OPPOSITION No B 2 406 380

Merck Selbstmedikation GmbH, Frankfurter Strasse 250, 64293 Darmstadt, Germany (opponent), represented by Deborah Brincat, 163 quai Aulagnier, 92665 Asnières Cédex, France (employee representative)

a g a i n s t

Borola Ltd., Tzar Simeon str. N 52, 1202 Sofia, Bulgaria (applicant).

On 04/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 406 380 is rejected in its entirety.

2. The opponent bears the costs.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 12 938 701 for the figurative mark , namely against some of the goods in Class 5. The opposition is based on European Union trade mark registration No 898 924 for the word mark ‘FEMIBION’ and international trade mark registration No 992 201 designating the European Union for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

SUBSTANTIATION OF IR No 992 201

According to Article 76(1) EUTMR (in the version in force at the time of commencement of the adversarial part, now Article 95(1) EUTMR), in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments submitted 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) EUTMIR (in the version in force at the time of commencement of the adversarial part), the Office will give the opposing party the opportunity to submit 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) EUTMIR (in the version in force at the time of commencement of the adversarial part), within the period referred to above, the opposing party must also file evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark that is not a European Union trade mark, the opposing party must submit 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. Alternatively, equivalent documents emanating from the administration by which the trade mark was registered, Rule 19(2)(a)(ii) EUTMIR (in the version in force at the time of commencement of the adversarial part).

In the present case, the notice of opposition was not accompanied by any evidence as regards international trade mark registration No 992 201 designating the European Union on which the opposition is based.

On 26/09/2014 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 01/02/2015.

The opponent did not submit any evidence concerning the substantiation of the above-mentioned earlier trade mark.

According to Rule 20(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), if until expiry of the period referred to in Rule 19(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, insofar as it is based on this earlier mark.

PRELIMINARY REMARKS ON THE SCOPE OF PROTECTION AND PROOF OF USE OF EARLIER EUTM No 898 924

After the initiation of the current proceedings, earlier EUTM No 898 924 was the subject of cancellation proceedings. After the termination of the cancellation proceedings, the registration remains valid for the initially invoked goods.

Furthermore, the applicant requested that the opponent submit proof of genuine use of the earlier mark. The request was admissible in relation to earlier EUTM No 898 924. The opponent submitted evidence and subsequently, the parties exchanged observations in relation to the proof of use.

However, considering the outcome of the case, the Opposition Division does not consider it appropriate to undertake the assessment of the evidence of use submitted (15/02/2005, T‑296/02, Lindenhof, EU:T:2005:49, § 41 and 72). The examination of the opposition will proceed as if genuine use of the earlier mark had been proven for all the goods invoked, which is the best light in which the opponent’s case can be considered.

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.

a) The goods

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

Class 5: Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use.

The contested goods are the following:

Class 5: Dietary supplements and dietetic preparations; medical and veterinary preparations and articles.

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 contested dietary supplements and dietetic preparations are identical to the opponent’s dietetic substances adapted for medical use due to an overlap in scope, that is, the opponent’s goods include the contested ones insofar as the latter are adapted for medical use.

The contested veterinary preparations are identically listed in the opponent’s list, while the contested medical preparations are identical to the opponent’s pharmaceutical preparations as ‘medical’ products encompass ‘pharmaceutical’ products.

The contested medical and veterinary articles are similar to a high degree to the opponent’s pharmaceutical, veterinary preparations as they coincide in numerous factors, such as their distribution channels, producers and end users. Furthermore, they may be complementary.

b) 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 a high degree are specialised goods directed at both the public at large and specialists in the field of healthcare and nutrition.

It is apparent from the case-law that, insofar as pharmaceutical preparations, whether or not issued on prescription, are concerned, the relevant public’s degree of attention is relatively high (15/12/2010, T‑331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T‑288/08, Zydus, EU:T:2012:124, § 36). This is also the case for other goods in Class 5, such as dietetic substances (10/02/2015, T‑368/13, ANGIPAX, EU:T:2015:81, § 42-46).

In particular, medical professionals have a high degree of attentiveness when prescribing medicines. Non-professionals also have a high degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health. The same is applicable to all relevant goods (including veterinary articles and dietetic substances for medical use) as the use of the goods may have important effects on human or animal health.

c) The signs

FEMIBION
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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin, due to similarities that pertain solely to non-distinctive or weak elements.

Both marks are one-word marks (even if the contested mark is applied for as a figurative mark, the stylisation is minimal) and as a whole have no existing meaning in the relevant territory. However, although average consumers normally perceive marks as a whole and do not proceed to analyse their various details, when perceiving a word sign, they might break it down into elements which suggest a specific meaning or resemble words known to the them (06/10/2004, T‑356/02, Vitakraft, EU:T:2004:292, § 51).

In the present case, the Opposition Division considers that in both marks, in the context of the relevant goods, the initial part ‘FEMI’ would be clearly identified across the EU as reference to ‘female’ (e.g. reference to the fact that the products are for treating feminine illnesses or improving the health of females — both humans and animals). The element would be recognised as such throughout the relevant territory due to the fact that in some languages words referring to ‘female’ start with ‘fem(i)’ (e.g. English, French, Spanish) or due to common knowledge of international composite words that have clear references to females/women (e.g. ‘feminism’, ‘feminist’). Thus, the element ‘FEMI’ has an obvious descriptive connotation (07/06/2012, R 1221/2011‑1 FEMIVAC / FEMIVIT, § 44).

As regards the remaining parts of both signs, namely ‘BION’ and ‘NORM’, although the parties did not argue anything specific in this regard, the Opposition Division considers that these elements may be perceived as devoid of any specific meaning. However, in the case of ‘NORM’, a part of the public might associate it with a concept of ‘normal’ or ‘norm’ or ‘standard’. While these meanings of ‘NORM’ might vaguely allude to the purpose of the goods (e.g. to bring something close to the norm/standard), this conceptual link is neither clear nor specific. In any case, the elements ‘BION’ and ‘NORM’ are considered more distinctive than the descriptive initial element ‘FEMI’.

Visually, the signs coincide in the initial non-distinctive part ‘FEMI’ and the number of letters (eight letters each). The differences lie in the second parts of the marks, namely the distinctive elements ‘BION’ and ‘NORM’. The difference in the stylisation of the contested mark is minimal. Bearing in mind the principles explained above, as regards the weight of the distinctive and non-distinctive elements, the marks are overall visually similar to a low degree. The fact that, as the opponent argues, both second parts have the letters ‘O’ and ‘N’, it does not alter this conclusion as those letters are in different positions, which significantly alters the overall impression.

As regards the coincidence in the number of letters, the General Court has held that the same number of letters in two marks is not, as such, of any particular significance for the relevant public, even for a specialised public. Since the alphabet is made up of a limited number of letters, which moreover, are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar. In addition, the public is not, in general, aware of the exact number of letters in a word mark and, consequently, will not notice, in the majority of cases, that two conflicting marks have the same number of letters (25/03/2009, T‑402/07, ARCOL / CAPOL, EU:T:2009:85, § 81-82; 04/03/2010, C‑193/09 P, ARCOL / CAPOL, EU:C:2010:121).

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the syllables ‘FE-MI’ that pertain to the non-distinctive part of the marks. The marks differ in their second parts and the number of syllables, ‘BI-ON’ v ‘NORM’. This difference notably affects the aural perception of the marks and leads to the overall low degree of aural similarity.

Conceptually, neither of the signs has a meaning as a whole. Although the coinciding initial part ‘FEMI’ will evoke a concept, it is not sufficient to establish any conceptual similarity, as this element is non-distinctive and cannot indicate the commercial origin. The attention of the relevant public will be attracted by the additional, fanciful verbal elements, which have no meaning or have a distinctive concept. Therefore, the signs are either not similar or a conceptual comparison is not possible and 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.

d) Distinctiveness of the earlier mark

The opponent claimed that the earlier trade mark enjoys enhanced distinctiveness but during the substantiation period did not file any evidence in order to prove such a claim.

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, despite the presence of the non-distinctive element in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services 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).

In the present case, the goods are identical and highly similar. The marks are visually and aurally similar to a low degree and conceptually not similar or not comparable. Other relevant factors are the average degree of distinctiveness of the earlier mark as a whole and the high degree of attention of the relevant public.

The fact that an element of the mark may have decreased distinctiveness does not automatically mean that it has to be ignored. This is especially true in cases where the element is at the beginning of the mark, as it is in this case. However, according to the principles established in the Common Practice¹, when the marks share an element with a low degree of distinctiveness, the assessment of likelihood of confusion will focus on the impact of the non-coinciding components on the overall impression of the marks, as assessed in the comparison of the signs. That assessment takes into account the similarities/differences and distinctiveness of the non-coinciding components.

According to the abovementioned practice, as a rule, a coincidence in an element with a low degree of distinctiveness will not normally, on its own, lead to a likelihood of confusion. However, there may be a likelihood of confusion if the other components are of a lower (or equally low) degree of distinctiveness, or are of insignificant visual impact and the overall impression of the marks is similar. There may also be a likelihood of confusion if the overall impression of the marks is highly similar or identical.

In the present case, in spite of the coincidence in the initial elements ‘FEMI’, there is no likelihood of confusion because this element is not distinctive for the relevant goods, while the remaining elements are distinctive and render the marks sufficiently distinct in their overall impression. The alleged similarities between the signs are rather coincidental and neither on their own, nor in combination, create an overall impression that would lead consumers (paying a high degree of attention) to believe that the marks belong to the same or related companies. At most, consumers may think that products marked with both signs are aimed at females, which as explained above, cannot serve to establish the likelihood of confusion due to its descriptive and non-distinctive nature.

The opponent refers to the case-law to support its arguments (17/11/2005, T‑154/03, Alrex, EU:T:2005:401). However, this case is not comparable to the present one, as the signs in that case differed in one letter only and, contrary to the present case, there were no issues with regard to the distinctiveness of the common element. Distinction must also be made between the present case and the circumstances in the case ‘FEMIBION’ v ‘FEMIVIA’ (16/07/2014, T‑324/13, Femivia, EU:T:2014:672), where the court confirmed that despite the descriptiveness of the initial element ‘FEM’ of the marks (§ 35), the likelihood of confusion existed. This was due to the fact that the overall impression of the signs was sufficiently similar, especially considering the particularities of the pronunciation of some sounds by the Spanish-speaking public that rendered the second part of the marks notably more similar than they are 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.

Given that the opposition is not well founded under Article 8(1) EUTMR, it is unnecessary to examine the evidence of use, filed by the opponent.

COSTS

According to Article 109(1) EUTMR, 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 Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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. In the present case, the applicant did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Helen Louise MOSBACK

Vita VORONECKAITE

Carlos MATEO PÉREZ

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.