INTERIM DECISION

of the Fifth Board of Appeal

of 13 July 2016

In Case R 768/2015-5

Novartis AG
CH-4002 Basel Switzerland	Opponent / Appellant

represented by Friedrich Graf von Westphalen & Partner mbB, Kaiser-Joseph-Strasse 284, DE‑79098 Freiburg i. Br., Germany

v

ANDROMEDICAL
Norias, 80, 2 A ES-28221 Majadahonda Spain	Applicant / Respondent

represented by Abril Abogados, C/Amador de los Ríos, 1-1°, ES‑28010 Madrid, Spain

APPEAL relating to Opposition Proceedings No B 2 151 119 (European Union trade mark application No 11 344 405)

The Fifth Board of Appeal

composed of G. Humphreys (Chairperson), A. Pohlmann (Rapporteur) and V. Melgar (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 14 November 2012, Andromedical, S.L. (‘the applicant’) sought to register the figurative as amended

for the following goods and services in Classes 5, 35 and 44:

Class 5 ‑ Parapharmaceutical and veterinary preparations; Dietary substances for medical purposes, Herbal products; Food supplements for dietetic use.

Class 35 ‑ Selling via computer networks and in shops of medical apparatus and devices, in general preparations for hygienic, beauty and personal care.

Class 44 ‑ Medical services; Information and consultancy relating to hygiene, beauty, aesthetics and personal care.

The applicant claimed the colours: blue and white.

2. The application was published on 17 December 2012.

3. On 18 March 2013, Novartis AG (‘the opponent’) filed an opposition against the registration of the published trade mark application for only the goods as applied for in Class 5.

4. The grounds of opposition were those laid down in Article 8(1)(b) EUTMR.

5. The opposition was based on the earlier Slovak trade mark registration No 223 041 for the word mark ‘ANDROHEXAL’, filed on 12 February 2008 and registered on 13 October 2008 for goods in Class 5.

6. By decision of 17 February 2015 (‘the contested decision’), the Opposition Division rejected the as amended for all the contested goods on the grounds that there was as amendedlikelihood of confusion. It gave, in particular, the following grounds for its decision:

• Conceptually, the element ‘andro’ will be associated with ‘man, male’ by the relevant Slovak public, as it is a rather common prefix in Slovak used in terms like ‘androgén, androgény, androgenny hormón’. The term ‘pharma’ is very close to the Slovak terms ‘farma-ceutický, farma-ceutické produkty, farmá-cia’ and will thus most likely be perceived as referring to pharmacies or pharmaceuticals. Moreover, the figurative device in the contested application creates a direct association with the male gender symbol. The contested sign will therefore most likely be perceived as relating to pharmaceuticals for/directed at men.

• Based on the meaning of the common prefix ‘andro’ in the context of the goods under comparison, said prefix is considered to be of weak inherent distinctiveness.

• As the coincidences between the signs are limited to the weak element ‘andro’, overall the signs are considered different enough not to create a likelihood of confusion even for identical goods.

7. On 16 April 2015, the opponent filed an appeal against the contested decision, requesting that the decision be set aside as amended rejected. The statement of grounds of the appeal was received on 17 June 2015.

8. In its observations in reply received on 17 September 2015, the applicant requests that the appeal be dismissed. Amongst others the applicant states that ‘ANDRO’ is understood to refer to men. In support of this assertion the applicant makes reference to a description of the opponent’s product found on www.imedprice.com/?q=androhexal, wherefrom it follows that ‘Androhexal’ is mainly prescribed for prostate cancer and ‘is meant only for men’. The applicant then concludes: ‘consumers (including those of the relevant territory) will understand this trademark as a “pharmaceutical preparation for men prepared by HEXAL”. This is due to the fact that ANDRO is a common word from Latin [sic] used profusely’ (see page 6 of the observations filed on 29 September 2014).

Reasons

9. According to settled case-law, the examination carried out at the time of the application for registration must be stringent and full in order to prevent trade marks from being improperly registered. For reasons of legal certainty and good administration, it is necessary to ensure that trade marks whose use could successfully be challenged before the courts are not registered (06/05/2003, C‑104/01, Libertel, EU:C:2003:244, § 59; 21/10/2004, C‑64/02 P, Das Prinzip der Bequemlichkeit, EU:C:2004:645, § 45; 10/03/2011, C‑51/10 P, 1000, EU:C:2011:139, § 77).

10. Moreover, the Court has held that, where an absolute ground of refusal precludes registration of the Community trade mark application, the Office is empowered, in tandem with the opposition proceedings, to reopen the examination procedure in order to determine whether there may be such a ground (18/10/2007, T‑28/05, Omega 3, EU:T:2007:312, § 47 and 50).

11. From the outset the Board has serious doubts about the registrability of the contested EUTM application. Absolute grounds for refusal may preclude its registration.

12. Under Article 7(1)(b) EUTMR, trade marks which are devoid of any distinctive character are not to be registered.

13. Pursuant to Article 7(1)(c) EUTMR, ‘trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service’ are not to be registered.

14. Furthermore, Article 7(2) EUTMR provides that ‘paragraph 1 shall apply notwithstanding that the grounds of non-registrability obtain in only part of the Union.

15. By a decision of 4 December 2012 in examination proceedings relating to application No 11 188 489, namely the word mark ‘ANDROPHARMA’ applied for by the (same) applicant and covering the same goods and services as the application contested in the proceedings at issue, the Office refused the registration of the sign as being descriptive and lacking distinctiveness. The Office based its decision on the definition of the prefix ‘andro-‘ as given in the ‘Oxford English Dictionary’ at www.oed.com, namely that it is the combining form of man or male. Moreover, the same meaning applies in Greek, as ‘andro-‘ is of Greek linguistic origin. ‘Pharma’ is a common abbreviation for ‘pharmaceuticals’ or indicates a company producing pharmaceuticals. Thus, the Office found that ‘ANDROPHARMA’ informed the targeted public that the pharmaceutical products and medical services applied for relate to a male public. This decision is final.

16. The application as opposed in the current proceedings consists of the very same verbal components. The lexical meaning of the elements ‘andro-‘ and ‘pharma’ is the same as correctly defined by the examiner in the parallel examination proceedings, namely indicating that the pharmaceutical products and medical services covered by the application are directed at men. Moreover, the meaning of ‘andro’ is further reinforced, by the device positioned between the verbal elements, namely the (partial) Mars symbol: . However, this symbol is commonly used to indicate something of male nature or targeting men. The device thus simply emphasises that the goods and services applied for are destined for men (12/05/2016, T‑298/15, EFEKT PERLENIA, EU:T:2016:288, § 24).

17. Although the Office is not legally bound by the decision taken in examination proceedings No 11 188 489, similar conclusions about the descriptive character and lack of distinctiveness of the application here at issue may be drawn.

18. Bearing in mind the above-mentioned meaning and the goods and services applied for, the contested sign may be precluded from registration by the terms of Article 7(1)(c) EUTMR since it may consist exclusively of indications which may serve, in trade, to designate attributes of the relevant goods and services – namely, for example, their kind and intended purpose.

19. The contested sign may also be devoid of distinctive character, within the meaning of Article 7(1)(b) EUTM, since it may not be able, among others for the reasons given above, to distinguish one undertaking’s goods and services from those of other undertakings.

20. In view of the foregoing, the Board therefore suspends the present proceedings in accordance with Rule 20(7)(c) CTMIR and refers the case to the Examination Division in order to reconsider whether registration of the contested EUTM application is precluded by an absolute ground for refusal pursuant to the above provisions.

Order

On those grounds,

THE BOARD

hereby:

1. Suspends the present proceedings.

2. Refers the case to the Examination Division for further consideration regarding the registrability of the EUTM application.

Signed G. Humphreys

Signed A. Pohlmann

Signed V. Melgar

Registrar: Signed H.Dijkema