OPPOSITION Nо B 3 101 674

 

Farmalider, S.A., San Rafael, 3, Alcobendas (Madrid), Spain (opponent), represented by Ryo Rodriguez Oca, S.L., Calle Juan Hurtado de Mendoza, 9 Apto. 507, 28036 Madrid, Spain (professional representative)

 

a g a i n s t

 

Phiteneurope Gmbh, Hauptstrasse 29, 79576 Weil Am Rhein, Germany and Ospedalia, Bösch 37, 6331 Hünenberg, Switzerland (applicants).

On 26/11/2020, the Opposition Division takes the following

 

 

DECISION:

  

1.	Opposition No B 3 101 674 is upheld for all the contested goods.

 

2.	European Union trade mark application No 18 094 803 is rejected in its entirety.

 

3.	The applicants bear the costs, fixed at EUR 620.

 

REASONS

 

The opponent filed an opposition against all the goods of European Union trade mark application No 18 094 803 ‘ISUPRIL’ (word mark). The opposition is based on European Union trade mark registration No 14 510 697 ‘IBUPRIL’ (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: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; foodstuffs and dietetic substances for medical or veterinary purposes; baby food; 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: Cardiovascular pharmaceuticals.

 

The contested cardiovascular pharmaceuticals are considered identical to the opponent´s pharmaceutical preparations. This is because cardiovascular pharmaceuticals are included in the broader category of pharmaceutical preparations.

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 in the healthcare sector or medical 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.

c) The signs

 

IBUPRIL	ISUPRIL
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 verbal elements ‘IBUPRIL’, of the earlier mark, and ‘ISUPRIL’, of the contested sign are meaningless and therefore have a normal degree of distinctiveness for the goods at issue.

Visually and aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the signs coincide in the string of letters/sounds ‘I*UPRIL’, present identically in both signs. They only differ in the second letter/sound ‘B’ vs ‘S’ respectively. The signs are visually and aurally the same length (seven letters and three syllables) and have aurally the same rhythm and intonation.

Therefore, the signs are visually and aurally highly similar.

 

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

 

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.

 

e) Global assessment, other arguments and conclusion

 

The contested goods are identical to the opponent’s goods. They target the public at large and business customers with specific professional knowledge or medical professionals whose degree of attention is rather high. The earlier mark enjoys a normal degree of distinctiveness.

The signs are visually and aurally highly similar. Neither has a concept that could help to differentiate them. The signs coincide in the letters ‘I*UPRIL’, placed in the same position, which are six out of the signs’ seven letters. In addition, the difference is limited to the signs’ second letters -‘B’ of the earlier mark and ‘S’ of the contested sign-. It follows that the similarities between the signs at issue clearly outweigh the said difference.

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).

 

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 European Union trade mark registration No 14 510 697. It follows that the contested trade mark must be rejected for all the contested goods.

 

 

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 applicants lose, they 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

 

 

Catherine MEDINA

Claudia SCHLIE

Kieran HENEGHAN

 

 

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.