of the First Board of Appeal
of 18 August 2016
In Case R 2471/2015-1
1 A Pharma GmbH
Keltenring 1 + 3
Opponent / Appellant
represented by BOEHMERT & BOEHMERT ANWALTSPARTNERSCHAFT MBB - PATENTANWÄLTE RECHTSANWÄLTE, Kurfürstendamm 185, 10707 Berlin, Germany
Applicant / Respondent
represented by NLO SHIELDMARK B.V., New Babylon City Offices. 2e étage, Anna van Buerenplein 21A, 2595DA, Den Haag, The Netherlands
APPEAL relating to Opposition Proceedings No B 1 930 125 (European Union trade mark application No 10 141 703)
The First Board of Appeal
composed of Th. M. Margellos (Chairperson and Rapporteur), M. Bra (Member) and C. Rusconi (Member)
Registrar: H. Dijkema
gives the following
By an application filed on 21 July 2011, Medochemie Ltd. (‘the
applicant’) sought to register the word
Class 5 ‒ Pharmaceutical products.
The application was published on 23 August 2011.
On 23 November 2011, 1 A Pharma GmbH (‘the opponent’) filed an opposition against the application on grounds of a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR. The opposition was based on Portuguese trade mark registration No 415 808 of the word mark below filed on 14 May 2007 and registered on 13 January 2009 protecting the goods listed thereunder
Class 5 ‒ Pharmaceutical, veterinary and sanitary preparations; dietetic substances for medical use; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants.
After the exchange of observations, by decision of 13 October 2015 (‘the contested decision’), the Opposition Division rejected the opposition in its entirety. The opponent was ordered to bear the costs of the applicant fixed at EUR 300. The contested decision is summarised as follows:
The marks contain the sequence of letters ‘COST’. They differ by the letter ‘A’ at the beginning of the earlier mark and the letter ‘I’ at the end of the mark applied for.
The syllables differ: ‘A-COST’ and ‘COS-TI’. The marks differ in rhythm and intonation.
Conceptually, neither sign has a meaning in Portuguese. The applicant claims that the earlier mark ‘ACOST’ might refer to ‘a cost’, meaning ‘the costs’ in Portuguese. According to the opponent the signs both refer to the term of ‘costs’. Though ‘a’ is a Portuguese pronoun ‘the’; the Portuguese of the English word ‘cost(s)’ is ‘custo(s)’. Therefore, in the absence of evidence to support the arguments of the parties, a conceptual comparison of the conflicting signs is not possible and the conceptual aspect does not affect the assessment of the similarity of the signs
The marks under comparison have no elements which could be considered clearly more distinctive or dominant than other elements
The earlier trade mark has no meaning for any of the goods and its distinctiveness must be seen as normal
The goods are directed at both the public at large and medical professionals. Medical professionals are attentive and the level of attention of the public at large is also high regardless of whether or not the pharmaceuticals are sold without prescription, as these goods affect their state of health.
The signs are relatively short (i.e. five letters), even small differences between them are sufficient so as to render them, overall, dissimilar. The differences are striking and counterbalance the similarities: There is no likelihood of confusion on the part of the public, also bearing in mind the higher degree of attentiveness and the identity of the goods.
On 14 December 2015, the opponent filed an appeal against the contested decision. The statement of grounds of the appeal was received on 15 February 2016.
The applicant replied with observations on 4 May 2016.
The opponent considers that there is a likelihood of confusion, since the goods are identical and since the marks are visually, aurally and conceptually similar. It argues follows:
The Opposition Division did not take into account the fact that where the goods are identical, the signs must differ to a large extent to offset the likelihood of confusion.
Both marks have five letters and share the letter sequence ‘COST’. The marks are visually highly similar. The main part is identical. The differences do not render the marks dissimilar.
Phonetically the marks are highly similar. ‘COST’, with the consonant ‘C’ and the letter ‘ST’ dominate the sound of the marks. The letter ‘I’ has no phonetic impact in the mark applied for.
The average consumer only rarely has the chance to make a direct comparison between the marks but must rely on the imperfect impression he or she has kept in mind. S/he tends to remember the similarities.
Concerning the conceptual comparison, the applicant argued that the term ‘ACOST’ would be read as a cost, meaning ‘the costs’ in Portuguese. This meaning was not contested before the Opposition Division. Since the Office is bound by the submissions and statements of the parties, the Opposition Division could not ex officio find that the marks could not be compared conceptually. ‘Cost’ is a basic word of the English language and since English is the language in the medical and pharmaceutical field worldwide, Portuguese healthcare professionals, in particular, will understand that ‘ACOST’ means ‘the costs’.
For there to exist a likelihood of confusion, it is sufficient that there exists similarity for one group, healthcare professionals or the average consumer. In this case, the marks are conceptually highly similar for healthcare professionals. Therefore, at least, with respect to healthcare professionals the marks are conceptually similar
The reasoning in the decision of 18/03/2015, R 126/2014-1, AVIVA / VIVAZ, is applicable in this case. Over the counter preparations can be ordered orally; particular importance must be attached to the aural aspect.
For preparations available on prescription, which are often handwritten, the marks are visually similar.
The applicant contends that there is no likelihood of confusion given the high level of attention of the relevant public and the visual and aural differences between the marks.
The specification of the mark applied for is unclear, although pharmaceutical preparations are included in both specifications.
In any case, the signs are dissimilar. It is not necessary to compare the goods.
Aurally, the signs differ. The two syllables differ, ‘A-COST’ or ‘COS-TI’. The letter ‘I’ plays an important role in the aural impression of the mark applied for and is an important part of the second syllable. The first element is different. According to case-law, consumers generally pay greater attention to the first element of a mark.
The first and the last letters are different. The overall visual impression of the signs is that they are different
Even if the term ‘ACOST’ were to have a specific meaning, ‘COSTI’ has no meaning in the Portuguese language. The marks are not conceptually similar.
The level of attention of both the general public and the professional is high. They will distinguish the signs from one another.
The appeal complies with Articles 58, 59 and 60(1) EUTMR and Rules 48 and 49 CTMIR. It is, therefore, admissible.
Article 8(1)(b) EUTMR provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark
The risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion within the meaning of that article (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 16-18; and of 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 30).
The Opposition Division found that the relevant public was made up of both the general public and professionals in the medical and pharmaceutical field. The parties do not contest this.
Protection of the mark applied for is sought for ‘pharmaceutical products’ in the broad sense both prescription and over the counter products. The earlier mark also protects in the broad sense ‘pharmaceutical preparations’ and does not specify a therapeutic indication.
So far as concerns the level of attention of the public of pharmaceutical products, it is settled case-law that, medicines, whether or not issued on prescription, or are intended to treat minor complaints and ailments, can be regarded as receiving a high degree of attentiveness by consumers who are reasonably well informed and reasonably observant and circumspect (10/12/2014, T‑605/11, BIOCERT, EU:T:2014:1050, § 20 and the case-law cited; 15/12/2010, T 331/09, Tolposan, EU:T:2010:520, § 26, and 16/10/2013, T‑328/12, Maxigesic, EU:T:2013:537, § 27).
The earlier mark is a Portuguese trade mark. Therefore, the relevant public consists of both average Portuguese consumers and Portuguese medical professionals.
Comparison of the goods
Insofar as protection of the mark applied for is sought for ‘pharmaceutical products’ and the earlier mark protects ‘pharmaceutical preparations’, the goods at issue are identical.
According to settled case-law, the global assessment of the likelihood of confusion, as far as concerns the visual, phonetic or conceptual similarity of the marks in question, must be based on the overall impression given by the marks, bearing in mind, inter alia, their distinctive and dominant components (14/10/2003, T‑292/01, Bass, EU:T:2003:264, § 47 and case-law cited).
There is no element of either the earlier mark or the mark applied for that is descriptive or devoid of distinctiveness for the goods at issue. There also is no element that dominates the overall impression in either mark.
With regard to the visual aspect, the opponent contests the finding in the contested decision, that the signs in dispute convey different visual impressions inasmuch as the marks differ between the ‘vowel ‘a’ at the beginning of the earlier mark and the vowel ‘I’ at the end of the mark applied for.
While it is true that the initial part of a sign usually attracts the consumer’s attention, this is not always the case (see 27/02/2014, T-25/13, 4711 Aqua mirabilis / AQUA ADMIRABILIS), EU:T:2014:90 § 70).
In addition, according to case-law, in respect of word marks which are relatively short, the central elements are as important as the elements at the beginning and end of the sign (see 20/04/2005, T‑273/02, Calpico, EU:T:2005:134, § 39).
In this case, the marks in question each consist of a single word with the same number of letters, namely five, four of which are identical and appear in the same order.
It is true that the ‘A’ at the beginning of the earlier mark and the letter ‘I’ at the end of the mark applied for are differentiating elements, however, those differences are slight in comparison with the length of the common element ‘COST’. There is accordingly some visual similarity between the marks.
Aurally, the conflicting signs each have two syllables – ‘A-COST’ and ‘COS-TI’. The second syllable of the mark applied for is aurally very similar to the first syllable of the earlier mark. The consonant ‘T’ is present in both marks. The characteristic sound of the sequence of letters ‘COST’ is the same in both marks. There is some aural similarity despite the phonetic difference from the vowel ‘A’ at the beginning of the earlier mark and the vowel ‘I’ at the end of the mark applied for.
The Board concurs with the finding of the contested decision that neither mark has a conceptual meaning. Neither of the signs in dispute means anything to the end-consumers who form part of the relevant public. Having regard to the nature of the goods at issue, it is highly unlikely that even the medical professional will extract from either mark the financial word ‘COST’, the equivalent of which is ‘custo’ in Portuguese. Moreover, the translation of ‘the cost’ in Portuguese is ‘a custo’. In any case, the evocation to the English word ‘cost’ in the earlier mark, if it were to arise, would equally arise in the mark applied for. The conflicting marks cannot be found conceptually dissimilar.
Considered as a whole there is visual and phonetic similarity between the marks.
Likelihood of confusion
The applicant contends in reply that, given the fact that the relevant public must be deemed to be relatively attentive and that there is a clear phonetic and visual difference between the signs in question at the beginning and at the end, it is unlikely that the relevant public would consider that the goods in question come from the same undertaking or from economically-linked undertakings, with the result that there is no likelihood of confusion between the signs in dispute.
The signs in dispute are visually and phonetically similar based on the coincidence of four of the five letters present in the same sequence. The fact that the relevant public consists of end-consumers amongst others, whose level of attention can be considered to be above average, is not sufficient, given the identical nature of the goods concerned and the similarity of the signs in dispute, to rule out the possibility that those consumers might believe that the goods come from the same undertaking or, as the case may be, from economically-linked undertakings.
The application of the principle of the interdependence of the various factors confirms that conclusion. There may be a likelihood of confusion, notwithstanding a lesser degree of similarity between the marks, where the services covered by them are identical (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 21). In this case, it is not disputed that the goods are identical. As a consequence of that identity, the differences between the marks are attenuated in the global assessment of the likelihood of confusion.
Finally, the existence of that likelihood of confusion is reinforced by the fact that the relevant public only rarely has the chance to make a direct comparison between the different marks but must place its trust in the imperfect picture of them which it has kept in its mind (17/11/2005, T‑154/03, Alrex, EU:T:2005:401, § 60)
The Opposition Division erred in finding that notwithstanding the identity of the goods there was no likelihood of confusion even for the end consumer.
The Board allows the appeal and rejects the application.
Since the applicant is the losing party, it must bear the fees and representation costs pursuant to Articles 85(1) and (6) CTMR. It follows that it must bear the appeal fee incurred by the opponent of EUR 800, the opposition fee incurred by the opponent of EUR 350, and the representation costs of the opponent in the appeal proceedings of the amount of EUR 550 and in the opposition proceedings of the amount of EUR 300 in accordance with Rule 94(7)(d) CTMIR.
On those grounds,
Th. M. Margellos
18/08/2016, R 2471/2015-1, COSTI / ACOST