OPPOSITION No B 3 106 249

Diochi spol. s.r.o., Průmyslová 1306/7, 10200 Praha 10 - Hostivař, Czech Republic (opponent), represented by Lejček & Associates, Slezská 169/10, 120 00 Praha 2, Czech Republic (professional representative)

a g a i n s t

Activ8 D.O.O., Ljubljanska Cesta 12d, SL-1236 Trzin, Slovenia (applicant), represented by Item D.O.O., Resljeva 16, SL-1000 Ljubljana, Slovenia (professional representative).

On 27/11/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 106 249 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 18 118 505 (figurative mark). The opposition is based on Czech trade mark registration No 370 602 (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.

a) The goods

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

Class 5: Pharmaceuticals; medical preparations; chemical preparations for veterinary purposes; sanitary preparations for medical purposes; dietetic foods adapted for medical purposes; dietary and nutritional supplements; nutritional supplements for veterinary use; medicinal herbs; medicinal herbs in dried or preserved form.

The contested goods are the following:

Class 5: Pharmaceuticals, medical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical use; dietary supplements for human beings; pharmaceuticals and natural remedies; food supplements; pharmaceutical preparations for inducing erections; pharmaceuticals for the treatment of erectile dysfunction; herbal male enhancement capsules.

All the contested goods are identical to the opponent’s goods, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, are included in, or overlap with, the contested goods.

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 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. For the remaining goods (i.e. those that are not pharmaceutical products) the above explanations also apply, since they can also have an impact on the health of consumers, leading to a high degree of attention during their purchase.

c) The signs

Earlier trade mark	Contested sign

The relevant territory is the Czech Republic.

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 figurative. The earlier mark is the verbal element ‘ANDROZIN’ in bold dark-blue upper-case letters, below the verbal element ‘DIOCHI’ depicted in smaller light-blue upper-case letters with a red device on its left side.

The contested mark is the verbal element ‘ANDROSEN’ in blue upper-case letters, above the verbal element ‘Men’s health’, depicted in smaller black sentence-case letters. Above the verbal elements of the contested mark, there is a figurative element of a circle surrounded by four arches in blue and green.

The verbal element ‘ANDROZIN’ in the earlier mark is the dominant element as it is the most eye-catching, while the verbal element ‘ANDROSEN’ and the figurative element are the most eye-catching elements in the contested sign by virtue of their sizes.

Although the dominant verbal elements of both marks are single verbal elements, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). Therefore, the relevant public will notice the component ‘ANDRO’ in both signs and perceive it as a universally understandable expression (prefix) referring to ‘men’ or ‘male’ (information extracted from Lexico on 27/11/2020 at https://www.lexico.com/definition/andro-). Alternatively, they may link it with ‘andrology’ (‘andrologie’ in Czech), ‘the branch of physiology and medicine which deals with diseases and conditions specific to men’ (information extracted from Lexico on 2711/2020 at https://www.lexico.com/definition/andrology). Medical professionals might also understand this component as ‘ANDR’, the International Nonproprietary Name (INN) used for pharmaceutical substances such as steroids, androgens (information extracted from The use of stems in the selection of International Nonproprietary Names (INN) for pharmaceutical substances, 2011 by the World Health Organization 27/11/2020 at https://www.who.int/medicines/services/inn/StemBook_2011_Final.pdf). Therefore, the coinciding component ‘ANDRO’ has, at most, a weak distinctive character for all the relevant goods because it refers to the purpose of the goods (to resolve men’s medical problems) or that they can be for use by men or that it describes the group of drugs to which the relevant goods belong.

The verbal components ‘ZIN’ and ‘DIOCHI’ of the earlier mark have no meaning for the relevant public and are, therefore, distinctive. The small red device in the earlier mark is of a purely decorative nature.

The verbal component ‘SEN’ of the contested mark will be perceived as ‘dream’ in Czech (information extracted from Czech dictionary Seznam.cz on 27/11/2020 at https://slovnik.seznam.cz/preklad/cesky_anglicky/sen). It is distinctive since it does not allude to any characteristics of the goods in question. The verbal combination ‘Men’s health’ in the contested mark might be understood by part of the public, who are familiar with English, and, for this part it is weak considering the nature of the relevant goods. For the rest of the public for whom it is meaningless, it is distinctive. In any event, it has a minor impact on the public due to its secondary position in the sign.

The figurative element of the contested mark will be perceived as a fanciful device and it is distinctive since it does not allude to any characteristics of the goods in question.

The opponent highlighted that the beginning of the signs, to which consumers pay highest attention, are identical. Although there is an established legal practice according to which it is considered that consumers pay more attention to the beginning of a mark, this consideration cannot prevail in all cases and cannot, in any event, undermine the principle that an examination of the similarity of the signs must take account of the overall impression produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details (27/06/2012, T‑344/09, Cosmobelleza, EU:T:2012:324, § 52). As the coinciding component is at most weak, the importance of the differing components will have a special impact on the overall impression of the signs.

Visually, the signs coincide in the verbal component ‘ANDRO’, found to be weak, at most. However, they differ in the rest of the signs’ components, ‘ZIN’ v ‘SEN’, the non-dominant elements ‘DIOCHI’ and the red device v ‘Men’s health’, as well as in the co-dominant figurative element of the contested mark. The signs also differ in their stylisation and colours.

Therefore, considering the at most weak character of the coinciding verbal component ‘ANDRO’, the signs are visually similar to a very low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘ANDRO’ and ‘N’, present identically in both signs. The pronunciation differs in the sound of the letters ‘ZI’ of the earlier mark and ‘SE’ of the contested mark, as well as in the non-dominant verbal elements of both signs, ‘DIOCHI’ and ‘Men’s health’, in the unlikely case that these will be pronounced considering their small size.

Therefore, the signs are aurally similar to a low degree.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the verbal component ‘ANDRO’, included in both signs, will be associated with the meanings explained above. Although this was found at most weak, it is not totally void of distinctive character. Therefore, for the goods for which the coinciding element is totally void of distinctive character, the attention of the relevant public will be attracted by the additional distinctive verbal elements, one of which has a meaning. The other has no meaning and, therefore, they are not conceptually similar. For those goods for which it is only weak, the signs are conceptually similar to a low degree, since the coinciding element does play a role in 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, despite the presence of an, at most, weak element in the mark, as stated above in section c) of this decision.

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).

The goods are identical and target the general public and professional customers, who possess a high degree of attention. The distinctiveness of the earlier mark must be seen as normal.

The signs are visually similar to a very low degree and aurally similar to a low degree on account of the limited distinctiveness of the coinciding component ‘ANDRO’. Conceptually, the signs are similar to a low degree for some of the goods or not similar, for the other goods.

When the marks coincide in an element with a low degree of distinctiveness, the assessment of likelihood of confusion will focus on the impact of the non-coinciding elements on the overall impression of the marks. That assessment takes into account the similarities/differences and distinctiveness of the non-coinciding components. A coincidence in an element with a low degree of distinctiveness will not normally on its own lead to likelihood of confusion when the overall impression created by the signs is sufficiently dissimilar.

The Opposition Division considers that confusion will not arise on the part of the relevant public, as the coincidence lies in a weak component. Therefore, the additional distinctive components ‘ZIN’ and ‘SEN’, even placed at the end of the signs, are sufficient to counterbalance the similarity between them. This is also the case for identical goods, since the identity of these goods cannot compensate for the low similarity of the signs. This is especially important because the relevant public will pay a high degree of attention regarding the goods concerned.

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

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

Cristina SENERIO LLOVET

Francesca DRAGOSTIN

Tzvetelina IANTCHEVA

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.