OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
OPPOSITION No B 2 442 666
B. Braun Melsungen AG, Carl-Braun-Str. 1, 34212 Melsungen, Germany (opponent), represented by Müller Schupfner & Partner Patent- Und Rechtsanwaltspartnerschaft MBB, Bavariaring 11, 80336 München, Germany (professional representative)
a g a i n s t
Ibsa Institut Biochimique S.A., Via al Ponte, 13, 6900 Massagno, Switzerland (applicant), represented by Ibsa Farmaceutici Italia SRL, Giorgio Pisani, Via della Filanda 30, 26900 Lodi, Italy (employee representative).
2. The opponent bears the costs.
opponent filed an opposition against all the goods of Community trade
mark application No
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 opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Community trade mark registration No 9 871 955.
The goods on which the opposition is based are the following:
Class 5: Plasters, materials for dressings; Composite materials and films for use in connection with vacuum pumps.
Class 9: Control apparatus for vacuum pumps.
Class 10: Vacuum pumps with control apparatus for vacuum wound treatment, and parts and accessories therefor, in particular conductor systems with disposable containers, hoses and star adapters; Orthopaedic bindings and bandages.
After the limitation by the applicant, the contested goods are the following:
Class 5: Pharmaceutical preparations, namely anti-inflammatory preparations, other than preparations for care of the hands and feet.
Class 10: Applicators for pharmaceutical preparations; Surgical apparatus and instruments; Injectors for medical purposes; Syringes for injections.
An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.
The term ‘in particular’, used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T‑224/01, ‘Nu‑Tride’).
However, the term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.
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.
Contested goods in Class 5
The contested pharmaceutical preparations, namely anti-inflammatory preparations, other than preparations for care of the hands and feet are similar to the opponent’s plasters. The goods have the same medical (and anti-inflammatory) purpose, coincide in distribution channels and target the same end users.
Contested goods in Class 10
The contested applicators for pharmaceutical preparations; surgical apparatus and instruments; injectors for medical purposes; syringes for injections have some points in common with the opponent’s vacuum pumps with control apparatus for vacuum wound treatment, and parts and accessories therefor, in particular conductor systems with disposable containers, hoses and star adapters since they may have the same origin (being manufactured by medical technology companies), are likely to be sold in the same premises (shops with medical equipment) or through the same distribution channels and are bought by the same consumers. Therefore, these goods are similar.
Earlier trade mark
The relevant territory is the European Union.
Visually, the signs are similar to the extent that they coincide in first letter ‘A’ and letters ‘SKIN’. However, they differ in the additional letter ‘A’ of the earlier sign and the letters ‘KI’ of the contested sign.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‛A’ and ‘SKIN’ present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the letter ‛A’ of the earlier sign and letters ‘KI’ of the contested mark.
Conceptually, neither of the signs, taken as a whole, has a meaning for the public in the relevant territory.
However, as the element ‘SKIN’ is a basic English word, it will be understood by the relevant professional public as meaning ‘the tissue forming the outer covering of the vertebrate body that consists of two layers (the dermis and epidermis), the outermost of which may be covered with hair, scales, feathers’. As the word ‘SKIN’ is present in both signs, the signs are conceptually similar for part of the relevant public that understand English.
Taking into account the abovementioned visual, aural and conceptual coincidences, the signs under comparison are similar.
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 element ‘SKIN’ of the earlier mark will be associated by the English-speaking part of the relevant public with ‘the tissue forming the outer covering of the vertebrate body that consists of two layers (the dermis and epidermis), the outermost of which may be covered with hair, scales, feathers’. Bearing in mind that the relevant goods can be used for the treatment of skin, it is considered that this element is non-distinctive for these goods, namely for plasters; vacuum pumps with control apparatus for vacuum wound treatment, and parts and accessories therefor, in particular conductor systems with disposable containers, hoses and star adapters. The part of the relevant public understands the meaning of the element and will not pay as much attention to this non‑distinctive element as to the other more distinctive elements of the mark. Consequently, for part of the relevant public that understands English, the impact of this non‑distinctive element is limited when assessing the likelihood of confusion between the marks at issue.
The element ‘SKIN’ of the contested mark will be associated by English-speaking part of the relevant public with ‘the tissue forming the outer covering of the vertebrate body that consists of two layers (the dermis and epidermis), the outermost of which may be covered with hair, scales, feathers’. Bearing in mind that the relevant goods can be used for the treatment of skin, it is considered that this element is non-distinctive for these goods, namely for pharmaceutical preparations, namely anti-inflammatory preparations, other than preparations for care of the hands and feet; applicators for pharmaceutical preparations; surgical apparatus and instruments; Injectors for medical purposes; syringes for injections. The part of the relevant public understands the meaning of the element and will not pay as much attention to this non‑distinctive element as to the other more distinctive elements of the mark. Consequently, for part of the relevant public that understands English, the impact of this non‑distinctive element is limited when assessing the likelihood of confusion between the marks at issue.
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, despite the presence of a non‑distinctive element in the mark (for part of the relevant public) as stated above in section c) of this decision.
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 similar are specialised goods directed at general public (e.g. anti-inflammatory preparations) and professionals in the medical field with specific knowledge or expertise (e.g. surgical apparatus and instruments). The degree of attention will be high.
Global assessment, other arguments and conclusion
It has been established in previous sections of the present decision that the goods in question are considered similar. It has also been concluded that the signs under comparison are visually, aurally and, for part of the relevant public, conceptually similar.
As regards the similarity in the word ‘SKIN’, it should be recalled that, for part of the relevant public, this element has clearly less impact than the remaining elements because it is considered non-distinctive for the goods at hand (as stated above in section c) of this decision). Consequently, this part of the relevant public will pay less attention to this element and will focus on other elements of the marks under comparison.
Moreover, while it is true that the beginning of the marks is the part that first catches the consumer’s attention, it must be recalled that that argument cannot hold in all cases and does not, in any event, cast doubt on the principle that the assessment of the similarity of marks must take account of the overall impression created by those marks since the average consumer normally perceives a trade ark as a whole and does not proceed to analyse its various details (see judgment of 16 May 2007, T-158/05, ‘Altrek’ para 70 and judgment of 8 September 2010, T-369/09 ‘Porto Alegre’, paragraph 58). In the present case, the identical beginnings are confined to only one letter and thus this argument cannot be decisive.
The above findings, particularly as far as the imperfect recollection principle recalled by the opponent is concerned, are further reinforced by the fact that consumers of the goods in question are highly attentive when purchasing such items. Certainly, these particular consumers will be highly attentive to the competing offers on the market and will deliberate carefully before selecting the goods in question; their awareness and attention to detail will be higher than normal and even small differences between marks will be sufficient to rule out any likelihood of confusion in the relevant territory.
Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
The opponent has also based its opposition on the German trade mark No 30 2011 020 121. Since this mark is identical to the one which has been compared and cover the same scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.
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. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 CTMR and therefore did not incur representation costs.
The Opposition Division
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.