CANCELLATION No 23 229 C (INVALIDITY)

ALK-Abelló A/S, Bøge Allé 6-8, 2970 Hørsholm, Denmark (applicant), represented by Løje, Arnesen & Meedom Advokatpartnerselskab, Øster Allé 42, 6, 2100 København Ø, Denmark (professional representative)

a g a i n s t

Tarek Kudsi Alattar, Alhalboni, near Alhalboni Mosque, Damascus, Syria (EUTM proprietor), represented by Cam Trade Marks and IP Services, St John's Innovation Centre, Cowley Road, Cambridge CB4 0WS, United Kingdom (professional representative).

On 12/09/2019, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is upheld.

2. European Union trade mark No 15 608 011 is declared invalid for all the contested goods and services, namely:

Class 5: Pharmaceutical and veterinary preparations.

Class 44: Medical services.

3. The European Union trade mark remains registered for remaining uncontested goods and services in Classes 5 and 44, as well as for all the uncontested goods and services in Classes 3, 29, 30, 31, 32, 35 and 43.

4. The EUTM proprietor bears the costs, fixed at EUR 1 080.

REASONS

The applicant filed an application for a declaration of invalidity against some of the goods and services of European Union trade mark No 15 608 011 ‘Alattar’ (word mark), namely against some of the goods and services in Classes 5 and 44. The application is based on, inter alia, international trade mark registration No 1 256 358 ‘ALUTARD SQ’ (word mark) designating the European Union. The applicant invoked Article 60(1)(a) EUTMR in connection with Article 8(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that there is a likelihood of confusion between the marks, as they are visually and aurally similar and because the contested goods and services are identical to the applicant’s goods and services. The contested trade mark should be declared invalid in relation to all the contested goods and services.

The EUTM proprietor argues that the grounds for invalidity presented by the applicant are unsustainable and that the action should be dismissed. In particular, the EUTM proprietor provides a comparison with each of the earlier trade marks, on which the application is based. It argues that the marks compared are different and that the contested services in Class 44 are dissimilar to the applicant’s goods in Class 5. The level of attention of the relevant public is high. There is no risk of confusion between the marks.

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.

The application is based on more than one earlier trade mark. The Cancellation Division finds it appropriate to first examine the application in relation to the applicant’s international trade mark registration No 1 256 358 designating the European Union.

1. The goods and services

The goods and services on which the application is based are the following:

Class 5: Pharmaceutical and veterinary preparations, including pharmaceutical and veterinary preparations for immunotherapeutic purposes and pharmaceutical and veterinary preparations for diagnosis, prevention and treatment of allergy, asthma, allergic rhinitis, allergic asthma and respiratory allergic diseases; diagnostic preparations for medical purposes, diagnostic reagents and diagnostic testing materials for medical use; pharmaceutical preparations in the form of injectable pharmaceuticals.

Class 44: Medical services and medical healthcare services; medical consulting services, including counselling and information regarding immunotherapy, allergy, asthma, allergic rhinitis, allergic asthma and respiratory allergic diseases; providing patient support relating to immunotherapy as well as to diagnosing, prevention and treatment of allergy, asthma, allergic rhinitis, allergic asthma and respiratory allergic diseases, also electronically or digitally, e.g. through a website; providing information to medical professionals relating to immunotherapy as well as to diagnosing, prevention and treatment of allergy, asthma, allergic rhinitis, allergic asthma and respiratory allergic diseases, also electronically or digitally, e.g. through a website; diagnostic services (medical).

The contested goods and services are the following:

Class 5: Pharmaceutical and veterinary preparations.

Class 44: Medical services.

It should be noted that the terms ‘for example’ and ‘including’, used in the applicant’s list of goods and services, indicate that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, these terms introduce a non-exhaustive list of examples (on the use of ‘in particular’ see reference in 09/04/2003, T‑224/01, Nu-Tride, EU:T:2003:107).

Contested goods and services in Classes 5 and 44

Pharmaceutical and veterinary preparations and Medical services are identically contained in both lists of goods and services.

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 found to be identical are directed both at the public at large and at professional consumers in the health sector. Bearing in mind that the goods and services relate to the medical field and have an impact on health, the degree of attention will be higher than average. It is apparent from the case-law that, insofar as pharmaceutical preparations 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

ALUTARD SQ	Alattar
Earlier trade mark	Contested trade mark

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, bearing in mind their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in proceedings for a declaration of invalidity against any European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to declare the contested trade mark invalid.

Consequently, the Cancellation Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the relevant public, as the pronunciation of the marks is very similar for that part of the relevant public, as will be explained in more detail below.

The signs are word marks. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether the signs are represented in upper or lowercase characters. The marks have no element(s) that could be considered clearly more dominant (visually eye-catching) than other element(s). The signs have no meaning in the relevant territory and their inherent distinctiveness is normal in relation to the goods and services.

Visually, the signs coincide in the string of letters ‘AL*T*AR*’ of the words ‘ALUTARD’ of the earlier mark and ‘Alattar’ of the contested sign. However, these words differ in their third letters, ‘U’ versus ‘a’, the single letter ‘T’ versus the double letter ‘t’ and the additional last letter, ‘D’, in the earlier mark. Furthermore, the marks differ in the additional element ‘SQ’ in the earlier mark. The signs have the same beginning and the length of the contested sign is the same as the length of the initial verbal element of the earlier mark. Furthermore, the verbal elements of both signs are inherently distinctive. Bearing in mind these factors, it is considered that the signs are visually similar to an average degree.

Aurally, the pronunciation of the words ‘ALUTARD’ in the earlier mark and ‘Alattar’ in the contested sign coincides in the sound of the letters ‛AL*TAR’, as the double letter ‘t’ in the contested sign has no impact on the pronunciation and the last letter, ‘D’, in the earlier mark is silent. The pronunciation of these inherently distinctive words coincides nearly in full, as they only differ in the sound of their third letters, ‘U’ in the earlier mark and ‘a’ in the contested sign. The marks also differ in the sound of the additional two letters ‘SQ’ in the earlier mark, which have no counterpart in the contested sign. 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 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. In the present case, the earlier trade mark as a whole has no meaning for any of the goods and services 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

The contested goods and services are identical to the applicant’s goods and services. They are directed at the public at large and at professionals and the degree of attention is higher than average.

The signs are visually and aurally similar to an average degree and the conceptual aspect is neutral.

The coincidences in the signs occur in their beginnings. 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.

A global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and, in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

Taking into account the identity between the goods and services, the average degree of visual and aural similarity between the signs and the interdependence principle explained above, it is considered that the relevant public might be led to believe that the identical goods and services come from the same undertaking or economically-linked undertakings, this even taking into account the higher than average degree of attention.

Considering all the above, there is a likelihood of confusion on the part of the French-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to declare the contested trade mark invalid.

Therefore, the application is well founded on the basis of the applicant’s international trade mark registration No 1 256 358 designating the European Union. It follows that the contested trade mark must be declared invalid for all the contested goods and services.

As earlier international trade mark registration No 1 256 358 leads to the success of the application and the cancellation of the contested trade mark for all the goods and services against which the application was directed, there is no need to examine the other earlier rights invoked by the applicant (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

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

The Cancellation Division

Plamen IVANOV

Liliya YORDANOVA

Boyana NAYDENOVA

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.