registration No  2 945 249 ‘NORMOPIC’

 Spanish trade mark registration No  3 722 311 ‘NORMOBIT B1 B6 B12’.

The opponent invoked Article 8(1)(b) in relation to all of the earlier rights. In addition and only in relation to Spanish trade mark registration No 2 402 142, the opponent invoked Article 8(5) 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 registrations No  2 863 783 NORMOFILL and No 2 402 142 NORMON.

a) The goods

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

Spanish trade mark registration No 2 863 783 NORMOFILL

Class 5: Pharmaceutical and veterinary products; hygienic products for medicine; dietetic substances for medical use, baby foods; plasters, material for dressings; material for stopping teeth, dental wax; disinfectants; products for the destroying vermin; fungicides, herbicides.

Spanish trade mark registration No 2 402 142 NORMON

Class 5: Pharmaceutical, veterinary and hygienic preparations; dietetic substances for medical use, baby foods; plasters, material for dressings; material for stopping teeth, dental wax; disinfectants, preparations for destroying vermin; fungicides, herbicides.

The contested goods are the following:

Class 5: Hygienic preparations and articles; Medicated and sanitising soaps and detergents; Chemical preparations for sanitary purposes; First-aid boxes, filled; Food supplements; Dietetic preparations for children; Dietetic and nutritional preparations; Dietary supplements and dietetic preparations; Dental preparations and articles, and medicated dentifrices; Antiparasitic preparations; Absorbent sanitary articles; Dental preparations and articles; Enema preparations; Lysine preparations; Vitamin preparations; Cultures for medical use; Ethers for medical use; Biochemical preparations for medical use; Chemical preparations for use in dna analysis [medical]; Chemical preparations for medical purposes; Medicinal healthcare preparations; Medical preparations; Probiotic preparations for medical use; Probiotic bacterial formulations for medical use; Probiotic preparations for medical use to help maintain a natural balance of flora in the digestive system; Pre-filled syringes for medical purposes.

Some of the contested goods are identical or similar to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier marks which, for the opponent, is the best light in which the opposition can be examined.

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 assumed to be identical are directed at the public at large and at customers with specific professional knowledge or expertise.

The degree of attention ranges from average to high, the latter especially in case of pharmaceutical / medicinal products.

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).

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.

c) The signs

a) NORMOFILL b) NORMON	COSMOFILL
Earlier trade marks	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 marks are comprised of words that do not exist as such in the Spanish language.

As regards earlier mark a) and the contested sign, although they are composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into 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).

The word NORMO in earlier mark a) might allude, in Spanish, to something normal, normality. The word COSMO in the contested sign refers in Spanish to world, universe. Considering the goods, these words, namely NORMO and COSMO are distinctive. The word FILL in these signs is meaningless and also has an average degree of distinctiveness.

As regards earlier mark b), as a whole it may be associated with the concept of normal and normality, yet it does not affect its distinctive character which remains average.

Visually, earlier mark a) and the contested sign coincide in letter sequence MOFILL at their endings and in the letter O on the second position. However, they differ in their first and third letters N_R/C_S. These letters display no visual semblance whatsoever. Overall, the beginnings of the marks NORMO/COSMO, preceding the element FILL, are different. 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 General Court has held that the same number of letters in two marks is not, as such, of any particular significance for the relevant public, even for a specialised public. Since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar. In addition, the public is not, in general, aware of the exact number of letters in a word mark and, consequently, will not notice, in the majority of cases, that two conflicting marks have the same number of letters (25/03/2009, T‑402/07, ARCOL / CAPOL, EU:T:2009:85, § 81-82; 04/03/2010, C‑193/09 P, ARCOL / CAPOL, EU:C:2010:121).

Therefore and despite the arguments of the opponent, earlier mark a) and the contested sign are visually similar to a low degree.

Earlier mark b) and the contested sign coincide in letters O and MO in the second and fourth-fifth position. However, they differ in their letters N_ R_ _N/ C_S_ _ FILL. In overall, the marks have different length and different endings.

Since earlier mark b) and the contested sign do not coincide in any relevant element or aspect, they are visually dissimilar.

Aurally, the pronunciation of earlier mark a) and the contested sign coincides in the syllable FILL at the end of the marks and also in the letters O-MO, while it differs in the letters N_R/ C_S. The differing consonant letters are clearly audible when enunciating the signs.

Therefore and notwithstanding the fact that the signs are both pronounced in three syllables and that the intonation and rhythm may also be the same, earlier mark a) and the contested sign are aurally similar to a low degree.

The pronunciation of earlier mark b) and the contested sign coincides in the letters in letters O and MO, while it differs in the all the remaining letters N_ R_ _N/ C_S_ _ FILL. The marks differ aurally in their length, and rhythm. Therefore, earlier mark b) and the contested sign are aurally dissimilar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Each sign may be associated with a different meaning. The signs are conceptually dissimilar.

With respect to the comparison between earlier mark b) and the contested sign, it is concluded that they only coincide in irrelevant aspects, and considering the mentioned Court decision, it is concluded that these marks are dissimilar overall.

According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected as far as it is based on the opponent’s earlier Spanish trade mark registration No 2 402 142 NORMON. This finding would still be valid even if the earlier trade mark were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the signs cannot be overcome by the highly distinctive character of the earlier trade mark, the evidence submitted by the opponent in this respect does not alter the outcome reached above.

However, as earlier mark a) and the contested sign have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed with Spanish trade mark registration No  2 863 783 NORMOFILL.

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 NORMOFILL 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

The contested goods have been assumed identical. The earlier mark NORMOFILL and the contested sign, COSMOFILL, are visually and aurally similar to a low degree and conceptually dissimilar.

The earlier mark and the contested sign have been found to be similar to the extent that they have the letter sequence FILL in common at their endings and that they share letters O and MO in their middle. However, this letter sequence FILL is placed at the end, on a less conspicuous position in both signs. The differences between the signs are in the beginning, in their complete first elements NORMO/COSMO, contrary to the arguments of the opponent. Conceptually the meaningful parts of the signs convey different meanings.

Regarding the coinciding letters it is noted that since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will share some of the letters, but they cannot, for that reason alone, be regarded as similar. The similarities are not sufficient to lead to a likelihood of confusion on the part of the public.

The marks as a whole display immediately perceptible differences. They are sufficiently strong to allow the relevant public to distinguish between them, even taking into account the imperfect recollection principle. In this regard, it must be borne in mind that the degree of attention that the relevant public displays in relation to the purchases in question varies from average to high, i.e. it will not be low.

Therefore, consumers are unlikely to assume that the goods labelled with the earlier mark NORMOFILL and the goods bearing the contested sign come from the same or economically-linked undertakings. The clearly perceptible differences between the signs would not be overlooked by the relevant customer, even if they were used for identical goods.

Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

The opponent has also based its opposition on the following earlier trade marks:

 Spanish trade mark registration No  3 598 390 ‘NORMOFIT’, for class 5

 Spanish trade mark registration No  3 632 775 ‘NORMOFARMA’, for class 5

 Spanish trade mark registration No  2 402 143 ‘NORMON’ for class 35

 Spanish trade mark registration No  2 945 249 ‘NORMOPIC’, for class 5

 Spanish trade mark registration No  3 722 311 ‘NORMOBIT B1 B6 B12’ , for class 5.

The other earlier rights invoked by the opponent are even less similar to the contested sign. This is because they contain the first part NORMO which is not present in the contested sign, while the remaining part of the marks contains a letter or a word completely different to the contested mark, such as FIT, FARMA, N, PIC, BIT B1 B6 B12, to the one compared. These are elements that are not present in the contested sign. These marks and the contested sign, COSMOFILL, do not coincide in any relevant element and must be found dissimilar.

According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the other earlier marks invoked by the opponent are dissimilar to the contested sign, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

REPUTATION — ARTICLE 8(5) EUTMR

The opponent claimed reputation for its earlier Spanish trade mark registration No 2 402 142 NORMON, for goods in class 5.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

 The signs must be either identical or similar.

 The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

 Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient.

The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

a) The signs

NORMON	COSMOFILL
Earlier trade mark	Contested sign

The relevant territory is Spain.

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

It is recalled that the signs have been found dissimilar overall.

As seen above, similarity between the signs is a requirement for the opposition to be successful under Article 8(5) EUTMR. Since the signs are clearly dissimilar, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled. Therefore, the opposition must be rejected and there is no need to examine the other conditions laid down by Article 8(5) EUTMR (24/03/2011, C‑552/09 P, TiMiKinderjoghurt, EU:C:2011:177, § 66).

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Solveiga BIEZA

Erkki MÜNTER

Ferenc GAZDA

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.