OPPOSITION No B 2 270 505

Avizor, S.A., La Cañada, 17, 28850 Torrejón de Ardoz (Madrid), Spain (opponent), represented by Ryo Rodríguez Oca, S.L., Calle Juan Hurtado de Mendoza, 9 Apto. 507, 28036 Madrid, Spain (professional representative)

a g a i n s t

Maxigen Biotech Inc., No. 17, Wuchiuan 8th Rd., Wugu Dist., New Taipei City, Taiwan 24891, Taiwan (applicant), represented by Landmark B.V., Drentsestraat 4, 3812 EH Amersfoort, The Netherlands (professional representative).

On 03/11/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 270 505 is upheld for all the contested goods.

2. European Union trade mark application No 12 033 908 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 12 033 908. The opposition is based on European Union trade mark registration No 6 603 575. 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.

1. The goods

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

Class 3:	Ophthalmic cleaning products.
Class 5:	Sterile preparations; eye washes; antiseptic and germicidal preparations for cleaning contact lenses; disinfectants and bacteriological preparations for medical purposes; ophthalmic products for medical purposes; tissues impregnated with pharmaceutical lotions.

The contested goods are the following:

Class 5:

Viscoelastic agents for eye use; viscoelastic lubricants for eye use; viscoelastic preparations for eye use; preparations for eye use.

The contested viscoelastic agents for eye use; viscoelastic lubricants for eye use; viscoelastic preparations for eye use; preparations for eye use are included in the broader category of the opponent’s ophthalmic products for medical purposes. Therefore, they are identical.

2. 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 both the public at large and professionals with a certain knowledge or expertise in the field of healthcare.

It is apparent from the case law that, insofar as pharmaceutical preparations are concerned, the relevant public’s degree of attention is relatively high, whether or not they are 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). In particular, medical professionals show a high degree of attention when prescribing medicines. Non-professionals also show a higher than average degree of attention, regardless of whether the pharmaceuticals are sold with or without prescription, as these goods affect their state of health.

Considering this, the degree of attention of the relevant public in the present case is deemed to be high.

3. The signs

VISAID	ViscAid
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 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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the relevant public.

The earlier mark is a word mark that consists of a single verbal element, ‘VISAID’. Since the element ‘VISAID’ bears no relationship to the relevant goods for the relevant public, it has an average degree of distinctive character.

The contested sign is a word mark that consists of a single verbal element, ‘ViscAid’. Since the element ‘ViscAid’ bears no relationship to the relevant goods for the relevant public, it has an average degree of distinctive character.

According to the case law, a word mark is a mark consisting entirely of letters, of words or of associations of words, written in printed characters in normal font, without any specific graphic element (20/04/2005, T‑211/03, Faber, EU:T:2005:135, § 33; 13/02/2007, T‑353/04, Curon, EU:T:2007:47, § 74). The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (22/05/2008, T‑254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is irrelevant whether the word mark is depicted in lower or upper case letters or a combination of them.

Moreover, according to settled case law, word marks should not be artificially dissected. Dissection is not appropriate unless the relevant public will clearly perceive the components in question as separate elements, which is not true in the present case. Therefore, the applicant’s claim of a conceptual difference between the marks due to a dissection of the word marks needs to be set aside as unfounded.

The elements ‘VISAID’ and ‘ViscAid’ forming the earlier mark and contested sign, respectively, have no meaning for the Spanish‑speaking part of the public.

Neither of the marks has any elements that could be considered more distinctive or more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the sequence of letters ‘VIS*AID’. They differ only in the fourth letter of the contested sign, ‘C’. Therefore, the signs are visually highly similar.

Aurally, the signs coincide in the sound of the letters /VIS*AID/; however, they differ in the sound of the letter /c/ of the contested sign, which has no counterpart in the earlier mark. This additional letter slightly alters the pronunciation of the contested sign. The earlier mark is fully included in the contested sign, resulting in the signs having similar rhythms and intonations.

Therefore, the signs are aurally highly similar.

Conceptually, neither of the signs has a meaning for the Spanish‑speaking part of the public. 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.

4. 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 did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

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.

5. Global assessment, other arguments and conclusion

The Court has set out the essential principle that evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods. Therefore, a lesser degree of similarity between the goods 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).

The goods are identical and the degree of attention of the relevant public is high.

The signs are visually and aurally highly similar, since they coincide in the sequence of letters ‘VIS*AID’, which forms the entire earlier mark. It is important to note that the similarities lie in the beginning and in the end of the verbal elements, while the only difference, the letter ‘C’ of the contested sign, is placed in the middle. In terms of recognition and recall, a coincidence in the initial and final parts of verbal elements tends to be of more importance, while differences in the middle of verbal elements may be omitted or not well recognised and recalled by the relevant consumer. Consequently, the difference in one letter in the middle of the contested sign is insufficient to counteract the significant similarities between the signs even if the degree of attention of the relevant public is high.

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).

Considering all the above, there is a likelihood of confusion on the part of the Spanish-speaking part of the public. 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 6 603 575. It follows that the contested sign must be rejected for all the contested goods.

COSTS

According to Article 85(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 Rule 94(3) and (6) and Rule 94(7)(d)(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

Marta GARCÍA COLLADO

Fabián GARCIA QUINTO

Carmen SÁNCHEZ PALOMARES

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.