OPPOSITION No B 2 512 237

Cotop International B.V., Modemstraat 20, 1033 RW Amsterdam, The Netherlands (opponent), represented by Nlo Shieldmark B.V., New Babylon City Offices., 2e étage, Anna van Buerenplein 21A, 2595DA Den Haag, The Netherlands (professional representative)

a g a i n s t

Jiangsu Smk Pharmaceutical Co. Ltd., No.10-2 Xingang South Road, Economic Development Zone, Taixing City, Jiangsu, People’s Republic of China (applicant), represented by Würth & Kollegen, Sögestr. 48, 28195 Bremen, Germany (professional representative).

On 31/10/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 512 237 is partially upheld, namely for the following contested goods and services:

Class 5: Medicines for human purposes; pharmaceutical preparations; chemico-pharmaceutical preparations; drugs for medical purposes; hormones for medical purposes; biological preparations for medical purposes; chemical preparations for pharmaceutical purposes; chemical preparations for medical purposes; Pharmaceuticals.

Class 10: Nursing appliances; surgical apparatus and instruments; inhalers; insufflators; sprayers for medical purposes; medical apparatus and instruments; aerosol dispensers for medical purposes; apparatus for use in medical analysis; diagnostic apparatus for medical purposes; Hot air therapeutic apparatus.

Class 35: Business organization consultancy; import-export agencies.

2. European Union trade mark application No 13 679 022 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 679 022. The opposition is based on European Union trade mark registration No 721 985. 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 and services

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

Class 9: Electric and electronic apparatus and instruments not included in other classes; photographic, optical, weighing, measuring, checking and auxiliary apparatus and instruments.

Class 10: Surgical, medical, dental and veterinary apparatus and instruments; artificial limbs, eyes and teeth; orthopaedic articles; suture materials.

Class 35: Business mediation and consultancy in the purchase, trading and supply of goods named in Classes 9 and 10.

The contested goods and services are the following:

Class 5: Medicines for human purposes; capsules for medicines; pharmaceutical preparations; chemico-pharmaceutical preparations; drugs for medical purposes; hormones for medical purposes; biological preparations for medical purposes; chemical preparations for pharmaceutical purposes; chemical preparations for medical purposes; Pharmaceuticals.

Class 10: Nursing appliances; surgical apparatus and instruments; inhalers; insufflators; sprayers for medical purposes; medical apparatus and instruments; aerosol dispensers for medical purposes; apparatus for use in medical analysis; diagnostic apparatus for medical purposes; Hot air therapeutic apparatus.

Class 35: Advertising; business organization consultancy; import-export agencies; marketing; retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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 medicines for human purposes; pharmaceutical preparations; chemico-pharmaceutical preparations; drugs for medical purposes; hormones for medical purposes; biological preparations for medical purposes; chemical preparations for pharmaceutical purposes; chemical preparations for medical purposes; pharmaceuticals are different kinds of medical substances for treating or preventing disease. They may coincide in distribution channels and end users with the opponent’s surgical, medical, dental and veterinary apparatus and instruments, which cover a broad range of therapeutic items used in the treatment of diseases, physical conditions or injuries in humans or animals. Despite their different natures, they may have the same purposes, and could be in competition or complementary to some degree. Therefore, these goods are similar to a low degree.

The contested capsules for medicines are shells used to enclose medicines as part of the delivery form (other delivery forms include tablets, syrups and sprays). These goods target manufacturers of medicines and pharmaceuticals, as they are a component of finished products. They are not sold via the same outlets and do not target the same users as the opponent’s goods and services. Furthermore, they have a different nature, purpose and method of use. The mere fact that these contested goods and some of the opponent’s goods and services are intended for use in the health-care sector is too tenuous a connection to establish similarity between them. Moreover, goods intended for different publics (as is the case here) cannot be complementary (22/06/2011, T‑76/09, Farma Mundi Farmaceuticos Mundi, EU:T:2011:298, §30). The contested capsules for medicines are, therefore, considered dissimilar.

Contested goods in Class 10

The surgical apparatus and instruments and medical apparatus and instruments are identically contained in both lists of goods.

The contested nursing appliances; inhalers; insufflators; sprayers for medical purposes; aerosol dispensers for medical purposes; apparatus for use in medical analysis; diagnostic apparatus for medical purposes; hot air therapeutic apparatus are included in the broader category of the opponent’s medical and veterinary apparatus and instruments. Therefore, they are identical.

Contested services in Class 35

The contested import-export agencies provide services for the international trade and exchange of goods, products and services, including intermediary activities. They may be linked to the opponent’s business mediation and consultancy in the purchase, trading and supply of goods named in classes 9 and 10, which involve acting as an intermediary in order to carry out business and, more generally, to help clients and suppliers. All of these services may have similar natures and purposes. Moreover, they may coincide in relevant public and commercial origin. Therefore, they are considered similar.

The contested business organization consultancy and the opponent’s consultancy in the purchase, trading and supply of goods named in classes 9 and 10 have similar natures and purposes, as both are consultancy services that may be performed to run a business effectively with regard to the activities of purchasing, trading and supplying goods. These services are usually provided by the same companies and target the same relevant public. Therefore, they are similar.

The contested retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies are dissimilar to the opponent’s services in Class 35, namely business mediation and consultancy in the purchase, trading and supply of goods named in classes 9 and 10. Indeed, the latter are consultancy services or services of a particular mediator that is engaged with two business parties. These services and all of the opponent’s goods do not have enough in common with the contested retail services. In particular, they have different natures and purposes, target different end users and do not have the same producers. Moreover, they are not complementary.

The contested advertising and marketing services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and acquiring competitive advantage through publicity. They are dissimilar to the opponent’s goods and services, as they have nothing relevant in common and their natures and purposes differ, as do their producers, consumers and distribution channels. Furthermore, they are not complementary or in competition with one another. These services are even dissimilar to the opponent’s consultancy in the purchase, trading and supply of goods named in classes 9 and 10, which have more of a managerial nature and will not be associated with advertising or marketing.

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 and services found to be identical or similar to various degrees are directed at the public at large and at customers with specific professional knowledge or expertise, particularly in the health-care field. The public’s degree of attention will vary from average to higher than average, given the importance of the relevant services for the smooth running of a business as well as the impact that the goods may have on human or animal health.

3. The signs

SMK
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 earlier mark is a word mark, namely ‘SMK’.

The contested sign is a figurative mark containing a stylised element with grey and black characters, which will be perceived as the verbal element ‘smk’ by a substantial part of the relevant public. The three letters ‘smk’ correspond to the first letters of each of the syllables of the word ‘SHIMEIKANG’, which is written underneath in a smaller standard typeface.

The rest of the public will recognise, at least, the letters ‘s’ and ‘k’ of the abovementioned first element of the contested sign. However, since likelihood of confusion for only part of the public is sufficient to reject a contested application, the examination of the opposition will focus on the substantial part of the public that will perceive the verbal element ‘smk’ in the contested sign.

The signs have no elements that could be considered clearly more distinctive than other elements.

The earlier mark, being a word mark with only one verbal element, has no element that could be considered more dominant (visually eye-catching) than other elements.

With regard to the dominant elements of the contested mark, it must be considered that the word ‘SHIMEIKANG’, due to its small size, standard typeface and position at the bottom of the sign, is of secondary importance vis-à-vis the larger element, ‘smk’.

Visually, the signs coincide in the distinctive verbal element ‘smk’, which constitutes the whole earlier mark and the most eye-catching and first of the two verbal elements of the contested sign. This element is depicted independently in the latter.

The signs differ in the additional elements of the contested sign, namely the stylised typeface of the coinciding verbal element ‘SMK’ and the word ‘SHIMEIKANG’, which is, however, less dominant.

However, the abovementioned stylisation will not detract attention from the verbal element ‘SMK’. Indeed, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

In addition, the earlier mark is a word mark and, thus, the words themselves are protected, not their written form. Therefore, it is irrelevant whether the sign is depicted in lower, upper or title case letters.

Finally, the conflicting marks coincide in their beginnings. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. In the present case, it must be emphasised that the verbal element ‘SMK’ will be perceived as the first element of the contested sign, since text is naturally read from top to bottom.

To conclude, and bearing in mind the above considerations, the signs have an average degree of visual similarity.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛SMK’, present identically in both signs. The pronunciation differs in the sound of the letters ‘SHIMEIKANG’ of the contested mark, which have no counterpart in the earlier sign; however, these letters are less dominant than the letters ‘SMK’.

Therefore, the signs are aurally similar to an average degree.

Conceptually, 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.

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 and services 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

A likelihood of confusion (including a likelihood of association) 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.

According to the case law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.).

Moreover, 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 or services. Therefore, a lesser degree of similarity between the 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 and services are partly identical, partly similar, partly similar to a low degree and partly dissimilar. The signs are visually and aurally similar to an average degree for a substantial part of the relevant public. Indeed, the distinctive earlier mark ‘SMK’ is fully and independently included in the contested sign, and the additional verbal element of the latter is less dominant.

Moreover, average consumers rarely have the chance to make a direct comparison between different marks, but trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik Meyer, EU:C:1999:323).

Based on all the foregoing, it is considered that the strong coincidences between the signs will have a decisive impact. They are even sufficient to outweigh the low degree of similarity of some goods. The contested sign, with only the addition of a stylised typeface and the word ‘SHIMEIKANG’, may be perceived as a variant of the earlier mark, particularly because the coinciding letters, ‘SMK’, correspond to the first letters of the syllables of this additional word. Therefore, the relevant public might think that the origin of the goods and services marketed under the earlier mark is the same as that of the goods and services marketed under the contested mark, or at least that there is an economic link between the various companies or undertakings that market them.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Benoit VLEMINCQ

Steve HAUSER

Erkki MÜNTER

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.