OPPOSITION No B 2 581 372

Bristol-Myers Squibb Company, 345 Park Avenue, New York, New York 10154‑0037, United States of America (opponent), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative)

a g a i n s t

Amitalia S.r.l., Via Como 47, 20020 Solaro, Italy (applicant), represented by Bianchetti Bracco Minoja S.r.l., Via Plinio 63, 20129 Milano, Italy (professional representative).

On 12/04/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 581 372 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 349 104 . The opposition is based on United Kingdom trade mark registration No 1 020 857 ‘AMIKIN’ and Irish trade mark registration No 83 612 ‘AMIKIN’. 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.

Proof of use

The applicant requested proof of use of the earlier marks. However, at this point, the Opposition Division considers it appropriate not to undertake an assessment of the evidence of use submitted. The examination of the opposition will proceed as if genuine use of the earlier marks had been proven for all the goods invoked, which is the best light in which the opponent’s case can be considered.

1. The goods

The goods on which the opposition is based for both earlier marks are the following:

Class 5: Antibiotic preparations included in Class 5.

The contested goods are the following:

Class 5: Molecules of vegetable origin for use in controlling LDL (low density lipoprotein) cholesterol levels in dietary supplements for humans.

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.

It must also be taken into account that the goods and 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 (20/09/2012, T‑445/10, Eco-pack, EU:T:2012:454, § 19).

The opponent’s goods are antibiotics preparations included in Class 5, which are a type of antimicrobial drug used in the treatment and prevention of bacterial infections. They may either kill or inhibit the growth of bacteria. Antibiotics are normally prescription-only drugs and their use, dosage and length of treatment must be explained to patients in advance for them to be used effectively. The contested molecules of vegetable origin for use in controlling LDL (low density lipoprotein) cholesterol levels in dietary supplements for humans are small particles of two or more atoms; more specifically, they are particles that originate from a vegetable and are then, in the manufacturing process, used as one of the components in dietary supplements to control the cholesterol level of the consumer. As is clear from these definitions, the goods in conflict differ in their natures and methods of use: the opponent’s goods are finished products manufactured from chemical components and are frequently taken orally upon a doctor’s prescription, while the contested goods are particles that originate from vegetables and are used as one of several components in a rather complex manufacturing process. Furthermore, the goods have very different and specific purposes: antibiotics are used to tackle bacteria-related infections, while the contested goods are intended for the production of supplements to reduce cholesterol. For these reasons, the goods in question also differ in their distribution channels (pharmacies versus specialised trade channels for raw materials or semi-finished products) and customers (patients versus manufacturers of dietary supplements), and they are not in competition, given their widely different natures, purposes and methods of use. Finally, the goods are also not complementary, since one is not indispensable or important for the use of the other in such a way that consumers may think that the responsibility for the production of those goods lies with the same undertaking.

Even though the opponent claims that the contested goods may also be ‘directed at final customers’, the Opposition Division is not aware that molecules are sold in this way, and the opponent did not submit any evidence to support its contention. The opponent also cites the decision of 20/02/2014, R 1340/2013-4, U STYLE FASHION (FIG. MARK) / STYLE (FIG. MARK), to show that the goods are complementary. However, the cited decision covers completely different goods from those in the present case, namely spectacle cases and glasses, which are, indeed, used and sold together. This does not apply to the present case, as the specific molecules in the contested application are neither used in combination with nor sold together with antibiotics.

With regard to the opponent’s argument that the goods in conflict will be marketed to improve people’s health, this is certainly not sufficient to find them similar. Even when two types of medicine are examined, their therapeutic indication and specific nature are of decisive importance, since consumers are searching primarily for goods that can meet their specific needs (15/12/2010, T-331/09, Tolposan, EU:T:2010:520, § 35-36). In the present case, the goods in conflict are not even medicines, since the contested goods are merely one of the components of a finished product.

In summary, the goods in conflict must be considered dissimilar.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR, it is not necessary to examine the evidence of use filed by the opponent.

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 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 Rule 94(7)(d)(ii) EUTMIR, 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.

The Opposition Division

Marianna KONDÁS

Ferenc GAZDA

Solveiga BIEZA

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.