OPPOSITION Nо B 3 123 214

 

Emprediver, S.L., C/ 222, n° 2, 46182 La Cañada-Paterna, Valencia, Spain (opponent), represented by J. Lopez Patentes Y Marcas, S.L., C/. San Vicente, nº 83-3º-17, 46007 Valencia, Spain (professional representative) 

 

a g a i n s t

 

Pharmaesthetics Do Brasil – Indústria De Medicamentos Ltda., Rua Antônio Zielonka, 1200 , Estância Pinhais,, 83323210 Pinhais, Brazil (applicant), represented by Clarke, Modet Y Cía., S.L., Rambla De Méndez Núñez, Nº 21-23, 5º A-b, 03002 Alicante, Spain (professional representative).

 

On 17/06/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 123 214 is upheld for all the contested services.

 

2.	European Union trade mark application No 18 194 900 is rejected in its entirety.

 

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

 

REASONS

 

On 05/06/2020, the opponent filed an opposition against all the services of European Union trade mark application No 18 194 900 (figurative mark). The opposition is based on European Union trade mark registration No 13 710 355, FARMAESTETIC (word mark). The opponent invoked  Article 8(1)(a) EUTMR and 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 services

 

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

 

Class 35: Marketing research in the fields of cosmetics, perfumery and beauty products; department store retail services connected with the sale of beauty products, toiletries, machines for household use, hand tools, optical goods, domestic electrical and electronic equipment; advertising and marketing; advertising, including online advertising via computer networks; import and export services; business management; business administration; dissemination of advertisements.

The contested services are the following:

 

Class 35: Import and export services of pharmaceutical preparations and medicines, namely medical, cosmetics and surgical products.

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

 

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

 

The contested import and export services of pharmaceutical preparations and medicines, namely medical, cosmetics and surgical products are included in the opponent's broad category of import and export services. 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.

 

The services at issue are specialised services directed at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased. In the present case, the services concern services which have a specialised nature and involve goods which can affect, for instance, human health.

 

Therefore, the degree of attention varies from average to high.

c) The signs

 

FARMAESTETIC
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).

 

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The earlier mark is a word mark ‘FARMAESTETIC’.

The contested sign is a figurative mark consisting of the verbal element ‘PHARMAESTHETICS’, depicted in lower-case letters, in shades of grey. Above it, there is a figurative element, also in the same shades of grey, composed of a round device that resembles a ring which is co-dominant with the verbal element since both verbal and figurative elements have the same size and are place in an equal position. The figurative element has no meaning and would be perceived as a decorative.

Although the verbal elements of the earlier and contested mark ‘FARMAESTETIC’ and ‘PHARMAESTHETICS’ respectively, comprise 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). Therefore, the relevant public will split the signs into the components ‘Farma-’/’Pharma-’ and ‘Estetic/ Esthetics’.

The component ‘Farma-’ in the earlier mark and ‘Pharma-’ in the contested mark will be understood, by the whole of the relevant public in the European Union, as relating to ‘pharmaceutical(s)’ or ‘pharmacy’ due to the similarity to the prefixes ‘pharm’ or ‘farm’ that are found in the equivalent words in several European Union languages, such as the French ‘pharmacie’, the Italian ‘farmacia’ and the Romanian ‘farmacie’ (19/01/2016, R 434/2015-2, MAKERPHARMA (fig.) / K KERN PHARMA (fig) et al.; 20/05/2016, R 2176/2015-2 and R 2178/2015-2, f missfarma health & beauty (fig.) / mifarma (fig.) etal, § 44; 08/04/2013, R 1612/2011-4 and R 1833/2011-4, Pharma 3 (fig.) / Pharmadus (fig.); 23/04/2008, R 780/2007-2, PHARMION (fig.) / PHARMATON).

The component ‘-estetic’ contained in the earlier mark and ‘-esthetics’ in the contested mark, will be perceived by the public throughout the whole European Union as referring to, inter alia, beauty or the appreciation of beauty. In fact, equivalent words can be found in several European languages, such as ‘estetika’ in Slovak, Croatian and Lithuanian, ‘aestetik’ in Danish, ‘esteetik’ in Estonian and ‘estética’ in Portuguese or Spanish as well as ‘aesthetic’ in English.

As a result, even if the words are from different languages, due to their similar roots, the whole relevant public throughout the European Union will understand the words and perceive it as ‘PHARMA AESTHETIC(S)’. Consequently, these verbal elements contained in the signs under dispute may be perceived as allusive of the industry to which the import and export services concern. Notwithstanding the allusive nature of the elements composing the signs, as a whole, the signs are distinctive in relation to the services.

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, the signs coincide in the letters/sounds ‘ARMAEST*ETIC’. However, they differ in the letters ‘F’ of the earlier mark and ‘PH’ of the contested sign as well as in the letter ‘H’ and ‘S’ included in ‘PHARMAESTHETICS’. Additionally, the contested sign contains a figurative device depicted in shades of grey which resembles a ring that has no counterpart in the earlier mark and would be perceived as a decorative element. Furthermore, the word elements in the contested sign display a certain stylization. Despite the fact that the letters contained in the signs in dispute are graphically portrayed in different typefaces, it should be noted that they are depicted in the same sequence and coincide in a significant number of letters in the same order.

Therefore, the signs are similar to an average degree.

Aurally, despite different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘ARMAEST*ETIC’. The signs differ in the letters ‘F’ in the earlier mark and ‘PH’ in the beginning of the contested sign which would be pronounced in the same manner. The contested mark differs in the letter ‘H’ in the middle and ‘S’ as the last letter. Such differences would not impact the fact that the signs under comparison would coincide in most of its letters and sounds as well as intonation and rhythm. The figurative element is not subject to a phonetic assessment and therefore cannot be compared.  

  

Therefore, the signs are similar to an average degree.

 

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as ‘PHARMA AESTHETIC(S)’, the signs are conceptually identical.

 

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. Considering what has been stated above in section c) of this decision, the earlier mark is composed of two allusive elements, which as a whole have no meaning and its protection arises from the combination of the two verbal elements and its registration. Therefore, the distinctiveness of the earlier mark must be seen as normal.

 

e) Global assessment, other arguments and conclusion

  

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

In the present case, the services are identical. The relevant public is the professional public, whose level of attention is average to high. The inherent distinctiveness of the earlier mark is normal.

The signs are visually and aurally similar to an average degree and are conceptually identical as they contain two verbal elements that refer to the same meanings. As already presented in section c) of this decision, visually, the signs display differences with regard to the letters ‘F’ in the earlier mark and ‘PH’ in the contested sign which would be pronounced in the same manner as well as they further differ in the letters ‘H’ and ‘S’ which have no counterpart in the earlier mark. Furthermore, the contested sign contains a figurative device which has no counterpart in the earlier sign and would be perceived as a decorative element.

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).

 

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).

  

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

 

Considering all the above, there is a likelihood of confusion.

 

Therefore, the opposition is well founded on the basis of the opponent’s EUTM registration No 13 710 355. It follows that the contested trade mark must be rejected for all the contested services.

 

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) 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 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

 

 

Andrea VALISA

Inês RIBEIRO DA CUNHA

Philipp HOMANN

 

 

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.