OPPOSITION Nо B 3 091 328

Cristalfarma S.r.L., Via S. G. Cottolengo, 15, 20143 Milano, Italy (opponent), represented by Con Lor S.P.A., Avda Aguilera, 19 - 1ºB, 03007 Alicante, Spain (professional representative)

a g a i n s t

Aflofarm Farmacja Polska Sp. z o.o., Partyzancka 133/151, 95‑200 Pabianice, Poland (applicant), represented by Łukasz Pawlikowski, Partyzancka 133/151, 95‑200 Pabianice, Poland (employee).

On 11/11/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 091 328 is rejected in its entirety.

2. The opponent bears the costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 18 060 912 for the word mark ‘STABIL’. The opposition is based on EUTM registration No 5 562 211 and Italian trade mark registration No 1 210 872, both for the word mark ‘RISTABIL’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

Proof of use of the earlier marks was requested by the applicant for the goods in Class 5. However, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T‑296/02, Lindenhof, EU:T:2005:49, § 41, 72). The examination of the opposition will proceed as if genuine use of the earlier marks had been proven for all the goods invoked, which is the best light in which the opponent’s case can be considered.

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:

EUTM registration No 5 562 211

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

Class 29: Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats.

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice.

Italian trade mark registration No 1 210 872

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.

Class 29: Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats.

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice.

The contested goods are the following:

Class 3: Essential oils and aromatic extracts; cleaning and fragrancing preparations; animal grooming preparations; tailors’ and cobblers’ wax; toiletries; grinding preparations, pomades for cosmetic purposes.

Class 5: Dental preparations and articles; pest control preparations and articles; hygienic preparations and articles; medical and veterinary preparations and articles; dietary supplements and dietetic preparations.

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 as well as the professional public with specific knowledge or expertise.

It is apparent from the case-law that, insofar as pharmaceutical preparations and dietary supplements 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; 10/02/2015, T‑368/13, ANGIPAX, EU:T:2015:81,§ 42-46 and the case-law cited therein).

Moreover, medical professionals have a high degree of attentiveness when performing their duties and prescribing medicines. Non-professionals also have a higher degree of attention, regardless of whether the pharmaceuticals are sold with or without prescription, as these goods affect their state of health.

However, for the remaining goods the degree of attention is average (e.g. in Class 5 in relation to hygienic preparations and articles or goods in Class 3).

c) The signs

RISTABIL	STABIL
Earlier trade marks	Contested sign

The relevant territories are Italy and 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).

Part of the relevant public might perceive the contested sign as meaning, or alluding to, ‘steady and dependable’, ‘not subject to sudden or extreme change or fluctuation’, ‘resistant to change of position or condition, resisting weight or pressure’ (e.g. stabil in German: information extracted from Duden on 11/11/2020 at https://www.duden.de/rechtschreibung/stabil; stabíl in Romanian, information extracted from Dexonline on 11/11/2020 at https://dexonline.ro/definitie/stabil). Nevertheless, this meaning has no direct relation to the goods at issue. Therefore, this verbal element is distinctive for the relevant goods. This same level of distinctiveness will also apply to this element for the part of the public that will not identify any sematic content within it.

The earlier signs are word marks consisting of the single verbal element ‘RISTABIL’. This verbal element is meaningless for the goods at issue from the perspective of the relevant public and is therefore distinctive. It has been established by case-law that the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (11/11/1997, C‑251/95, Sabèl , EU:C:1997:528, § 23; 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25; 22/10/2015, C‑20/14, BGW/BGW, EU:C:2015:714, § 35). Although it is true that in some cases the consumers may mentally break down a mark into parts if they identify a meaningful element within it, this is not the case here. The Opposition Division considers that consumers will not break down the earlier marks into elements as there is no indication (such as punctuation marks or irregular capitalisation) within them that could lead to this (23/09/2009, T‑391/06, S-HE, EU:T:2009:348, § 46). Moreover, the element ‘STABIL’ will not be perceived within the earlier marks because it has no meaning with regard to the goods at issue that would make the consumers more prone to notice it. Therefore, in common with other possible meaningful letter sequences that are present in the earlier marks (e.g. ‘STAB’ (a thrust with a knife or other pointed weapon), ‘RIST’ (in medicine, an abbreviation for ‘radioimmunosorbent test’), ‘TABIL’ (a spice mixture)), the element ‘STABIL’ will not be identified. It is also worth noting that the ending ‘-IL’ is rather common in the pharmaceutical field, as there are hundreds of substance names with this ending.

Visually and aurally, the signs coincide in the letters ‘(**)STABIL’. They differ in the two first letters of the earlier marks, ‘R’ and ‘I’. It must be borne in mind that 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. Therefore, the different beginnings, ‘STA’ versus ‘RIS’, will clearly be noticed, drawing attention away from the coinciding letters (which will not be separated from within the earlier marks, as mentioned above).

Therefore, despite the six coinciding letters, the striking difference in their beginnings results in the signs being visually and aurally similar to a lower than average degree.

Conceptually, for part of the public, neither of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

For the part of the public that perceives some meaning in the contested marks, as described above, the signs are not similar.

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 marks 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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal.

e) Global assessment, other arguments and conclusion

The Court of Justice has held that a likelihood of confusion (including a likelihood of association) exists if there is a risk that the public might believe that the goods in question come from the same undertaking or, as the case may be, from economically linked undertakings (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 29). The Court has also held that it is the perception of marks in the mind of the relevant public of the goods in question that plays a decisive role in the global assessment of the likelihood of confusion (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23; 22/06/1999, C‑342/97, Lloyd Schufabrik, EU:C:1999:323, § 25).

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 goods are assumed to be identical. They target the public at large and professionals whose degree of attention is high for some goods and average for others.

The signs coincide in the string of letters ‘(**)STABIL’. However, it cannot be reasonably argued that this coincidence will give rise to confusion. It must be borne in mind that the relevant consumer, even one displaying only an average degree of attention, is reasonably observant and circumspect. The signs differ significantly at their beginnings, making it impossible that consumers will not notice and memorise the differences between them. A coincidence in a string of letters, even if it creates a degree of similarity between the signs, will not always create an erroneous association. It is true 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). In this imperfect recollection, the considerably different beginning of the signs will not go unnoticed (‘RIS-’ versus ‘STA-’). As for the coinciding letters, it must be stated 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 them, but they cannot, for that reason alone, be regarded as confusingly similar. Moreover, as the ending ‘-IL’ is common in the pharmaceutical field, the consumer would not consider that its presence in both word marks would be indicative of a link between them. Therefore, considering the signs as a whole, it is impossible to conclude that the relevant consumers would not differentiate between them, as the differences are clearly perceptible and striking.

The opponent claimed that, considering the identity of the goods, the consumers would assume that the products marketed under the contested sign, ‘STABIL’, were related or otherwise connected to the opponent’s goods marked with the earlier trade marks, ‘RISTABIL’. However, it failed to provide reasoning that would allow the Opposition Division to reach this conclusion. For an likelihood of indirect confusion, which is a result of an association, to happen (that is to say, for the consumers to make a connection between the conflicting signs and assume that the goods covered are from e.g. economically linked undertakings), it would be necessary to establish that the signs in conflict coincide in an independent, distinctive element. The signs at issue do not coincide in this type of element. Therefore, consumers will not consider the contested sign as a sub-brand of the earlier marks. It must be borne in mind that it is not market practice to create sub-brands merely by coinciding in some letters, and it is unlikely that the consumers would assume an economically linked commercial origin of the goods based only on that coincidence.

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

Given that the opposition is not well founded under Article 8(1) EUTMR, it is unnecessary to examine the evidence of use filed by the opponent.

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. In the present case, the applicant did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Denitza STOYANOVA-VALCHANOVA

Marta Maria CHYLIŃSKA

Renata COTTRELL

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.