OPPOSITION No B 3 122 885

Medice Pharma GmbH & Co. KG, Kuhloweg 37, 58638, Iserlohn, Germany (opponent), represented by isarpatent - Patent- und Rechtsanwälte Barth · Charles · Hassa · Peckmann & Partner mbB, Friedrichstrasse 31, 80801 München, Germany (professional representative)

a g a i n s t

Musa SRL, Via Vittorio Veneto 26, 80034 Marigliano, Italy (applicant), represented by Nicola di Palma, Via Pomigliano 2, 80048 Sant'Anastasia, Italy (professional representative).

On 25/06/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 122 885 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 (in Classes 3 and 5) of European Union trade mark application No 18 213 510 (word mark: ‘GERMOGEL’). The opposition is based on European Union trade mark registration
No 17 937 932 (word mark: ‘Cremogel’). 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 in Classes 3 and 5 on which the opposition is based are the following:

Class 3: Skin moisturisers; gels for cosmetic use.

Class 5: Medicinal creams for the protection of the skin; creams for dermatological use; dermatological preparations; medicated creams; anti-itch creams; pain relieving creams; medicated preparations for skin treatment; topical gels for medical and therapeutic use; dermatological pharmaceutical products; pharmaceutical creams; gels for dermatological use.

The contested goods in Classes 3 and 5 are the following:

Class 3: Hand gels.

Class 5: Antibacterial gels.

Contested goods in Class 3

The contested hand gels overlap with the opponent’s gels for cosmetic use. Therefore, they are identical.

Contested goods in Class 5

The contested antibacterial gels overlap with the opponent’s topical gels for medical and therapeutic use. 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.

In the present case, the goods found to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise. The public’s degree of attentiveness is average for the goods in Class 3.

As regards the goods in Class 5, 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.

c) The signs

Cremogel	GERMOGEL
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).

Both signs are word marks, which are protected in all fonts and typefaces.

The common element ‘gel’ of both signs will be associated with ‘a thick, clear, slightly sticky substance, especially one used in products for the hair or skin’ (information extracted from Oxford Learner’s Dictionaries on 09/06/2021 at https://www.oxfordlearnersdictionaries.com/definition/english/gel_1?q=gel). It is also very similar in other languages of the European Union (e.g. ‘Gel’ in French, German, Italian and Spanish, ‘gél’ in Hungarian and Slovak, and ‘geel’ in Estonian). Bearing in mind that the relevant goods are gels, this element is non-distinctive for these goods.

The element ‘Crem’ of the earlier sign is very similar in other languages of the European Union (e.g. ‘Creme’ in German, ‘cream’ in English, ‘crème’ in French, ‘crema’ in Italian and Spanish, and ‘krém’ in Hungarian and Slovak. Bearing in mind that the relevant goods could be used as creams and/or have their properties, and may include cream as one of the ingredients, this element is of very low (if any) distinctive character. The distinctiveness of the earlier trade mark results from its combination of the two elements ‘Crem’ and ‘gel’ with the letter ‘o’ as a connecting element.

The element ‘GERMO’ of the contested sign is similar in other languages of the European Union (e.g. ‘germ’ in English, which is ‘a microorganism, esp one that produces disease in animals or plants’, see https://www.collinsdictionary.com/dictionary/english/germ), Spanish (germen) or French (germe). Bearing in mind that the relevant goods can be directed towards the mode of action of the goods, namely against the fight against germs, this element is of very low (if any) distinctive character. The distinctiveness of the contested sign as such results from its combination of the two elements (‘Germ’ and ‘gel’) with the letter ‘o’ as a connecting element. For the remaining public, these elements haves no meaning.

When perceiving a verbal sign, the public 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).

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually and aurally, the beginnings of the signs ‘CREM’ and ‘GERM’ have some degree of similarity because the letters ‘G’ and ‘C’ have a similar form and the letter combinations ‘RE’ and ‘ER’ are only reversed. Nevertheless, these small differences will be taken into account by the public, because they are at the beginnings of the signs. Furthermore, the element ‘CREM’ of the earlier trade mark is non-distinctive and has a limited impact for the outcome of the comparison. The same applies to the element ‘GERM’ – for only part of the public – and the common ending ‘GEL’. The letter ‘O’ coincides as the fifth letter of both signs. Therefore, the visual and aural similarity is average.

Conceptually, the signs coincide in their common element ‘GEL’. Although it is non-distinctive, it has to be taken into account to some degree as an element of the signs. The same applies to the element ‘CREM’ of the earlier mark, which has no counterpart in the contested sign. The element ‘GERM’ of the contested sign leads to further differences if it is understood. Even if it is not understood, the signs are conceptually dissimilar because at least one of the signs has a meaning.

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

e) Global assessment, other arguments and conclusion

The essential function of the trade mark is to guarantee the identity of the origin of the marked product for the consumers or end users by enabling them, without any likelihood of confusion, to distinguish a product or service from others which have another origin. For the trade mark to be able to fulfil its essential role in the system of undistorted competition which the EUTMR seeks to uphold, it must offer a guarantee that all the goods or services showing the mark have originated under the control of a single undertaking which is responsible for their quality (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 28; see also recital 7 of the EUTMR).

The appreciation of a likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, and the degree of similarity between the trade mark and the sign and between the goods or services identified (recital 11 of the EUTMR). 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 a 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, § 19; 11/11/1997, C 251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C 39/97, Canon, EU:C:1998:442, § 17).

Taking into account the not more than average degree of visual and aural similarity, the fact, that the signs are conceptually dissimilar, the differences in the first three letters ‘CRE’ and ‘GER’, the average degree of attention of the public, the not more than average degree of distinctiveness of the earlier trade mark, the limited scope of protection of the earlier trade mark because of the use of two non-distinctive elements there is – even for identical goods – no likelihood of confusion. This applies even more so, when the degree of attention of the public is high.

Contrary to the opponent’s arguments, the differences between the signs are sufficient to prevent a likelihood of confusion. The public will not think that the signs come from the same undertaking or economically linked undertakings. The opponent has overlooked the common element ‘GEL’ of the signs being non-distinctive. There are visual, aural and conceptual differences between the signs, which cannot lead to a likelihood of confusion. Enhanced distinctiveness has not been claimed.

Therefore, the opposition must be rejected as not well founded under Article 8(1)(b) 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

Renata COTTRELL

Peter QUAY

Karin KLÜPFEL

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.