OPPOSITION No B 3 096 333

Sc Fiterman Pharma Srl, Str. Moara de Foc; no. 35, 700520 Iasi, Romania (opponent)

a g a i n s t

Happygum G.m.b.H, Bauernmarkt 8/8, 1010 Wien, Austria (applicant), represented by Von Bülow & Tamada, Rotbuchenstr. 6, 81547 München, Germany (professional representative).

On 18/01/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 096 333 is upheld for all the contested goods and services, namely:

Class 5: Pharmaceuticals and natural remedies.

Class 35: Retail or wholesale services for pharmaceutical preparations and medical supplies.

2. European Union trade mark application No 18 091 822 is rejected for all the contested goods and services. It may proceed for the remaining goods and services.

3. The applicant bears the costs, fixed at EUR 320.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 091 822 ‘HAPPYGUM’ (word mark), namely against some of the goods in Class 5 and some of the services in Class 35. The opposition is based on Romanian trade mark registration No 116 036 ‘HAPPY’ (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 and services

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

Class 5: Pharmaceutical preparations for human use; dietetic substances adapted for medical use, for human use only.

The contested goods and services are the following:

Class 5: Pharmaceuticals and natural remedies.

Class 35: Retail or wholesale services for pharmaceutical preparations and medical supplies.

Although in the notice of opposition, the opponent indicated that the opposition is directed against retail or wholesale services for pharmaceutical, preparations and medical supplies, the correct wording should read as follows retail or wholesale services for pharmaceutical preparations and medical supplies.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

The contested pharmaceuticals include, as a broader category, the opponent’s pharmaceutical preparations for human use. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested natural remedies are at least similar to the opponent’s pharmaceutical preparations for human use as they have the same purpose, insofar as they are used to treat and improve the medical condition of patients. They have the same relevant public and distribution channels. Furthermore, they may be in competition.

Contested services in Class 35

Retail services concerning the sale of specific goods are similar to an average degree to these specific goods (20/03/2018, T‑390/16, DONTORO dog friendship (fig.)/TORO et al., EU:T:2018:156, § 33; 07/10/2015, T‑365/14, TRECOLORE / FRECCE TRICOLORI et al., EU:T:2015:763, § 34). Although the nature, purpose and method of use of these goods and services are not the same, they are similar because they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

The goods covered by the retail services and the specific goods covered by the other mark must be identical in order to find an average degree of similarity between the retail services of those goods and the goods themselves, that is to say, they must either be exactly the same goods or fall under the natural and usual meaning of the category.

The principles set out above in relation to retail services apply to the various services rendered that revolve exclusively around the actual sale of goods, such as retail store services , wholesale services, internet shopping, catalogue or mail order services (to the extent that these fall into Class 35).

Therefore, the contested retail or wholesale services for pharmaceutical preparations and medical supplies are similar to the opponent’s pharmaceutical preparations for human use; dietetic substances adapted for medical use, for human use only in Class 5.

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 and services found to be identical and at least similar are directed at both the public at large and professionals.

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.

Likewise, natural remedies are goods that may have an impact on one’s health.

Therefore, the degree of attention paid by consumers in relation to the goods and services concerned is high.

c) The signs and the distinctiveness of the earlier mark

HAPPY	HAPPYGUM
Earlier trade mark	Contested sign

The relevant territory is Romania.

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).

Both marks are word marks that have no elements that could be considered dominant (visually eye-catching).

The word ‘HAPPY’ of the earlier sign is a basic English word that is known to the relevant public (15/07/2015, T‑352/14, HAPPY TIME / HAPPY HOURS, EU:T:2015:491, § 39; 30/04/2003, T‑707/13 & T‑709/13, BE HAPPY, EU:T:2015:252, § 30) as meaning feeling, showing, or expressing joy; pleased, causing joy or gladness. However, contrary to the applicant’s claim, the positive connotation that may be perceived by the relevant public does not materially alter the distinctiveness of the verbal element ‘HAPPY’. It is considered distinctive for the goods and services at issue. Likewise, the inherent distinctiveness of the earlier mark, taken as a whole, must be seen as normal and the opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

The contested sign is the verbal element ‘HAPPYGUM’, which, taken as a whole, is meaningless for the relevant public. However, although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, when perceiving a word sign they will break it down into elements that, for them, suggest a specific meaning or that resemble words known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57). Given the information above regarding the understanding of the word ‘HAPPY’ by the relevant public, it is reasonable to assume that the Romanian public will break down the contested mark into ‘HAPPY’ and ‘GUM’.

The word ‘HAPPY’, included at the beginning of the contested sign, will be perceived as having the meaning explained above. It is distinctive. The word ‘GUM’ is also an English word that means a substance, usually tasting of mint, which you chew for a long time but do not swallow. Since the equivalent Romanian word of ‘GUM’ is gumă (de mestecat), this word could be recognised by at least part of the relevant public. It is considered weak for the goods and services concerned as it indicates that the goods are medicated chewing gums or natural remedies in the form of a chewing gum, and the services are retail and wholesale services of such goods.

Visually and aurally, the signs coincide in the word ‘HAPPY’, which is distinctive for the goods and services at issue. It is the entire earlier mark and is placed at the beginning of the contested sign, where consumers generally tend to focus when encountering 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 marks differ in the additional word ‘GUM’ placed at the end of the contested sign, which is, however, weak, at least for part of the relevant public.

Therefore, the marks are visually and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be associated with a similar meaning because of the presence of the distinctive word ‘HAPPY’, the signs are conceptually similar to an average degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, 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).

The goods and services are identical and at least similar. The signs are overall similar to an average degree. The earlier sign has a normal degree of distinctiveness.

The signs coincide in the word ‘HAPPY’, which is distinctive for the goods and services at issue and is placed at the beginning of the contested sign, where consumers tend to focus when encountering a trade mark. Importantly, the earlier sign is entirely reproduced in the contested sign. The differences between the signs are confined to the word ‘GUM’ placed at the end of the contested sign, and considered weak, at least for part of the relevant public.

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. Given the nature of the goods and services at issue and the overall similarity of the signs, the relevant public is likely to believe that the goods and services designated by the signs under comparison originate from the same undertaking or from economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Romanian trade mark registration No 116 036. It follows that the contested trade mark must be rejected for all the contested goods and services.

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

The Opposition Division

Katarzyna ZANIECKA

Anna BAKALARZ

Arkadiusz GÓRNY

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.