OPPOSITION No B 2 564 493
Dermapharm AG, Lil-Dagover-Ring 7, 82031 Grünwald, Germany (opponent), represented by Dr. Kunz-Hallstein Rechtsanwälte, Galeriestr. 6A, 80539 München, Germany (professional representative)
a g a i n s t
Polichem S.A., 50, val Fleuri, 1526 Lussemburgo, Luxembourg (applicant), represented by Bugnion S.P.A., Viale Lancetti, 17, 20158 Milano, Italy (professional representative).
On 10/08/2017, the Opposition Division takes the following
Union trade mark application No
3. The applicant bears the costs, fixed at EUR 650.
opponent filed an opposition against all the goods of European Union
trade mark application No
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.
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 international trade mark registration No 1 052 980 designating Austria and Poland.
The goods on which the opposition is based are, inter alia, the following:
Class 5: Pharmaceutical products; medicines.
The contested goods, after a limitation made by the applicant on 20/01/2017 and accepted by the Office, are the following:
Class 5: Pharmaceutical preparations containing ciclopirox olamine; sanitary preparations for medical purposes containing ciclopirox olamine.
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 pharmaceutical preparations containing ciclopirox olamine are included in the broad category of the opponent’s pharmaceutical products. Therefore, they are identical.
The contested sanitary preparations for medical purposes containing ciclopirox olamine include a list of goods used to clean and purify the human body. They are similar to a high degree to the opponent’s pharmaceutical products, as they both serve a medical purpose. Moreover, they share the same distribution channels since they can be found in pharmacies or other specialized shops. They are directed at the same public and are often manufactured by the same companies.
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 to a high degree are directed at the public at large and at professionals with specific knowledge or expertise in the pharmaceutical or medical field.
It is apparent from the case-law that, insofar as pharmaceutical preparations are concerned, the relevant public’s degree of attention is relatively high, whether or not issued on prescription (15/12/2010, T‑331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T‑288/08, Zydus, EU:T:2012:124, § 36 and cited case-law).
In particular, medical professionals have a high degree of attentiveness when prescribing medicines. Non-professionals also have a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health.
Considering all the above, the degree of attention of the relevant public is deemed to be high, as these goods relate to health, and even average consumers pay a higher than average degree of attention when such goods are involved. This equally applies to the sanitary preparations since they are for medical purposes and also have serious consequences on health.
In the present case, the Opposition Division finds it appropriate to limit its examination to the part of the relevant public that is more prone to confusion, that is, usually the public at large (general public), which is assumed to have no specific medical knowledge or experience. If a significant part of the relevant public for the goods at issue may be confused about the origin of the goods, it will be sufficient to establish a likelihood of confusion. It is not necessary to establish that all actual or potential consumers of the relevant goods are likely to be confused.
Earlier trade mark
The relevant territories are Austria and Poland.
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).
Both words, ‘Ciclocutan’ and ‘CICLOSAN’, when taken as a whole, are meaningless for the general public in the relevant territories referred to above and are, therefore, distinctive to an average degree in relation to the relevant goods.
In this regard, it should be noted that the protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (22/05/2008, T‑254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is irrelevant whether a word mark is depicted in lower or upper case letters, or in a combination thereof. Consequently, the difference in the signs under comparison in this regard, is immaterial.
The Court has held that, although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57).
The word ‘Ciclo’/‘CICLO’, included in both signs, is likely to be understood by the general public as referring to ‘something to do with cycles’, which does not represent a clear and relevant meaning in respect of the relevant goods (as also confirmed in 19/04/2016, R 1521/2015-2, CICLOTAU / CICLOCUTAN et al., § 33). In its observations, the applicant argues that the prefix ‘ciclo-’ is descriptive for the goods in question given that it derives from an International Non-proprietary Name (INN), namely ‘ciclopirox’, which will be perceived by the relevant public as the active ingredient of those goods. However, the Opposition Division is of the opinion that even if this perception might be likely in the case of medical professionals or pharmacists, it cannot be assumed that the public at large (i.e. consumers without any specific knowledge or expertise in the medical field) will immediately be aware of the meaning of the term ‘ciclo’, this clearly being a specialized chemical and medical term, i.e. ‘ciclopirox’; hence it is not a term that forms part of generally understood or everyday language. Therefore, at least from the perspective of the general public, the inherent distinctiveness of the element ‘Ciclo’/‘CICLO’ is to be considered average in respect of the relevant goods in Class 5 (19/04/2016, R 1521/2015-2, CICLOTAU / CICLOCUTAN et al., § 33).
In support of the above argument, the applicant also refers to a number of trade marks containing the element ‘Ciclo’/‘CICLO’, registered, inter alia, in EU, Germany and Poland. In this regard, the Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘Ciclo’/‘CICLO’. Under these circumstances, the abovementioned applicant’s claims must be set aside.
The word ‘cutan’ of the earlier mark may well be understood by the medical professionals as referring to ‘cutaneous’, i.e. as referring to something relating to or affecting the skin, since it is very close to the German word ‘kutan’ with the same meaning. However, that does not mean, contrary to what the applicant asserts, that the relevant general public would also immediately perceive this reference to ‘cutaneous’. Furthermore, it is noted that the German dictionary ‘Duden’ does indeed contain the word ‘kutan’, but it mentions that the word is a medical (professional) term (‘fachspr. fügungen’). In Polish ‘cutan’ does not have any obvious meaning. Hence, at least from the perspective of the general public, the inherent distinctiveness of the element ‘cutan’ of the earlier mark is to be considered average in respect of the earlier goods in Class 5 (19/04/2016, R 1521/2015-2, CICLOTAU / CICLOCUTAN et al., § 34).
The word ‘SAN’ of the contested sign has no meaning for the general public and is, therefore, distinctive to an average degree in the context of the relevant goods.
Visually and aurally, the signs coincide in the letters/sounds ‘CICLO(*)(*)(*)AN’ and they differ in their middle letters/sounds, ‘CUT’ of the earlier mark and ‘S’ of the contested sign.
It is important to note that the first five letters/sounds of the conflicting signs, ‘Ciclo’/‘CICLO’, sequence of which forms an element of normal distinctiveness in each sign, as explained in detail above, are identical. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.
Taking all the above into account, the signs are visually and aurally similar to at least an average degree.
Conceptually, reference is made to the meanings of the signs and their individual elements given above.
As seen above, although the signs as a whole do not have any meaning for the general public in the abovementioned relevant territories, the element ‘Ciclo’/‘CICLO’, included in both signs, will be associated with the meaning explained above, that is, with something related or characterized by cycles. To that extent, the signs are conceptually similar to at least an average degree.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
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 relevant goods from the perspective of the general public in Austria and Poland. Therefore, the distinctiveness of the earlier mark must be seen as normal.
In its submissions, the applicant argues that the earlier trade mark is non-distinctive or weak for the relevant goods in Class 5, since it is composed of two descriptive elements, ‘ciclo’ and ‘cutan’. However, following the analysis of the signs and their particular elements carried out in the section c) of this decision and in the absence of convincing arguments and evidence submitted in this regard, this applicant’s argument must be set aside.
Global assessment, other arguments and conclusion
The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).
Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).
The present assessment of likelihood of confusion considers the perception of the part of the public that is more prone to confusion, namely the general public; the degree of attention is high and the earlier mark enjoys a normal degree of inherent distinctiveness for the relevant goods.
As concluded above, the contested goods are partly identical and partly similar to a high degree to the opponent’s goods.
The signs in conflict are similar to at least an average degree on all levels (visually, aurally and conceptually), as explained in detail above in section c) of this decision. The differences between the signs are limited only to three letters/sounds in the earlier mark and one letter/sound in the contested sign, all being present in the middle of the signs, where they will probably not attract the consumer’s attention. Therefore, the Opposition Division is of the opinion that these differences are not sufficient to counteract the similarities between the signs, which result in very similar impressions given by the signs when being perceived by the public as a whole. Even the general public with a high degree of attention may be confused as to the origin of the goods in question.
The applicant refers to previous decision of the Office to support its arguments, namely decision of the Opposition Division of 07/10/2014, No B 2 268 954, LIPOSINOL/LIPOSAN. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).
Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case. In the present case, the previous case referred to by the applicant is not relevant to the present proceedings. The Opposition Division is of the opinion that the case pointed out by the applicant refers to a comparison of signs which show less similarities than in the case at hand. Consequently, the applicant’s argument relating to the above decision must be set aside.
Based on an overall assessment, and taking into account the principle of imperfect recollection, the Opposition Division concludes that there is a likelihood of confusion on the part of the general public. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.
Therefore, the opposition is well-founded on the basis of the opponent’s international trade mark registration No 1 052 980 designating Austria and Poland. It follows from the above that the contested sign must be rejected in its entirety.
As the earlier right, namely international trade mark registration No 1 052 980 designating Austria and Poland, leads to the success of the opposition and to the rejection of the contested sign for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268) and the proof of use submitted by the opponent in respect of that mark.
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
Eva Inés PÉREZ SANTONJA
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 will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.