OPPOSITION No B 2 667 734

Laboratorios Farmaceuticos Rovi, S.A., C/ Julián Camarillo, n° 35, 28037 Madrid, Spain (opponent), represented by Balder IP Law, S.L., Paseo de la Castellana 93, 28046 Madrid, Spain (professional representative)

a g a i n s t

Novartis AG, 4002 Basel, Switzerland (applicant), represented by Friedrich Graf von Westphalen & Partner mbB, Kaiser-Joseph-Str. 284, 79098 Freiburg i. Br., Germany (professional representative).

On 29/08/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 667 734 is upheld for all the contested goods and services.

2. European Union trade mark application No 14 885 602 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all of the goods and services of European Union trade mark application No 14 885 602 ‘ROVIPIA’ (word mark), namely against all of the goods and services in Classes 5 and 44. The opposition is based on, inter alia, European Union trade mark application No 14 250 617 (figurative mark), which matured into registration on 06/05/2019, covering goods and services in Classes 5, 35, 39, 42 and 44. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

Preliminary remark regarding earlier EUTM No 14 250 617

At the moment of filing the notice of the present opposition, the opponent invoked EUTM No 14 250 617 and based the opposition on parts of the goods and services covered, namely those in Classes 5, 35, 39, 42 and 44.

At this point in time, the opponent’s EUTM was still an application for registration which was under opposition proceedings B 2 590 084. By decision of 08/09/2017, the Opposition Division rejected the opponent’s EUTM application in relation to some of the goods and services in Classes 5, 9, 10 and 40.

By letter submitted on 25/09/2017 during the present proceedings, the applicant claimed that the rejection of the opponent’s EUTM application had a direct effect on the present proceedings in the sense that this right ceased to exist as basis for opposition.

However, it must be pointed out that the abovementioned decision of the Opposition Division never became final. During appeal proceedings, the list of goods and services, for which protection was sought by the opponent’s EUTM, was limited (in Classes 10 and 40) which led to an amicable settlement between the parties and the withdrawal of the opposition. By decisions of 28/03/2019, R 2368/2017-2 and R 2373/2017-2 - ROVI (fig.) / RoBi, the Board declared that the decision of the Opposition Division did not take effect.

Consequently, the applicant’s arguments in this regard are unfounded. The opponent’s EUTM registration No 14 250 617 is a valid earlier right, registered for the goods and services on which the opposition is based in the present proceedings.

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 European Union trade mark registration No 14 250 617, as it is not subject to the proof of use requirement and is the most relevant earlier right invoked by the opponent.

a) The goods and services

In relation to earlier EUTM No 14 250 617, the goods and services on which the opposition is based are, inter alia, the following:

Class 5: Pharmaceutical and veterinary products; sanitary and hygienic products 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; material for stopping teeth, dental wax; disinfectants; products for destroying vermin; fungicides, herbicides; antibiotics; analgesics; anesthetics; amino acids for medical purposes; antiseptics; tranquillizers; eye-wash; digestives for pharmaceutical purposes; laxatives; narcotics; chemical products for medical or veterinary purposes; chemico-pharmaceutical products; tonics (medicine); soporifics; serums; suppositories; vaccines; syringes, carpules and ampoules for medical purposes [containing pharmaceuticals]; oncology preparations; preparations for the treatment of diseases of the central nervous system, for the treatment of the skin, thrombosis, coagulation diseases, infections, flu, pain and inflammations.

Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; research and development of new goods (for others); cosmetic, bacteriological, biological, geological, chemical, technical research; quality control services; chemical analysis; scientific research in the field of pharmacy; pharmaceutical research and development; testing of products; conduct of clinical trials; quality control of manufactured products; consultancy pertaining to pharmacology; pharmaceutical product evaluation.

Class 44: Medical services; Veterinary services; Hygienic and beauty care for human beings or animals; Agriculture, horticulture and forestry services.

The contested goods and services are the following:

Class 5: Pharmaceutical preparations.

Class 44: Collection and preservation of biological tissue, blood, cells; medical diagnostic services; medical treatment services; providing information and data for diagnosis and medical treatment.

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 refer to the same goods and are, therefore, identical to the opponent’s pharmaceutical and veterinary products in Class 5.

Contested services in Class 44

The contested collection and preservation of biological tissue, blood, cells; medical diagnostic services; medical treatment services; providing information and data for diagnosis and medical treatment are included in the broad category of the opponent’s medical services in Class 44. Therefore, they are identical.

Furthermore, and in view of the opponent’s claim for reputation/enhanced distinctiveness of the earlier mark, the Opposition Division finds it appropriate to note that the contested services in this class have relevant commonalities with the opponent’s scientific research in the field of pharmacy; pharmaceutical research and development; conduct of clinical trials in Class 42. These services are complementary. Furthermore, they commonly originate from the same providers and are directed at the same relevant public which looks for them in the same channels of distribution. Therefore, they are similar.

b) 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 found to be identical (or similar) are directed at the public at large and at business customers with specific professional knowledge or expertise in the field of healthcare and pharmacology.

The public’s degree of attention is higher than average (decision of 10/07/2019, R 2087/2018-1 - Bestest / Bess; § 19).

Specifically, 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.

As the services at issue either have a direct impact on one’s health or are specialised scientific/technological services, it is considered that the finding of heightened attentiveness on the part of the public applies also to them.

c) The signs

	ROVIPIA
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 verbal element of the earlier mark, ‘ROVI’, lacks any meaning for the majority of the public in the relevant territory. However, in some languages it has a meaning. For example in Italian, this word is the plural form of ‘rovo’ meaning ‘blackberry/bramble bush’, which is a fanciful concept for the relevant goods and services. Be that as it may, this element has an average degree of inherent distinctiveness.

As regards the fact that the earlier mark is a figurative sign, although the verbal element is depicted with slightly increased spacing between the letters, the typeface is fairly standard. The grey rectangle in which it is placed is a mere carrier of the verbal element and is devoid of any distinctiveness in itself. Consequently, and given that there is no dominant (visually more eye-catching) element in the earlier mark, the impact which the figurative aspects of the earlier mark has on the comparison of the signs is very low, if any at all.

The sole element of the contested sign, ‘ROVIPIA’, has no meaning and is inherently distinctive for the goods and services at issue.

It follows that, for the majority of the relevant public, a conceptual comparison between the signs is not possible and to that extent the conceptual aspect does not influence the present assessment. However, with respect to the part of the public which does perceive a concept in the earlier mark, it must be concluded that the signs are not similar conceptually.

Visually, the signs coincide in the sequence of the letters ‘ROVI’. It is true that the contested sign contains an additional letter string, ‘PIA’, resulting in different lengths of the words at issue, a difference which is strongly argued by the applicant. However, it must be borne in mind that 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.

Notwithstanding the fact that consumers tend to perceive trade marks as a whole and do not artificially dissect them, the circumstances in the present case lead to the conclusion that a certain similarity on the visual level between the signs cannot be denied. The same letters which form the earlier mark’s most important element are readily perceptible in the contested sign, even though they are not visually separated from the additional letters.

Therefore, and taking into account the very low impact which the figurative aspects of the earlier mark have in the present comparison, the signs are similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciations of the signs coincide in the sound of the letters ‛ROVI’. They form the single phonetically relevant element of the earlier mark.

Although the contested sign differs from the earlier mark in that it contains the additional sounds corresponding to the letters ‘PIA’, account must be taken of the fact that the coinciding letters form two syllables in the beginning of the word of the contested sign. The additional sounds in the ending of the contested sign may be enunciated in either two or just one syllable (the latter being the case where the adjacent vowels ‘IA’ are combined into a single syllable).

Therefore, a low degree of similarity has to be found between the signs also on the aural level.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) 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.

As explained in section c) of this decision, the inherent distinctiveness of the earlier mark as a whole is normal, despite the presence of some figurative aspects with very low distinctiveness on their own.

Furthermore, according to the opponent, the earlier European Union trade mark has a reputation in Spain in connection with part of the goods and services on which the opposition is based, namely the following:

Class 5: Pharmaceutical products.

Class 35: Import services, export and agency services of medicinal products.

Class 39: Storage, supply, distribution, packaging and transport of medicines.

Class 42: Research and development of new goods (for others); quality control services; chemical analysis; scientific research in the field of pharmacy; pharmaceutical research and development; testing of products; conduct of clinical trials; quality control of manufactured products; consultancy pertaining to pharmacology; pharmaceutical product evaluation.

This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

Before proceeding to listing the evidence, it is noted that the opponent requested to keep certain commercial data contained in the evidence that was submitted on data carriers (CDs) confidential vis-à-vis third parties. The Opposition Division accepts this request insofar as it relates to part of the evidence (specifically the financial and/or other sensitive commercial information contained in the documents). Therefore, it will describe that part of the evidence only in the most general of terms without divulging any such data or specific information which could breach the terms of the confidentiality request made and accepted. However, this does not apply to evidence which consists of information that is already in the public domain (including available to the public, either in mass media or on the website of the opponent).

The evidence consists of the following documents:

 Annual reports of the opponent company from 2008 to 2014 inclusive, and its financial results dated 2015 and 2016. The reports contain information on, inter alia, the pharmaceutical products supplied by the opponent and its research and development activities, including the coverage of the most important events in the Spanish press. It is noted that the company has a diversified portfolio including a number of products, such as various prescription medicines, imaging contrast media agents and other hospital products, over the counter products, vitamins and minerals etc. The ‘ROVI’ mark is displayed prominently throughout the documents, including in the form of a logotype, for example as and .

 Press releases of the opponent and news articles published on Spanish online media and newspapers from 2009 to 2015 inclusive. The large selection of the articles contains references to the ‘ROVI’ mark and the logotype as shown above, and mainly concern the opponent’s business performance, awards and profits, the pharmaceutical products manufactured or launched on the market by the opponent, the opening of new manufacturing plants and research facilities for clinical trials, the agreements reached with third parties to commercialise specific pharmaceuticals in Spain, and the opponent’s export activities.

 Information about the opponent and their ‘ROVI’ products, obtained from the opponent’s website in 2014. The documents reveal the history of ‘ROVI’, and that the opponent’s activity is the production, marketing and sale of pharmaceutical, healthcare and medical products, as well as research and development for example in relation to medicine release technologies, or the clinical research program, contract manufacturing and marketing for third parties, and the international availability of the ‘ROVI’ products. The printouts contain images of various pharmaceutical preparations in their packaged form, always bearing the ‘ROVI’ mark as a house-mark next to the specific name of the product.

 A selection of corporate and promotional videos providing information about the opponent company and its business activities.

 Audited report of the opponent company of 2015, Corporate social responsibility report of the ‘Rovi Group’ for 2015, and the opponent’s financial results pertaining to 2015 and the first quarter of 2016.

 A selection of press statements, dated from 2011 to 2016 inclusive, providing information mainly about the opponent being the leader of a technological consortium, the obtaining of FDA approval of one of the opponent’s manufacturing plants, the opponent signing manufacturing contracts or marketing agreements with third parties in relation to specific pharmaceutical products.

 Screenshots from the opponent’s website, dated 2016, showing ‘ROVI’s strategy to maintain its market position and grow its business.

The evidence indicates that the ‘ROVI’ mark, as a word mark or a logotype, has been used for a substantial period of time. The corporate name of the opponent was adopted in early 1950s. Since then, the ‘ROVI’ brand has been subject to intensive use in the pharmaceutical field, which has resulted in the brand enjoying a visible position among the competitor brands in Spain. Contrary to the applicant’s argument that the evidence almost exclusively comes from the opponent itself, it has to be pointed out that the foregoing facts have been attested by diverse independent sources, particularly the press articles. For example, in 2013, the Spanish Ministry of Industry qualified the opponent as one of the ten ‘Excellent’ pharmaceutical companies and one of the top ten Spanish laboratories involved in research and development activities. Over the years, the exposure of the ‘ROVI’ brand to the public has grown along with the expansion of the opponent’s product portfolio, also in geographical terms. Some of the ‘ROVI’ products are exported to numerous European Union countries, and the opponent has achieved distribution agreements with important global players in the pharmaceutical industry. Moreover, the substantial sales figures achieved under the ‘ROVI’ brand, as demonstrated in the audited annual reports, cannot be automatically disregarded purely because this is evidence emanating from the interested party itself.

The applicant argues that the evidence submitted by the opponent only shows that there is a Spanish company by the name of ‘Laboratorios Farmaceuticos Rovi’ that is sometimes referred to by the shortened name, ‘ROVI’, and that, therefore, the financial results and other documents do not prove that the sign has been used in accordance with the essential function of a trade mark. In this regard, the Opposition Division accepts that part of the evidence refers to the opponent company as such. Nevertheless, there is sufficient evidence showing that the ‘ROVI’ sign is affixed on the goods (i.e. on their packaging), and that in relation to the services concerned the brand is used in a way which establishes a direct link between the scientific, research and other technological services provided under the ‘ROVI’ mark and the provider which is responsible for their marketing. For example, the press articles referring to the inauguration of the ‘Laboratorios Rovi’ new R&D Centre in Granada in 2009, the news about the opponent starting to manufacture new drugs and vaccines in Spain, or the recognition received by the opponent as being among the top pharmaceutical companies in Spain in 2013 are clearly related to the goods and services themselves in the sense that the awards acknowledge the excellence of the products and not only the managerial or administrative aspects of the opponent company.

The evidence concerning marketing efforts, although not particularly exhaustive, reaches the threshold necessary to establish that the public has been exposed to the ‘ROVI’ brand to an extent that is sufficient to conclude that the brand is known by a significant part of the relevant public in Spain. Account must be taken of the fact that a significant part of the revenue under the ‘ROVI’ brand is generated by prescription-based pharmaceuticals, diagnostic imaging contrast agents and other hospital products, contract manufacturing, all being fuelled by research and development activities. In this market sector, promotional activities are targeted towards business customers who are approached by using specialised, tailored marketing techniques instead of mass communication channels as would be the case for ordinary consumer products. In the present case, the press releases and publications in media, including specialised ones, which highlight the opponent’s achievements in research and development, its business success and the manufacturing contracts with top players in the industry, demonstrate that the ‘ROVI’ brand has been effectively promoted in a manner which is compatible with the usual circumstances of the relevant market.

The applicant asserts that the opponent did not provide any evidence that products that bear the figurative trade mark have been placed on the market. However, as shown in the ‘Comparison of signs’ of this decision, the figurative aspects of the opponent’s mark at issue are minor and are clearly incapable of altering the distinctive character of the word element which is the main indicator of commercial origin of the opponent’s goods and services. Therefore, it is considered that the evidence showing the ‘ROVI’ sign in the form of a word mark is sufficient to prove intensive and long-standing use of the figurative trade mark at issue.

The relevant territory for establishing the reputation/enhanced distinctive character of the earlier mark is the territory of protection, namely the territory where it is registered. Therefore, for EUTM the relevant territory is the European Union. However, the Court has clarified that for an earlier European Union trade mark, reputation throughout the territory of a single Member State may suffice. The Court indicated that a EUTM must be known in a substantial part of the EU by a significant part of the public concerned by the goods and services concerned by that trade mark. When evaluating whether the part of the territory in question is a substantial one, account must be taken both of the size of the geographical area concerned and of the proportion of the overall population living there, since both these criteria may affect the overall significance of the specific territory (06/10/2009, C‑301/07, Pago, EU:C:2009:611). In the present case, the Opposition Division finds that, taken as a whole, the evidence demonstrates recognition of the ‘ROVI’ mark among the relevant public throughout Spain which constitutes a substantial part of the European Union population. Therefore, reputation/enhanced distinctiveness of EUTM No 14 250 617 is proven in the relevant territory.

With respect to the goods and services for which reputation/enhanced distinctiveness is claimed, the evidence is sufficient only for part of them. Having examined the material listed above, the Opposition Division concludes that the earlier trade mark has acquired a high degree of distinctiveness through its use on the market in relation to the following goods and services:

Class 5: Pharmaceutical products.

Class 42: Scientific research in the field of pharmacy; pharmaceutical research and development; conduct of clinical trials.

However, the evidence is insufficient, or hardly any at all, regarding the recognition of the opponent’s mark in relation to the remaining technological services in Class 42, business support services in Class 35 and storage, packaging, distribution or transport services in Class 39. On an overall assessment of the evidence submitted, it is clear that the major commercial success of which the relevant public is aware pertains to the manufacture and sales in the field of pharmaceuticals, enabled and fostered by intensive research and development including clinical trials, whilst the other services in question are either ancillary or do not enjoy the same degree of recognition on the part of the public.

e) Global assessment, other arguments and conclusion

Likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

The earlier mark enjoys protection for identical goods and services as the contested ones. It is inherently distinctive which affords it a normal scope of protection. Furthermore, as shown in section d) of this decision, the earlier mark has acquired a high degree of distinctiveness among the relevant public in relation to goods which are identical to the contested goods in Class 5, and in relation to services in Class 42 which are similar to the contested services in Class 44.

Admittedly, the degree of similarity between the signs is not strong overall. Nevertheless, in the absence of striking differentiating components in the signs or conceptual aspects (for the majority of the relevant public), the similarities between the marks will not go overlooked.

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.

Given the enhanced distinctiveness of the earlier mark, it is considered that the fact that the most important element of the earlier mark is reproduced in the initial part of the contested sign has sufficient capacity to give rise to a situation where at least a part of the relevant public makes an association between the marks.

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).

In the present case, the feeble similarity between the signs on the visual and aural levels is safely outweighed by the identity that exists between the goods and services as registered and applied for, and the high degree of distinctiveness of the earlier mark for identical or similar goods and services. When encountering the conflicting marks, the relevant public may attribute the same, or an economically linked commercial origin to the goods and services at issue, notwithstanding the higher than average degree of attention that the public will display.

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 14 250 617. It follows that the contested trade mark must be rejected for all the contested goods and services.

As earlier European Union trade mark registration No 14 250 617 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268). The same applies to the opponent’s claim for a ‘family of marks’ and the examination of proof of use in relation to earlier EUTM No 24 810 and Spanish trade mark registration No 2 973 105.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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

Rosario GURRIERI

Solveiga BIEZA

Christophe DU JARDIN

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.