OPPOSITION No B 2 771 825

Medix, S.A. Laboratorios Farmacéuticos, Calle Plástico, 5 Pº Ind. Miralcampo, 19200 Azuqueca de Henares, Spain (opponent), represented by Aspamar Asesores, S.L., Calle de Miguel Ángel, 16 - 2º Dcha, 28010 Madrid, Spain (professional representative)

a g a i n s t

Natureteq Inc., 17 Rye Meadoway, Toronto M2H 2V5, Ontario, Canada (applicant), represented by Pavel Panák, Bořivojova 694/108, 13000 Prague 3, Czech Republic (professional representative).

On 05/10/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 771 825 is rejected in its entirety.

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

PRELIMINARY REMARK:

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. All the references in this decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 15 442 718 . The opposition is based on, inter alia, Spanish trade mark registration No 237 455 ‘MEDIX, S.A.’. 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.

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 Spanish trade mark registration No 237 455.

1. The goods

The goods on which the opposition is based are the following:

Class 5: Pharmaceutical, veterinary and disinfectant products in general.

The contested goods are the following:

Class 5: Analgesics, in particular pain relief preparations, pain relief medication, sprays, gels, sticks and liquids for the relief of pain.

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 (see the judgment of 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

The contested analgesics, in particular pain relief preparations, pain relief medication, sprays, gels, sticks and liquids for the relief of pain are included in the broad category of the opponent’s pharmaceutical products in general. Therefore, they are identical.

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 are directed at the public at large and at business customers with specific professional knowledge or expertise.

It is apparent from the case-law that, insofar as pharmaceutical products 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.

3. The signs

MEDIX, S.A.
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 element ‘MEDIX’ of the earlier mark has no meaning for the relevant public and is, therefore, distinctive.

The element ‘S.A.’ of the earlier sign will be understood as the abbreviation for ‘Sociedad Anónima’, a type of business or legal entity in Spain. This element is non-distinctive for the relevant goods, as it merely indicates the legal form of the business entity that produces the goods.

The elements ‘MEDIS’ and ‘IK’ or alternatively ‘MEDIStIK’ (in case the cross is interpreted to stand for the letter ‘t’) of the contested sign have no meaning for the relevant public and are, therefore, distinctive.

The figurative element in the form of an orange-coloured cross of the contested sign will be understood as alluding to the Red Cross, an international humanitarian movement to protect human life and health. Bearing in mind that the relevant goods are pharmaceuticals, this element is weak.

Although the respective first components of the signs, ‘MEDIX’ and ‘MEDIS’ are distinctive, the Opposition Division points out that the coinciding initial letters ‘MEDI-’ clearly allude to the medical nature of the relevant pharmaceutical goods, as the word for ‘medicine’ in Spanish is ‘medicina’ and the word for ‘medical’ is ‘médico/a’. Therefore, the coinciding string of letters ‘MEDI’ is considered to be weak.

The signs have no elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the string of letters ‘MEDI-’. However, this element is weak and therefore, this coincidence has a limited impact despite the fact that the coincidence concerns the initial part of the signs. The signs differ in all the remaining elements, namely the letters ‘-X’ and ‘-S’ at the end of the coinciding initial part, the comma and the element ‘S.A.’ in the earlier mark as well as the orange-coloured cross and the final letters ‘IK’ in the contested sign.

Therefore, the signs are similar to a very low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛MEDI’, present identically in both signs. The coinciding components are weak and therefore, the coincidence has a limited impact. The pronunciation differs in the sound of the letters ‛X’ and ‘SA’ (pronounced /ESE A/ due to the dots) of the earlier sign and the sound of the letters ‘S IK’ of the contested mark, although the sound of the letters ‘X’ and ‘S’ (at the end of ‘MEDI-’) is similar. While the element ‘SA’ is non-distinctive, the other differing sounds are distinctive. The orange-coloured cross will not be pronounced unless it is interpreted to stand for the letter ‘t’. In the latter case, the contested sign has one additional differing sound.

Therefore, the signs are similar to a low degree.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the coinciding initial part ‘MEDI-’ will be associated with the meaning explained above which is weak for the relevant goods and therefore, has a limited impact. Moreover, the earlier mark contains a reference to the type of business entity. This indication is, however, not distinctive. Likewise, the contested sign contains an orange-coloured cross, which is weak. Consequently, the signs are conceptually similar to a very low degree.

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 claimed that the earlier trade mark is well-known in Spain but did not file any evidence in order to prove such a claim.

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, despite the presence of a non‑distinctive (S.A.) and a weak element (MEDI-) in the mark as stated above in section c) of this decision.

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 goods are identical. They are pharmaceutical goods directed at professionals and non-professionals who have a higher degree of attention regarding these goods.

Although the signs coincide in the initial string of letters ‘MEDI-’ this coincidence in the signs is less obvious than the numerous differences which are clearly perceivable and sufficient to exclude any likelihood of confusion between the marks, bearing also in mind that the common string of letters ‘MEDI-’ is of limited distinctiveness for the relevant public regarding goods for medical purposes (pharmaceuticals). Consequently, the coinciding initial element ‘MEDI-’ does not play an independent distinctive role in both signs.

Therefore, the similarities are not sufficient to lead to a likelihood of confusion on the part of the public.

The opponent refers to previous decisions of the General Court to support its arguments. The three previous cases referred to by the opponent are not relevant to the present proceedings, because the signs are not comparable. In the previous decisions concerning the signs ARMAFOAM / NOMAFOAM and TOSCA BLUE / BLUE the signs coincide in an element that is distinctive for the relevant public. In contrast, in the present case the coincidence of the signs is limited to the weak element ‘MEDI-‘. Finally, in the case MONBEBE / BEBE cited by the opponent, the earlier marks enjoyed enhanced distinctiveness. In contrast, in the case at hand the opponent failed to prove enhanced distinctiveness of its earlier marks.

Considering all the above, and even taking into account that the relevant goods are identical, there is no likelihood of confusion on the part of the public, in particular due to their higher degree of attention. Therefore, the opposition must be rejected.

The opponent has also based its opposition on the following earlier rights:

1) Spanish right No 48 007 for ‘MEDIX, S.A.’

2) Spanish trade mark registration No 298 485 for the figurative mark

Earlier right 1) was identified by the opponent as a trade mark. However, this indication does not correspond to the information in the Spanish extract from the register which identifies the right as a trade name (‘nombre comercial’) which could be invoked under the ground of Article 8(4) EUTMR (but not under Article 8(1)(b) EUTMR). However, the opponent did not invoke Article 8(4) EUTMR. In any case, even assuming that earlier right 1) could be invoked as a valid basis of the opposition under Article 8(1)(b) EUTMR, it is identical to the mark which has been compared above and consequently, the outcome cannot be different with respect to goods for which the opposition has already been rejected despite their identity. Therefore, no likelihood of confusion would exist with respect to those goods.

The other earlier mark invoked by the opponent is less similar to the contested mark. This is because it contains further figurative elements such as the irregularly shaped border around the letters and the stylisation of the letters which are not present in the contested trade mark. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those 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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

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

Octavio MONGE GONZALVO

Beatrix STELTER

Denitza STOYANOVA-VALCHANOVA

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Article 109(8) EUTMR (former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be filed within one month of the date of notification of this fixation of costs and will be deemed to have been filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.