OPPOSITION Nо B 3 105 581

Sanofi Mature IP, 54 rue La Boétie, 75008 Paris, France (opponent), represented by Casalonga Alicante, S.L., Avenida Maisonnave, 41‑6C, 03003 Alicante, Spain (professional representative)

a g a i n s t

Groupe Synerlab SAS, Aeroparc 3, 3 Rue du Tonnelier, 67960 Entzheim, France (applicant), represented by Ryo Rodriguez Oca, S.L., Calle Juan Hurtado de Mendoza, 9 Apto. 507, 28036 Madrid, Spain (professional representative).

On 12/01/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 105 581 is upheld for all the contested goods, namely for all the goods in Class 5.

2. European Union trade mark application No 18 094 005 is rejected for all the contested goods. It may proceed for the remaining goods and services.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 18 094 005 (figurative mark), namely against all the goods in Class 5. The opposition is based on, inter alia, international trade mark registration designating Benelux No 266 878 A ‘SOFRADEX’ (figurative 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 international trade mark registration designating Benelux No 266 878 A.

a) The goods

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

Class 5: Pharmaceutical, veterinary and hygienic products, dietetic products for children and patients, plasters, material for dressings, materials for stopping teeth and for dental impressions, disinfectants, preparations for destroying weeds and pests.

The contested goods are the following:

Class 5: Pharmaceutical preparations for medical and veterinary use; 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 pharmaceutical preparations for medical and veterinary use are, in essence, synonymous with the opponent’s pharmaceutical, veterinary products. Therefore, they are identical.

The contested sanitary preparations for medical purposes are, in essence, synonymous with the opponent’s hygienic products. Therefore, they are identical.

The contested dietetic food and substances adapted for medical use are, in essence, synonymous with the opponent’s dietetic products for patients. Therefore, they are identical.

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

The contested food for babies overlaps with the opponent’s dietetic products for children. Therefore, they are identical.

The contested dietary supplements for humans overlap with the opponent’s dietetic products for patients. Therefore, they are identical.

Plasters, materials for dressings; material for stopping teeth; disinfectants are identically contained in both lists of goods (including synonyms).

The contested dental wax is, in essence, synonymous with the opponent’s materials for dental impressions. Therefore, they are identical.

The contested preparations for destroying vermin; fungicides, herbicides are, in essence, synonymous with the opponent’s preparations for destroying weeds and pests. Therefore, they are identical.

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 at 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.

Therefore, the degree of attention of the public will be high for most of the contested goods because they affect the health of people or animals. For the remaining contested goods, which do not directly affect health, such as disinfectants or fungicides, the degree of attention will be average.

c) The signs and distinctiveness of the earlier mark

SOFRADEX
Earlier trade mark	Contested sign

The relevant territory is Benelux.

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 unitary character of the Benelux trade mark means that an earlier Benelux trade mark has identical protection in the relevant territories. Earlier Benelux trade marks may therefore be relied upon to challenge any subsequent application for a trade mark that would prejudice their protection, even if this is only in relation to the perception of consumers in part of the Benelux territories (09/03/2005, T‑33/03, Hai, EU:T:2005:89, § 39; 03/03/2004, T‑355/02, Zirh, EU:T:2004:62, § 36).

The contested sign’s verbal elements ‘GROUPE’ and ‘Laboratoires’ are meaningful in French. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the relevant public in the Benelux countries.

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 has no meaning for the relevant public. Therefore, the distinctiveness of the earlier mark must be seen as normal.

The contested sign’s element ‘SOPHARTEX’ has no meaning for the relevant public and is, therefore, distinctive.

The contested sign’s French verbal elements ‘GROUPE’ and ‘Laboratoires’ indicate the type of establishment producing the relevant goods, namely a group of companies (‘GROUPE’) and laboratories (‘Laboratoires’). Consequently, these elements are considered non-distinctive.

The contested sign’s element ‘SYNERLAB’ has, as a whole, no meaning for the relevant public. It is, therefore, distinctive.

The curved figurative element at the top of the contested sign, depicting part of a circle, is a rather simple figure which is relatively weak.

The horizontal line in the contested sign is one of the most basic geometrical figures and is, therefore, non-distinctive.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37). Consequently, the verbal elements of the contested sign have a stronger impact than its figurative elements.

The contested sign’s verbal element ‘SOPHARTEX’ is the sign’s dominant element due to its large size and black colour. It is much larger than the other distinctive verbal element ‘SYNERLAB’, which is depicted in a very small font.

Consequently, the verbal element ‘SOPHARTEX’ is by far the most significant element of the contested sign, based on its distinctiveness, visual dominance, and stronger impact as a verbal element.

Visually, the elements ‘SOFRADEX’ and ‘SOPHARTEX’ are quite similar because they coincide in the letters ‘SO-(A)(R)-EX’, although the letters ‘A’ and ‘R’ are reversed. Moreover, these elements have a very similar length, namely eight letters versus nine. However, the marks visually differ in the letters ‘-F-D-’ versus ‘-PH-T-’ of the aforesaid verbal elements, and in all the aforementioned additional elements of the contested sign, which, however, have less significance for the reasons mentioned above.

Therefore, the signs are visually similar to an average degree.

Aurally, it is most likely that only the contested sign’s dominant element ‘SOPHARTEX’ will be pronounced. This is the easiest and most natural way in which consumers will refer to the contested sign aurally. The other verbal elements of the contested sign are very small, and some are also non-distinctive, which means the public will most probably not pronounce them. Consequently, the pronunciation of the signs is highly similar because it coincides in the sound of the letters ‛SO-EX’ at the beginning and the end of the marks. Furthermore, the letters ‘-F-’ and ‘-PH-’ (the third sound in the respective marks) are pronounced the same way in French. Moreover, the marks also coincide in the sounds of the letters ‘R’ and ‘A’ in the middle part of the marks (although in reversed order). The sound of the antepenultimate letter ‘D’/‘T’ is quite similar. Finally, both marks will be pronounced in three syllables, which makes their rhythm and intonation similar.

Therefore, the signs are aurally highly similar.

Conceptually, although the relevant public will perceive the meanings in the contested sign as explained above, the other sign has no meaning. Since one of the signs will not be associated with any meaning, 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) Global assessment, other arguments and conclusion

The goods are identical. The degree of distinctiveness of the earlier trade mark is average. The level of attention of the relevant public (composed of the public at large and professionals) will vary between average and high.

The marks are visually similar to an average degree and aurally similar to a high degree. Conceptually, the marks are not similar.

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).

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).

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. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Consequently, the average degree of visual similarity and the high degree of aural similarity, coupled with the identity of the goods, will result in the public (even if highly attentive) believing that the goods sold under the respective trade marks have the same or a related trade origin.

In its observations, the applicant argues that the marks peacefully coexisted on the Benelux market between 1974 and 2004.

According to case-law, the possibility cannot be ruled out that the coexistence of two marks on a particular market might, together with other elements, contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public (03/09/2009, C‑498/07 P, La Española, EU:C:2013:302, § 82). In certain cases, the coexistence of earlier marks in the market could reduce the likelihood of confusion that the Office finds between two conflicting marks (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86). However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds for refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard it should be noted that formal coexistence in national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) at national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis, and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

However, the applicant merely argued that there was coexistence, without proving that this coexistence was based on the lack of confusion between the marks. Therefore, in the absence of convincing arguments and evidence thereof, this argument of the applicant must be rejected as unfounded.

The applicant also claims that there are several trade marks on the register containing the letters ‘SO-EX’ (i.e. the beginning ‘SO-’ and the ending ‘-EX’) for goods in Class 5. However, firstly, the applicant did not prove that the marks had actually coexisted on the market (and not merely on the register). Secondly, the marks referred to by the applicant have fewer similarities than the marks in dispute here. Consequently, the applicant’s claim must be dismissed.

Considering all the above, there is a likelihood of confusion on the part of the French-speaking part of the public in the Benelux countries. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public in the Benelux countries is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s international trade mark registration designating Benelux No 266 878 A. It follows that the contested trade mark must be rejected for all the contested goods.

As the above 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 right 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

Chantal VAN RIEL

Vít MAHELKA

Michal KRUK

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.