OPPOSITION No B 3 126 062

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

a g a i n s t

Świt Pharma, Taśmowa 1, 02677 Warsaw, Poland (applicant), represented by Włodzimierz Januszkiewicz, E. Ciołka 12/328, 01/402 Warsaw, Poland (professional representative).

On 17/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 126 062 is upheld for all the contested goods, namely:

Class 5 Anti-bacterial preparations; antibacterial wipes; antibacterial sprays; antibacterial gels; antibacterial soap; antibacterial pharmaceuticals; antibacterial hand lotions; bacteria fighting cleanser; antibacterial handwashes; antibacterial handwash; disinfectant soap; disinfectants and antiseptics; hand-sanitizing preparations; disinfectants for hygiene purposes; sanitizers for household use; cleaning cloths impregnated with disinfectant for hygiene purposes; alcohol-based antibacterial skin sanitizer gels; sanitizing wipes; impregnated antiseptic wipes; medicated creams; pharmaceutical creams; protective creams (medicated -); balms for medical purposes.

2. European Union trade mark application No 18 251 023 is rejected for all the contested goods. It may proceed for the remaining goods and services in Classes 3, 10 and 35.

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

REASONS

On 14/07/2020, the opponent filed an opposition against some of the goods of European Union trade mark application No 18 251 023 ‘MEDICER’ (word mark), namely against all the goods in Class 5. The opposition is based on European Union trade mark registration No 1 924 315 ‘MEDICE’ (word 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.

a) The goods

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

Class 5: Pharmaceutical and veterinary and sanitary preparations, pharmaceutical food supplement preparations, included in Class 5, dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants.

The contested goods are the following:

Class 5: Anti-bacterial preparations; antibacterial wipes; antibacterial sprays; antibacterial gels; antibacterial soap; antibacterial pharmaceuticals; antibacterial hand lotions; bacteria fighting cleanser; antibacterial handwashes; antibacterial handwash; disinfectant soap; disinfectants and antiseptics; hand-sanitizing preparations; disinfectants for hygiene purposes; sanitizers for household use; cleaning cloths impregnated with disinfectant for hygiene purposes; alcohol-based antibacterial skin sanitizer gels; sanitizing wipes; impregnated antiseptic wipes; medicated creams; pharmaceutical creams; protective creams (medicated -); balms for medical purposes.

The contested goods in Class 5 are included in the broad categories of, or overlap with, the opponent’s pharmaceutical and sanitary preparations, included in Class 5. 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, which are all pharmaceutical and sanitary preparations, target the public at large and business customers with specific professional knowledge or expertise, in particular medical professionals.

The degree of attention is at least above average. Indeed, insofar as pharmaceutical preparations are concerned, it is apparent from the case-law that the relevant public’s degree of attention is relatively high, whether or not issued on prescription (15/12/2010, T‑331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T‑288/08, Zydus, EU:T:2012:124, § 36 and quoted case-law), whereas the relevant public’s level of attention in respect of sanitary preparations, is above average, since those preparations include both goods intended for everyday use and goods intended for medical use (15/03/2012, T‑288/08, Zydus, EU:T:2012:124, § 36).

c) Distinctiveness of the earlier mark and comparison of the signs

MEDICE	MEDICER
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).

In addition, 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 present assessment will rest on the earlier mark’s inherent distinctiveness.

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

At least one of the words constituting the signs may be perceived as meaningful in part of the relevant territory. ‘MEDICE’ for instance is meaningful in Slovenian (information extracted from Fran on 09/08/2021 at https://fran.si/iskanje?View=1&Query=medice&hs=1&AllNoHeadword=medice).

However, the signs have no meaning as a whole for a sizeable part of the relevant public. In order to avoid a complex examination of all different scenarios whereby either one or both words would be understood, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public that perceives no meaning in the signs as a whole. Even if no meaning in the signs as a whole is perceived, their coinciding verbal component ‘MEDI’ is likely to be perceived by a significant part of the relevant public as alluding to ‘medicine’. Bearing in mind that the relevant goods are generally related to taking care of human well-being, it is considered that, for this part of the relevant public, ‘MEDI’ is non-distinctive for all these goods, as it merely provides information about the medical or therapeutic purpose of the goods (07/05/2021, R 1723/2020‑1, Medican (fig.) / MEDICON APOTHEKE (fig.) et al., § 74). Whether or not a reference to ‘medicine’ is perceived in the verbal component ‘MEDI’, the earlier mark as a whole has no meaning for any of the goods in question from the perspective of the relevant public, and it is therefore distinctive to a normal degree.

Visually, the signs coincide in the sequence of all the letters of the earlier mark, ‘MEDICE’. The only difference between them is the contested sign’s additional letter ‘R’.

This difference between the signs is substantially outweighed by their coincidence in (the sound of) six letters that constitute the entire earlier mark. Moreover, 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 highly similar.

Aurally, part of the public, such as the Italian- and Polish-speaking part of the public, will pronounce all the letters of the signs, identically pronouncing their last letter ‘E’. For this part of the public, the pronunciation of the signs coincides in the sound of all the letters of the earlier mark, and only differs in the sound of the contested sign’s final letter ‘R’.

For another part of the public, the pronunciation of the signs does not coincide in the sound of the signs’ last letters ‘(C)E’ and ‘(C)ER’ respectively. Part of the French-speaking public (if not all) for instance, will pronounce the earlier mark as /medik/ (the last letter ‘E’ being silent), whereas they will pronounce the contested sign as /medicé/. For this part of the public, the pronunciation of the signs still fully coincides in the sound of their first letters ‘medi’, whereas it does not coincide – even if there are some similarities – in the sound of their last letters.

Therefore, the signs are aurally similar to an average degree for part of the public and similar to a high degree for another part of the public.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by (components of) the marks for part of the relevant public. As both will be associated with the goods’ medical or therapeutic purposes, they cannot be denied any conceptual similarity for this part of the relevant public. However, as this similarity results from components lacking distinctiveness, the signs are similar to a low degree at most.

For the remaining part of the relevant public (if any), neither of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for this part of the relevant public.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) Global assessment, other arguments and conclusion

The goods are identical and they target the general and specialist public whose degree of attention is at least above average. The earlier mark enjoys an average degree of inherent distinctiveness, which affords it a normal scope of protection. The signs are visually similar to a high degree, and aurally similar to an average degree for part of the public and similar to a high degree for another part of the public. Conceptually, the signs are similar to a low degree at most for part of the public and, for the remaining part of the public, the comparison is neutral.

The marks coincide in all six letters of the earlier mark, the difference between them lying in the last letter of the contested sign.

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).

In view of the foregoing, the differences between the signs are insufficient to counteract the clear similarities between them.

Considering all the above, there is a likelihood of confusion on the part of the public for whom neither sign is meaningful as a whole. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 1 924 315. It follows that the contested trade mark must be rejected for all the contested goods.

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

Catherine MEDINA

Christophe DU JARDIN

Agnieszka PRZYGODA

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.