OPPOSITION Nо B 3 094 128

 

Stada Arzneimittel AG, Stadastr. 2-18, 61118 Bad Vilbel, Germany (opponent), represented by Harmsen Utescher, Neuer Wall 80, 20354 Hamburg, Germany (professional representative) 

 

a g a i n s t

 

Dolcas Biotech, Llc, 29 Beacon Hill Drive, 07930 Chester, United States of America (applicant), represented by Onel Trademarks, Leeuwenveldseweg 12, 1382 Lx Weesp, Netherlands (professional representative).

On 05/10/2020, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 3 094 128 is rejected in its entirety.

 

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

 

REASONS

 

The opponent filed an opposition against all the goods of European Union trade mark application No 18 081 409 ‘CurcuGenesis’ (word mark). The opposition is based on international trade mark application designating the European Union No 1 411 801, ‘CURCUFEN’ (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.

 

 

a) The goods

 

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

 

Class 5: 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 humans and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

The contested goods are the following:

Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; nutritional supplements; dietetic substances adapted for medical use, food for babies; nutritional beverages for medical purposes; vitamins and vitamin supplements; minerals and mineral products; homeopathic products and preparations; natural remedies; medicinal herbs and herbal products for medical purposes; food supplements and food additives for non-medical use, with the addition of vitamins, minerals and/or herbs, not for medical use, included in this class; dietetic food and supplements not for medical use and not included in other classes; non-medicated food supplements, plant and herb extracts for medicinal purposes, medicinal herb extracts; non-medicated food and nutritional supplements in liquid or powder form included in this class; non-medicated supplements for drinks.

Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies are identically contained in both lists of goods.

The contested nutritional supplements; nutritional beverages for medical purposes; vitamins and vitamin supplements; minerals and mineral products; homeopathic products and preparations; natural remedies; medicinal herbs and herbal products for medical purposes; food supplements and food additives for non-medical use, with the addition of vitamins, minerals and/or herbs, not for medical use, included in this class; dietetic food and supplements not for medical use and not included in other classes; non-medicated food supplements, plant and herb extracts for medicinal purposes, medicinal herb extracts; non-medicated food and nutritional supplements in liquid or powder form included in this class; non-medicated supplements for drinks are identical to the opponent’s dietary supplements for humans and animals either because the opponent’s goods include, are included in, or overlap with, the contested ones.

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 directed at the public at large and as well as business customers with specific professional knowledge or expertise.

  

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.

This conclusion also applies in relation to all the relevant food supplements, since their use might have an impact on health.

Given that the general public is more prone to confusion, the examination will proceed on this basis.

 

c) The signs

 

CURCUFEN	CurcuGenesis
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 Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (judgment of 13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).

Taking the above principle into account, the vast majority of the relevant general consumes of the goods at stake will perceive the contested sign’s initial verbal element ‘CURCU’ as a clear and direct reference to ‘curcuma’ i.e. a tropical Asian plant of a genus that includes turmeric, zedoary, and other species that yield spices, dyes, and medicinal products. Indeed, this plant (or its derivates) is commonly sold in supermarkets, pharmacy and herbalist’s shop as spice, food colourant and as dietary supplement. The subject word will be perceived as such by, inter alia, the English, Italian, French, Spanish and Portuguese-speaking consumers, since equivalent in these languages.

Consequently, for this part of the public the sign’s subject common component will be perceived as weak since it merely refers to the main ingredient of the relevant products.

However, it cannot be excluded either that another part of the public, such as, for instance the Danish, Lithuanian and Swedish speaking consumers, will not perceive any clear meaning in the sign’s common element ‘CURCU’ since the correspondent of the word ‘curcuma’ is rather diverse (i.e. ‘ciberžolė’ in Lithuanian, ‘gurkemeje’ in Danish and ‘gurkemeja’ in Swedish). Consequently, for this part of the public the subject component is distinctive.

The earlier mark final letters ‘FEN’ do not convey any clear meaning, therefore, this component is distinctive.

Finally, the relevant consumers will perceive the contested sign’s component ‘GENESIS’ with the meaning of ‘the origin or mode of formation of something’ since this English word has similar or identical correspondent in the entirety of the relevant territory e.g. ‘genesi’ in Italian, ‘gènesis’ in Spanish, ‘genèse’ in French, ‘genesis’ in German, ‘genèza’ in Hungarian and Polish. This meaning is not directly related to the relevant goods and is, therefore, distinctive.

Visually and aurally, the signs coincide in the sequence of letters ‘CURCU’ whereas they differ in ‘FEN’ of the earlier mark and ‘GENESIS’ of the contested application.

In specific, the signs differing elements ‘FEN’ and ‘GENESIS’ entails substantial visual and aural differences as they implies (i) a different number of letters, namely eight in the earlier mark and twelve in the contested application (ii) a different number of syllables, namely three in the earlier mark against five in the contested application. Furthermore (iii) it must be recalled that irregular capitalization may have an impact on how the public perceives the sign, and consequently, on the assessment of similarity. The contested sign’s initial letter ‘C’ and the sixth letter ‘G’ are capitals and will lead the relevant consumers to see the sign as composed of two different words i.e. ‘CURCU’ and ‘GENESIS’. Consequently, the marks under comparison will be perceived as having a different structure, i.e. one word in the earlier mark and two in the sign applied for.

Therefore, and even taking into account the above assertions on the degree of distinctiveness of the sign’s verbal elements, these are visually and aurally similar only to a lower than average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks, and the degree of distinctiveness of their elements. 

For the vast majority of the relevant consumers, both signs recall the weak concept of ‘curcuma’ whereas they differ in the distinctive meaning of ‘genesis’ in the contested application. As the signs will be associated with a similar meaning with a limited distinctiveness, the signs are conceptually similar only to a low degree.

Conversely, for the part of the public that will perceive only the meaning of ‘GENESIS’ in the contested sign, the signs are not conceptually 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 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 weak element (for part of the public) in the mark as stated above in section c) of this decision.

 

e) Global assessment, other arguments and conclusion

 

The appreciation of likelihood of confusion on the part of the public depends, inter alia, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks 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).

For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, 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.

In the present case the goods have been found identical. They target both the general and professional public however the present assessment will take into account only the perspective of the general consumers, which is most prone to confusion. The degree of attention is high whereas the degree of distinctiveness of the earlier mark is average.

The signs have been found visually and aurally similar only to a lower than average degree. In particular, as outlined above, the signs differing letters ‘FEN’ and ‘GENESIS’ entails substantial visual and aural differences which cannot be overcome even for those consumers for which the sign’s shared component ‘CURCU’ is perceived as distinctive.

In this regard, it must be pointed out that in terms of recognition and recall, the beginning of a trade mark tends to be more important, since the first part of a sign is generally the part that catches consumers’ attention and will be remembered more clearly than the rest of the sign. However, this does not alter the basic principle that the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details.

For part of the public the signs are conceptually similar only to a low degree. However, this factor plays a limited impact in the assessment of likelihood of confusion, since for this part of the public the subject common component is weak.

For another part of the public the signs are not conceptually similar, as the verbal element ‘GENESIS’ in the contested sign will evoke a distinctive meaning.

The opponent refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

Taking all the above into account, it must be concluded that the assessed differences between the signs are capable of maintaining a sufficient distance between the overall impressions given by the signs. For these reasons, the Opposition Division does not find it plausible that the relevant consumer, who is considered reasonably well informed and reasonably observant and circumspect, might believe that the goods found to be identical come from the same undertaking or economically linked undertakings. This takes also into account on the high degree of attention paid by the relevant consumers.

 

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

  

This absence of a likelihood of confusion equally applies to the totality of the professional public, for which the element  ‘CURCU’ is weak, since it is expected that professionals of the relevant goods in Class 5 will easily grasp the weak meaning of ‘curcuma’ in the subject component. This is because, as a result of weak character of that element, that part of the public will perceive the signs as being less similar.

 

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

 

 

María Clara IBÁÑEZ FIORILLO

Aldo BLASI

Francesca CANGERI

 

 

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.