OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
OPPOSITION No B 2 479 874
Wyeth LLC, 235 East 42nd Street, New York, New York 10017, United States of America (opponent), represented by Maria Josefa Fernandez Marques, Linkstr. 10, 10785 Berlin, Germany (employee representative)
a g a i n s t
Druk Intro S.A., ul. Swietokrzyska 32, 88100 Inowroclaw, Poland (applicant), represented by Eupatent.pl, ul. Zeligowskiego 3/5, 90-752 Lodz, Poland (professional representative).
On 12/11/2015, the Opposition Division takes the following
2. The opponent bears the costs, fixed at EUR 300.
opponent filed an opposition against some of the goods of Community
trade mark application No
German trade mark registration No 2 094 471, ‘RAPAMUNE’;
Spanish trade mark registration No M 1 778 972, ‘RAPAMUNE’;
French trade mark registration No 93 482 152, ‘RAPAMUNE’;
United Kingdom trade mark registration No 1 542 948, ‘RAPAMUNE’;
Italian trade mark registration No 1 538 541, ‘RAPAMUNE’.
The opponent invoked Article 8(1)(b) CTMR.
According to Article 76(1) CTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.
It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.
According to Rule 19(1) CTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.
According to Rule 19(2) CTMIR, within the period referred to above, the opposing party shall also file proof of the existence, validity and scope of protection of his earlier mark or earlier right, as well as evidence proving his entitlement to file the opposition.
In particular, if the opposition is based on a trade mark which is not yet registered, the opposing party must provide a copy of the relevant filing certificate or an equivalent document emanating from the administration with which the trade mark application was filed (except in the case of a Community trade mark application) – Rule 19(2)(a)(i) CTMIR.
In particular, if the opposition is based on a registered trade mark which is not a Community trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered – Rule 19(2)(a)(ii) CTMIR.
According to Rule 19(3) CTMIR, the information and evidence referred to in paragraphs 1 and 2 shall be in the language of the proceedings or accompanied by a translation. The translation shall be submitted within the time limit specified for submitting the original document.
In the present case, the evidence submitted by the opponent in relation to earlier Italian trade mark No 1 538 541 is not in the language of the proceedings.
On 06/03/2015, the opponent was given two months, commencing from the end of the cooling-off period, to submit the required evidence and corresponding translations. This time limit expired on 11/07/2015.
The opponent did not submit the necessary translation.
According to Rule 19(4) CTMIR, the Office shall not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office.
It follows that the evidence submitted by the opponent cannot be taken into account.
According to Rule 20(1) CTMIR, if until expiry of the period referred to in Rule 19(1) CTMIR the opposing party has not proven the existence, validity and scope of protection of his earlier mark or earlier right, as well as his entitlement to file the opposition, the opposition shall be rejected as unfounded.
The opposition must therefore be rejected as unfounded, as far as it is based on earlier Italian trade mark No 1 538 541.
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR
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.
The goods on which the opposition is based are the following:
German trade mark No 2 094 471
Class 5: Immune suppressive agents for use in humans in organ transplantations.
Spanish trade mark No M 1 778 972
Class 5: Pharmaceutical preparations.
French trade mark No 93 482 152
Class 5: Pharmaceutical preparations for human use.
UK trade mark No 1 542 948
Class 5: Pharmaceutical preparations and substances, all included in class 5.
The contested goods are the following:
Class 5: Medical and veterinary preparations and articles; Sanitary preparations for medical purposes; Dietary supplements and dietetic preparations; Disinfectants.
The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.
The Opposition Division will compare the contested goods with pharmaceutical preparations covered by the earlier Spanish and UK trade marks because these earlier trade marks protect the widest scope of goods. For reasons of procedural economy, the Opposition Division will not compare the contested goods with the remaining earlier trade marks covering a narrower scope of goods, namely the earlier German and French trade marks.
Contested goods in Class 5
The contested medical preparations and articles can be considered synonymous with the opponent’s pharmaceutical preparations. These goods are identical.
A pharmaceutical preparation refers to any kind of medicine (i.e. a substance or combination of substances for treating or preventing disease in people or animals). Therefore, the contested veterinary preparations and articles are included in the opponent’s broader term pharmaceutical preparations. They are identical.
Sanitary preparations for medical purposes in the contested application are highly similar to the opponent’s pharmaceutical preparations as they have the same purpose. They can also have the same producer, relevant public and distribution channels.
The contested dietary supplements and dietetic preparations are substances to meet particular dietary requirements in order to treat or prevent disease. Their purpose is therefore similar to that of the opponent’s pharmaceutical preparations (substances used to treat disease) insofar as they are used to improve patients’ health. The goods have the same relevant public and generally the same distribution channels, and are therefore considered similar.
The contested disinfectants are similar to the opponent’s pharmaceutical preparations because they can have the same producer, relevant public and distribution channels.
Earlier trade mark
The relevant territory is Germany, Spain, France and the United Kingdom.
The earlier German, Spanish, French and UK registrations protect the same word mark depicted above.
Visually, the signs are similar to the extent that they both contain the letters ‘RAPA’. However, they differ in the letters ‘MUNE’ of the earlier trade mark, which have no counterparts in the contested sign. The length of the marks is substantially different because the earlier trade mark consists of eight letters, whereas the contested sign comprises only four letters.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs is the same in the sound of the letters ‘RAPA’, present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the letters ‘MUNE’ of the earlier sign, which have no counterparts in the contested mark. The length of the marks when pronounced is different because the earlier trade mark consists of three or four syllables, whereas the contested sign comprises only two syllables. Accordingly, the rhythm and intonation of the marks are significantly different.
Conceptually, in principle neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.
However, the possibility that part of the Spanish-speaking public will understand the rather rare Spanish word ‘RAPA’, meaning ‘olive flower’, cannot be ruled out. In such a case, the contested sign will have a meaning, whereas the earlier mark as a whole will not. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar for this part of the public.
Taking into account the abovementioned visual and aural coincidences, the signs under comparison are similar to a low degree.
Distinctive and dominant elements of the signs
In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.
The marks under comparison have no elements which could be considered clearly more distinctive than other elements.
The marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.
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.
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 and similar (to various degrees) are directed at both the public at large and professionals. The degree of attention will vary from average to high.
Global assessment, other arguments and conclusion
The goods in dispute are partly identical, partly similar to a high degree and partly similar.
The earlier trade mark’s degree of distinctiveness is average. The degree of attention of the relevant public will vary from average to high.
The marks are similar to the extent that the contested sign ‘RAPA’ is included at the beginning of the earlier trade mark ‘RAPAMUNE’. However, the element ‘RAPA’ that these signs have in common is fully integrated in the earlier trade mark ‘RAPAMUNE’. It is not recognisable as a sole element in the earlier trade mark and does not have an independent distinctive role. This also applies to the part of the Spanish-speaking public which will not readily distinguish the word ‘RAPA’ in ‘RAPAMUNE’, because ‘RAPA’ is an unusual Spanish word that is only rarely used in the context of the relevant goods.
The opponent’s argument that the ending ‘MUNE’ in the earlier trade mark will evoke the term ‘immune’ is not persuasive. The element ‘MUNE’ is significantly different from ‘immune’ because the letters ‘im’ are missing at the beginning. Consequently, ‘MUNE’ will not be readily perceived as a reference to ‘immune’ but rather will be viewed as a sequence of letters without any meaning that is fully integrated in the trade mark ‘RAPAMUNE’. The opponent’s claim regarding the widespread use of the supposedly evocative term ‘MUNE’ in the pharmaceutical and health sectors has not been supported by any evidence to prove that the public indeed recognises ‘MUNE’ as a reference to ‘immune’. For all the above reasons, the ending ‘MUNE’ of the earlier trade mark will not be recognised by the public as a meaningful term and it cannot be considered to be even weakly distinctive.
Based on the above considerations, and bearing in mind that the public normally perceives trade marks as a whole and does not dissect them or thoroughly analyse their individual elements, it is unlikely that the public would confuse the commercial origin of the goods marketed under the trade marks ‘RAPAMUNE’ and ‘RAPA’. The visual and aural differences between the marks are sufficient to differentiate the overall impression created by the marks.
The opponent argues that the public will perceive the two marks as originating from the same umbrella brand because consumers are used to seeing products with a common brand in various versions accompanied by evocative words, such as ‘ASPIRIN’, ‘ASPIRIN PLUS C’, ‘ASPIRIN COMPLEX’, etc. This argument is not persuasive because the term ‘ASPIRIN’ in the examples mentioned by the opponent is clearly perceptible as a separate distinctive element within the complex ‘ASPIRIN’ marks. In the present case, the element ‘RAPA’ in ‘RAPAMUNE’ will not be perceived as a single element with its own distinctive role. Consequently, the type of confusion of commercial origin as asserted by the opponent is unlikely in the present case.
Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and (7)(d)(ii) CTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Volker Timo MENSING
According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 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) CTMIR, 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 (Article 2(30) CTMFR) has been paid.