DECISION

of the Fifth Board of Appeal
of 9 September 2015

In Case R 2879/2014-5

Sanofi Pasteur (société anonyme)
Avenue Pont Pasteur 2 FR-69007 Lyon France	Opponent / Appellant

represented by BEETZ & PARTNER, Steinsdorfstr. 10, DE‑80538 München, Germany

v

Icon Genetics GmbH
Türkenstrasse 16 DE-80333 München Germany	Applicant / Respondent

represented by SNP SCHLAWIEN PARTNERSCHAFT, Türkenstrasse 16, DE‑80333 München, Germany

APPEAL relating to Opposition Proceedings No B 2 294 117 (Community trade mark application No 12 087 722)

The Fifth Board of Appeal

composed of G. Humphreys (Chairperson), A. Pohlmann (Rapporteur) and A. Szanyi Felkl (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 24 August 2013, Icon Genetics GmbH (‘the applicant’) sought to register the word mark

HERVAXIN

for the following list of goods:

Class 5 – Pharmaceutics, namely cancer vaccines.

2. The application was published in the Community Trade Marks Bulletin No 182/2013 of 25 September 2013.

3. On 23 December 2013, Sanofi Pasteur (société anonyme) (‘the opponent’) filed a notice of opposition based on the earlier CTM registration No 9 371 352 of the word mark

HEXAXIM

filed on 13 September 2010 and registered on 28 January 2011 in respect of the following goods:

Class 5 – Vaccines.

4. As the grounds of the opposition, the opponent invoked Article 8(1)(b) CTMR. The opposition was based on the goods listed in paragraph 3 above and directed against the goods listed in paragraph 1 above.

5. On 2 July 2014, within an extended time-period, the opponent submitted further arguments in support of the opposition.

6. On 6 October 2014, the Opposition Division rendered its decision (‘the contested decision’), by which it rejected the opposition in its entirety and ordered the opponent to bear the costs. The Opposition Division’s arguments can be summarised as follows:

• The goods are identical since the contested ‘cancer vaccines’ are included in the broad category of the opponent’s ‘vaccines’;

• The goods at issue target health professionals, namely doctors and pharmacists. Considering the specific healing nature of the goods, the level of attention of all consumers will be high;

• Although the signs coincide in the letter sequence HEXAXIM/HERVAXIN, the additional different letters are clearly perceptible. Moreover, since the goods at issue can only be sold under prescription, the aural impression is of relative importance as the goods will not be referred to orally;

• The impression of the marks as a whole is significantly different because of the stronger distinguishing elements;

• Because of the specific healing nature of the goods, the relevant public, namely doctors and pharmacists, will pay closer attention when purchasing/prescribing these specific goods;

• The differences between the signs are sufficient to counterbalance a certain degree of visual and aural similarity between the signs. Thus, there is no likelihood of confusion on the part of the public.

7. On 13 November 2014, the opponent filed a notice of appeal. On 6 February 2015, the corresponding statement of grounds was submitted.

8. The decision was forwarded to the Opposition Division for consideration pursuant to Article 62 CTMR and was remitted to the Board on 16 February 2015.

9. The applicant did not submit any observations in reply.

Submissions and arguments of the opponent

10. The opponent requests that the Board annul the contested decision, reject the CTM application for all goods and order the applicant to bear the costs. Its arguments may be summarized as follows:

• The goods are identical;

• The signs are overall highly similar since they consist of seven and eight letters respectively, while ‘X’ is pronounced as ‘KS’ making the signs of identical length;

• The aural and visual similarity lies in identical sequence of the letters ‘H‑E‑A‑X‑IM/N’ taking into consideration that the letters ‘M’ and ‘N’ are almost identical and, further, in the fact that the signs share identical beginnings to which consumers generally pay greater attention;

• The sole difference in the middle of the signs cannot avoid a risk of confusion due to the fact that the rhythm of pronunciation is extremely similar;

• Despite the high level of relevant public’s attention, the likelihood of confusion cannot be excluded as the goods are identical and the signs highly similar.

Reasons

11. The appeal complies with Articles 58, 59 and 60 CTMR and Rule 48 CTMIR. It is, therefore, admissible. The appeal is also, for the reasons given below, well founded.

Article 8(1)(b) CTMR

12. Under Article 8(1)(b) CTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods 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. A likelihood of confusion includes the likelihood of association with the earlier trade mark.

13. A likelihood of confusion lies in the risk that the public might believe that the goods in question come from the same undertaking or, as the case may be, from economically-linked undertakings (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29; and 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17).

14. A likelihood of confusion on the part of the public must be assessed globally, taking into account all factors relevant to the circumstances of the case (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 16; and 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18).

Relevant public/territory

15. The perception of the marks in the minds of the relevant public for the goods in question plays a decisive role in the global assessment of the likelihood of confusion.

16. As the earlier mark is a Community trade mark, the relevant territory in relation to this mark is the European Union.

17. The goods at issue are pharmaceutical products, namely vaccines. The targeted public of these goods is mainly composed of doctors and pharmacists and in addition also of the general public as the final consumers.

18. The consumer’s level of attention is likely to vary according to the category of goods concerned (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 42). Medical professionals have a high degree of attentiveness when prescribing medicines. As regards the general end-consumers, their level of attention will also be higher than average in respect of medicines, whether or not issued on prescription, since they affect consumers’ state of health (07/06/2012, T‑492/09 & T‑147/10, Allernil, EU:T:2012:281, § 29; 15/12/2009, T‑412/08, Trubion, EU:T:2009:507, § 28). Given the nature of the products concerned and their possible impact on consumers’ health, the relevant public, consisting of medical professionals and end-consumers of the vaccines at issue, will display a high degree of attentiveness.

Comparison of the goods

19. In assessing the similarity of the goods, all the relevant factors relating to those goods should be taken into account, including, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 23). Other factors may also be taken into account, such as the distribution channels of the goods concerned (11/07/2007, T-443/05, Pirañam, EU:T:2007:219, § 37), the usual origin and the relevant public of the goods.

20. The reference point is whether the relevant public would perceive the relevant goods as having a common commercial origin (04/11/2003, T-85/02, Castillo, EU:T:2003:288, § 38).

21. First, it should be noted that the Opposition Division correctly assumed that the choice of words used by the applicant in its list of goods – ‘pharmaceutics, namely cancer vaccines’ – has to be regarded as specialisation and, accordingly, only ‘cancer vaccines’ are covered by the protection of the CTM application (compare to 05/09/2014, R1321/2013-1, ENACURA / DEACURA, § 20).

22. Since the contested ‘cancer vaccines’ in Class 5 are included in the opponent’s broader category ‘vaccines’ in Class 5, the goods at issue are identical.

Comparison of the signs

23. The conflicting marks have to be compared visually, phonetically and conceptually. Such a comparison must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components. The perception of marks by the average consumer of the goods in question plays a decisive role in the global appreciation of that likelihood of confusion. In that regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25, 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

24. Two marks are similar where, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, namely the visual, phonetic and conceptual aspects (17/02/2011, T‑385/09, Ann Taylor Loft, EU:T:2011:49, § 26).

25. The signs to be compared are the following:

    Contested CTM application	Earlier CTM registration
    HERVAXIN	HEXAXIM

26. Both the contested sign as well as the earlier sign are word marks consisting of the words ‘HERVAXIN’ and ‘HEXAXIM’, respectively.

27. Visually, the signs share the identical beginnings ‘HE’ and are highly similar in their endings ‘AXIN’ and ‘AXIM’ respectively. They differ in their central parts, namely in the letters ‘RV’ in the contested sign and the letter ‘X’ in the earlier sign.

28. It follows that the conflicting signs are visually similar to an average degree considering their prevailing similarities and the fact that they share identical beginnings, to which consumers normally attach more importance (17/03/2004, T‑183/02 & T‑184/02, Mundicor, EU:T:2004:79, § 81; and 16/03/2005, T‑112/03, Flexi Air, EU:T:2005:102, § 64-65). Moreover, the letter ‘X’ common to the both signs, which is visually striking, reinforces the similarity created by the common first part and highly similar last part of the two signs (see by analogy 03/03/2015, T‑366/11 RENV, Zebexir, EU:T:2015:129, § 38).

29. Aurally, the signs share the same number of syllables and the same sequence of vowels, namely ‘E-A-I’. Regardless of the different pronunciation rules in languages of the EU, the signs’ beginnings ‘HE’ and endings ‘AXIN’/’AXIM’ are identical and highly similar in their sounds, respectively. It follows that the signs are aurally similar to an average degree.

30. Conceptually, although the prefix ‘HEXA’ in the earlier mark could be understood by the relevant public as a reference to the number ‘six’ having its origin in Greek, the earlier mark ‘HEXAXIM’ as a whole does not have any clear meaning in relation to ‘vaccines’. The contested sign does not have any meaning in relation to the goods concerned either. Consequently, a conceptual comparison cannot be made.

31. Given the signs’ average length of seven and eight letters respectively, the differences in the letters ‘RV’ in the contested sign and the letter ‘X’ in the earlier sign, placed in the middle of the signs, are outweighed by the signs’ similarities, namely the identical beginnings and highly similar endings. Therefore, the Board concludes that the signs are visually and aurally similar at least to an average degree, while the conceptual comparison does not influence the similarity found between the signs. Thus, the signs are similar overall.

Distinctiveness of the earlier mark

32. Since the opponent did not claim the earlier mark’s enhanced distinctiveness through use, the assessment must rest on its distinctiveness per se.

33. The earlier trade mark has an average degree of inherent distinctiveness because it does not, as a whole, have any meaning in relation to the goods at issue from the relevant public’s perspective (see paragraph 30 above).

Global assessment of likelihood of confusion

34. A likelihood of confusion on the part of the public must be assessed globally, taking into account all factors relevant to the circumstances of the case. That 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. The global assessment implies some interdependence between the factors taken into account and in particular similarity between the trade marks and between the goods covered. Accordingly, a lesser degree of similarity between these 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; 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19).

35. Furthermore, the average consumer only rarely has the chance to make a direct comparison between the different marks, but must place his/her trust in the imperfect picture of them that he/she has kept in his/her mind (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). In this respect, consumers tend to remember similarities rather than dissimilarities between signs.

36. The conflicting signs have been found visually and aurally similar to an average degree and the conceptual comparison has not changed this finding. Furthermore, the contested goods are identical and the inherent distinctiveness of the earlier mark is average. It follows that even the higher level of the relevant public’s attention in relation to the goods concerned (due to their health-related nature) is not sufficient to exclude the possibility that the relevant public might believe that the contested goods come from the same undertaking or, as the case may be, from economically-linked undertakings (compare to 03/03/2015, T‑366/11 RENV, Zebexir, EU:T:2015:129, § 52; 12/12/2014, T‑173/13, SELOGYN, EU:T:2014:1071, § 76, 78; 22/09/2005, T‑130/03, Travatan, EU:T:2005:337, § 76, confirmed by 26/04/2007, C‑412/05 P, Travatan, EU:C:2007:252; 11/11/2009, T‑277/08, Citracal, EU:T:2009:433, § 59; 16/06/2010, T‑487/08, Kremezin, EU:T:2010:237, § 90; 28/04/2014, T‑473/11, Menochron, EU:T:2014:229, § 46, 50, confirmed by 20/01/2015, C‑311/14 P, Menochron, EU:C:2015:23; 16/12/2010, T‑363/09, Resverol, EU:T:2010:538, § 33).

37. As a result, the marks in conflict are confusingly similar within the meaning of Article 8(1)(b) CTMR in relation to the contested goods.

38. It follows that the contested decision is annulled and the appeal is upheld with the consequence that the contested CTM application must be rejected for all goods applied for.

Costs

39. Since the applicant is the losing party in the opposition and appeal proceedings within the meaning of Article 85(1) CTMR, it must bear the fees and costs pursuant to Article 85(6) CTMR of the opponent.

Fixing of costs

40. In accordance with Article 85(6) CTMR and Rule 94(7)(d)(v) CTMIR, the Board fixes the amount of costs to be reimbursed by the applicant to the opponent at EUR 550 for the representation costs with respect to the appeal proceedings. Pursuant to Rule 94(7)(d)(i) CTMIR the costs of the opponent for the opposition proceedings is fixed at the rate of EUR 300. The opposition fee is EUR 350 and the appeal fee is EUR 800. The total amount is EUR 2 000.

Order

On those grounds,

THE BOARD

hereby:

1. Annuls the contested decision;

2. Rejects the CTM application for all goods applied for;

3. Orders the applicant to bear the costs and fees of the opposition and appeal proceedings;

4. Fixes the amount of costs and fees to be paid by the applicant to the opponent for the opposition and appeal proceedings at EUR 2 000.

Signed G. Humphreys

Signed A. Pohlmann

Signed A. Szanyi Felkl

Registrar: Signed H.Dijkema