OPPOSITION Nо B 3 121 495

Industrial Farmaceutica Cantabria, S.A., Calle Arequipa, 1, 28043 Madrid, Spain (opponent), represented by Ryo Rodríguez Oca, S.L., Calle Juan Hurtado de Mendoza, 9 Apto. 507, 28036 Madrid, Spain (professional representative)

a g a i n s t

Pavia Farmaceutici S.r.l., Via Vistarino 14/f, 27010 Copiano (PV), Italy (applicant), represented by Bugnion S.p.A., Viale Lancetti, 17, 20158 Milan, Italy (professional representative).

On 20/04/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 121 495 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

On 18/05/2020, the opponent filed an opposition against some of the goods of European Union trade mark application No 18 158 912 ‘SCX TECHNOLOGY’ (word mark), namely against all the goods in Class 3. The opposition is based on Spanish trade mark registrations No M 2 940 309 ‘SCA BIOREPAIR TECHNOLOGY’ (word mark), No M 2 942 243 ‘SCA INDEX’ (word mark) and No M 2 943 743 ‘SCA’ (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 Spanish trade mark registration No M 2 940 309.

a) The goods

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

Class 3: Cosmetics.

The contested goods are the following:

Class 3: Soaps; detergents; soaps for body care; perfume; creams; essential oils; scented oils; deodorant for personal use; skin care lotions [cosmetic]; beauty lotions; lotions for face and body care; hair care lotions; cosmetic preparations for the hair and scalp; hair care lotions; cosmetic creams; lip care moisturizers; skin care creams, other than for medical use; hair grooming preparations; tooth care preparations; foot care preparations (non-medicated -); non-medicated face care preparations; non-medicated body care preparations; eye care products, non-medicated; preparations for the care of the face and body; preparations for the care of hands, feet and nails; feminine hygiene products; absorbent articles for personal hygiene; sanitary preparations and products; cosmetics; make-up preparations; products for the care and conditioning of hair; dentifrices; non-medicated beauty preparations; preparations for personal hygiene and personal care.

Some of the contested goods are identical or similar to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 assumed to be identical are directed at the public at large. The degree of attention is average.

c) The signs

SCA BIOREPAIR TECHNOLOGY	SCX TECHNOLOGY
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 earlier mark is a word mark containing the letters ‘SCA’, which will be perceived by the relevant public as an abbreviation with no particular meaning in relation to the relevant goods and, therefore, distinctive to an average degree, and the English words ‘BIOREPAIR TECHNOLOGY’. The word ‘BIOREPAIR’ is usually associated in English with something related to life, biological (BIO), and the idea of restoring (something damaged, faulty, or worn) to a good condition. The word ‘TECHNOLOGY’ relates to the application of scientific knowledge for specific purposes, especially in industry. Virtually all types of products, including in the cosmetic field such as the relevant goods, derive from a kind of technology. Due to its proximity to Spanish equivalents: ‘BIOREPARACIÓN’ and ‘TECNOLOGÍA’ and the frequent occurrence of such descriptive verbal elements in beauty products, the Spanish-speaking public will perceive these terms as merely relating to characteristics of the goods or that they have been produced or provided on the basis of a specific technology. These words are considered at most weak in relation to the relevant goods. Consequently, the abbreviation ‘SCA’ is the most distinctive verbal element in the earlier mark.

The contested sign is a word mark consisting of the letters ‘SCX’, which has no particular meaning for the relevant public, and the English word ‘TECHNOLOGY’. The letters ‘SCX’ will be perceived as an abbreviation that has no relation to the relevant goods and is, therefore, distinctive to an average degree. The same conclusion applies to the word ‘TECHNOLOGY’. This element is considered at most weak.

The length of the distinctive verbal elements may influence the effect of the differences between them. The shorter an element, the more easily the public is able to perceive all of its single elements. Therefore, in such short elements (abbreviations composed of only three letters), small differences may frequently lead to a different overall impression.

Visually, the signs’ most distinctive elements coincide in the letters ‘SC’ and differ in their last letters, ‘A’ of the earlier mark and ‘X’ of the contested sign. Despite having the same length and coinciding in the first two letters, the abbreviations ‘SCA’ and ‘SCX’ are very short and the differing letters (‘A’ v ‘X’) are noticeably different.

Taking into account the above considerations regarding their importance/weight and degree of distinctiveness, the remaining verbal elements ‘TECHNOLOGY’ and ‘BIOREPAIR’ are considered to have a limited visual impact on consumer, if any at all.

Considering the above, the signs are visually similar to a lower-than-average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘SC’ and the word ‘TECHNOLOGY’, present identically in both signs. The pronunciation differs in the sound of the letters ‘A’ of the earlier mark and ‘X’ of the contested sign as well as the word ‘BIOREPAIR’ of the earlier mark.

The abbreviations ‘SCA’ and ‘SCX’ will be perceived as meaningless and distinctive in relation to the relevant goods, whereas the coinciding word ‘TECHNOLOGY’ has a descriptive character, which affects its distinctive capacity. The most distinctive elements in both signs are the only ones that consumers will perceive as badges of origin of the corresponding goods. They will be perceived as abbreviations and, thus, pronounced as single letters, which only increases the aural distance between them, since the last letter ‘A’ is pronounced with a manifestly different sound to the last letter ‘X’. Bearing in mind the shortness of these elements, the result is clearly distinguishable from an aural perspective.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs are conceptually similar to, at most, a low degree, as their semantic coincidence stems from an element (‘TECHNOLOGY’), which is at most weak in relation to the relevant goods and cannot indicate commercial origin. Consequently, the coincidence in this concept has a limited weight in the comparison of the marks. The public will rather focus on the distinctive elements, ‘SCA’ and ‘SCX’, which will be perceived as meaningless abbreviations and, consequently, bear no conceptual link as they do not convey any clear semantic content.

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 some (at most) weak elements in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The contested goods are assumed to be identical to the opponent’s goods. The degree of attention of the relevant public in relation to those goods is average.

The global appreciation of the likelihood of confusion must, as regards the visual, aural or conceptual similarity of the conflicting signs, be based on the overall impression created by them, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23; 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25).

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 overall low degree of similarity between the signs (lower than average visually, low aurally and, at most, low conceptually) results from the coinciding element ‘TECHNOLOGY’ and the coincidence in the letters ‘SC’. The public will perceive the verbal element ‘TECHNOLOGY’ as merely informational and descriptive. In general, if trade marks have identical parts that are weak or devoid of distinctive character, the existing differences between the signs are to be given more importance in the overall assessment of the signs (18/03/2002, R 814/2001‑3, ALL-DAY AQUA / Krüger All Day (FIG. MARK), § 50; 14/05/2001, R 257/2000‑4, FIG./COLOUR MARK (e plus) / PLUS, § 22). Such differences are even more evident in short elements and decrease the likelihood of confusion between the conflicting trade marks.

Therefore, the relevant public will pay little attention to the verbal element ‘TECHNOLOGY’. Instead, the public will focus on the distinctive elements of the signs, ‘SCA’ and ‘SCX’, which will be perceived as meaningless abbreviations. Moreover, considering the structure of the signs and their position at the beginning, the public will attribute trade mark value and will focus their attention on these elements. The coincidence in two letters (‘SC’) is not particularly relevant in such short elements, which the public instantly perceives as a whole, clearly identifying at once all their constituting letters. Therefore, as both distinctive elements are rather short (only three letters), it is considered that the fact that they differ in one letter is a relevant factor to consider when evaluating the likelihood of confusion between the conflicting signs. Furthermore, this difference is quite noticeable, both visually and aurally, as the vowel ‘A’ is manifestly distinguishable from the consonant ‘X’.

To sum up, the similarities between the signs essentially concern an element that is at most weak, whereas their most distinctive elements can be differentiated easily on a visual and aural level – and bear no conceptual connection as they are both meaningless – even by the consumers who might proceed to the purchase of the relevant goods with an average degree of attentiveness. Consequently, the similarities are not sufficient to lead to a likelihood of confusion on the part of the public.

Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

The opponent has also based its opposition on the following earlier trade marks, which cover the same goods in Class 3.

 Spanish trade mark registration No M 2 942 243 for the word mark ‘SCA INDEX’.

 Spanish trade mark registration No M 2 943 743 for the word mark ‘SCA’.

These earlier rights invoked by the opponent are even less similar to the contested mark. This is because they either contain a further element (the word ‘INDEX’ in Spanish trade mark registration No M 2 942 243), which is not present in the contested sign, or are limited to the short element ‘SCA’, without the coinciding element ‘TECHNOLOGY’ (as in Spanish trade mark registration No M 2 943 743). Therefore, even assuming that the contested goods are all identical to the goods covered by these trade marks, the outcome of the opposition cannot be different with respect to the findings reached in the comparison of the contested sign with the earlier Spanish trade mark registration No M 2 940 309. Therefore, the opposition must also be rejected as regards these earlier rights and insofar as based on Article 8(1) EUTMR.

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

Félix ORTUÑO LÓPEZ

Arkadiusz GORNY

Ioana MOISESCU

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.