OPPOSITION Nо B 3 101 436

 

Prollenium Medical Technologies, Inc., 138 Industrial Parkway North, L4G 4C3 Aurora, Canada (opponent), represented by Hynell Intellectual Property Ab, Järnvägsgatan 2, 683 30 Hagfors, Sweden (professional representative) 

 

a g a i n s t

 

Purasac Co., Ltd., #6f, Due Building, 543, Bongeunsa-ro, Gangnam-gu, Seoul, Republic of Korea, (applicant), represented by Peter Lee, Immermannstr. 14-16 -steinwayhaus-, 40210 Düsseldorf, Germany (professional representative).

On 08/12/2020, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 3 101 436 is upheld for all the contested goods.

 

2.	European Union trade mark application No 18 117 313 is rejected in its entirety.

 

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

 

REASONS

 

The opponent filed an opposition against all the goods of European Union trade mark application No 18 117 313  (figurative mark). The opposition is based on, inter alia, the European trade mark registration No 6 975 957, ‘REVANESSE’ (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.

 

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 European Union trade mark registration No 6 975 957.

 

a) The goods

 

The goods on which the opposition is based are, inter alia, the following:

 

Class 5: Gel for use in cosmetic surgery, wound healing and medical cosmetic treatment.

The contested goods the following:

 

Class 5: Injectable dermal fillers; injectable pharmaceuticals.

The contested goods injectable dermal fillers; injectable pharmaceuticals are pharmaceutical and dermatological products/preparations in the injectable form. The earlier goods gel for use in cosmetic surgery, wound healing and medical cosmetic treatment can include also pharmaceutical and dermatological products/preparations in gel form, some of which could be injectable.

Therefore, the contested injectable dermal fillers; injectable pharmaceuticals overlap with the opponent's gel for use in non-medical cosmetic treatment. 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.

 

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

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

 

REVANESSE
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The earlier mark is a word mark and, therefore, it is the word as such that is protected and not its written form. Consequently, it is irrelevant whether the signs are represented in upper- or lower-case characters unless the word mark combines upper- and lower-case letters in a manner that departs from the usual way of writing (‘irregular capitalisation’), which is not the case here.

None of the verbal elements composing the signs have a meaning in Spanish `REVANESSE´ in the earlier mark vs `REJEUNESSE´ in the contested application. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public.

The contested sign is a figurative mark composed of the meaningless and therefore distinctive verbal element ‘REJEUNESSE’, accompanied by a figurative element that represents a black drop containing a white stylised flower. This figurative element has no direct link to any of the goods at issue and is therefore distinctive.

However, 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).

Visually and aurally, the signs coincide in their first two letters ‘RE’ and in the last two sounds ‘NES-SE’. They differ in their second letters ‘VA’ versus ‘JEU’, as well as visually in the figurative element, which does not have a counterpart in the earlier sign.

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

Conceptually, although the public in the relevant territory might perceive the meaning of the figurative element in the contested sign as explained above, the other sign has no meaning in that territory. 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) 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 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

 

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).

In the present case, the goods are identical, and are directed at both public at large and the professional public. The degree of attention during the purchase of the goods concerned may vary from average to high. The distinctive character of the earlier trade mark is considered normal. The signs are visually and aurally similar to an above average degree and not conceptually 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).

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

 

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 6 975 957 ‘REVANESSE’. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right of the opponent’s European Union trade mark registration No 6 975 957 ‘REVANESSE’ 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 rights 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

 

 

Helen Louise MOSBACK

Inés GARCIA LLEDO

Carlos MATEO PÉREZ

 

 

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.