OPPOSITION Nо B 3 118 475

 

Vifor (International) AG (Vifor (International) Ltd.) (Vifor (International) Inc.), Rechenstrasse 37, 9014 St. Gallen, Switzerland (opponent), represented by Boehmert & Boehmert Anwaltspartnerschaft MBB - Patentanwälte Rechtsanwälte, Hollerallee 32, 28209 Bremen, Germany (professional representative) 

 

a g a i n s t

 

Século Vedeta Sociedade Imobiliária Lda, Alto do Longo, N 1, 3, 1200 240 Lisboa, Portugal (applicant), represented by João Carlos Almeida, Rua Artilharia Um 51 Páteo Bagatela, Edifício 1, 4. Andar, 1250 - 137 Lisboa, Portugal (professional representative).

On 07/05/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 118 475 is rejected in its entirety.

 

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

 

REASONS

 

On 05/05/2020, the opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 187 020 ‘OGPHARM’ (word mark), namely against all the goods and services in Classes 3, 5 and 44. The opposition is based on, inter alia, international trade mark registration No 1 336 398 designating Germany, (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.

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 international trade mark registration No 1 336 398 designating Germany.

 

a) The goods and services

 

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

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, degreasing and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

Class 5: Pharmaceutical products, medical and veterinary preparations; sanitary products for medical purposes; dietetic food and substances for medical or veterinary use, food for babies; food supplements for humans and animals; plasters, materials for dressings; material for dental fillings and dental impressions; disinfectants.

Class 44: Medical services; veterinary services; hygienic and beauty care for human beings or animals.

The contested goods and services are the following:

 

Class 3: Toiletries; essential oils and aromatic extracts; animal grooming preparations; cleaning and fragrancing preparations.

Class 5: Sanitary preparations and articles; dental preparations and articles, and medicated dentifrices; dental preparations and articles; hygienic preparations and articles; pharmaceuticals and natural remedies; plasters, materials for dressings; sticking plasters for medical use.

Class 44: Agriculture, aquaculture, horticulture and forestry services; human healthcare services; human hygiene and beauty care; animal healthcare services; animal grooming services.

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 goods in Class 3

Essential oils and cleaning preparations are identically contained in both lists of goods.

The contested toiletries overlap with the opponent's soaps. Therefore, they are identical.

The contested fragrancing preparations are included in the broad category of the opponent's perfumery. Therefore, they are identical.

The contested animal grooming preparations overlap with the opponent's cosmetics to the extent that both of these broad categories include goods such as pet shampoos. Therefore, they are identical.

The contested aromatic extracts are highly similar to the opponent's essential oils. These goods have the same purpose and methods of use and a similar nature. They target the same relevant public, share the same distribution channels and are produced by the same undertakings. Furthermore, they are in competition.

Contested goods in Class 5

Plasters, materials for dressings are identically contained in both lists of goods.

The contested dental preparations and articles (listed twice) are medicated goods used for treating or preventing certain medical conditions. They are included in, or overlap with, the broad category of the opponent’s pharmaceutical products. Therefore, they are identical.

The contested pharmaceuticals and natural remedies are identically covered by the opponent's pharmaceutical products which cover not only synthetic drugs but also natural medicines.

The contested sticking plasters for medical use are included in the opponent's broad category of plasters. Therefore, they are identical.

The contested sanitary preparations and articles are identically covered by the opponent’s sanitary products for medical purposes. The contested hygienic preparations and articles are included in the broad category of the opponent’s sanitary products for medical purposes. Similarly, the contested medicated dentifrices, as they are sanitary preparations for medical purposes, primarily used to clean and free the teeth, gums and mouth from plaque and bacteria, they are also included in the broad category of the opponent’s sanitary products for medical purposes. Therefore, they are identical.

Contested services in Class 44

Human hygiene and beauty care are identically contained in both lists of services (including synonyms).

The contested human healthcare services and animal healthcare services are included in the broad category of the opponent’s medical services. Therefore, they are identical.

The contested animal grooming services are included in the opponent's broad category of hygienic and beauty care for animals. Therefore, they are identical.

The contested agriculture, aquaculture, horticulture and forestry services are dissimilar to all goods and services covered by the earlier mark because they have nothing in common. The contested services concern the cultivation of land, fresh water and marine resources (both plant and animal) for human consumption or use, as well as the creation, conservation and repair of forests and woodlands. Therefore, their natures, purposes and methods of use are different from those of the opponent’s goods and services. They do not coincide in their producer/provider and do not share the same distribution channels. Furthermore, these goods are neither complementary to each other or in competition and they target different publics since they satisfy different needs.

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 identical or highly similar are directed at the public at large, as well as business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the goods and services in question. 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 same reasons, the high degree of attention equally applies to the healthcare and some of the hygiene and beauty care services in Class 44. In relation to other goods and services, such as those in Class 3, some of the goods in Class 5 (such as plasters) and animal grooming services in Class 44, the level of attention is average.

 

c) The signs

 

	OGPHARM
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 is a figurative mark made up of a figurative element consisting of a broken black triangular device with a small black triangle in the middle and the verbal element ‘OM PHARMA’ depicted in standard black upper case letters over two lines. The contested sign is the word mark ‘OGPHARM’.

The figurative element of the earlier mark essentially consists of a rather simple geometric shape and is therefore only weakly distinctive. Furthermore, 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).

The verbal element ‘OM’ of the earlier mark is meaningless in German and therefore normally distinctive. However, the word ‘PHARMA’ will be perceived as an abbreviation for the word ‘pharmaceutical’ or ‘pharmacy’ by the public throughout the European Union, including in Germany, since it is the same or very close to ‘pharma’ or ‘farma’ used in the equivalent words or prefixes/suffixes in the different official languages of the European Union. Furthermore, ‘pharma’, whether written with 'ph' or 'f, is commonly used throughout the European Union in trade names or company names of pharmaceutical companies to indicate their sector of activity. Consequently, this element will be perceived, at most, as a clearly evocative element endowed with very low distinctive character, if not as a descriptive abbreviation, referring to the nature or context of use of the goods and services, rather than to their commercial origin and as such devoid of trade mark significance (see, to this effect, inter alia, 23/04/2008, R 0780/2007-2, PHARMION(FIG)/PHARMATON, § 41). For the sake of clarity, even in relation to the goods and services concerned which are not directly related to pharmaceuticals or medical services such as those in Class 3 and some of those in Class 44, the element ‘PHARMA’ will still be endowed with very low distinctive character as it is still likely to be perceived as a reference to the type of entity behind those goods or services or its main business focus.

The earlier mark has no element that could be considered clearly more dominant (visually eye-catching) than other elements.

As regards the contested sign, although it is composed of one verbal element, the relevant consumers, when perceiving it, 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). For the same reasons as those already explained above with regard to the word ‘PHARMA’ of the earlier mark, the public throughout the European Union, including in Germany, will also understand the sequence of letters ‘PHARM’ of the contested sign. Therefore, the public in the relevant territory will dissect the contested sign into the elements ‘OG’ and ‘PHARM’. The element ‘OG’ is meaningless in German and therefore normally distinctive. However, the element ‘PHARM’, for the same reasons as those set out above in relation to ‘PHARMA’, will be perceived as a clearly evocative element endowed with very low distinctive character, if not as a descriptive suffix, in relation to the relevant goods and services.

The length of the signs or their components may influence the effect of the differences between them. The shorter a sign or its component, the more easily the public is able to perceive all of its single elements. Therefore, in short words or short components, small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs or components.

  

Visually, the signs coincide in the letter ‘O*’ and the letters ‘PHARM*’ in the non-distinctive or very weak words 'PHARMA' and 'PHARM' respectively. The signs differ in the letters ‘*M/G' in their initial distinctive short word or element 'OM' and 'OG' respectively as well as in the figurative element present only in the earlier mark, albeit weak.

The difference in one out of two letters of the distinctive short components ‘OM’ and ‘OG’ of the signs is significant, in particular since that difference is present at the beginning (or top) of the signs where consumers generally tend to focus. This is because the public reads from left to right (and top to bottom), which makes the part placed at the left (or top) of the sign (the initial part) the one that first catches the attention of the reader. Furthermore, the signs differ in the additional letter ‘A’ at the end of the word 'PHARMA', present only in the verbal element of earlier mark and the signs have an overall different structure since the earlier mark is depicted as two words (over two lines) whereas the contested sign is depicted as one verbal element. Therefore, the signs are visually similar to a low degree overall.

Aurally, the signs will be pronounced as ‘OM/PHAR/MA’ and ‘OG/PHARM’ respectively. Therefore, whereas the earlier mark will be pronounced in three syllables, the contested sign will be pronounced in two and the signs therefore have an overall different rhythm and intonation. Moreover, even if the initial short syllable in both signs begin with the sound of the letter 'O', the sound of the respective additional letters 'M' as opposed to 'G' is clearly different.

Therefore, the signs are aurally similar to a below average degree.

Conceptually, although neither of the signs as a whole will be perceived as having any meaning by the relevant public, to the extent that the respective verbal elements 'PHARMA' and 'PHARM' will be associated with the non-distinctive or otherwise very weakly distinctive meaning or meanings as explained above, the signs are conceptually similar to a low degree.

 

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 and services 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 or otherwise very weakly 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 which can be made with the registered mark, 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, Sabel, EU:C:1997:528, § 22).

 

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).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Account should also be 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).

In the present case, the goods and services concerned are partly identical or highly similar and partly dissimilar. The relevant public is the public at large, as well as a professional public, and the degree of attention may vary from average to high depending on the goods and services in question.

As regards the contested services found to be dissimilar to the opponent’s goods and services, 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 services cannot be successful.

The earlier mark as a whole has an average degree of distinctiveness. However, the signs are visually and conceptually similar only to a low degree and aurally similar to a below average degree. Furthermore, the similarities between the signs are primarily due to their coincidence in the non-distinctive or otherwise very lowly distinctive elements 'PHARMA' and 'PHARM' respectively.

Whereas a company is certainly free to choose a trade mark with descriptive or weak words, and use it on the market, it must also accept, however, in so doing that competitors are equally entitled to use trade marks with similar or identical descriptive or weak components (23/05/2012, R 1790/2011-5, 4REFUEL (fig. mark)/REFUEL, § 15).

Where a mark is largely descriptive, small differences may suffice to avoid confusion since the average consumer, when perceiving something largely descriptive, will recognise that to be so and expect others to use similar descriptive marks and thus be alert for detail which would differentiate one producer or provider from another.

Therefore, based on the coincidence in the word 'PHARMA' of the earlier mark and the suffix '-PHARM' of the contested sign, the relevant public would not assume that the goods and services covered by the marks under comparison, even if most of them have been found to be identical, are produced or provided by the same or economically-linked undertakings. Moreover, even if the first word, 'OM' of the earlier mark and the initial element 'OG' of the contested sign share the letter ‘O’, that coincidence is not particularly relevant since it constitutes a part of a short word or component in both marks, of which the second, that is one of two letters, is clearly different, namely 'M' as opposed to 'G'. The visual and aural difference between the word or element 'OM' and 'OG' respectively or the overall impression produced by the signs when considered as a whole will not go unnoticed by the relevant public who is reasonably well informed and reasonably observant and circumspect and will pay at least an average degree of attention in relation to the goods and services concerned. The signs additionally differ in the figurative element of the earlier mark and, in particular, in their structure to the extent that the earlier mark is depicted as two words (over two lines) whereas the contested sign is depicted as one verbal element. Consequently, the Opposition Division finds that there is no likelihood of confusion on the part of the public within the meaning of Article 8(1)(b) EUTMR.

The opponent refers to the judgment of the General Court (06/06/2013, T-411/12, PHARMASTREET/PHARMASEE, ECLI:EU:T:2013:304) and claims that 'the mere fact that the element PHARM(A) has a somewhat descriptive meaning does not lead to neglecting this element'. The case referred to is not relevant to the present proceedings. The arguments put forward by the opponent concern, in particular, the relation between the distinctive and dominant character of the components of the signs, which is not applicable to the signs in the present proceedings, as the signs in dispute are either word marks or a figurative mark that do not have neither dominant, nor negligible components or elements, as already described above. In addition, in the case cited by the opponent the signs compared fully coincided in the element 'PHARMA' and which was furthermore placed at the beginning of those signs. The court explicitly emphasised in that case that 'it must be noted that, being placed at the beginning of the signs at issue, the element ‘pharma’ has a greater impact than the other elements of those signs. The elements ‘street’ and ‘see’, which are shorter and placed in the final position, are less likely to attract the consumer’s attention'. This reasoning is not applicable to the case at hand as the partially coinciding word/suffix 'PHARM(A)' is placed at the end (or bottom part) of the signs, and the additional verbal components at the beginning (or top) of the signs are short and clearly different.

The opponent also argues that the signs are confusingly similar and refers in support of this claim to the cases 10/09/2010 R 792/2009-4– ALMAPHARM/ALTAPHARM; 15/03/2007 R 1417/2005-1 – CELTIPHARM/CELLPHARM, and 22/04/2009 R 1162/2008-2 – GENEPHARM/GENOPHARM. While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. However, even though previous decisions of the Office are not binding (30/06/2004, T-281/02, Mehr fur Ihr Geld, EU:T:2004:198), their reasoning and outcome should still be duly considered when deciding upon a particular case. In this respect, the Opposition Division notes that the cases referred to by the opponent concerned relatively long word marks that coincided in almost all of their letters and were structured in the same way. In the present proceedings, the endings of the signs do not fully coincide (as they still differ in one letter), as well as the signs are composed of additional short elements that (because of their length) are noticeably different, which has an impact on the overall impression produced by the signs. Therefore, the circumstances of the previous cases referred to by the opponent are not comparable to the circumstances relevant to the present proceedings and are therefore not of such a nature as to change the finding reached above, namely that there is no likelihood of confusion on the part of the relevant public in relation to the signs in dispute in the case at hand.

The opponent has also based its opposition on European Union trade mark registration No 1 558 089, ‘OM PHARMA’ (word mark) only covering pharmaceutical and veterinary preparations in Class 5 and thus a narrower scope of goods and services than the earlier mark for which the assessment of likelihood of confusion has already been carried out. Even if there are less visual differences between this earlier mark and the contested sign because of the lack of the additional figurative element in this earlier right, and even if the relevant territory is the European Union and not only Germany, the distinctiveness and relevance of the word 'PHARMA' and the suffix '-PHARM' respectively is still the same since they will be perceived as non-distinctive or otherwise of very weak distinctive character in relation to the goods and services concerned by the relevant public throughout the European Union for the reasons set out above in section c) of this decision. Furthermore, the difference between the first word in the earlier mark and the initial element of the contested sign, 'OM' and 'OG' respectively, will be equally noticeable to the public throughout the European Union for the same reasons as those already given and if any of these short words or elements were to have a meaning in any part or parts of the relevant territory any such meaning could in any event only help to even further differentiate between the signs. Therefore, this earlier mark and the contested sign would still be visually and aurally similar only to a below average degree overall and, at most, conceptually similar to a low degree. As a result, even if at least some of the contested goods in Class 5 are also identical to goods covered by this earlier right, the differences between the signs are still sufficient to exclude a likelihood of confusion, including a likelihood of association, between them for the same reasons as those outlined above.

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

 

 

Inés GARCIA LLEDO

Sam GYLLING

Rosario GURRIERI

 

 

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.