of the Fourth Board of Appeal
of 20 January 2016
In Case R 1387/2015-4
Calle Provençals, 33
represented by Clarke, Modet & Co., Rambla de Méndez Núñez, 12-1º, Puerta 2, E‑03003 Alicante, Spain
Spirig Pharma AG
represented by Cabinet Regimbeau, 20, rue de Chazelles, F-75847 Paris Cédex 17, France
APPEAL relating to Opposition Proceedings No B 2 261 165 (Community trade mark application No 11 853 116)
The Fourth Board of Appeal
composed of D. Schennen (Chairman and Rapporteur), L. Marijnissen (Member) and F. López de Rego (Member)
Registrar: H. Dijkema
gives the following
By an application filed on 29.5.2013, Isdin, S.A. (‘the applicant’) sought to register the word mark
as a Community trade mark. After a limitation in the specification of goods in Class 3, the application requests protection for the following list of goods:
Class 3 ‒ Sun lotions intended to prevent skin diseases produced by sunlight.
Class 5 ‒ Preparations for coadjuvant treatment and prevention of actinic keratosis and other forms of non-melanoma skin cancer.
On 15.10.2013, Spirig Pharma AG (‘the opponent’), filed a notice of opposition on the grounds laid down in Article 8(1)(b) CTMR which was directed against all the goods of the application. It was based on the Community trade mark registration No 9 189 168
filed on 4.6.2010 and registered on 5.7.2011 for ‘perfumery, essential oils, articles for beauty care’ in Class 3 and ‘plasters’ in Class 5.
By decision of 21.5.2015, the Opposition Division rendered a decision (‘the contested decision’) by which it upheld the opposition for all the contested goods and ordered the applicant to bear the costs. Its arguments can be summarized as follows:
The contested goods in Class 3 are similar to the opposing goods ‘essential oils’ because they may have the same purpose and can coincide in the relevant public and distribution channels. The other goods applied for in Class 5 are similar to ‘plasters’ of the earlier trade mark because, in spite their different nature, they share a similar purpose (the cure of diseases or injures), have the same distribution channels and identical relevant public.
For reasons of procedural economy the Opposition Division focused in the perception of the German- and Bulgarian-speaking part of the relevant public. The signs are visually and phonetically similar to the extent that they coincide in the term ‘ACTINICA’ and differ with regard to the initial term of the contested CTM ‘ERYFOTONA’. Neither of the signs have a meaning for this part of the public; therefore, no conceptual comparison is possible. The applicant’s argument that for the Spanish public the term ‘ACTINICA’, in its alleged meaning ‘radioactive, caused by radiation’ would evoke the German word Aktinisch is not convincing due to the important differences on spelling and pronunciation. The evidence produced by the applicant does not show that this term is widely known and understood by the average consumer.
The goods are addressed to the public at large and also to professional consumers with a specific knowledge or expertise in the field of health-care and/or medicine. Their level of attention may vary from average to high.
The addition of the element ‘ERYFOTONA’ as the initial element of the CTM is insufficient to counteract the overall impression of similarity based on the appearance of the common element ‘ACTINICA’.
Because of the unitary character of the earlier trade mark, a sign might be refused even if a likelihood of confusion would exist only in relation to the perception of consumers in part of the European Community.
On 15.7.2015, the applicant filed a notice of appeal against the contested decision, followed by a statement of grounds submitted on 21.9.2015.
Contrary to the findings of the Opposition Division, the ‘essential oils’ of the earlier trade mark are not ‘oils for body care’ but they are a main ingredient of perfumes. The earlier mark does not cover body oils consisting on the dilution of essential oils because they would be ranged under the expression ‘articles for body care’ and the earlier trade mark was expressly rejected for ‘articles of body care’ due to its descriptiveness and lack of distinctive character. The opposing goods do not have the same purpose than those applied for (which is skin care). They are also different in nature and target consumers.
The Opposition Division considered the opponent’s ‘plasters’ as a medical product. The opposing trade mark was rejected for any medical product and was accepted only for beauty care products. The examination division should have refused the earlier mark also for plasters if they had a medical purpose.
The Opposition Division made an incorrect assessment of likelihood confusion because the presence of the element ‘ERYFOTONA’, as well as the descriptiveness of the common element ‘ACTINICA’, and the differences among the goods in dispute are sufficient to safely exclude the existence of a likelihood of confusion.
The only distinctive element of the earlier mark is ‘ERYFOTONA’. The applicant submitted several items of evidence with the aim of showing a descriptive meaning of ‘ACTINICA’ with regard to the German and Bulgarian public (extracts of google, Wikipedia, Wordreference). The applicant argues that the goods are intended to cure or treat the ‘actinic keratosis’.
The appellant puts forward that on 21.9.2015 it has filed an application for invalidity against the opposing CTM No 9 189 168 ‘ACTINICA’ based on Article 52(1)(a) CTMR in conjunction with Article 7(1)(b), (c) and (g) CTMR and request the suspension of the current proceedings until a decision on the validity of this mark has been issued.
The Board did not suspend the appeal proceedings.
In reply, the opponent claims that the contested decision must be confirmed because there is a likelihood of confusion. The contested goods in Class 3 are cosmetic products; had they a medical purpose, they would have to be ranged in Class 5. These goods are similar to perfumery because they are cosmetics products; they are also similar to ‘essential oils’, as correctly decided by the Opposition Division. The signs are similar. The term ‘ACTINICA’ is not commonly used by German- and Bulgarian-speaking consumers to identify the particular disease ‘actinic keratosis’. In view of the similarities on the goods and the signs, a likelihood of confusion exists.
The appeal is not well-founded because there is a likelihood of confusion with regard to all the contested goods.
The opposition is based on an earlier Community trade mark. The relevant territory for analysing the likelihood of confusion is the European Union. Due to its unitary character it is already sufficient if a likelihood of confusion occurs in the mind of the public of one Member State of the European Union (9.3.2005, T-33/03, Hai, EU:T:2005:89, § 39; 22.3.2007, T-322/05, Terranus, EU:T:2007:94, § 29). As the Opposition Division did, the Board will focus on the perception of the German- and Bulgarian-speaking part of the relevant public.
Comparison of goods
The assessment of the similarity of goods and services must take into account all relevant factors, which include the nature, their purpose and method of use, and whether they are in competition with each other or complementary (29.9.1998, C‑39/97, Canon, EU:C:1998:442, § 23). Other factors may also be taken into account such as, for example the distribution channels of the goods concerned (11.7.2007, T-443/05, Pirañam, EU:T:2007:219, § 37). The reference point is whether the relevant public would perceive the relevant products as having a common commercial origin (4.11.2003, T-85/02, Castillo, EU:T:2003:288, § 38) and whether consumers consider it normal that the goods are marketed under the same trade mark, which normally implies that a large number of producers or distributors of these products are the same (11.7.2007, T-150/04, Tosca Blu, EU:T:2007:214, § 37).
The goods must be compared as registered (15.3.2012, T-379/08, Wavy Line, EU:T:2012:125, § 26). It is irrelevant which goods are not registered on the side of the earlier mark, and even less relevant whether non-registered goods have ever been applied for by the opponent and if so, rejected on absolute grounds. The arguments of the applicant that certain goods of the earlier mark should not have been registered are irrelevant. The question whether ‘ACTINICA’ is distinctive for the goods for which the earlier mark was registered has to be addressed in the context of the comparison of the signs.
The contested goods in Class 3 ‘sun lotions intended to prevent skin diseases produced by sunlight’ must have, as correctly indicated by the respondent, a cosmetic (or beautifying) purpose because if this was not the case they would had to be ranged in Class 5. Whether or not a sun lotion (also) has the purpose or effect to protect against skin diseases, does not affect the fact that a sun lotion remains a sun lotion.
These goods are similar to the opposing goods ‘articles for beauty care’ because sun lotions also have beautifying capacities. On the one hand, they are lotions applied on the human skin with a moisturizing and skin-caring effect. On the other hand their purpose and effect is to tone the skin. The fact that an excessive exposure to the sunlight can, in extremis, cause skin cancer does not mean that a sun lotion becomes primarily a medicinal product. The goods in dispute may have the same nature, they are available in the same distribution channels (drugstores and pharmacies) and are usually manufactured by the same companies. Also the relevant public is the same, namely the end consumer interested in beauty care. Protecting the human body from sun’s ultraviolet radiation or against sunburn is one of the most common purposes of any sun lotion. As sun lotions have primarily a preventive effect the public is not limited to persons with specific skin conditions, let alone diseases. As a consequence these goods are similar and it is not necessary to examine whether the contested goods are also similar to the opponent’s ‘essential oils’.
The other contested goods in Class 5 ‘preparations for coadjuvant treatment and prevention of actinic keratosis’ might also have the same nature and method of use than the opposing goods ‘articles for beauty care’. Preparations made in order to assist or help on the treatment and prevention of this particular disease could have, in addition to a medical purpose, certain features that might have a beautifying effect on the human skin. As for the Class 3 goods, these preparations also have the effect of enhancing the luminosity of the skin, eliminating redness or aesthetic covering skin’s imperfections. These goods are also addressed to the same consumer, namely the public at large, and are usually available at the same stores (drugstores or pharmacies). They are also similar to at least an average degree.
Comparison of the signs
As to the comparison of the signs, the global appreciation of the visual, phonetic or conceptual similarity of the signs in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.
The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (11.11.1997, C-251/95, Sabèl, EU:C:1997:528, § 23; 6.10.2005, C-120/04, Thomson Life, EU:C:2005:594, § 28).
As a general rule two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects. The fact that a mark consists exclusively of the other mark, to which another word has been added, implies that the two trade marks are similar (7.3.2013, T-247/11, Fairwild, EU:T:2013:112, § 31; 2.2.2012, T-596/10, EuroBasket, EU:T:2012:52, § 38; 26.11.2015, T-181/14, Nordschleife, § 61).
The marks to be compared are
Contested CTM application
Earlier Community trade mark
The contested sign is a word mark consisting of two words, namely ‘ERYFOTONA’ and ‘ACTINICA’. The earlier Community mark is a word mark consisting of one single word, namely ‘ACTINICA’.
The earlier mark ‘ACTINICA’ is completely reproduced in the contested mark, where it is preceded by the word element ‘ERYFOTONA’. While the consumer normally attaches more importance to the first part of words that consideration cannot apply in every case (12.11.2008, T‑281/07, Ecoblue, EU:T:2008:489, § 26-32) and is in particular not applicable in the case of one word vs two words, because one word is not the beginning of the sequence of two independent words..
The examination of the similarity of signs must take into account the overall impression produced by them (7.10.2010, T‑244/09, Acsensa, EU:T:2010:430, § 23; 23.9.2011, T‑501/08, See more, EU:T:2011:527, § 38). Each of the parts which makes up the sign applied for, ‘ERYFOTONA’ and ‘ACTINICA’, contributes equally to the overall impression. As the earlier mark is completely contained in the contested mark, as its separately recognisable and distinctive element, the difference consisting in the addition of the – equally distinctive – word ‘ERYFOTONA’ is not enough to cancel out the similarity created by the common element of the conflicting marks (see 26.11.2015, T-181/14, Nordschleife, EU:T:2015:889, § 58).
Visually, the signs are similar to the extent that they share the word ‘ACTINICA’. Although the additional term ‘ERYFOTONA’ must not be disregarded, the Board concludes that the signs are visually similar to an average degree.
Aurally, the pronunciation of the common element ‘ACTINICA’ is identical. The first term of the CTM application ‘ERYFOTONA’ will also be pronounced, however, the addition of this part does not discard the existence of a phonetic similarity which can be qualified as being of an average degree.
Conceptually, and as already indicated by the Opposition, none of the terms composing the signs in dispute have a particular meaning in German or Bulgarian language. The appellant’s arguments that the common element ‘ACTINICA’ would be identified by the public at large of these territories with a particular disease of the skin provoked by sun exposition must be dismissed.
The term to be assessed is ‘ACTINICA’ and not ‘actinic keratosis’. The fact that the applicant used this term in its list of goods and services is irrelevant for the perception of these words by the German or Bulgarian consumer. The Spanish term actinic(o/a) will definitely not be understood by the German public. Even if a composite term ‘actinic keratosis’ existed in English, the German or Bulgarian public would not link it to the word ‘ACTINICA’. The Board is capable of assessing the understanding of terms by the German public and must state that it never heard of a term ‘aktinisch’ as a word of the German language. In German references to skin diseases are expressed by the term dermatologisch or, short, derma-. The expressions in German and Bulgarian aktinische Keratose and актинична кератоза (aktinishna keratoza), even if they really existed in common parlance – and not only in the few spurious website references submitted by the applicant – are too far away from the term ‘ACTINICA’ and it is unlikely that average consumer would make a link among these terms. The expressions referred to by the applicant contain the word ‘Keratose’ and without this word, ‘ACTINICA’ alone or in combination with ‘ERYFOTONA’ remains meaningless. As the other element of the contested mark ‘ERYFOTONA’ it is also a meaningless term in these languages. It is concluded that the marks will not be associated with a common concept, not even from the view of a professional public, who would equally fail to understand what common concept ‘ACTINICA’ – on its own – could evoke.
Global assessment on likelihood of confusion
A likelihood of confusion on the part of the public must be assessed globally. That global assessment implies some interdependence between the factors taken into account and in particular similarity between the trade marks and between the goods or services covered. Accordingly, a lesser degree of similarity between these goods or services may be offset by a greater degree of similarity between the marks, and vice versa (29.9.1998, C-39/97, Canon, EU:C:1998:442, § 17; 22.6.1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19).
The opponent has not explicitly claimed that its earlier trade mark enjoys a particular distinctive character by virtue of intensive use or reputation. Consequently, the earlier trade mark’s distinctiveness rests on its inherent distinctiveness. The earlier trade mark ‘ACTINICA’ has a normal degree of distinctive character for the German- and Bulgarian-speaking part of consumers. This sign does not have any direct and clear meaning for the goods for which it is registered, as set out in par. 24 above. Consequently, the mark has an average distinctive character for the mentioned public.
No contrary assessment follows from the examiner’s refusal for some of the goods of the earlier mark, in which he reasoned that ‘ACTINICA’ had a descriptive meaning, namely ‘chemical reaction related to electromagnetic radiation’. It remains unclear how this definition is linked to the goods for which the earlier mark is registered. At least the Board fails to see a relevance of this line of reasoning when it comes to the perception of the German- or Bulgarian-public. Moreover the reliance of the applicant on this examiner’s decision is inconclusive and contradictory: on the one hand the applicant invokes it against the opponent, on the other hand the applicant criticises that the examiner did not find the expression descriptive for the goods of the earlier mark in issue here. In any event the Board must underline that it is not bound by the reasoning of the examiner, not only because the legal framework of the respective proceedings is entirely different (Article 8 vs Article 7 CTMR, see 22.10.2015, C-20/14, BGW, EU:C:2015:714), but chiefly because the Board is by definition not bound by a decision taken at first instance, a fortiori not by the contested decision.
The conflicting goods target essentially the public at large, whose level of attention is average or, when referring to goods with a certain impact on the human health as those of the CTM application in Class 5, higher than average.
In any event, even for a public with a higher level of attentiveness, the fact remains that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind (16.7.2014, T-324/13, Femivia, EU:T:2014:672, § 48).
Moreover, it should be recalled that the finding of an eventual weak distinctive character for the earlier mark does not preclude a finding that there is a likelihood of confusion. Thus, even in a case involving an earlier mark of weak distinctive character, quod non for the public on which this decision focuses, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (13.12.2007, T-134/06, Pagesjaunes.com, EU:T:2007:387, § 70; 16.3.2005, T-112/03, Flexi Air, EU:T:2005:102, § 61).
The contested goods had been found similar to an average degree to those of the earlier trade mark. Therefore, based on the interdependence principle, a proportionally lesser degree of similarity between the signs would be sufficient to find a risk of confusion. On this point, the signs have been found similar to an average degree.
Furthermore, a likelihood of confusion may exist on the part of the public where the contested sign is a combination of an additional element (here: ‘ERYFOTONA’) and the earlier mark (here: ‘ACTINICA’) which has normal distinctiveness for the German- and the Bulgarian-speaking public and which, without alone determining the overall impression conveyed by the composite sign, still has an independent distinctive role therein (6.10.2005, C-120/04, Thomson Life, EU:C:2005:594, § 30-37). Those conditions are fulfilled in the case at hand given that the conflicting goods are similar and the earlier mark ‘ACTINICA’ retains an independent distinctive role in the contested sign ‘ERYFOTONA ACTINICA’.
It follows from all the above that the relevant German and Bulgarian public may assume that the conflicting marks derive from the same or economically-linked trade origins. Consequently, the Board confirms the contested decision that there is, pursuant to Article 8(1)(b) CTMR, a risk of confusion between the marks in conflict with respect to the goods at issue in Classes 3 and 5.
The appeal is therefore dismissed.
Request for stay of the proceedings
The appellant’s request to suspend the appeal proceedings due to the application for invalidity filed by the appellant against the Community trade mark is rejected.
Pursuant to Rule 20(7)(c) in conjunction with Rule 50(1) CTMIR the decision to suspend the appeal proceedings is within the discretion of the Board.
The mere filing of an application for cancellation against the earlier mark does not in itself justify a suspension, as long as the earlier mark is on the Register and no decision that it would be invalid for the registered goods has yet been taken.
On the one hand the cancellation request was filed quite late in the proceedings, namely after the contested decision was taken. It is not appropriate to suspend the proceedings on account of procedural motions the appellant took after the contested decision was taken or to allow the applicant to change the forum once it got a negative decision.
On the other hand the question of the distinctiveness of the earlier trade mark is a matter which had to be evaluated by the Board in the present proceedings and the Board sees no need to wait for a decision of the first instance (the Cancellation Division) on a matter which was fully analysed in the context of this appeal as well.
Since the applicant (appellant) is the losing party in the appeal proceedings, it must bear the costs pursuant to Article 85(1) CTMR.
Fixing of cost
In accordance with Article 85(6) CTMR and Rule 94(7)(d)(i) and (vi) CTMIR, the Board fixes the amount of representation costs to be paid by the appellant to the opponent (respondent) for the appeal proceedings at EUR 550. The fixing of costs of the Opposition Division was correct when it concluded that the applicant shall bear the costs and fixed it at EUR 650.
On those grounds,
1. Dismisses the appeal;
2. Orders the appellant to bear the costs of the appeal proceedings;
3. Fixes the total amount of costs to be reimbursed by the appellant to the respondent for the opposition and appeal proceedings at EUR 1200.
F. López de Rego
DECISION OF 20 January 2016 – R 1387/2015-4 – ERYFOTONA ACTINICA / ACTINICA