OPPOSITION No B 3 112 140

Galenpharma GmbH, Wittland 13, 24109 Kiel, Germany (opponent), represented by Uexküll & Stolberg Partnerschaft von Patent- und Rechtsanwälten mbB, Beselerstr. 4, 22607 Hamburg, Germany (professional representative)

a g a i n s t

Ergobyte Informatics S.A., 21 Aristotelous street, 54624 Thessaloniki, Greece (applicant), represented by Dr. Helen G. Papaconstantinou and Partners Law Firm, 2 Coumbari Street Kolonaki, 106 74 Athens, Greece (professional representative).

On 20/01/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 112 140 is partially upheld, namely for the following contested services:

Class 44: Providing information to patients in the field of administering medications; providing medical information in the healthcare sector; providing news and information in the field of medicine; consultancy and information services relating to pharmaceutical products; consultancy and information services provided via the internet relating to pharmaceutical products; providing information relating to the preparation and dispensing of medications; provision of pharmaceutical information; provision of information relating to medicine; medical information services provided via the internet; consultancy and information services relating to medical products.

2. European Union trade mark application No 18 162 822 is rejected for all the above services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 18 162 822 for the figurative mark . The opposition is based on, inter alia, German trade mark registration No 39 506 901 for the word mark ‘GALENPHARMA’, in relation to which the opponent invoked Article 8(1)(b) EUTMR and the German company name ‘GALENpharma GmbH’, in relation to which the opponent invoked Article 8(4) 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 German trade mark registration No 39 506 901 for the word mark ‘GALENPHARMA’ as it has the broadest scope of goods.

a) The goods and services

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

Class 5: Medicine, namely pharmaceuticals as well as sanitary preparations for medical purposes.

The contested goods and services are the following:

Class 9: Computer software for use in medical decision support systems; databases (electronic); electronic publications, downloadable; artificial intelligence software for healthcare; machine learning software for healthcare; business software; computer software platforms.

Class 38: Providing access to platforms and portals on the internet; providing user access to platforms on the internet; provision of access to data or documents stored electronically in central files for remote consultation; provision of access to data via the internet; providing access to databases; transmission of information and images relating to pharmaceuticals, medicine and hygiene.

Class 44: Advisory services relating to medical services; providing information to patients in the field of administering medications; providing information relating to medical services; providing medical information in the healthcare sector; providing news and information in the field of medicine; consultancy and information services relating to pharmaceutical products; consultancy and information services provided via the internet relating to pharmaceutical products; providing information relating to the preparation and dispensing of medications; provision of pharmaceutical information; provision of information relating to medicine; medical information services provided via the internet; consultancy and information services relating to medical products.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested services in Class 44

The contested providing information to patients in the field of administering medications; consultancy and information services relating to pharmaceutical products; consultancy and information services provided via the internet relating to pharmaceutical products; providing information relating to the preparation and dispensing of medications; provision of pharmaceutical information; consultancy and information services relating to medical products are similar to a low degree to the opponent’s pharmaceuticals in Class 5, as they coincide in relevant public (e.g. people purchasing medicines and doctors) and distribution channels (e.g. pharmacies). Furthermore, they are complementary.

The same applies to the contested providing medical information in the healthcare sector; providing news and information in the field of medicine; provision of information relating to medicine; medical information services provided via the internet as all those types of medical information are broad categories that relate to illness and injuries and their treatment or prevention, so they can include medical information related to pharmaceuticals. Therefore, they are also similar to a low degree to the opponent’s pharmaceuticals in Class 5.

Finally, the contested advisory services relating to medical services; providing information relating to medical services refer to advisory and information services related to the actual activity of medical treatment (but not to pharmaceuticals or sanitary preparations) provided by medical professionals, such as doctors, dentists or nurses. Therefore, they are dissimilar to the opponent’s pharmaceuticals as well as sanitary preparations for medical purposes. These goods and services have a different nature, purpose and method of use. These goods and services are neither complementary nor in competition. Furthermore, they are not provided by the same undertakings and are generally distributed/provided through different distribution channels.

Contested goods in Classes 9 and 38

Although some of the goods and services in Classes 9 and 38 are related to the medical field or pharmaceuticals, this is not sufficient to find similarity with the opponent’s goods in Class 5. These goods and services have a different nature (software, databases, publications, telecommunication services versus pharmaceuticals, sanitary goods), purpose and method of use. They are neither complementary, in the sense that one is indispensable for the other, nor in competition. Furthermore, they are not provided by the same companies and have different distribution channels. Therefore, these goods and services are dissimilar.

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 and services found to be similar to a low degree are directed at the public at large and at a professional public with specific knowledge or expertise in the medical field.

The degree of attention is high.

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.

The same reasoning applies to the services related to pharmaceuticals in Class 44.

Given that the general public is more prone to confusion, the examination will proceed on this basis.

c) The signs

GALENPHARMA
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 ‘GALENPHARMA’ is a word mark. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether the sign is depicted in upper- or lower-case characters.

Furthermore, although the earlier mark is composed of one verbal element, 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). As the component ‘PHARMA’ is a commonly used abbreviation in the pharmaceutical industry, it will immediately be perceived as indicating the nature of the goods, and is non-distinctive.

The contested sign is a figurative mark containing the verbal element ‘Galen’, preceded by a figurative element, both depicted in blue. The figurative element will most likely be perceived as a highly stylised letter ‘g’, induced by the element ‘Galen’ that follows. As the letter ‘g’ will be perceived merely as the first letter of the element ‘Galen’, it does not evoke any specific concept and has a normal degree of distinctiveness.

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). Therefore, the relevant public will refer to the contested sign as ‘Galen’.

The element ‘GALEN’, included in both signs, will be perceived by the relevant general public as meaningless. Therefore, it has a normal degree of distinctiveness.

The contested sign has no element that could be considered clearly more dominant than other elements.

Visually and aurally, the signs coincide in ‘GALEN’. They differ in the earlier mark’s component ‘PHARMA’. However, this is non-distinctive and has a very limited impact. The signs also differ visually in the stylisation, colour and figurative element of the contested sign. The letter ‘g’ in the contested sign’s figurative element is not likely to be pronounced as it is integrated in a highly stylised way into the figurative element and will be perceived merely as the first letter of the element that follows, ‘GALEN’, which will be used to refer to the contested sign.

Therefore, the signs are visually and aurally highly similar.

Conceptually, although the public in the relevant territory will perceive the meaning of the earlier mark’s component ‘PHARMA’, 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. However, the impact of this conceptual difference is very limited since it is caused by a non-distinctive component.

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 a non-distinctive element in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association that can be made with the registered mark, and the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The earlier mark has an average degree of distinctiveness. The relevant public is the general public. The degree of attention is high.

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).

The goods and services are partly similar to a low degree and partly dissimilar.

The signs are visually and aurally similar to a high degree. The signs are conceptually not similar although this is not particularly relevant since the difference emanates from a non-distinctive concept.

The striking visual and aural similarities in ‘GALEN’ – which is the only distinctive component in the earlier mark, and the element in the contested sign that will be used to refer to it –. counteract the low degree of similarity between the goods and services, according to the interdependence principle mentioned above. Therefore, the relevant public might be led to believe that the goods and services come from the same or economically linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s German trade mark registration No 39 506 901 for the word mark ‘GALENPHARMA’.

It follows from the above that the contested trade mark must be rejected for the services found to be similar to a low degree to the goods of the earlier trade mark.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods and services cannot be successful.

The opponent has also based its opposition on the following earlier trade marks:

 German trade mark registration No 39 838 272 for the figurative mark ;

 German trade mark registration No 39 843 990 for the word mark ‘GALEN’.

Since these marks cover a narrower scope of goods, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.

As the opposition is not entirely upheld under Article 8(1)(b) EUTMR, the Opposition Division will now proceed on the basis of the ground of Article 8(4) EUTMR.

NON‑REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE — ARTICLE 8(4) EUTMR

The opponent invokes Article 8(4) EUTMR in relation with the company name ‘GALENpharma GmbH’ used in the course of trade in Germany.

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

 the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

 pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

 the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non-registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

The right under the applicable law

According to Article 95(1) EUTMR, the Office will examine the facts of its own motion in proceedings before it; however, in proceedings relating to relative grounds for refusal of registration, the Office will restrict this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

According to Article 7(2)(d) EUTMDR, if the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opposing party must provide, inter alia, evidence of its acquisition, continued existence and scope of protection, including where the earlier right is invoked pursuant to the law of a Member State, a clear identification of the content of the national law relied upon by adducing publications of the relevant provisions or jurisprudence.

Therefore, the onus is on the opponent to submit all the information necessary for the decision, including identifying the applicable law and providing all the necessary information for its sound application. According to case-law, it is up to the opponent ‘… to provide the Office not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application … but also particulars establishing the content of that law’ (05/07/2011, C‑263/09 P, Elio Fiorucci, EU:C:2011:452, § 50).

The information on the applicable law must allow the Office to understand and apply the content of that law, the conditions for obtaining protection and the scope of this protection, and allow the applicant to exercise the right of defence.

As regards the provisions of the applicable law, the opponent must provide a clear identification of the content of the national law relied upon by adducing publications of the relevant provisions or jurisprudence (Article 7(2)(d) EUTMDR). The opponent must provide the reference to the relevant legal provision (Article number and the number and title of the law) and the content (text) of the legal provision by adducing publications of the relevant provisions or jurisprudence (e.g. excerpts from an official journal, a legal commentary, legal encyclopaedias or court decisions). If the relevant provision refers to a further provision of law, this must also be provided to enable the applicant and the Office to understand the full meaning of the provision invoked and to determine the possible relevance of this further provision. Where the evidence concerning the content of the relevant national law is accessible online from a source recognised by the Office, the opponent may provide such evidence by making a reference to that source (Article 7(3) EUTMDR).

According to Article 7(4) EUTMDR, any provisions of the applicable national law governing the acquisition of rights and their scope of protection as referred to in Article 7(2)(d) EUTMDR, including evidence accessible online as referred to in Article 7(3) EUTMDR must be in the language of the proceedings or accompanied by a translation into that language. The translation must be submitted by the opposing party of its own motion within the time limit specified for submitting the original document.

Furthermore, the opponent must submit appropriate evidence of fulfilment of the conditions of acquisition and of the scope of protection of the right invoked, as well as evidence that the conditions of protection vis-à-vis the contested mark have actually been met. In particular, it must put forward a cogent line of argument as to why use of the contested mark would be successfully prevented under the applicable law.

In the present case, the opponent did not submit sufficient information on the legal protection granted to the type of trade sign invoked by the opponent, namely a company name. The opponent did not submit sufficient information on the possible content of the rights invoked or the conditions to be fulfilled for the opponent to be able to prohibit the use of the contested trade mark under the laws in each of the Member States mentioned by the opponent.

As regards the relevant provisions of the German trade mark Act, the opponent merely cited and translated section 15 in its arguments and did not submit any source or publication to substantiate this, such as an excerpt from an official journal or any other reliable publication.

Furthermore, the extracts from legal commentaries of the German Trade mark Act (Ströbele/Hacker/Thiering, 12th edition, Section 5 para 27 et seq. and Section 15 paragraph 59) and the German jurisprudence (Federal Supreme Court GRUR 2008, page 1108, para 43 and Federal Supreme Court, GRUR 2016, page 810, 816 (no. 65) – profitbricks.es) are in German, and the opponent did not submit the necessary translations into the language of the proceedings (English).

The general reference to a previous Office decision (14/03/2018, R 2612/2017‑1, babware (fig.) / babware.net GmbH), without indicating the relevant parts, and which is, moreover, dated two years before the filing of the present opposition is not sufficient.

According to Article 7(5) EUTMDR, the Office will not take into account written submissions or documents, or parts thereof, that have not been submitted in or that have not been translated into the language of the proceedings, within the time limit set by the Office. It follows that the evidence filed by the opponent cannot be taken into account.

Therefore, the opposition is not well founded under Article 8(4) 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. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Marzena MACIAK

Saida CRABBE

Chantal VAN RIEL

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.