OPPOSITION Nо B 3 125 913

 

Denk Pharma GmbH & Co. KG, Prinzregentenstr. 79, 81675 Munich, Germany (opponent), represented by Mitscherlich, Patent- und Rechtsanwälte, PartmbB, Sonnenstraße 33, 80331 Munich, Germany (professional representative) 

 

a g a i n s t

 

Swyssi, Lyoner Strasse 14, 60528 Frankfurt Am Main, Germany (applicant), represented by Diana Dimitrova, 6 Trapezitsa Str., Fl. 1, Office 4, 1000 Sofia, Bulgaria (professional representative).

On 16/07/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 125 913 is upheld for all the contested goods.

 

2.	European Union trade mark application No 18 230 515 is rejected in its entirety.

 

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

 

REASONS

 

On 10/07/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 230 515 RoxaBana (word mark). The opposition is based on, inter alia, European Union trade mark registration No 17 894 635, ROXABAN-DENK (word mark). The opponent invoked Article 8(1)(a)(b) EUTMR and Article 8(5) 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 European Union trade mark registration No 17 894 635.

 

a) The goods

 

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

Class 5: Pharmaceuticals, and chemicals for medical purposes; Preparations for health care; Dietetic substances adapted for medical use based on vitamins, minerals, trace elements, proteins and carbohydrates; Food supplements for medical and non-medical purposes.

The contested goods are the following:

 

Class 5: Diluents for medical use; Medicines for human purposes; Cardiovascular pharmaceuticals; Cardiovascular drugs used in myocardial infarction; Cardiovascular drugs used in angina pectoris; Pharmaceutical drugs; Pharmaceutical preparations for the treatment of hypercholesteremia; Pharmaceutical preparations for human use; Pharmaceutical preparations for the treatment of cardiovascular disease; Medicine; Cardiovascular preparations.

All the contested goods are identical to the opponent’s pharmaceuticals, and chemicals for medical purposes, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, or overlap with, the contested goods.

 

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 customers with specific professional knowledge or expertise.

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

 

ROXABAN-DENK	RoxaBana
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).

 

The elements ROXABAN/ ROXABANA and DENK, in the marks have no meaning for the relevant public and are, therefore, distinctive. In the case of word marks, it is generally irrelevant whether word marks are depicted in lower or upper case letters (31/01/2013, T-66/11, Babilu, EU:T:2013:48, § 57).

The applicant’s argument that ROXABAN/A is non-distinctive since this term forms part of the pharmaceutical product called Rivoroxaban cannot succeed. The applicant has firstly not provided any evidence to back up its allegations, and secondly, even if the terms are included in other words, these word as a whole (Rivoroxaban) do not correspond to the present marks and there are no reasons why the respective public would start dissecting words.

According to the opponent, the element DENK refers to their company name and should therefore be paid less attention. The Opposition Division agrees, that part of the professional public in the medical field is most likely to recognize the earlier mark as a composite sign containing an element DENK which could be related to the company name of the opponent. In any event, this is the second word element in the mark, whereas more attention is usually given to the beginning of the marks while also the consumers tend to shorten the marks, in order to reduce them to the elements that they find easiest to refer to and remember (07/02/2013, T‑50/12, Metro Kids Company, EU:T:2013:68, § 41; 30/11/2011, T‑477/10, SE©Sports Equipment, EU:T:2011:707, § 55; 09/04/2013, T‑337/11, Giuseppe by Giuseppe Zanotti, EU:T:2013:157, § 36; 28/09/2016, T‑539/15, SILICIUM ORGANIQUE G5 LLR‑G5 (fig.) / Silicium Organique G5‑ Glycan 5‑Si‑Glycan‑5‑Si‑G5 et al., EU:T:2016:571, § 56). Therefore, the word DENK could even be omitted by the relevant public when referring to the contested sign.

Thus, in this composite sign, the word ROXABAN has an independent distinctive character. The present case contains a relevant resemblance with the Thomson Life/ Life case, namely that the word ROXABAN of the earlier trade mark retains an independent distinctive role within the EUTM application (06/10/2005, C‑120/04, Thomson Life, EU:C:2005:594) ) with a difference of the last letter A.

Visually, the signs coincide in the letter sequence ROXABAN in their beginnings. The first element ROXABAN of earlier mark, is totally included in the beginning of the contested mark even taking into account its irregular capitalization. The marks differ in the last letter A of the contested sign and in the element DENK of the earlier mark. It is noted that 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.

Therefore, the signs are visually similar to an average degree.

 

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ROXABAN, in their beginnings. The pronunciation differs in the sound of the letters A at the end of the contested sign and in DENK of the earlier mark.

 

Therefore, the signs are aurally similar to at least an average degree.

 

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

 

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 claimed that the earlier trade mark enjoys reputation but did not file any evidence in order to prove such a claim.

 

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. 

 

e) Global assessment, other arguments and conclusion

 

The goods have been found identical. The visual, aural and conceptual aspects have been discussed above.

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.

The marks coincide in the letter sequence ROXABAN in their beginnings, where the consumer pays more attention. The signs differ in the letter A at the end of the contested sign and in the second element DENK in the earlier mark. That last element is paid less attention to by part of the public since it merely denotes the producer company of the goods or because the consumers tend to shorten the marks.

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).

It is common practice on the relevant market to make variations of their trade marks, for example by altering the typeface, or adding verbal elements to them, in order to denote new product lines, or to endow their trade mark with a new, fashionable image. Therefore, when encountering the conflicting signs, the relevant public is likely to mentally register the fact that they coincide in the nearly identical element and perceive the contested sign as a sub-brand, configured in a different way according to the type of goods that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). Consequently, the similarities between the signs are thus sufficient to cause part of the public to believe that the contested goods come from the same or economically linked undertakings.

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

 

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 17 894 635. It follows that the contested trade mark must be rejected for all the contested goods.

 

As the earlier right,  European Union trade mark registration No 17 894 635, leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

 

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 grounds of the opposition, namely Article 8(1)(a) and Article 8(5) 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

 

 

Gonzalo BILBAO TEJADA

Erkki MÜNTER

Félix ORTUÑO LÓPEZ

 

 

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.