OPPOSITION No B 2 527 987

Millennium Pharmaceuticals, Inc., 40 Landsdowne Street, Cambridge, Massachusetts, 02139, United States of America (opponent), represented by Takeda Gmbh, Arianna Lucheroni, Byk-Gulden-Str. 2, 78467 Konstanz, Germany (employee representative)

a g a i n s t

Cipla Limited, Cipla House, Peninsula Business Park, Ganpatrao Kadam Marg, Lower Parel, Mumbai Maharashtra 400 013, India (applicant), represented by Pons Patentes y Marcas Internacional, S.L., Glorieta de Rubén Darío 4, 28010 Madrid, Spain (professional representative).

On 29/04/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 527 987 is upheld for all the contested goods, namely:

Class 5: Pharmaceutical and veterinary preparations; Sanitary preparations for medical purposes; Dietetic food and substances adapted for medical or veterinary use.

2. European Union trade mark application No 13 918 008 is rejected for all the contested goods. It may proceed for the remaining goods.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 13 918 008, namely against some of the goods in Class 5. The opposition is based on European Union trade mark registration No 12 813 036. 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

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

Class 5: Pharmaceutical preparations for human use, namely, for the treatment of hematological malignancies, cancer, auto-immune diseases and disorders and inflammatory diseases and disorders; pharmaceutical preparations for the treatment of cancer.

The contested goods are the following:

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

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘namely’, used in the opponent’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 include, as a broader category the opponent’s pharmaceutical preparations for the treatment of cancer. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The opponent’s pharmaceutical preparations for the treatment of cancer are substances or combinations of substances for treating or preventing disease in people or animals. The contested veterinary preparations includes cancer-treating preparations. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested dietetic food and substances adapted for medical or veterinary use are substances prepared for special dietary requirements, with the purpose of treating or preventing disease. Certain kinds of prescribed nutrition are part of cancer treatments, moreover “cancer diets” exist which claim to assist patients during and after treatment. Bearing this in mind, the purpose of the contested dietetic foods may be similar to that of pharmaceutical preparations for the treatment of cancer (substances used to treat disease) insofar as they are used to improve a patient’s (be it humans or animals) medical condition. The relevant public coincides and the goods generally have the same distribution channels. Therefore, these goods are considered similar.

The contested sanitary preparations for medical purposes are similar to pharmaceutical preparations for the treatment of cancer. They can coincide in producer, end user and distribution channels and be complementary.

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 found to be identical or similar are directed at the public at large and at customers with specific professional knowledge or expertise. The degree of attention ranges from average to higher than average due to the nature of the goods.

3. The signs

STREXIB	TREXIP
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 marks are word marks. They have no elements that are more distinctive than others. The marks have no dominant elements.

Visually, the signs coincide in the letters _TREXI_ .However, they differ in the first letter S of the earlier mark, and in the letters B / P which are placed at the end of the marks.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters TREXI, present identically in both signs. Furthermore, the sound of the last letters B/ P is also very similar. The pronunciation differs in the sound of the letter S in the beginning of the earlier mark.

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 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

The goods have been found to be partially identical and partially similar. The similarities and dissimilarities between the signs have been established.

The earlier sign and the contested sign have been found to be similar to the extent that they have the letter sequence _ STREXI_ in common. The additional letter S, although placed at the beginning of the earlier mark, and the letters B/ P at the end of the marks do not have a decisive differentiating effect given that the remaining letters are identical and within word elements of similar length. The two word elements have phonetically similar sounds and are aurally and visually confusingly similar for the consumer.

In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (judgment of 22/06/1999, C‑342/97, ‘Lloyd Schuhfabrik Meyer’).

Based on the principle of imperfect recollection, it is considered that the established similarities between the signs are sufficient to cause at least part of the public to believe that the conflicting identical and similar goods come from the same undertaking or economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 12 813 036. It follows that the contested trade mark must be rejected for all the contested goods.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Richard THEWLIS

Erkki Münter

Julie GOUTARD

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.

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) EUTMIR, 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 (Annex I A(33) EUTMR) has been paid.