OPPOSITION No B 2 599 374

Zentiva, k.s., U Kabelovny 130, 102 37, Praha 10, Czech Republic (opponent), represented by C|K|T Červenka, Turková & Partners Patent, Trademark and Law office, Anny Letenské 34/7, 120 00 Praha 2, Czech Republic (professional representative)

a g a i n s t

Südwestdeutsche Salzwerke AG, Salzgrund 67, 74076 Heilbronn, Germany (applicant), represented by Friedrich Graf von Westphalen & Partner mbB, Kaiser-Joseph-Str. 284, 79098 Freiburg i. Br., Germany (professional representative).

On 17/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 599 374 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, food for babies; dietary supplements for humans and animals; plasters, materials for dressings; nasal drops and sprays; salt pastilles; salt for inhalation or for making a nasal rinse; bath salts for medical purposes; dermatological preparations, in particular with added salts; vitamin preparations; mineral preparations.

2. European Union trade mark application No 14 320 303 is rejected for all the contested goods. It may proceed for the remaining gods.

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 14 320 303, ‘MONTESOL’ (word mark). After a partial refusal of the contested European Union trade mark application, the opposition is directed against all the goods in Class 5. The opposition is based on Czech trade mark registration No 313 588 ‘MONTELAR’ (word mark). 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: Medicines; pharmaceutical preparations for human use.

The opposition is, following a partial refusal of the contested application on 28/03/2017 in Opposition No B 2 600 461, maintained for the remaining goods, namely:

Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; plasters, materials for dressings; nasal drops and sprays; salt pastilles; salt for inhalation or for making a nasal rinse; bath salts for medical purposes; dermatological preparations, in particular with added salts; vitamin preparations; mineral preparations.

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 applicant’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 (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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 include, as a broader category, the opponent’s pharmaceutical preparations for human use. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

A medicine or pharmaceutical preparation refers to any kind of medicine, that is, a substance or combination of substances for treating or preventing a disease in people or animals. Therefore, the contested veterinary preparations are included in the opponent’s broader term medicines. They are identical.

Salt pastilles may include salt pastilles for baths which can serve medical purposes. The contested nasal drops and sprays; salt pastilles; salt for inhalation or for making a nasal rinse; bath salts for medical purposes; dermatological preparations, in particular with added salts are substances used to treat a disease, such as colds and skin diseases, and are therefore included in the broad category of, or overlap with, the opponent’s pharmaceutical preparations for human use. Therefore, they are identical.

The contested vitamin preparations are included in the broad category of, or overlap with, the opponent’s pharmaceutical preparations for human use. Therefore, they are identical.

The contested sanitary preparations for medical purposes are highly similar to the opponent’s pharmaceutical preparations for human use. They have the same purpose and usually coincide in producers, distribution channels and relevant public.

Dietetic food and substances adapted for medical or veterinary use; dietary supplements for humans and animals are substances prepared for special dietary requirements, with the purpose of treating or preventing disease in humans and animals. Bearing this in mind, their purpose is similar to that of medicines (substances used to treat diseases) insofar as they are used to improve a patient’s medical condition. The relevant public coincides and the goods generally have the same distribution channels. Therefore, these goods are considered similar.

The contested plasters, materials for dressings are similar to the earlier medicines as they all serve to treat ailments and wounds and are often used in combination towards the same curing result. Therefore, they have the same broader purpose. They can have the same distribution channels and target the same public.

The contested mineral preparations are similar to the opponent’s medicines because they have the same purpose, namely to improve a patient’s health, the same distribution channels and they target the same relevant public.

The contested food for babies can, apart from being everyday nutrition for infants, also be defined as food which, from a medical point of view, is suitable for consumption by babies who, because of their physiology or for other medical reasons, are not yet able to consume all types of normal food. They are therefore goods which are specifically composed in order to safeguard the health of infants and young children (13/05/2015, T-169/14, Koragel). Therefore, these goods and the opponent’s pharmaceutical preparations for human use are considered similar to a low degree. The intended purpose is the same and these goods generally have the same distribution channels.

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 to various degrees are directed at the public at large and at professionals with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

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).

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.

3. The signs

MONTELAR	MONTESOL
Earlier trade mark	Contested sign

The relevant territory is Czech Republic.

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, ‘MONTELAR’. It has no meaning for the relevant public and is, therefore, distinctive.

The contested sign is also a word mark, ‘MONTESOL’. It has no meaning for the relevant public and is, therefore, distinctive.

The applicant has argued that the words ‘MONTE’, meaning mountain, and ‘SOL’, meaning sun, will be understood throughout the European Union, also for the relevant public, even though they are not Czech words. However, the Opposition Division concludes that is not likely that these meanings will be perceived by the Czech public and therefore rejects this argument.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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.

Visually, the signs coincide in the first letters ‘MONTE’. However, they differ in the last letters ‘LAR’ of the earlier sign, and the last letters ‘SOL’ of the contested sign (even though a letter ‘L’ is present in both endings, this coincidence is not likely to be noticed due to the different position of that letter). Furthermore, the letters have an identical length, eight letters.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛MONTE’, present identically in the beginning of both signs. The pronunciation therefore differs in the sound of the three last letters; ‛LAR’ of the earlier mark and ‘SOL’ of the contested sign. The coincidence in the sound of the letter ‘L’ in these endings will not be perceived, as it is not in the same position in both marks.

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

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).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

In the present case, the goods are partly identical and partly similar to various degrees. The goods are directed at the public at large and professionals with a degree of attention that varies from average to high.

The earlier trade mark and the contested sign are visually and aurally similar to an average degree, to the extent that they coincide in the first five letters/sounds out of eight in the signs; ‘MONTE’. The degree of distinctiveness of the earlier mark is normal.

Taking into account all the circumstances of the case, the difference between the signs, namely the three differing letters/sounds at the end of the conflicting marks, ‘LAR’ respectively ‘SOL’, is not sufficient to counterbalance the similarities between them. The relevant public could be mistaken regarding the origin of the goods that are identical or similar to various degrees.

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).

The applicant refers to previous decisions of the Office and argues in line therewith that as the level of attention is higher than average in the present case, even minor differences are sufficient to avoid confusion. The Opposition Division rejects this argument. 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).

In view of the foregoing and taking into account all the relevant circumstances of the case, also the interdependence principle between the relevant factors, the Opposition Division concludes that the lesser degree of similarity between some of the goods is compensated by the degree of similarity of the signs even for professional consumers with a high degree of attention.

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 Czech trade mark registration No 313 588. It follows that the contested trade mark must be rejected for all the contested goods.

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 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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Elena NICOLÁS GÓMEZ

Lena FRANKENBERG GLANTZ

Judit NÉMETH

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.