CANCELLATION No 22 523 C (INVALIDITY)

Procter & Gamble Health Limited, The Heights, Brooklands, Weybridge Surrey KT13 0XP, United Kingdom (applicant), represented by Best Rechtsanwälte Part mbB, Hostatostr. 26, 65929 Frankfurt am Main, Germany (professional representative)

a g a i n s t

Farmac-Zabban S.P.A. Farmaceutici Medicazione Articoli Chirurgi, Via Persicetana, 26, 40012 Calderara di Reno (BO), Italy (EUTM proprietor), represented by Bugnion S.P.A., Via di Corticella, 87, 40128 Bologna, Italy (professional representative).

On 19/05/2021, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is rejected in its entirety.

2. The applicant bears the costs, fixed at EUR 450.

REASONS

The applicant filed an application for a declaration of invalidity against some of the goods and services of European Union trade mark No 14 767 412 for the word mark ‘OSTEOART’, namely against some of the goods and services in Classes 5 and 35. The application is based on United Kingdom trade mark registration No 1 589 245 for the word mark ‘OSTEOGUARD’. The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argued that there was a likelihood of confusion since the signs were visually and aurally highly similar and the goods and services were partly identical and partly highly similar. It further argued that the earlier mark ‘OSTEOGUARD’ is inherently distinctive and further insisted that it enjoyed at least a minimum degree of inherent distinctiveness since the validity of earlier national marks may not be called into question by the Office. The common element ‘OSTEO’ was not considered commonly used in the pharmaceutical field. Finally, it pointed out that in relation to dietary and food supplements, the public’s degree of attention is lower than for pharmaceutical products.

The EUTM proprietor argued that there was no likelihood of confusion given that the signs coincided in the weak/descriptive element ‘OSTEO’ and the remaining elements ‘GUARD’ and ‘ART’ were sufficient to differentiate the signs. It pointed out that the element ‘OSTEO’ was commonly used in the pharmaceutical field in relation to goods used for bone treatment and to supports its allegations. It submitted images of dietary supplements mentioning the element ‘OSTEO’ (osteo supplement). It also claimed that the earlier mark was devoid of any distinctive character since ‘OSTEOGUARD’ would be perceived as meaning ‘bone protection’. Moreover, it informed consumers that the goods were for the maintenance of bone health in relation to the relevant goods in Class 5. It finally argued that the public’s degree of attention was high.

In support of its observations, the EUTM proprietor filed a copy of the refusal of EUTM No 9 589 318 ‘OSTEOGUARD’, dated 04/05/2011, and a list of trade marks (EUTM and IR designating the EU) registered in Class 5 and including the element ‘OSTEO’.

LIKELIHOOD OF CONFUSION — ARTICLE 60(1)(a) EUTMR IN CONNECTION WITH 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 on which the application is based are the following:

Class 5: Pharmaceutical preparations and substances; herbal products; food and dietary supplements; vitamins, minerals, amino acids; combinations of the aforesaid goods; all relating to the maintenance of bone health and the prevention and treatment of bone deficiencies and bone diseases.

The contested goods and services are the following:

Class 5: Medicines, disinfectants, creams, oils, lotions, ointments, sprays, medicated sticks, for human and non-human use; physiological solutions; physiological nasal solutions; hygienic, medical and surgical wound bandages; medical and surgical bandages and dressings; medical wound filling material; medical adhesive bands, strips and discs; chemical preparations for skin protection and cleansing for the purposes of personal hygiene; materials for dressings, including with x-ray contrast material or detection chips; containers and kits equipped with first aid materials, and related replacement packs; fitted first aid boxes; vitamin drinks; multi-vitamin preparations; vitamin preparations; vitamin and mineral supplements; effervescent vitamin tablets; vitamin preparations in the nature of food supplements; Vitamin supplements; vitamin preparations; vitamin tablets; mineral dietary supplements for humans; medicated mineral drinks; mineral food supplements; mineral food supplements; dietary and nutritional supplements; food supplements; dietary and nutritional supplements; medicated isotonic drinks; whole natural food supplements; synthetic dietary supplements; nutraceuticals; supplements for use in the dermatological, metabolic, cardiovascular, muscoloskeletal, gastroenterological, neurological, gynaecological, immunological, urological, paediatric and ophthalmological sector.

Class 35: Providing of commercial information on the internet, namely information regarding pharmaceutical, parapharmaceutical, medical and surgical preparations, for medication, orthopaedics, vitamin and dietary supplements; consumer advice and customer service information relating to pharmaceutical, parapharmaceutical, medical and surgical preparations, for medication, orthopaedics, vitamin and dietary supplements; retailing, mail order sale and internet sale of pharmaceutical, parapharmaceutical, medical and surgical preparations, for medication, orthopaedics, surgery and disinfection, vitamin and dietary supplements.

Some of the contested goods and services are identical to goods on which the application is based. For reasons of procedural economy, the Cancellation Division will not undertake a full comparison of the goods and services listed above. The examination of the application will proceed as if all the contested goods and services were identical to those of the earlier mark.

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 assumed to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise working in the medical and nutritional field.

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. Contrary to the applicant’s argumentation, this also applies to the other goods in Class 5 such as dietetic substances and food supplements, disinfectants and hygienic products for medical use since these products are for medical purposes and are not basic hygienic products (10/02/2015, T‑368/13, ANGIPAX, EU:T:2015:81, § 46).

3. The signs

OSTEOGUARD	OSTEOART
Earlier trade mark	Contested trade mark

The relevant territory is the United Kingdom.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression, bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

Both marks are word marks consisting of the verbal elements ‘OSTEOGUARD’ of the earlier mark and ‘OSTEOART’ of the contested mark.

Although the signs are composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58).

The public will perceive the prefix ‘OSTEO-’ in both signs as a word that is combined with other words in medicine to mean ‘bone or bones’ (information extracted from Collins dictionary on 07/10/2019 at https://www.collinsdictionary.com/dictionary/english/osteo). This prefix which comes from the Greek word ‘osteon’ is commonly used in terms such as osteopathy, osteoporosis, etc. In relation to the relevant goods and services in Classes 5 and 35, this element is non-descriptive or weak since it informs consumers that the goods, including the goods which are the object of the services, are for the maintenance of bone health and/or the prevention and treatment of bone deficiencies and bone diseases. Although some of the contested goods have other specific therapeutic indications (e.g. supplements for use in the neurological, urological, paediatric sector, etc.), the prefix ‘OSTEO-’ will still be perceived as indicating that the goods may affect the bones and is therefore less distinctive than the remaining element ‘ART’.

The element ‘ART’ of the contested mark means ‘the activity or educational subject that consists of creating paintings, sculptures, and other pictures or objects for people to look at and admire or think deeply about’ (information extracted from Collins dictionary on 07/10/2019 at https://www.collinsdictionary.com/dictionary/english/art_1). In relation to the relevant goods and services, this element is distinctive to an average degree.

As a whole, the contested mark ‘OSTEOART’ has no meaning and is therefore distinctive to an average degree.

The element ‘GUARD’ of the earlier mark means, inter alia, ‘watch over in order to protect or control’ or ‘protect against damage or harm’ (information extracted from Lexico on 07/10/2019 at https://www.lexico.com/en/definition/guard). In relation to the goods in Class 5, which are specifically for the maintenance of bone health and the prevention and treatment of bone deficiencies and bone diseases, it directly informs consumers that the goods have a protective effect and, as a whole, ‘OSTEOGUARD’ indicates that the goods are for the maintenance of bone health (bone protection). Therefore, the verbal element ‘OSTEOGUARD’ is composed of non-distinctive or weak elements and as a whole, its inherent distinctiveness is low.

Even if the beginning of a sign has generally more importance than the ending in the overall impression produced by a sign, this consideration cannot prevail in all cases and cannot undermine the principle that an examination of the similarity of the signs must take account of the overall impression produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details (27/06/2012, T‑344/09, Cosmobelleza, EU:T:2012:324, § 52).

Visually and aurally, the signs coincide in the non-distinctive or weak element ‘OSTEO’. As far as the elements ‘GUARD’ and ‘ART’ are concerned, although they coincide in the letters ‘**AR*’, they are not placed in the same position. Furthermore, they differ in the letters ‘GU**D’ versus ‘**T’ and in their pronunciations. They do not have the same length (five versus three letters). Therefore, the signs are visually and aurally similar to a low degree.

Conceptually, the public in the relevant territory will perceive the earlier mark as meaning ‘bone protection’, while the contested mark will be perceived as the sum of its elements ‘OSTEO’ and ‘ART’. As the signs coincide in the non-distinctive or weak concept of ‘bone’, they are similar to a low degree. They differ in the remaining distinctive concept of ‘art’ and in the weak concept of ‘protection’.

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 applicant 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. Considering what was stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all the relevant goods in Class 5, although it reaches the minimum required. This is in line with Court judgments (24/05/2012, C‑196/11 P, F1-Live, EU:C:2012:314, § 40-41; 11/12/2014, T‑10/09 RENV, F1-Live, EU:T:2014:1061, § 33) regarding the validity of national marks and a presumption of validity as concerns inherent distinctiveness.

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).

The signs are visually, aurally and conceptually similar to a low degree since their similarity is limited to the common non-distinctive or weak element ‘OSTEO’.

The inherent distinctive character of the earlier mark is low.

Whereas, a company is certainly free to choose a trade mark with a low or even non-distinctive character, including trade marks with descriptive and non-distinctive words, and use it on the market, it must accept, however, in so doing, that competitors are equally entitled to use trade marks with similar or identical descriptive components (23/05/2012, R 1790/2011‑5, 4REFUEL (FIG.MARK)/REFUEL, § 15).

It is settled case-law that if trade marks have identical parts that are weak or devoid of distinctive character, the existing differences between the signs are to be given more importance in the overall assessment of the signs (18/03/2002, R 814/2001‑3, ALL-DAY AQUA / Krüger All Day (FIG. MARK), § 50; 14/05/2001, R 257/2000‑4, FIG./COLOUR MARK (e plus) / PLUS, § 22). Such differences decrease the likelihood of confusion between the conflicting trade marks.

The signs differ in the element ‘GUARD’ versus ‘ART’ and these differences are clearly noticeable. They affect, in an obvious manner, the three levels of the comparison. The conceptual association between the signs is not relevant as it refers to the non-distinctive or weak concept of ‘bone’. The fact that the element ‘GUARD’ is weak does not change the finding that the differences prevail in the overall impression produced by the marks.

Therefore, the coincidence in the non-distinctive or weak element ‘OSTEO’ will not lead the public to infer automatically that the goods and services marketed under the signs are provided by the same or economically linked undertakings.

Notwithstanding the interdependence principle mentioned above, the assumed identity of the goods and services is counteracted by the low degree of similarity between the signs and in particular the differences arising from the distinctive elements ‘ART’ of the contested mark and ‘GUARD’ of the earlier mark.

Considering all the above, the Cancellation Division finds that there is no likelihood of confusion on the part of the public, also bearing in mind the high degree of attention of the public. This would be the case even if the goods and services were identical. Therefore, the cancellation application must be rejected.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the costs incurred by the EUTM proprietor in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the EUTM proprietor are the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Julie, Marie-Charlotte HAMEL

Frédérique SULPICE

Ana MUÑIZ RODRIGUEZ

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 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.